OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
STCU Guidance and Procedures
September 27-28, 2005
Judson R. HightowerAssociate General Counsel
Oak Ridge National Laboratory
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Basic Review of Relevant Intellectual Property Concepts
Bundle of rights allowing one to exclude others from unauthorized use of one’s creative output
Intangible personal property Ownership of intellectual property rights
(IPR) separate from ownership of tangible products
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Types of Intellectual Property
Patents (protect inventions) Utility Design Plant
Copyrights Mask works (integrated circuit topographies)
Trademarks Trade secrets
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Intellectual Property Rights (IPR) under STCU Party Project Agreements
Institute holds all rights except for rights in Financing Party’s territory
Financing Party has ownership of rights in its territory Financing Party and Recipient Entity (Institute)
agree on appropriate compensation for inventors and authors
Financing Party pays for cost of protecting intellectual property in its territory
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Intellectual Property Rights (IPR) under STCU Party Project Agreements…..
Each STCU Party and STCU entitled to nonexclusive, royalty-free copyright license in scientific and technical journal articles, reports and books
Each non-Financing Party (upon request) may obtain nonexclusive license in its territory on fair and reasonable terms
Each STCU Party and STCU granted non-commercial license
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Intellectual Property Rights (IPR) under STCU Party Project Agreements…..
Inventors and authors entitled to 15% of royalties earned by entity having rights
Recipient Entity shall grant rights to background intellectual property necessary to exploit intellectual property arising from project (foreground intellectual property)
Recipient Entity and other financing entity can agree to terms different from above
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Outline of STCU IPR Guidance and Procedures Handbook
Introduction Definitions Procedures for protecting information Identification of Background Intellectual Property Equitable allocation of IPR in Partner projects Protecting inventions Protecting computer software Protecting integrated circuit topographies Project implementation Commercialization Exhibits
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Procedures for Protecting Information (Article III)
Employee confidentiality agreements STCU nondisclosure agreements (NDAs)
Information exchanged between STCU and Institutes
Institute nondisclosure agreements Information provided to a third party (“Out”) Information received from a third party (“In”) Mutual exchange of information between
parties (“Mutual”)
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
NEW IDEAConception
Notebook Entry
Reduction to Practice
Record of Invention
Prepare Patent
Application
[Disclosure to Others]
File Patent Application
Patent Issues
Commercialization1. License2. Start-Up3. Joint Venture4. Partnership
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Employee Confidentiality Agreements (Exhibit 1)
Each STCU employee signs as a condition of employment
Agreement to protect technical and non-technical information during employment and for five (5) years after termination
Documents created by employee are property of STCU and must be left with the STCU upon termination of employment
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
STCU Nondisclosure Agreements (Exhibit 2)
Between STCU and Institutes Protects proposal, invention and business-
confidential information exchanged for STCU projects
Term in model exhibit is two (2) years and period of obligation to protect information is five (5) years
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Institute Nondisclosure Agreements (Exhibit 3)
Effective date Identity of parties – legal entities Description of business-confidential
information Purpose for exchange Term of nondisclosure agreement Term of secrecy and non-use obligations
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Institute Nondisclosure Agreements…..
“Out” Description of Institute’s information to be
protected should be as general as possible Requirement that information be marked Term of agreement should be as long as
possible Obligation to protect Institute’s information
should be as long as possible
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Institute Nondisclosure Agreements…..
“In” Description of information to be protected by
Institute should be as specific as possible Requirement that written information be
marked “Business-confidential” and that oral information be reduced to writing, identified as “Business-confidential” and sent to Institute in timely manner
Term of agreement should be as short as possible
Institute’s period of obligation to protect information should be as short as possible
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Why Background Results Should Be Identified in Project Agreements
Helps parties distinguish between intellectual property created under project agreement and intellectual property created outside of project agreement – allocation of rights made easier
Informs each party whether it will be necessary to license Background Results in order to practice intellectual property created under project (Foreground Results)
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Identification of Background Intellectual Property (Article IV)
Definitions
"Background Results" means Background Information and Background Rights.
"Background Information" means information, excluding Foreground Information, owned or controlled by the Recipient in the same or related fields as the research under this Agreement and generated outside the Agreement.
