- CMU Foreground
- Company Foreground
- Joint Foreground
- Background IP
- Licensing Options
- IP Protections
- Fundamental Research/Export Control
- No Warranty
- Use of Names
|SUBJECT||CARNEGIE MELLON TERMS|
|Term||TBD depending on project|
CMU typically works under cost-reimbursable terms with consent required from the Company before exceeding certain budget cap. Fixed price agreements are also theoretically possible depending on the project and the agreement of the department and individuals involved.
|CMU Foreground - Ownership of IP developed solely by CMU under agreement
CMU owns (the University cannot do work-for-hire). CMU immediately grants to Company a non-exclusive, non-commercial, internal evaluation license. Company will have commercial licensing options (see licensing section below).
|Company Foreground - Ownership of IP developed solely by Company under agreement
Company owns. Company immediately grants to CMU a non-exclusive, non-commercial, internal license to use for academic/research/administrative purposes.
|Joint Foreground - Ownership of IP jointly developed by Company and CMU
Jointly owned—either party can use without consent of the other and without accounting to the other. Assumes Company is not making use of any CMU facilities financed using tax-exempt bonds (we’re not permitted to allow private parties to create and own IP in our tax-exempt-bond financed facilities).
|Background IP - Ownership/use of IP developed prior to or outside scope of agreement||
Each party retains ownership to its Background IP. If Company would like to license any CMU-owned Background IP, it can request to negotiate a license. If available for licensing, the IP would be licensed out at fair market value (FMV) under a separate license agreement.
Confidential information that is marked/designated would be protected for period of 2 years following end of the term of the agreement.
Within 180 days after CMU notifies Company of any disclosures of CMU Foreground or Joint Foreground, Company can let CMU know if Company would like to negotiate an exclusive or a non-exclusive license to the IP listed in the disclosure notification (of course, no non-exclusive license needed for Joint Foreground). CMU would not negotiate with others during this 180-day period.
Unless otherwise negotiated per the guidelines below, any licenses would be granted under a separate license agreement, with license fees/royalties set at FMV at the time of the licenses.
Because of CMU’s use of tax-exempt bond financing, the only mechanisms for determining license fees in advance are described in the alternates listed below (provided that the personnel working on the project would agree to accept the project with these terms—CMU could not force certain faculty to work under these terms, as they would limit their opportunity to share in licensing proceeds as contemplated under CMU’s policies. These alternatives are listed for discussion purposes because they are legally feasible for CMU. As stated above, once we discuss and understand what Company would like, we would need to touch base with our relevant faculty):
Alternate #1: Company agrees that all IP coming out of the project belongs to CMU (even any Company Foreground or Joint Foreground). CMU could then agree to grant Company a non-exclusive license at $X, with the value of “X” pre-set by the parties (where “X” can be any agreed-upon amount, including $0). Any other parties wanting a non-exclusive license would need to pay FMV at the time of the license. Company could also negotiate an exclusive instead, but that would need to be FMV at the time of the license and the cost could not be pre-determined.
Alternate #2: CMU could agree to grant Company a non-exclusive license at $X, with the value of “X” pre-set by the parties (where “X” can be any agreed-upon amount, including $0). Any other parties wanting a non-exclusive would then also pay $X. Company could let CMU within the 180 day period that Company would like an exclusive license instead (FMV at the time of the license). If Company decides to take a non-exclusive at $X, Company could always come back later, and if there have not been any other non-exclusive licenses granted by CMU by that time, Company could ask to “upgrade” its non-exclusive to an exclusive by paying FMV at that time.
Under any commercial license obtained by Company, it would be required to pay money for patent or other IP protections (50% for a non-exclusive, and 100% for an exclusive). Independent of a license, Company could ask CMU to file IP protections on any CMU Foreground in any country at Company’s expense. Either party could file IP protections on Joint Foreground, provided that title to the patents, etc. remain in both parties' names. Contemplated that the parties split IP protection costs on joint filings, BUT a party could elect not to contribute initially and then reimburse the paying party for half the costs at the time the non-paying party decided to license out/use the Joint Foreground for commercial gain.
|Fundamental Research/Export Control||
CMU expects its work product to be fundamental research. CMU would not restrict participation by nationality. Company would not pass any export controlled materials to CMU without letting CMU know and discussing arrangements.
Like other universities, CMU does its research on an AS-IS basis and does not offer warranties.
Because CMU is a private, non-profit and cannot afford to handle claims arising out of its sponsors’ use of IP created at CMU, CMU requires indemnification from its sponsors. Company would indemnify CMU for any claims arising out of Company’s exercise of licenses granted to it by CMU under the agreement.
For a period of 2 years following the end of the agreement, CMU will provide Company 30 day pre-publication review to flag any Company confidential info or IP to be patented. If Company wants to have patents filed, CMU delays publication for up to another 60 days to get patent applications filed. Publication review/delay provision would not include pre-review or delays on student theses/dissertations.
Either party could terminate the agreement on 60 days’ advance notice. CMU would be paid for work performed & non-cancelable commitments made through termination. Provided CMU is paid for its work, CMU would pass along any work completed to that point and Company would have the licenses/options to them as described in the agreement.
Except for CMU acknowledging Company’s funding in publications, etc., neither party would use the name or trademarks of the other party or any member of its staff in sales promotion work, advertising or other publicity without consent.