Just one point of clarification, if this is typical software and is copyrighted, then Bayh-Dole would not apply since that only applies to patentable inventions. The federal government retains it's royalty-free license to software through "rights in data" clauses or provisions. Steve "James R. Brett" wrote: > Ruth, > > So far you have gotten fairly conservative advice on the IP question. > Here is a slightly different point of view. > > The sponsor does not have a right to free use of the intellectual > property of its contractors, not even the federal government. What is > in the contractor's head they pay for as Time; what is already built, > patented or copyrighted they pay for as Facilities, Supplies, and > Services. It is frequently the case that professionals have developed > specialized tools, processes, survey instruments, etc., which are > patented or copyrighted for which there is an established value and they > have a right to receive that value. And they do. > > If the IP is to be improved as a stated goal of the project, then the > Bayh-Dole Act provisions will begin to apply, particularly if the > project requires that the IP be improved to successfully meet the > project goals. If, however, the IP is to be improved incidentally to > the stated goals of the project, and if it is perfectly good for use in > the project "as is," i.e., as brought here from Sweden, then the PI can > charge for its use. Bayh-Dole Act considerations may accrue, but are > post hoc considerations. > > A conflict of interest develops in a context in which the financial > interest of the PI is seen to be greater than and/or interfering with the > project interests. If, for instance, there were a couple of other > software products which met or exceeded the utility of the PI's > software, then he/she might be deemed to have a financial conflict > of interest. But, if no other product is available, then the PI is > perfectly > justified in using his own product and charging fair market value for > it. After all, if the PI did not own this IP, then he/she would > necessarily have to employ someone else's product and pay for it. I > think that common sense tells us that if the benefit of using the PI's > software is demonstrably greater than using rival products, the project > should use the software that works best ... and pay for it. Mere preference > > is not enough; there must be a demonstrably greater benefit. > > Fair market value for unique products can be difficult to determine. If > this product has never been sold on the open market, I would advise you > to do two things: first, get a reliable/expert third party to give you a > estimate of the value of the product based on "a closest approach to > function" of other regularly available products, if any, and two, to show > this > value only as cost-sharing on this project and perhaps the next one, > too. If the feds don't require cost-sharing, then put it in anyway. If > they object to the established value, listen to the reason for the > objection. If you got good advice from your expert, you will have some > basis for continuing the conversation. If the software has a substantial > recent sales history, use that value as a direct cost. If the sales are > infrequent and not recent, put the value into cost-sharing. > > Your PI will, no doubt, complain about the lack of consideration in all of > this. My conservative colleagues are not wrong. A good deal of the burden > of removing a shadow of conflict of interest rests on the person who might > benefit -- your PI. > > Jim > > Ruth Tallman wrote: > > > Good Morning, > > > > We have a "sticky" situation regarding intellectural property and I > > would appreciate your counsel. One of our faculty came to Lehigh with a > > commercial software product which he will be using and improving through > > his research activities at Lehigh. The ownership of the product and > > future enhancements has been reviewed, discussed and documented. The > > faculty member owns it and Lehigh doesn't want any rights now or in the > > future. > > > > Here's the sticky part: the faculty member wants to charge his grants a > > license fee for two copies of the software each year. I consider this > > "sticky" because I'm not sure that there is a large market for the > > software or if it is being marketed, at all. Also, from the prior > > discussions, it was clear that the software will continually be enhanced > > and expanded through his work. What should I do: make sure there are > > other customers for/users of the software and that the grants are not > > the only paying "customers"? Confirm that the software is being > > enhanced though the work, and then restrict the license to only the > > first year for the initial "version" of the software? > > > > Your input would be appreciated. > > > > Ruth > > > > Ruth Tallman > > Office of Research and Sponsored Programs > > Lehigh University > > 526 Brodhead Avenue > > Bethlehem, PA 18015 > > Phone: (610)758-3024 > > FAX: (610)758-5994 > > E-mail: xxxxxx@lehigh.edu > > > > ====================================================================== > > Instructions on how to use the RESADM-L Mailing List, including > > subscription information and a web-searchable archive, are available > > via our web site at http://www.hrinet.org (click on "Listserv Lists") > > ====================================================================== > > -- > James R. Brett, Ph.D., Director, > Office of University Research > California State University, Long Beach > 562-985-5314 562-985-8665 fax > http://www.csulb.edu/~research/ > > ====================================================================== > Instructions on how to use the RESADM-L Mailing List, including > subscription information and a web-searchable archive, are available > via our web site at http://www.hrinet.org (click on "Listserv Lists") > ====================================================================== -- Stephen Erickson, Director Office of Research Administration Boston College, McGuinn Hall 600 Chestnut Hill, MA 02467 Telephone: 617-552-3345 - On-Campus Fax: 2-0747 Fax to My Computer: 413-895-8328 ====================================================================== Instructions on how to use the RESADM-L Mailing List, including subscription information and a web-searchable archive, are available via our web site at http://www.hrinet.org (click on "Listserv Lists") ======================================================================
