I suspect the original grant does require the grant of a non-exclusive royalty free license to the government, for the government to use the IP for any government purpose. In practice, although the government receives such licenses all the time, they rarely exercise them. Many times the government simply purchases the goods from the company(ies) licensed to create/produce them. Part of the goals of government grants, of course, is to create new ideas which can turn into new products -- and thus create new companies, new jobs, etc. You might check the license. License agreements I implemented would often include some sort of price break to the licensor (institution). But lacking a clause like this, or the government's choice to work with the federal agency who holds the license to get it appropriately implemented (much work), I suspect the issue is more about purchasing -- can a sole source purchase be justified? Is this price the going rate, etc. My thoughts -- Dana ---------------------------------- Dana Bostrom, Associate Director Industry Alliances Office, IPIRA University of California, Berkeley 2150 Shattuck Avenue Suite 950 On campus only: mail code 1610 Berkeley, CA 94720-1610 Phone: 510.642.5861 FAX: 510.642.5723 ipira.berkeley.edu -----Original Message----- From: Research Administration List [mailto:xxxxxx@HRINET.ORG] On Behalf Of Dolores Brzycki Sent: Monday, September 11, 2006 11:18 AM To: xxxxxx@HRINET.ORG Subject: Re: [RESADM-L] Royalties and Institutional Conflict of Interest? In the first grant, was there a condition that the federal government be given the right to use any inventions without royalties? If so, wouldn't that eliminate the generation of royalties in the second federal grant? Dr. Dolores Brzycki Assistant Dean College of Health and Human Services 724-357-2088/2555 xxxxxx@iup.edu ----- Original Message ----- From: "Julie Edgerton" <xxxxxx@STANFORD.EDU> To: <xxxxxx@HRINET.ORG> Sent: Monday, September 11, 2006 12:31 PM Subject: Re: [RESADM-L] Royalties and Institutional Conflict of Interest? > Hmm, I am seeing a conflict of interest issue with this one but not sure. > What do any of you think out there? > > Julie > > -----Original Message----- > From: Research Administration List [mailto:xxxxxx@HRINET.ORG] On Behalf > Of > Barbara Gray > Sent: Monday, September 11, 2006 9:09 AM > To: xxxxxx@HRINET.ORG > Subject: [RESADM-L] Royalties and Institutional Conflict of Interest? > > The situation: A faculty member at a public institution of higher > education invents a new instrument under a federal research grant. The > university patents the instrument and commercializes it. ABC Scientific > Supply has an exclusive license to make and sell the instrument, and the > univesity receives royalty payments, which are generously shared with > the inventor. Now the same faculty member is working on a proposal to > another federal agency. He wants to buy twenty of the instruments from > ABC Scientific to deploy in the field (meaning the university would earn > royalties on the sale). This particular instrument allows measurements > that are important for the research that no other similar instrument on > the market can do, so a sole source procurement is justified. Is it > appropriate for the university to pay full price for the twenty > instruments using the new grant dollars and earn the royalties, which it > will then share with the inventor/PI, or should the university charge > the new grant for the cost of the equipment minus the royalty payment > (assuming that ABC Scientific is willing to sell the equipment to the > university at this reduced price)? I suspect there will be a difference > of opinion on this, so please share your rationale. > Thanks. > Barbara > > -- > Barbara H. Gray > Director of Sponsored Research > Desert Research Institute > 2215 Raggio Parkway > Reno, Nevada 89512-1095 > Telephone: 775-673-7381 > Fax: 775-673-7459 > E-mail: xxxxxx@dri.edu > www.dri.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") > ====================================================================== > > > ====================================================================== > 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") > ====================================================================== > ====================================================================== 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") ====================================================================== ====================================================================== 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") ======================================================================