"Background Rights " means rights in patent applications, patents, copyrights, plant variety rights and other equivalent statutory rights excluding Foreground Rights, owned or controlled by the Recipient in the same or related fields to the research executed under this Agreement and originating outside this Agreement.
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Proposed Model Party Project Agreement Language
8.4 The Institute has indicated that the following Background Results as defined in Article XX of Annex II may be needed and used in the performance of work under this Agreement and may be needed to use any technology resulting from the Agreement: _________________________________. The Institute represents that such Background Results are available for licensing as of the effective date of this Agreement. (Remarks: If there are several owners of the Background Results, the name of owner of each Background Result shall be indicated.)
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Proposed Model Partner Project Agreement Language
Article 8.4 - Background Results
The Recipient and the Partner have identified and agreed that the following Background Results may be used in the performance of work under this Agreement and may be needed to practice any Foreground Results of this Agreement:
Recipient’s Background Results: _________________.
Partner’s Background Results: ___________________.
Recipient and Partner represent that the above-identified Background Results are available for licensing as of the effective date of this Agreement.
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
How to Identify Background Results in Project Agreements Records of Invention, patent applications and
issued patents Provide specific record of invention, patent application
and patent numbers, filing and issue dates, inventors, title “STCU Record of Invention File # 1802, dated
July 4, 2003, for ‘Novel Compositions’ to Dr. A.K. Siminov”
“PCT/UA04/534698, filed Jan. 4, 2004, for ‘Novel Nitrate Compounds’ to Andrey Velikov”
“U.S. Patent No. 6,238,451, issued Jan. 8, 2004, for ‘Novel Method for Producing Nanoparticles’ to James Madison”
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Background Results Identification.….
Copyrights “Computer Software: ‘MASTER’ (Mathematical
Application Software for Teaching, Education and Research), copyrighted 2004 – Paton Welding Institute”
“Paton Welding Institute Technical Report # 43 for ‘Experimental Analysis of Iron Alloys,’ copyrighted 2004”
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Background Results Identification.….
Know-how, trade secrets, proprietary information Identify the information but do not disclose it “Know-how on creating novel antiviral agents
in aqueous solutions as described in pages 45-67 of Merck Corporation’s Internal Report # 641, dated April 20, 2003.”
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Protection of Background Results
Law Patents Published copyrighted materials
Nondisclosure agreements Records of invention, patent applications Know-how, trade secrets, proprietary
information Databases, source code, and other
unpublished materials, even if copyrighted
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Equitable Allocation of IPR in Partner Projects (Article V)
Partner, STCU and Institute are parties to Partner Project Agreement
STCU Patent Officer (supported by Senior Specialists) responsible for working with Institutes and Partners to achieve goal of equitable IPR allocation;
Equitable allocation could include ownership or licenses (exclusive or non-exclusive, limited by field of use and/or territory)
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Equitable Allocation of IPR in Partner Projects…..
Factors to consider in determining “fair and reasonable” allocation of IPR Nature of cooperation Contribution of each party, including
Background Results Intent, commitment and ability of parties to
protect intellectual property created Manner in which parties will commercialize the
intellectual property created
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Protecting Inventions (Article VI)
Maintaining laboratory notebooks Recording and reporting inventions Evaluation of commercial potential Tracking inventions Patent Consideration Committee Patent applications Assignments and invention licenses Compensation of inventors
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Maintaining Laboratory Notebooks
Useful in resolving future disputes related to invention
Should answer: What was done What the results were When it was done Who did it Who knew about it
Entries should be in ink in chronological order For more detailed guidance, see:http://www.stcu.int/documents/general/Lab_Notebook_Guidelines.pdf
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Recording and Reporting Inventions
Institute scientist completes Record of Invention (ROI) Form (Exhibit 4)
Institute transmits ROI to STCU within two months of making invention
ROI sent to all financing Parties by STCU Transmittal of ROI to STCU and financing
Parties is not a public disclosure that prevents patenting since transmittals are under nondisclosure agreements
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Recording and Reporting Inventions…..
Pertinent parts of ROI (Exhibit 4) Identifying numbers Inventor information Actual and potential uses Existing documents describing invention Background Detailed description Dates of conception and reduction to practice Disclosures of invention outside Institute
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Evaluation of Commercial Potential
Process for pursuing Patents on US Party Funded Projects (see diagram) US Government will evaluate commercial
potential of invention US Government will have patent applications
prepared for inventions it wishes to protect Costs of application paid by US Government Patent applications provide broad coverage
Institutes will be provided copies of patent applications prepared for US Government which they can then file in their own countries
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Recipient Institute submits Record of Invention to STCU. STCU distributes Record of Invention to USG.
