SCOPE
An exclusive or non-exclusive field-of-use license for the life of the patents in all territories where the University owns patent rights, covering all patents, patent applications or unpatented tangible properties to which Licensee is granted a license.
SUBLICENSE
An exclusive license may provide for sublicensing under commercially reasonable terms, with a passthrough of sublicense income to the University.
LICENSE ISSUE FEES, MILESTONE FEES, AND LICENSE MAINTENANCE FEES
There will be a License Issue Fee payable on execution. The agreement may also include maintenance fees and fees tied to development milestones, depending on the type of license.
ROYALTIES
Royalties on net sales of products covered by the University’s patent and proprietary rights will be payable on pending patent applications on issued patents and or on unpatented tangible properties. Royalty rates will be negotiated in good faith based on the Licensee’s business plan using industry standards in the field.
MINIMUM ANNUAL ROYALTIES
There will be minimum annual royalties, payable at the beginning of each calendar year following public sale, creditable against earned royalties for that calendar year.
DILIGENCE
The license will provide a timetable by which Licensee will file for approval from appropriate United States and corresponding foreign regulatory authorities for permission to sell products as commercially appropriate. If Licensee does not meet these development milestones, the University will have the option of terminating the license or of converting it to a non-exclusive license.
PROGRESS AND ROYALTY REPORTS
Licensee shall submit periodric reports to the University covering Licensee’s (and sublicensees’) activities related to the development and testing of licensed products and the obtaining of governmental approvals necessary for marketing. After the first commercial sale of a licensed product, Licensee shall make quarterly royalty reports.
PATENT PROSECUTION AND MAINTENANCE
The University will own and diligently prosecute and maintain all patents and patent applications included in the license. The University will keep Licensee informed in a timely manner of prosecution matters and will confer with Licensee when making prosecution decisions. Licensee will reimburse the University for all past and future costs of patent prosecution and maintenance.
PATENT INFRINGEMENT
Licensee may notify the University of any infringement of the licensed patents of which it becomes aware. The University will have the first right to sue infringers, and if it does not take action within 100 days, Licensee is free to sue in its own name and at its own expense.
INDEMNIFICATION
Licensee will indemnify the University against any claims arising from the exercise of the license. The University will require Licensee to carry insurance to back up such indemnification and name the University as an additional insured.
WARRANTIES
The University provides no warranty of merchantability or fitness of the licensed technology for a particular purpose or any other warranty. The University does not represent that the licensed products will not infringe any patent or other proprietary right.
USE OF NAME
Unless required by law, the use by Licensee of the name, “The Regents of the University of California” or the name of any campus of the University of California in any Licensee publicity, marketing or promotional material is expressly prohibited.
ASSIGNABILITY
The license agreement shall be personal to Licensee and assignable by Licensee only with the written consent of the University, which consent will not be unreasonably withheld or delayed.
LATE PAYMENTS
In the event that payments are not received by the University when due, Licensee shall pay to the University interest charges.
GOVERNING LAWS
The license agreement shall be interpreted and construed in accordance with the laws of the State of California. The applicable laws of the country of the subject patent or patent application will govern the scope and validity of any patent or patent application included in the license agreement.
EXPORT CONTROL LAWS
Licensee shall observe all applicable U.S. and foreign laws with respect to transfer of products and related technical data to foreign countries.
RTG has developed a “win-win-win” strategy for building and sustaining UCI’s relationships with industrial partners. The strategy is based on the existence of early stage technology for which a corporate partner is invited to take an option or license and to support continued research in the inventor’s lab to further develop the invention.
UCI’s faculty’s research expertise may complement the company’s R&D effort or provide a new platform technology opportunity. Improvement Inventions coming out of research can be rolled into the existing option or license at no additional cost and new inventions in the field can be added for a specific one-time consideration.
The company wins because this research agreement;
-
fulfills part of the option/license’s diligence requirements;
allows the inventor to collaborate with company scientists (without conflict of interest) along the path to a product;
provides for the company sponsor to obtain certain licensing rights to new and improved inventions as a condition of its sponsorship.
The faculty inventor wins by;
-
obtaining funding to pursue his/her work
having the opportunity to collaborate with company scientists
accessing company facilities and equipment
receiving a portion of the net license revenue.
The University wins when it;
-
receives revenue supporting overhead costs
is reimbursed for patent costs by the Licensee
receives royalty and fee revenue to support research
establishes a long-term relationship with the company.
In the end, the public wins because more and better life-saving and life-enhancing products are commercialized more rapidly than either the University or the company could carry out on its own.
