As researchers work through the stages of the IDEA Center process, questions surrounding collaboration, licensing, and variations in IP protection inevitably arise. Therefore, it is critical to have a rigorous understanding of the applicable policies and legal structures surrounding technology commercialization.
Researchers may incorporate material or intellectual property from others in their original works. If they choose to do so, it is important to carefully document the date and conditions of use so the IDEA Center can determine if this use could influence the commercial potential of the subsequent research results. If researchers wish to obtain materials from outside collaborators, they should complete an incoming material transfer agreement (MTA) beforehand.
Material, research tools, and intellectual property may also be shared with others to further the research goals. The University understands that many areas of research require researchers to openly share their results with others in order for the overall research area to progress, and has no desire for the intellectual property policies to stand in the way of performing quality research. If researchers intend to send materials to an outside collaborator, an outgoing material transfer agreement (MTA) should be completed. In certain cases, it may also be necessary to have a confidential disclosure agreement completed to protect research results or intellectual property.
Researchers will be able to publish the results of their research, but all parties involved should understand the varied landscape of global intellectual property protection before pursuing publication. There are significant differences between the United States and other countries as to how early publication affects a potential patent. Whenever public disclosure occurs, the inventor loses worldwide patent rights for said invention. Additionally, there is only a one-year window afterwards to obtain patent protection in the United States. As such, inventors should submit an invention disclosure form well before any public communication or disclosure takes place. Whenever possible, researchers should contact the IDEA Center prior to public disclosure to ensure their work is appropriately protected.
If researchers choose to utilize sponsors to further their work, they should specify the intellectual property rights of the sponsor in the research or grant agreement. These rights differ between private actors and public agents. In the case of the United States government and agencies such as NIH and NSF, the government maintains nonrevocable and nonexclusive license to use the technology. For commercially sponsored research, the University of Notre Dame retains ownership of the patent rights and other intellectual property resulting from the sponsored research. However, the sponsor may have rights to obtain a license to the intellectual property arising from the research. Sponsored research contracts often allow the sponsor a limited time to negotiate a license for any patent or intellectual property rights developed as a result of the research. Even so, the sponsor generally will not have contractual rights to discoveries that are clearly outside the scope of the research, nor will they have rights to discoveries that do not use funds from the research agreement. Therefore, it is important to define the scope of work within a research agreement. If researchers find this territory ambiguous, they should reach out directly to Notre Dame Research to discuss sponsored research agreements in greater detail.
Faculty and staff are often approached with opportunities to enter into consulting agreements with external parties, and the University does not wish to encroach upon such opportunities. While the IDEA Center does not negotiate consulting agreements, it does provide guidelines for faculty to better understand the process. Researchers who enter into consulting agreements should familiarize themselves with the Notre Dame policies relevant to consulting activities, as they remain bound by all University policies and procedures regarding the disclosure and ownership of potential IP. In this regard, the researcher is expected to ensure that the terms of the consulting arrangement are consistent with the University’s policies, including those related to IP use and ownership as well as employment responsibilities. the IDEA Center is available to provide informal advice on how consulting agreements relate to the University’s intellectual property that researchers contributed to.