This sounds very much like the language used by the Petroleum Research Fund
which, I believe is part of, or affiliated with the ACS. In that case, the seven
oil companies that executed the charter to form the PRF made that provision
mandatory grant language and, in fact, it is a part of the PRF Charter. In that
case, all we have been able to do  is inform the PIs at the time of proposal
that this will be a grant requirement and to isolate the work to be done under
the grant to the greatest extent possible. These funds should not be comingled
with other sponsor award funds -- if an invention arises in those circumstances
you will have more to worry about than giving up patent rights, for in all
likelihood  your institution in the position of having no choice but to vioate
the terms of one or more sponsor's award terms.

Steve

Amy Hibbard wrote:

> Hello all-
> I'd like to pick your collective brains for a minute about something.  I
> have a PI who would like to submit a Type G grant to the American Chemical
> Society.  One of the terms of the grant states, " . . . any patent which is
> taken out by or on behalf of the principal investigator or the grantee
> institution, and which is derived from research funded in whole or in part
> by this grant, shall be dedicated to the public, royalty free."  Is this a
> standard term, or if not, does it sound acceptable to you?
> My knowledge of IP, though increasing, would still fit into a small box.
> The award amount is small ($35K for two years), and I would hate to sign the
> PI's rights away, particularly for such a small amount.
> Thanks for your input on what, I hope, will turn out to be a case of the
> worry-warts,
> -Amy
>
> Discovery consists in seeing what everyone else has seen and thinking what
> no one else has thought.
> -Albert von Nagyrapolt
>
> Amy Hibbard
> Grants Administrator
> Keck Graduate Institute of Applied Life Sciences
> 535 Watson Drive, Claremont, CA 91711
> T: (909) 607-9313 / 607-7855
> F: (909) 607-8086
> xxxxxx@kgi.edu
> www.kgi.edu
>
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--
Stephen Erickson, Director
Compliance and Intellectual Property Management
Boston College, McGuinn 221
Chestnut Hill, MA 02467
Telephone: 617-552-3345 - On-Campus Fax:  2-0747
Fax to My Computer: 413-895-8328

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