Standard UC Patent Rights Clause

The examples below reflect preferred language to be used in research agreements with industrial sponsors

Full Cost--Exclusive License

All rights to inventions or discoveries arising from research conducted under this Agreement shall belong to University and shall be disposed of in accordance with University policy. To the extent University has the legal right to do so and to the extent that Sponsor pays all direct and indirect costs of the research project, including a proportionate share of the Principal Investigator's salary, Sponsor, in accordance with the provisions of the following paragraph, shall be given a time-limited first right to negotiate an exclusive, royalty-bearing license to make, use, and sell any patentable inventions conceived and first actually reduced to practice in the performance of research under this Agreement.

University shall promptly disclose to Sponsor any such invention arising under this Agreement. Sponsor shall hold such disclosure on a confidential basis and will not disclose the information to any third party without consent of University. Sponsor shall advise University in writing within sixty (60) days of disclosure to Sponsor whether or not it wishes to secure a commercial license. If Sponsor elects to secure a license, Sponsor shall assume all costs associated with securing and maintaining patent protection for invention, whether or not Letters Patent issue. Sponsor shall have ninety (90) days from the date of election to conclude a license or option agreement with University. Said license shall contain reasonable terms and shall require diligent performance by Sponsor for the timely commercial development and early marketing of such inventions, and include Sponsor's continuing obligation to pay patent costs. If such agreement is not concluded in said period, University shall have no further obligations to sponsor.

Less than Full Cost --Non-Exclusive License

All rights to inventions or discoveries arising from research conducted under this Agreement shall belong to University and shall be disposed of in accordance with University policy. To the extent University has the legal right to do so, University shall offer to Sponsor, in accordance with the provisions of the following paragraph, a time-limited right to negotiate a non-exclusive, royalty-bearing license to make, use, and sell any patentable inventions conceived and first actually reduced to practice in the performance of research under this Agreement.

University shall promptly disclose to Sponsor any such inventions arising under this Agreement. Sponsor shall hold such disclosure on a confidential basis and will not disclose the information to any third party without consent of University. Sponsor shall advise University in writing within sixty (60) days of disclosure to Sponsor whether or not it wishes to secure a commercial license. If Sponsor elects to secure a license, Sponsor shall assume costs, to be negotiated at the time of election, associated with securing and maintaining patent protection for such invention, whether or not Letters Patent issue. Sponsor shall have ninety (90) days from the date of election to conclude a license or option agreement with University. Said license shall contain reasonable terms and shall require diligent performance by Sponsor for the timely commercial development and early marketing of such inventions, and include Sponsor's continuing obligation to pay certain patent costs. If such agreement is not concluded in said period, University shall have no further obligations to sponsor.