LTARE Research IP

a) Operating Principles: Each Inventing Member, acting reasonably and in good faith, shall have the sole discretion to seek patent or copyright protection on its Program IP. Any Inventing Members filing patent applications on their Program IP are responsible for their respective patent costs. Inventing Members of jointly owned Program IP may appoint a single Member to manage and facilitate the licensing, filing, prosecution, and maintenance of jointly owned patents and copyrights on Program IP. In the case of a jointly owned patent or copyright on Program IP, the out-of-pocket costs associated with its protection will be treated in accordance with any Inter-Institutional Agreement (“IIA”) executed under Section (g), below.  

b) Background IP: Ownership of Background IP shall remain unaffected by this IP Management Plan. Each Member shall retain all right, title, and interest in its Background IP, except to the extent such rights are expressly licensed by one Member to another. Each Member shall have the sole discretion as to whether or not to provide a license to its Background IP in the WaSHI. Nevertheless, prior to the commencement of a project funded through the WaSHI, each Member shall act reasonably and in good faith to notify WaSHI of the existence of its Background IP; however, Members will have no obligation to perform or conduct IP searches. Members are not required to disclose provisional patent applications while the Member reasonably believes there is a possibility the subject matter of the provisional patent application filing may be treated as a trade secret and patent protection may not be pursued. Any license to Background IP shall require the written agreement between the owning Member and the licensee. Members who have no need to access or license another Member’s Background IP for work in the WaSHI will not be required or permitted to receive such Background IP. No Member or the U.S. Government shall acquire any right, title, or interest in any other Member’s Background IP without that Members’ written agreement. 

c) Program IP: Each Member shall require its WaSHI Researcher(s) to assign WaSHI IP to that Member and, in the case of potentially patentable inventions, such assignment of Program IP will be a present grant assignment. Such WaSHI Researcher may be an employee, contractor, or otherwise an agent of the Member. Any WaSHI Researcher(s) already having a written agreement requiring the assignment of IP to the Member will not be required to enter into another written agreement solely for the WaSHI.  

d) Protecting Program IP: Inventing Members may elect and file patent applications consistent with (i) the terms of the funding agreement for their project; and (ii) other agreement such as Collaborative or Sponsored Research Agreements; on any Program IP for which they seek intellectual property protection at their discretion. Upon such filing, the Inventing Member(s) shall send at their discretion, either a copy of the patent applications or a high-level summary of the Program IP to the WaSHI Administration Team. Within 10 business days, the WaSHI Administration Team will disseminate notice to all Members of the existence of such Program IP, including the name(s) of the Inventing Member(s) and the title and/or high-level summary of the WaSHI IP. Such dissemination will be subject to a Non-Disclosure Agreement unless the Inventing Member(s) expressly provide(s) otherwise by written documentation. In the event an Inventing Member decides not to file, prosecute, or maintain Program IP, such Inventing Member shall notify the WaSHI Administration Team in a timely manner to provide, if allowed by the funding agreement or law, other Members, including co-Inventing Members the opportunity to assume responsibility for filing, prosecuting or maintaining WaSHI IP which shall be pursued in the name of the Inventing Member(s).  

e) Governing Law: Ownership of any Program IP shall be determined in accordance with applicable state and federal law and as prescribed in any subaward between Members. Any assignment of rights between an inventor, author or other individual involved in the creation of Program IP and the Member who sponsors or employs him or her shall be governed by the law and policies applicable to the sponsoring or employing Member. The Bayh-Dole Act, 35 U.S.C. § 200 et seq., requires that Universities, non-profit institutions, and small businesses who are participating under a funding agreement (as defined in the Bayh-Dole Act) will have the option to retain title to their own employees’ inventions.  

f) Reserved Federal Rights: The Members acknowledge that the U.S. Government will have certain statutory rights in an invention that is conceived or first actually reduced to practice under WaSHI Funding. In accordance with 42 U.S.C. § 5908, and except otherwise agreed by USDA or NSF, title to such inventions vest in the United States, except where 35 U.S.C. § 202 provides otherwise for nonprofit organizations or small business firms.  

g) Inter-Institutional Agreements: For Program IP that is jointly developed by more than one Member, and therefore jointly owned by more than one Member, the Members recognize that they may need to enter into separate IIA with each other to address IP management details such as who the lead institution will be for licensing, prosecuting a resultant patent application, as well as how the patenting costs and maintenance fees will be handled. The terms and conditions of IIAs shall adhere to all applicable laws and regulations, as required.