Dear Ivona:

The first question I would ask is if the invention was created through a federally funded grant?  My next question would be who made the invention?  Created only the faculty from your institution?  In that case, your institution under the Bayh-Dole Act has the right to elect to retain title to the invention in order to pursue patenting and licensing.  If the invention was made jointly by your faculty and with a scientist from the federal government then that would be a jointly owned invention and both parties would have an undivided interest in that invention.  Usually in this situation the agreement would state which party would take the lead in patenting and licensing the invention.  Both parties would agree to share in the cost of patenting the joint invention.  Just because the government funds the project from which the invention results doesn't automatically require that you pay the federal sponsor a royalty.  Only if the government scientists were defined under US Patent Law as a bona fide inventor would the federal agency have ownership rights and the rights to any revenue/royalties generated from the licensing of a joint invention.

Under the Bayh Dole Act the federal government that funds an invention is automatically granted a non-exclusive, nontransferable, irrevocable, paid-up license.  Language we have used is as follows:

"Any invention arising under this Agreement is subject to the retention by the U.S. Government of nonexclusive, nontransferable, irrevocable, paid-up license to practice, or have practiced, the invention throughout the world by or on behalf of the U.S. Government".

Before drafting intellectual property language in an agreement I would suggest that you consult with your technology transfer folks or as someone else suggested your legal counsel.

Marjorie

On Jun 11, 2010, at 11:01 AM, Ivona Jukic wrote:

Hi everyone,

I am seeking guidance of the IP/tech transfer experts: what would be a standard operating procedure/language that addresses IP in respect to royalties in an agreement with federal government? For example, how standard is the following - in this or any foreign country in which university obtains a title to a patent or other IP rights grant, on any subject invention made solely by the federal government or jointly, university shall pay the government a royalty based on a reasonable rate.

Thank you,

Ivona

Ivona Jukic, CRA
Grants Manager
Office of Sponsored Programs & Research
University Library 211
University of Louisiana at Monroe
Monroe, LA 71209
(p) 318.342.1476
(f) 318.342.1479
http://ulm.edu/research
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Marjorie Forster
Assistant Vice President, Research and
Global Health Initiatives
Office of Research and Development
University of Maryland Baltimore
620 West Lexington Street, Suite 400
Baltimore, MD 21201
410-706-6631
410-706-6630 (fax)
xxxxxx@umaryland.edu<mailto:xxxxxx@umaryland.edu>

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