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IP Agreements in SBIR/STTR projects

STTR and SBIR projects often involve a collaboration between small businesses and universities.  These types of projects typically involve the joint development of intellectual property which may include patentable inventions, copyrightable software, and other proprietary data.

Under US law, IP created jointly by two parties can be utilized independently by those parties.  While jointly owned patents can be licensed independently by each owner, jointly owned copyright holders are obligated to share royalties between each other.  The IP scenario is further complicated by the fact that each party often brings its own solely developed IP to a project, which may have its own encumbrances.

Recognizing the IP implications associated with joint IP ownership under SBIR/STTR projects, the Federal Government requires a written intellectual property agreement between the project collaborators.  This IP agreement governs the allocation of rights in intellectual property amongst the parties and is commonly referred to as an "IP Allocation Agreement."

IP Allocation Agreements include a definition of Background IP that each party is bringing to the project, rights related to IP created under the project ("Foreground" or "Project" IP), and terms related to follow-on licensing and management of jointly owned IP.

Faculty members submitting proposals should be aware of this type of IP agreement and should work with their designated pre-award personnel to identify the need for an IP Allocation Agreement in their STTR proposals or SBIR subcontracts.  Once the requirement has been identified, CURF will be engaged by the Office of Sponsored Programs and will aid in the drafting and negotiation of the agreement 

To help facilitate the process, faculty members should provide CURF with the InfoEd PPN number related to the proposal, a brief definition of any Background IP that is being brought to the project, and the contact information for the company that they are working with.  PIs should note that Clemson has modified the standard agency templates regarding IP Allocation in order to comply with South Carolina state law and CURF licensing practices.  If a collaborating company provides its own template IP agreement, PIs should convey the fact that Clemson may need to utilize its own preferred template as a starting point.  

If you have any questions please utilize our intake form and your inquiry will be routed to the appropriate team member for follow-up and further discussion.



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