Which IP option should I choose on the IAF?

Your contract will need to contain terms acceptable to both PSU and the Sponsor. Reaching IP terms that are acceptable to both parties is an important undertaking and is often the major contributor to the overall time it takes to complete an agreement. Penn State has two alternative approaches to IP negotiations. The Office of Sponsored Programs (“OSP”) needs your input as to how to approach IP negotiations for this project.

"Intellectual Property" is typically defined to include (i) those inventions conceived and reduced to practice in performance of this Project and any resulting patent application, division, continuation, substitution, reissue, or reexamination and (ii) any copyrights to software or source code created in performance of this Project, upon which a Penn State employee is an inventor or creator, respectively. For any IP that you or your research team create on this project, please identify your preference on the IAF as explained below.

• Select OPTION 1 if you prefer to preserve the possibility that you and your research team might benefit financially from the commercialization of any IP created during this research (e.g., project personnel may receive a share of royalties on products sales). If this option is selected, Penn State will initially offer the Sponsor (i) a right to use such IP for their internal research purposes only and (ii) the right to negotiate a commercial license after any IP is created. The commercial license will likely contain fees or royalties that will be shared with the inventors/creators.
• Select OPTION 2 if you prefer that Penn State grant your Sponsor an up-front commercial license. The terms of the up-front license will be articulated in the research agreement (without the need to negotiate a future license agreement) and provide the company the exclusive right to control the commercialization of any such IP. You acknowledge that you will forego the possibility of any financial benefit directly related to commercialization of the IP (e.g. a share of royalties on any products sales). Other Penn State personnel (post-docs, students, etc.) involved in the project who are not signatories to the IAF will indicate their concurrence by signing the Corporate Sponsored Project Participant Intellectual Property Agreement. The research unit can scan and loan the signed form into the IAF as an attachment. More information on the up-front license options available to the sponsor can be found here.

SPECIAL CASES

If a project involves ARL personnel, then select OPTION 1. (Due to ARL’s special status with the US Government, ARL cannot offer up front commercial licenses to its industry sponsors.)

If a project involves College of Medicine personnel, then select OPTION 1. (The College of Medicine prefers use of the Sponsored Research Agreement – Default Version for most non-clinical research.)

If a project involves personnel in receipt of USDA legislative funds (e.g., Hatch Act funds), then select OPTION 1 above. (Recipients of USDA legislative funds cannot grant rights to private industry inconsistent with the US Government’s rights to resultant IP.)

If a project is in the field of human health (which includes but is not limited to diagnostics, therapeutics, medical devices, and uses thereof), then you may select either OPTION 1 or OPTION 2. However, the options available for up front commercial licenses are more limited. (Please click here to review Penn State’s menu of up front commercial licenses, including applicable restrictions.)

If you have a Significant Financial Interest in the industry sponsor (as defined in RP06), then you must select OPTION 1. Penn State will not grant an up front commercial license to a company in which you have a significant financial interest.

If your project consists solely of measurement, characterization, fabrication, or other routine research services, you work will typically be performed under an Academic Research Services Order (ARSO) or similar agreement. In such cases, you should select OPTION 2. (Under the terms of the ARSO, a) Inventions which involve the use of, composition of, or improvement to Sponsor-provided materials or information, or a derivative, analogue thereof shall belong to Sponsor; and b) Inventions which cover a scientific process, technique, procedure, medium, device or other process which is not unique to processing Sponsor’s proprietary materials or does not derive from Sponsor-provided materials or information shall be owned by University.)

If your project will be performed under a Master Agreement, you may wish to consult with OSP or OTM. The options available to you may be constrained by the previously negotiated terms and conditions. (See below for contact information.)

If your project is a gift or a charitable grant, then you must select OPTION 1. No IP rights will be conferred to a company in exchange for a gift. No commercial license will be granted to a company in exchange for a charitable grant.

If your project is a non-proprietary field trial grant, then you should select OPTION 2. Under the terms of a field trial grant, Penn State makes no claim to any IP which involves the use of Sponsor-provided materials.

Foreign sponsors may be subject to additional restrictions due to varying IP regulations and export control restrictions.

ADDITIONAL QUESTIONS

More information can be found here. If you have additional questions, please feel free to reach out to your assigned OSP negotiator and/or a representative of OTM (otminfo@psu.edu) prior to making a selection.