The chart below outlines the standard intellectual property options available to companies engaging in research at the University of Oklahoma. Contact Joyce Burch (jburch@ou.edu) with the Office of Corporate Partnerships with questions.
Agreement Type | Standard Basic Research | Pre-Paid Commercial Use Non-Exclusive Royalty-Free (C-NERF) License | Pre-Paid Commercial Exclusive License | Testing/Service Contract |
|---|---|---|---|---|
Resulting IP Contemplated? | Yes | Yes | Yes | No IP to be created |
IP Ownership? | Resulting IP Owned by Inventing Party | Resulting IP Owned by Inventing Party | Resulting IP Owned by Inventing Party | Sponsor owns generated data |
IP Access and/or Licensing? | Sponsor receives non-exclusive license for internal research purposes only with exclusive option for commercial license following IP disclosure. | Sponsor pays an upfront fee in exchange for a Non-Exclusive Royalty-Free Non-Sublicensable Commercial License for their Field of Use with an option for a royalty-bearing exclusive license. | Sponsor pays an upfront fee and agrees to pay associated approved patent costs, in exchange for an Exclusive Sublicensable License for their Field of Use. This license will be royalty free until an agreed upon milestone is reached. | N/A |
Background IP (BIP) Contemplated? | Each Party retains ownership of their own BIP, but parties may grant use of BIP for research project only. Any rights to use University BIP separate from project or if needed to utilize project IP or results will be negotiated separately at time of license with OTC. | Each Party retains ownership of their own BIP, but parties may grant use of BIP for research project only. Any rights to use University BIP separate from project or if needed to utilize project IP or results will be negotiated separately at time of license with OTC. | Each Party retains ownership of their own BIP, but parties may grant use of BIP for research project only. Any rights to use University BIP separate from project or if needed to utilize project IP or results will be negotiated separately at time of license with OTC. | No University BIP, Sponsor BIP may exist but use or testing does not result in new project IP. |
Publication Review Rights? | 60-day review only for confidential information and patent protection. | 60-day review only for confidential information and patent protection. | 60-day review only for confidential information and patent protection. | Generated data is confidential and must have sponsor approval for publication, all other materials are publishable. |
