I met with a PI this morning who is interested in applying to the American Chemical Society – Petroleum Research Fund for one of their Doctoral, New Investigator Research Grants.    We discussed the project and the guidelines and looked over the terms and conditions.   Clause #9 in the Ts and Cs states, "In compliance with subsection (f) of said Article SECOND of the Transfer Agreement, 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."

My PI isn’t sure that a patent may result from this research, but it’s possible.   And it’s possible that it may be in the future, but what if he can attribute some of the patent creation to the results generated from this grant?    In running this past our tech transfer attorney, he is concerned and states that this clause applies without respect to who performs the future work, the source of funding for the future work, or when in the future the work is performed.  He states that this is fundamentally unfair to every researcher in the university, because one professor's acceptance of these terms affects the rights of anyone else who might work in an area funded by the Petroleum Research Fund.

We would be interested in hearing from other institutions.  Are you willing to accept this clause in an ACS award?  Have you successfully negotiated it out?

Thanks,
Pam King

======================================================================
 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.healthresearch.org (click on the
 "LISTSERV" link in the upper right corner)

 A link directly to helpful tips:  http://tinyurl.com/resadm-l-help
======================================================================