STCU Patent Support Program
Patent Consideration Committee - Does Committee support Recipient Institute’s pursuit of patent (national, PCT, US)?
If DOE says “Yes” to US Patent
DOE has patent application prepared & sends it to Patent Consideration Committee for Recipient Institute to use in filing national or PCT patent application.
DOE Office of Technology Transfer and Intellectual Property (administers USG rights to IP on behalf of State Department’s Science Centers Program)
STCU Patent Support Program provides Institute assistance and the DOE patent application for filing national or PCT patent application.
DOE reviews invention - Does USG want to file application for U.S. Patent?
Yes
If DOE says “No” to US Patent, Consideration Committee and Recipient Institute may still decide to pursue patents
After any required “grace period”, DOE files U.S. Patent application and administers any resulting patent. STCU awards Inventor from US Patent Award Fund (financed by US Party)
No
STCU Patent Support Program may assist Recipient Institute in filing US, national and/or PCT patent applications
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Tracking Inventions
Computer tracking system keeps track of inventions from time ROI is received at STCU until patents issue (Exhibit 5) Details of invention identification, ownership,
type of application, countries where filed, financing Party, etc.
Status at any particular time Due dates (Table VI-1) Dates action taken
Responsibility of Patent Officer
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Patent Consideration Committee
Provides financial support for Institutes to prepare and file patent applications Institutes must submit Patent Application
Grant Request Form (Exhibit 7) and Invention Evaluation Form (Exhibit 8)
Committee considers the above two forms as well as the ROI in making is decision
STCU encourages filing of PCT applications
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Patent Applications
Institute should file patent application in country invention is made within one year of sending ROI to STCU Copy of patent application sent to STCU Patent Officer sends copy of patent application
to financing Party Institute should be diligent in filing patent
applications in other countries within required time periods – otherwise, potential patent rights will be lost
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Assignments and Invention Licenses
Financing Party provided ownership of invention in its territory by assignment Prepared by STCU Patent Officer Signed by Institute
STCU Parties and STCU provided non-exclusive, non-commercial license Prepared by STCU Patent Officer Signed by Institute
Non-Financing Party non-exclusive, commercial licenses negotiated between Institute and non-Financing Party
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Compensation of Inventors
Inventors entitled to “appropriate compensation” from financing Party for invention rights U.S. will pay inventors up to $500 when U.S.
decides to file patent application in U.S.
Inventors and authors are to receive at least 15% of royalties from licensing intellectual property which they create
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Project’s Financing Party
Non-Financing STCU Parties
PatentRights to Invention
Held by Government of Financing Party in its
territory(for commercial use)
Assignment
License Negotiated with
government of non-Financing Party
(for commercial use)
Licensing with Royalties
Sub-License Obtained by
Company(for commercial use)
Sub-License Obtained by
Company(for commercial use)
Sub-License Obtained by
Company(for commercial use)
Institute
License Obtained by
Company(for commercial use)
License Obtained by
Company(for commercial use)
License Obtained by
Company(for commercial use)
$15%
$ 85%
$ fair & reasonable
$
LicenseHeld by Government
of any STCU Party (non-commercial)
Sub-License (non-commercial)
Sub-License (non-commercial)
LicenseHeld by Government
of any STCU Party (non-commercial)
Sub-License (non-commercial)
Sub-License (non-commercial)
LicenseHeld by Government
of any STCU Party (non-commercial)
Sub-License (non-commercial)
Sub-License (non-commercial)
Royalty-Free Licensing
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Computer Software (Article VII)
Maintaining computer software notebooks Recording and reporting computer
software Procedures similar to those for inventions Critical dates and time periods provided in
Table VII-1 Exhibits 9 and 10 specifically for computer
software
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Integrated Circuit Topographies (Article VIII)
Maintaining integrated circuit (IC) topography notebooks
Recording and reporting IC topographies Procedures similar to those for inventions Critical dates and time periods provided in
Table VIII-1 Exhibits 11 and 12 specifically for IC
topographies
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Process for Transferring IP to U.S. Commercial Entities (see diagram)
U.S. company expresses interest in U.S.-funded developed technology
Project completed Licenses technology from DOE
Project not completed Company commits to become STCU Partner U.S. Party amends project agreement to give
its rights to Institute to negotiate with Company
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
U.S. company interested in US-FundedSTCU-developed technology:
Sub-License From USG?
