Top 10 Considerations When Drafting and Negotiating SRAs, with U.S. and EU Perspectives

Sponsors should also consider obtaining a present assignment of all improvements to its background IP that the research partner creates (either solely or in conjunction with the Sponsor) during the term of the SRA. Since a patent does not grant a patent holder any right to improvements, without an a...

Full description

Saved in:
Bibliographic Details
Published in:The Licensing journal 2021-03, Vol.41 (3), p.1-4
Main Authors: Schönig, Wolfgang, Karlyn, Matthew, Grohmann, Robert, Zymaris, Mai Phan
Format: Magazinearticle
Language:English
Subjects:
Corporate sponsorship
Disclosure
Federal government
Federal legislation
Funding
Intellectual property
Inventions
Inventors
Licenses
Provisions
R&D
Research & development
Research facilities
Online Access:Get full text
Tags: Add Tag
No Tags, Be the first to tag this record!
Description
Summary:Sponsors should also consider obtaining a present assignment of all improvements to its background IP that the research partner creates (either solely or in conjunction with the Sponsor) during the term of the SRA. Since a patent does not grant a patent holder any right to improvements, without an assignment, care should be taken to ensure that the research partner is prevented from blocking the Sponsor from practicing an improvement to its invention. [...]Sponsors must also obtain adequate access to the research partner's background IP, if contained in the research results or otherwise necessary to use research results or any of the foreground IP, in order to avoid being blocked from use and exploitation. 3.Beware of the Limitations on Federally Funded Research and State Aid Laws In the United States-and even more so in the EU-research institutes, like universities, are often state owned or state funded. In the United States, if the research is partly funded by the federal government, the Sponsor should be aware of the restrictions and the federal government's rights to the resulting inventions and its university partner under the Bayh-Dole Act, which is the federal legislation that permits ownership of patents resulting from federally funded research to remain with inventors and their employers. Sponsors are well-advised to have a solid understanding of the anticipated value created by the research partner and fund their projects appropriately. [...]if the SRA is part of a wider EU or German government grant, the grant conditions may add more limitations on the Sponsor's ability to dispose of the research results.
ISSN:1040-4023