Intellectual Property Usage Agreement

April 10th, 2021 by

In some areas, more time is needed to determine the commercial value of intellectual property. For example, in many technological areas, a single patent rarely defines an entire product, in which case the value of a single patent can only be clear when other patents are derived from a company`s patent portfolio. In such cases, an extended option period, perhaps even beyond the issuance of a patent, may be appropriate. Intellectual property of this type sometimes comes from research in industries such as oil, chemicals and heavy industry and is generally used with other proprietary technologies for actual commercial use. While exclusive intellectual property licenses and intellectual property transfer agreements grant another person the exclusive exercise of that right in exchange for financial compensation, an exclusive license is much more limited than a transfer. If you assign an IP right to another person, you transfer it permanently and you had to buy it back so you could use it again. The holder of intellectual property rights may transfer all or part of his rights – for example. B, the copyright holder was only able to cede part of its economic privileges. Intellectual property rights are transferred with a lump sum or royalty payment. The start and duration of the option period varies considerably depending on the type of intellectual property expected and the industry involved. In general, universities want a short option period to allow the university to search for a third-party licensee if the promoter is not interested in a bachelor`s degree. On the other hand, the proponent would prefer a longer option period to assess the commercial potential of intellectual property.

This option extends to — [time] from disclosure of intellectual property to the developer, OR filing a patent application, OR announcing the patent award, or issuing a patent or concluding the duration of the contract. The terms of these licences must be negotiated in good faith and agreed between the university and the sponsor. Owner of the intellectual property by contract or contract by the university or investigators. This scenario may apply. B, for example, if the proponent has made significant investments in the development of the technology that is the subject of university research, if the proponent is probably the sole practical user of the resulting inventions, or where the proponent has provided proprietary information, technologies or materials that form the basis of the research. Contractual language for “university and sponsor share intellectual property” – “common intellectual property” individually and collectively refers to all inventions, improvements or discoveries and all works of authorship, with the exception of articles, theses, theses and books generated by one or more collaborators of the university and by one or more collaborators of the sponsor in carrying out the research under the agreement. All rights and the right to common intellectual property are jointly owned by the university and the sponsor and are subject to the terms of this agreement. The transfer of intellectual property is a document that results in the transfer of intellectual property from one person to another. An intellectual property rights license is a document stating that a person can perform certain acts without infringing on the intellectual property rights of the owner.

IPAG recommends the following model agreements, which can be used at different stages of technology research and marketing transactions.

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