When is it appropriate for license rights to future federally assisted inventions to be committed to an industrial sponsor?
When both federal and industrial funding support a research program, it is appropriate to grant an industrial sponsor the right to receive licenses to subsequent inventions. The regulations implementing the Bayh-Dole Act specifically recognize this possibility. It is also possible for two separate research projects to contribute to a single invention. If one project is sponsored by industry and one by the federal government, the industrial sponsor can be given rights to the invention. It is, however, considered inappropriate to grant an industrial sponsor the right to exclusive licenses to future federally assisted inventions which result from research that the company does not fund. Perhaps the most fundamental boundary is that universities should not grant to a single industrial sponsor the rights to federally assisted inventions from the entire institution or major units such as departments, centers and laboratories. The granting of rights must be specific to the scope of work funde
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