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Flexible Options for Sponsored Research

The Technology Transfer Office (TTO) and the Office of Research and Sponsored Programs (ORSP) negotiate research agreements with industry and commodity groups, including sponsored research, field trials, and technical evaluations. We can also implement master agreements for such agreement types.

ORSP is responsible for the non-fiscal administration of all awards that support research or other externally sponsored activity at Ohio University and for negotiating award terms and conditions, preparing subcontracts, and consulting agreements when required. The primary responsibility of the TTO in research contracts is to negotiate IP-related terms and conditions, in addition to managing other IP agreements including non-disclosure and material transfer agreements, options, and licenses.

OHIO offers three options for sponsors who may desire different degrees of control over intellectual property developed during a sponsored research engagement, provided that the university, principal investigator and department chair at OHIO agree to their use.

 

Tier 1 Engagement: Traditional IP terms – Non-Exclusive Royalty-Free License + an Option for Exclusivity

In this approach the laws on inventorship determine ownership, thus, OHIO owns the intellectual property it solely develops on a project, or shares ownership with a sponsor of intellectual property if the invention is jointly created during a project. OHIO manages the patenting process, with input and financial support from sponsor and the project sponsor receives a field of use specific non-exclusive royalty free license to intellectual property arising from the project. The sponsor also receives a time-limited option to negotiate an exclusive royalty-bearing license to such intellectual property when protection-associated costs have been reimbursed by the sponsor. There is no upfront license fee for the non-exclusive royalty-free license. The sponsor will also have an option to negotiate an exclusive license with no pre-set royalty rate for the exclusive license. Sponsor and OHIO negotiate the financial terms of an exclusive license after the IP is developed. OHIO background IP requires its own royalty-bearing license. OHIO retains the right to publish the results of the research project.

Click here for our  Sponsored Research Agreement template.

 

Tier 2 Engagement: Risk Managed IP terms – Exclusive License with a Pre-set Royalty Rate

As in the Tier 1 approach the laws on inventorship determine ownership, thus, OHIO owns the intellectual property it solely develops during on a project, or shares ownership with a sponsor of intellectual property if the invention is jointly developed created during a project. However, the sponsor has the opportunity to define and manage the upfront financial risk associated with a royalty-bearing exclusive license. Details are as follows: Sponsor pays the full cost of the research including indirect costs; sponsor prepays an additional fee of the greater of 10% of the full cost of the sponsored research project (including indirect costs) or $15,000, for the option to negotiate an exclusive worldwide, field of use license to IP developed on the project; license includes the right to sub-license and a pre-set royalty rate of 1% of net sales, applicable only after $20 M dollars in cumulative net sales of product(s) incorporating the licensed intellectual property are achieved; OHIO manages the patenting process, with input from and cost reimbursement by sponsor; no additional annual minimum royalty or commercialization fees apply.  Both OHIO and PI must agree to use Tier 2 for the project and OHIO background IP requires its own royalty-bearing license. Tier 2 is not available for projects involving federal, non-profit or other non-commercial sponsor funding or consortia agreements. This is a ready to sign research agreement, avoiding negotiation time of the parties, and allowing research to begin quickly. The exclusive license agreement is negotiated after research begins. OHIO retains the right to publish the results of the research project.

Click here for our  Sponsored Research Agreement template .

 

Tier 3 Engagement: Industry IP Ownership – Assignment with Prepayment

The sponsor may own the intellectual property developed under the project. Sponsor pays the full cost of the research, including indirect costs and pre-pays an additional fee of the greater of 75% of the full cost of the sponsored research project (including indirect costs) or $25,000, for assignment of any IP created by OHIO on the project. Both OHIO and PI must agree to use Tier 3 for the project and no OHIO background IP can be associated with the project.  Tier 3 is not available for projects involving federal, non-profit or other non-commercial sponsor funding or consortia agreements. OHIO retains the right to publish the results of the research project.

 

Click here for our  Sponsored Research Agreement template .