We have found that industrial agreement require consideration of
publication and of IP rights in every agreement.

It is our policy that the PI MUST be able to publish reasonably rapidly,
and that the industry may comment on, but not control, what is to be
published.  We do agree to remove any company-proprietary information from
the pub.  Our results are NOT company proprietary!

We offer the sponsor a first OPTION (has an expiration date, unlike the
usual "first right of refusal"), usually exclusive, to negotiate for a
royalty bearing license (cannot specify a royalty rate prior to knowing
what the IP actually is, or we loose the right for the University to issue
tax-free bonds), AND a no cost license for their in-house research purposes
only, to the technology during the period of the option.  In
collaborations, if we invent it is ours, if they invent, it is theirs, and
if it is jointly invented it is jointly owned.  If jointly owned we will
set a royalty if they want to control our share, or alternatively we will
agree between us when we know what the IP is who will take the lead in
commercializing.  We always retain a shopright for research and education.
This has worked for us for a number of years.

Some language is attached.

Chuck

At 09:21 AM 8/11/2003 -0500, you wrote:
>Greetings from NDSU!
>
>We are trying to resume negotiations with a private industry on sponsored
>research agreements/collaborations.  IP was the sticking point last time,
>although a shortfall in funding also played a role.  In our discussions on
>where to go from here so as not to repeat the previous results of our
>negotiations, we talked about trying to eliminate the IP/licensing language
>from the research agreement.  The thought being that we would only deal
>with it at the stage when there is actually something to talk about,
>instead of at the start of a project before we know whether there is
>anything of value.  I know this is not a novel idea, and that other
>institutions have taken this approach.  I'd love to hear from any
>institutions that have done this, and how accepting the private industry
>has been to this arrangement.  You can reply directly to me if you wish.
>
>Thank you in advance for sharing your approach!
>
>Val Kettner
>Assistant Vice President
>Sponsored Programs Administration
>
>P.S.  I just finished reading Bob Killoren's article in the July/August
>NCURA newsletter on the collaboration between NCURA and the
>Government-University-Industry Research Roundtable to look at improving
>industry/university research collaborations.  I am looking forward to the
>meeting next week in San Francisco for additional insight.
>
>
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Herbert B. Chermside, CRA
Director, Sponsored Programs Administration
Virginia Commonwealth University
PO BOX 980568
Richmond, VA  23298-0568
Express Delivery Only:
 Biotech One, Suite 113
 Virginia Biotechnology Research Park
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 Richmond, VA 23219
Voice:  804-828-6772
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OFFICE e-mail   xxxxxx@VCU.EDU
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http://www.research.vcu.edu/ospa.htm

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