UCI welcomes industry research collaborations and has developed a “win-win-win” strategy for developing and maintaining these partnerships. Many of these collaborations are established to further develop technology that has been licensed or optioned by the company. It is the job of the research translation group (RTG) to nurture these relationships and to serve as a point of contact and coordination throughout the entire process.
UC Principles for Partnering with Industry
RTG uses the following Principles for Industry Partnering that have been established for the entire UC system, to guide its negotiations. In essence, the campus has the authority to negotiate terms that it feels are fair, meet industry standards and that do not violate any of these principles:
Open Dissemination of Research Results and Information
Researchers will have freedom to publish and disseminate research results.
An open academic environment that fosters intellectual creativity will be maintained.
Accessibility for University Purposes
Agreements will allow University researchers to utilize the results of their research for education and future research.
Public Benefit
Agreements support the ability of the University to bring innovations and works of authorship to practical application for the public benefit in a diligent and timely manner.
Informed Participation
University researchers shall be aware of their intellectual property (IP) rights and obligations in any arrangement.
IP rights and obligations of particular agreements will not impose on any other type of arrangement without the knowledge of the individuals involved.
Legal & Ethical Integrity
Agreements shall be consistent with all applicable laws and regulations.
Agreements must ensure that all contractual obligations to Federal, state, commercial, non-profit, and other partners are satisfied.
Collaboration shall take place in an ethical environment.
Fair Economic Value
Agreements will achieve economic value for society
Full Direct and indirect costs of sponsored research will be recovered.
Commercial rights will be transferred at fair market value.
Objective Decision-Making
Decisions will be based on academic and business considerations and not upon the personal financial gain of any University employee.
Impact on Students
Students should be involved in university research to the extent practical.
Agreements should in no way hinder a student’s academic progress.
UCI Research Programs
Organized research programs provide a mechanism and organizational structure within which interdisciplinary research activities can take place that span the traditional boundaries of schools and academic departments.
These research units offer industry unusual opportunities for collaborative research and access to cutting-edge technologies that integrate the advances occurring in medicine, engineering, biology, computer sciences, chemistry and more. RTG will be pleased to assist interested companies access these unique resources and develop collaborations.
A current and complete list of Research Units at UCI is also available.
UC Irvine research material, including biological materials, may be shared with outside entities for research purposes, subject to the faculty researchers’ approval and a written transfer agreement with UC Irvine. A license for commercial use, including appropriate fees, may be obtained under certain circumstances.
Material Transfers
In order to enhance campus research and to increase research collaboration with industry and other academic institutions, UC Irvine encourages the transfer of biological and other research materials to and from our campus. Physical transfer of regulated materials (i.e. radioactive, hazardous, or controlled substances or biohazardous agents) must be done in compliance with applicable laws and regulations. Any receipt of such materials by UCI must also comply with these regulations.
Before proprietary or valuable material changes hands, a transfer agreement should be in place. This protects the rights of both parties and ensures agreement up front on subsequent use, care and further distribution. The UC Irvine research translation group (RTG) has responsibility for helping researchers negotiate and execute these agreements on behalf of UC Irvine.
Following is a brief description of how outgoing and incoming transfer agreements operate. RTG endeavors to provide 24- to 48-hour turnaround for agreements where little or no negotiation is required.
Outgoing Material Transfers
Initiated by Outside Party
- The party requesting UCI materials should visit the Outgoing Material Transfers page and download the forms and instructions for making the transfer.
- The requesting party should complete the form(s) and submit to RTG.
- Under some circumstances, UCI will charge a fee for transferring the material. RTG will advise the requesting party if any fees are applicable.
- Once all the paperwork is completed, RTG will inform the UCI researcher that the transfer can be made.
Initiated by UC Irvine Faculty
In order to expedite the transfer of materials from a UCI lab, an Internal Material Transfer Form should be completed by the UCI lab transferring requested materials to other academic labs or industry. This Internal Material Transfer Form will ensure that the requested materials may be distributed to other academic labs and industry without legal and contractual encumbrances to third parties such as third-party material providers or sponsors of research.
Outgoing Material Transfer Form
Incoming Material Transfers
- Incoming Material Transfer Agreements (MTA) should be completed and sent to RTG for processing. In addition, the Incoming Material Transfer Intake Form for Materials (MS Word .doc) should be completed and submitted to RTG with the incoming MTA.
- Each agreement requires the signature of a UCI authorized official within RTG.
- Mail originals or email MTAs or deliver them to RTG, please include all necessary contact information.
- Faxes are acceptable and should be sent to (949) 824-3880.
