Laura, I've been there, and it is not necessarily neat and clean. First, if any results are protectable by PATENT, EDGAR prescribes that you are subject to 34CFR401, the standard language for inventions made by non-profits. You get to retain title to the patent if you make a good faith effort to commercialize it -- and a lot of additional baggage that you can live with -- IF you are set up to do so, or maybe contract with another insititution that already has an active Tech Transfer system to handle it for you. HOWEVER, I doubt that the results are protectable by patent. Maybe they are protectable by copyright. Under EDGAR, the grantee owns the copyright but the sponsoring agency has a licence to use it for governmental purposes -- and to authorize others to use it. In our case, the sponsor was a state agency flowing down federal funds. We had no idea at the beginning that the project would come out the way it did: the PI developed an extremely effective way to teach K-4 children how to make responsible decisions regarding life styles and responses to stress. The process was so successful at achieving the golas that the PI was getting calls from all over the country to come and do/teach. The "product" involved both a lot of know-how and a lot of copyrighted material. The funding dried up, and there was an increasing demand!! The PI resigned from the University, and, with the aid of our Tech Transfer Office, created a business based around these successful techniques and materials. Because there had been no earlier consideration of even the possibility of such success, a lot of the material created (some was by subcontract) was copyrighted by others, and gathering up all the intellectual property to make the business work was expensive and time consuming. So, give close thought to exactly what outcomes there might be and what intellectual property protection, if any, could be appropriate. Second, there may be major questions of "program income" -- broadly, revenue resulting from goods and services paid for by the federal award. In the simplest case, if you create, publish and distribute a phamplet, and collect the costs of printing and/or mailing which were originally charged to the project, that's program income. Program income ceases when the project is over. It sounds as if your president's idea can certainly lead to program income questions. There's nothing wrong with that, so long as you understand what is happening and how to account for it. You may also be a little judicionus as to exactly what gets applied for in grants and what is done with institutional funds. There is nothing wrong with using federal funds to get something started that then continues to support itself -- that's the original, and continuing thrust and purpose of "assistance"! GOOD LUCK Chuck At 12:09 PM 10/21/99 -0400, Laura Hartley wrote: >I've got a question that I hope members of the list can help me with. > >I have a faculty member currently working on developing a project in which >we will be creating a new approach to working with a particular population >of children in a clinical setting. This is one of our President's big >initiatives right now, and we are hoping that the Center that will come out >of this initiative will eventually be a revenue-generating >(fee-for-service), somewhat standalone operation. As part of this project, >we are exploring the possibility of patenting the process/approach, >including some software that will be developed for use in the approach. > >There are currently several U.S. Dept of Ed competitions open whose >priorities fit very well with what we are hoping to accomplish in this >project. > >My question is this: what are the implications of accepting federal funding >to develop a portion of the project, in terms of ownership and future >profitability? > >I haven't worked with patents before, so any advice would be greatly >appreciated. >Laura C. Hartley, Ph.D. >Grants Officer/Staff Writer >Office of the Provost >Lesley College >29 Everett Street >Cambridge, MA 02138-2790 >Phone: 617-349-8795 >Fax: 617-349-8599 >email: xxxxxx@mail.lesley.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") >====================================================================== > Herbert B. Chermside, CRA Director, Sponsored Programs Administration Virginia Commonwealth University PO BOX 980568 Richmond, VA 23298-0568 Express Delivery Only: Sanger Hall, Rm. 1-073 11th & Marshall Streets Richmond, VA 23219 Voice: 804-828-6772 Fax 804-828-2521 OFFICE e-mail xxxxxx@VCU.EDU Personal e-mail xxxxxx@vcu.edu http://views.vcu.edu/views/ospa/ ====================================================================== 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") ======================================================================