Exploit technology via CommercialPartnership with Recipient Institutes?
Company Negotiates with DOE for License
Company commits to become a STCU Partner and funds Partner Project related to the Intellectual Property in the Regular Project (IP division agreed to in Partner Project Agreements)
US Party may amend the Project Agreement to give its IP rights to Recipient Institute to facilitate the future commercial partnership
DOS Science Centers Program and DOE make public possible opportunities for U.S. companies to exploit results from USG-funded ISTC/STCU projects
Nonexclusive License- Royalty arrangement negotiated with DOE- Licensee commits to pay 85% of royalties to Recipient Institute/Inventor and 15% to USG- USG retains march-in rights
Exclusive License- DOE publishes intent to award exclusive license in Federal Register-Royalty arrangement negotiated with DOE-Licensee commits to pay 85% of royalties to Recipient Institute or Inventor, 15% to USG- USG retains march-in rights
Is the STCU project completed? Oris it still active or not yet started?
Active/Not yet started
Completed(Must License
from USG)
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Project Implementation (Article IX)
Handling project reports Senior Specialists review to determine if any
portions have been marked as business-confidential or invention information
If marked, take special precautions to protect Review of proposed publications
Premature public dissemination can prevent patenting
Patent Officer will review to ensure patent protection not lost
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
In Summary:
Phase I: Recording & Reporting Inventions Phase II: Tracking Inventions Phase III: Patent Applications Phase IV: Assignments & Licenses
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
PO=Patent Officer; ROI=Record of Invention
* See separate diagram for US evaluation of commercial potential
Institute Financing PartiesSTCU
Review(PO)
Institute Letter: File Number NNN,No State Secrets
Record of Invention(in Russian, Ukrainian or
English)
Record of Invention(in English)
ROI FileNumber XXX
Record of Invention
EU
Canada
USA*
STCU File Number &
Interest in Protecting Invention in this Party’s Territory
Phase I: Recording & Reporting Inventions
Invention
blank Patent Application Request Form
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
STCU Invention Evaluation Form
Patent Application Grant Request
ROI=Record of Invention; PCC=Patent Consideration Committee
* See separate diagram for US evaluation of commercial potential
Institute Financing PartiesSTCU
Review(PCC)
USA*
Interest in Protecting Invention
Phase II: Tracking Inventions
Notification of Intent to File Patent Application naming specific countries)
USA-prepared
patent application*
Optional
STCU DecisionIf yes, then $
ROI FileNumber XXX
EUCanada
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
ROI=Record of Invention; PA=Patent Application
** In Ukraine, patent application cannot be shared until security review completed; assume 3-month wait.
Institute Financing PartiesSTCU
Phase III: Patent Applications
Primary Patent Application
filed where invented
ROI FileNumber XXX
Primary Patent Application
filed where inventedPA File
Number XXX
ROI
Primary Patent Application**
English translation
Project’s Financing Party
Provide Notice if Patent Application Filed
Secondary Patent Application/s
Filed in territories other than that of financing
party PA FileNumber XXX
Receipt from Patent Office
Receipt from Patent Office
Secondary Patent Application/s
Filed in other countries/ territories
Receipt from Patent Office
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Phase IV: Assignments & LicensesInstitute Financing PartiesSTCU
Generate Proper Forms
Project’s Financing Party
Desire to License
Signature-ready Documents
License Non-exclusive,
irrevocable, non-commercial, with right to
sub-license
Assignment of Invention
From Institute to Financing Party
Signed Documents
License*** Non-exclusive,
irrevocable, non-commercial, with right to
sub-license
Assignment of Invention
From Institute to Project’s Financing Party
LicenseAssignment of
Invention
STCU Party not involved
in ProjectRequest to license, proposing “fair & reasonable” terms
Acceptance/modification of proposed terms
License
Assignment of Invention
Optional:
*** See separate diagram for US sub-licensing process
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OAK RIDGE NATIONAL LABORATORYU. S. DEPARTMENT OF ENERGY
Back-Up Slides