Patent & Intellectual Property Policy
The following agreement shall govern the relationship of the BrightFocus Foundation ("BrightFocus") to Patent and Intellectual Property interests arising from research conducted under the following award:
- All potentially patentable inventions or other intellectual properties that result from support, in whole or in part, of research, training grants or awards from BrightFocus (hereinafter called the "Properties") must be reported to BrightFocus at the earliest possible time by the Grantee institution. The Grantee institution agrees to notify BrightFocus immediately of any decision to apply for letters of patent or other legal protection for the Properties. The Grantee institution further agrees to seriously consider, in good faith, any comments, suggestions or objections that BrightFocus may have concerning such applications. BrightFocus agrees to keep all information provided by the Grantee institution confidential and to not release any information relating to such inventions, intellectual property or applications for protection to any third party, except as specifically set forth below. All patenting expenses or costs associated with the protection of other intellectual property shall be borne solely by the Grantee institution.
- Title to all Properties will reside in the Grantee institution to the extent that such title is claimed by the institution under its Patent Policies and Procedures. The Patent Policy and Procedures shall be provided to BrightFocus prior to the Grant award and shall indicate the circumstances when Properties are owned by the Grantee institution or the Principal Investigator. If a Grantee institution has no established Patent Policy or Procedure concerning inventions or intellectual property, or if the institutional Patent Policy or Procedure does not claim rights for the institution or individual inventor, then BrightFocus shall have the right to determine the disposition of rights in the Properties subject to the provisions set forth below, and, in consultation with the Grantee institution, to take any steps it deems necessary to protect legal rights in the Properties.
- No patent, patent application or other type of protection for the Properties shall be abandoned without first notifying BrightFocus. Abandonment shall be defined as failure of the Grantee Institution to show evidence of prosecution or application for such protections within a period not to exceed three (3) years from the date of first notification to BrightFocus obligated by the provisions of Paragraph 1. At such time, the Grantee institution shall give BrightFocus reasonable opportunity to take title to the Properties without royalties or other fees and/or to take any steps necessary to establish or maintain legal protection for the Properties.
- Any income from the licensing or other exploitation of the Properties in whatever form, whether by the Grantee Institution itself or an outside third-party, including equity distributions, intangible interests, or exchanges for items or services of value, shall be distributed in accordance with the policies of the Grantee institution. If the Grantee institution's licensing fees, royalties, or net profits from the exploitation of the Properties exceeds one-hundred thousand dollars ($100,000), then BrightFocus is to receive an interest in the revenues related to BrightFocus' proportion of support for the research leading to the creation of such licensed Properties. The proportion and amount of income to be distributed to BrightFocus will be calculated according to the formula described in appendix A.
- Notwithstanding any of the foregoing, if any Properties result from work supported jointly by BrightFocus and any agency or department of the United States Government, BrightFocus recognizes the licensing requirements imposed on the Properties from the Bayh Dole Act of 1980 and may, in its sole discretion, defer to the Patent Policy or Procedure of the Government agency or department upon receipt of a written statement notifying BrightFocus of the agency or department's position with respect to the Properties in question.
- In the event any Properties result from work supported jointly by BrightFocus and another organization which is not an agency or department of the United States Government, the Grantee institution must ensure that joint royalty and revenue shares due to multiple sponsors do not conflict with the revenue sharing rights of BrightFocus as outlined in this Patent and Intellectual Property Policy.
- The Grantee institution agrees that if it licenses the Properties, it will obligate the licensees as follows: The licensee shall agree to exert its best efforts to commercialize, or cause to be commercialized, the Properties as rapidly as practical, consistent with sound and reasonable business practices and judgment. In the event the licensee has failed to commercialize the Properties within a three-year period, the Grantee institution, upon conferring with BrightFocus, shall have the right to convert an exclusive license to a non-exclusive license or terminate an existing non-exclusive license with such licensee.If the licensee or Grantee institution has an ongoing and active research, development, manufacturing, marketing or licensing program appropriately directed toward the production and sale of the Properties, then this would be deemed to be sufficient evidence that the licensee or Grantee institution has commercialized the Properties.
- BrightFocus reserves the right to review any executed or finalized license agreement for commercialization of the Properties, within a reasonable time after their execution, if BrightFocus' percentage of the total direct research cost (not including any attributable facilities and administrative cost percentages) exceeds 5% of these costs.
- BrightFocus reserves the right to public acknowledgement for its role in creating any Properties that result from research that BrightFocus has supported. However, BrightFocus' name and logo may not be used in association with any Properties without the prior written approval of BrightFocus.
- BrightFocus may use the Properties without payment of royalties or license fees, so long as such use is solely for its own intramural or noncommercial purposes or for public education purposes, and has not been reasonably designated as confidential or trade secret provided, however, that BrightFocus shall not use the Properties to benefit any of its other Grantee institutions.
Determination of Fraction of Profit due to the BrightFocus Foundation, following receipt of profits in excess of US$100,000.00 by Grantee Institution
The following equation determines the non-zero number between zero (0) and one (1) that represents the fraction of any revenue profit earned through commercialization of the Properties that BrightFocus would receive under the Patent and Intellectual Property Agreement. This equation acknowledges the relative contribution of BrightFocus towards the development of the Properties, while also taking into consideration that the total cost of development of said properties including facility and administrative costs provided by the institution. The indirect costs are accounted for by the addition of a percentage of the total direct costs to the denominator of the equation.
Fraction of Profit Owed to BrightFocus:
- GV = Total BrightFocus "Grant Value" (in U.S. dollars) provided to the Grantee institution for discrete and discernible direct costs of research leading to development of the Properties.
- DCTOTAL = Total research "Direct Costs" incurred by the Grantee Institution that can be specifically identified as related to the scientific development of the Properties. This value should be expressed in U.S. dollars.
- FA = "Facilities and Administrative" costs expressed as a percentage divided by 100 (e.g., 0.40 rather than 40%). For Grantee Institutions that have negotiated with the U.S. federal government to agree upon a predetermined rate for "indirect costs" under Public Law 87 638 (76 Stat. 437) or Office of Management and Budget Circular A-21, BrightFocus will accept this predetermined rate as the FA value in the above equation. This predetermined rate shall be the rate effective as of the start date of the BrightFocus award, and will not be accepted without documentation of the agreement provided as a separate appendix to this agreement including a cover letter explicitly listing the relevant rate. For organizations that have negotiated multiple rates with the Federal Government, BrightFocus will accept the predetermined rate under which the Facilities and Administrative costs are calculated for the National Institutes of Health Exploratory/Developmental Research Grants (R21). Grantee Institutions that have not negotiated such rates shall use 0.40 as the value for FA.
Thus, the fraction of the total revenue that BrightFocus is to receive from the commercialization of the Properties is equal to the total BrightFocus Grant Value provided to the Grantee Institution for the research leading to the development of the Properties over the sum of the Direct Costs plus the Direct Costs multiplied by the fraction of Facilities and Administrative costs.
Last Review: 04/29/13