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Re: Intellectual Property "f Beth Fisher 25 Apr 1996 08:39 EST

 Subject:                                Time: 1:44 PM
 OFFICE MEMO          RE>Intellectual Property "fees"         Date: 4/25/96

We have assigned title of several related patents to a large corporate sponsor
that gave us considerable funds for research.  The contract was signed before
my employment began so I wasn't privy to the negotiations resulting in this
agreement.  I do know the contract includes royalty fees that we will receive
if a product is developed and marketed, which is possible.  This has not yet
come to pass, however, because the corporation has not done anything with the
patents since the project ended several years ago.  I have heard from our
attorneys that the contract was poorly written and there is not much we can do
at this point except wait.   The good news is that we haven't had to pay for
maintaining the patents, which can get quite expensive for a small institute
such as ours.  If and when we do receive royalties, the funds will be
reinvested into the research department's general fund to pay for projects not
currently supported by outside sources.

I'm not a patent expert, so I would like to see comments from other
institutes/universities that have more experience in this area.

Beth Fisher, Research Administrator
Central Institute for the Deaf
818 S. Euclid Avenue
St. Louis, MO  63110
xxxxxx@cidmac.wustl.edu

***************************
     We are exploring new ways of dealing with intellectual property in order
to simplify the interactions with faculty and with industrial clients.
Often,the client will want ownership of IP, rather than a license, and it
makes sense to concede in some situations.
     There is variation among universities as to our abilities and
willingness to assign title to IP.  For those universities that are willing to
assign title and do so, do you ask for payment?  If so, how are the funds
treated once they are paid?
     I will appreciate your time and effort in responding to this inquiry.
Thanks.
     Ralph Metzger, Director
     Office for Industrial R&D
     The Ohio State University Research Foundation
     xxxxxx@osu.edu
     614-292-2655