Note: Incoming Material transfer agreements from companies with highly proprietary material can be challenging, may take more time and require special concessions. In some circumstances, a special Acceptance Agreement may be required of the recipient investigator whereby they accept certain risks inherent in the agreement. UCI may not be able to accept the terms from all companies.
RTG Contact for Material Transfers
For more information or assistance in negotiating material transfer agreements, contact:
Material Transfer Agreement Officer
5141 California Ave., Suite 200
Irvine, CA 92697-7700
UCI Zot code: 7700
Phone: (949)824-2683, Fax: (949)824-3880
Email: MaterialTransfer@uci.edu
The University of California encourages faculty to participate in outside professional activities that contribute to their profession and to the broader community and contribute to the University’s public service mission. Engagement with the outside community is also an important component of the academic enterprise and one way in which faculty and other researchers maintain contact with research directions and priorities that exist in the private sector. This knowledge also guides faculty in preparing students for careers in the private sector.
Consulting Activities Are Regulated
A series of University policies based upon State statutes and Academic Senate consultation have been developed over the years to guide faculty in consulting and other outside professional activities.
Important Issues Arising from Consulting Activity:
Intellectual Property
All UCI employees have pre-existing obligations to disclose ALL patentable inventions to UC regardless of origin. Whether the invention falls outside the consultant’s “scope of UCI employment” is to be distinguished from the question of whether the invention falls within the broad area of an employee’s expertise, which it normally would. University ownership interest in an invention is a University-based decision supported by the facts and equities of the situation.
Faculty members are strongly encouraged to include a provision in their consulting agreements to the effect that the outside entity acknowledges that the consultant is a UCI employee with preexisting obligations to disclose ALL inventions to UCI and to assign to the University any intellectual property resulting from activities that involve the use of University time or research funds/facilities, University commitments to others, or that fall within the employee’s scope of employment. Ideally, the faculty member’s Patent Acknowledgement will be appended to and made a part of the consulting agreement. Consulting agreements that inappropriately assign intellectual property to an outside entity may be legally challengeable and/or unenforceable.
Future Research Funding
Future research funding should not be compromised by the consulting agreement. Companies employing consultants typically seek rights to inventions made during the consulting activity. They may also desire rights to future inventions made at UCI which have a relation to the consulting activity (neither faculty nor the University can grant such rights.) Any “agreement” to provide rights to future inventions may preclude UCI from providing comparable rights to future sponsors and from meeting its obligations to the federal government.
Acceptance of Confidential Information
It is not uncommon for a company to disclose proprietary information to a consultant and want assurances that this information will be kept confidential. Any disclosure of proprietary information by the recipient, either intentionally or unintentionally, may be actionable under both criminal and civil law. Therefore, it is essential to limit the amount of confidential information received when consulting, to agree in advance to receive it only in written form, and to have the company agree to identify clearly such proprietary information by marking it as “confidential.” It is recommended that consulting agreements include a “no-fault/no liability” statement regarding unintentional disclosure.
Liability
Consultants are normally asked to provide advice to the company, which may or may not be accepted. Usually the consultant has no control over how the results are used in practice. Therefore, agreements should limit the consultant’s liability to negligent acts on his or her part only. A consulting agreement should not include general liability or liability for any product produced based on the consulting activity. A consultant may want to seek personal insurance for the liability exposure incurred by the consulting activity.
California State Law Provision
Most consulting agreements will indicate that the laws of a particular state or country will be used in a dispute, usually those of the state where the third party is located or where the consulting is taking place. The litigation of any dispute may take place in that state or country. Thus, it is important to include a statement in a consulting agreement that California laws will apply in the event of a dispute. If choice of venue cannot be negotiated in that way, then it would be best to have the agreement remain silent on that issue.
Amount of Compensation
The University does not set a cap on compensation from outside personal consulting arrangements, except as agreed upon under an applicable health sciences compensation plan.
Conflicts of Interest
A faculty member serving as a Principal Investigator must disclose whether or not there has been any consulting activity with a company when accepting research funding or gifts at the University from that company. The format for disclosure is the Principal Investigator’s Statement of Economic Interests. Some funding agencies such as the National Science Foundation and the Public Health Service also have disclosure requirements for all investigators on a project with financial interests in companies that may reasonably appear to affect the work performed under the NSF or PHS project or that may be affected by the research. UCI considers any consulting to be related to an investigator’s university obligations and, therefore, disclosable.
Thus, under both State law and NSF/PHS regulations, an existing or prior consulting arrangement might require that a proposed University contract or grant be reviewed and approved by the campus Conflict of Interest Oversight Committee (COIOC) as to conflicts of interest concerns. Please contact UCI’s COI Admin¬istrator at (949) 824-4530 for more information.