Agreements

The Office of Technology Transfer reviews various agreements that relates to intellectual property. Below are the common types of agreements that the office reviews and negotiates.

Nondisclosure Agreements (NDA)

An NDA is a legal contract between two or more parties outlining how the parties wish to share confidential/proprietary information with one another while excluding others.

The purpose of this agreement is for University researchers to provide and/or receive confidential information from an external entity. This is helpful especially if the discussion relates to inventions that have not been published or patented. A copy of our nondisclosure agreement template can be downloaded from the Forms and Policies page.

Material Transfer Agreements (MTA)

A  MTA is a research contract between a provider and recipient for the transfer of materials in which the recipient agrees to abide by a set of restrictions set forth by the provider.

The purpose of this agreement is for sending research material to, or receiving research material from, an external entity. With academic institutions, we typically utilize the Uniform Biological Material Transfer Agreement (UBMTA) developed by the National Institutes of Health (NIH). It is important for Wright State researchers to contact us before sending out any material so that we can protect any intellectual property in the material and the receiving party is held responsible for what they do with the materials. In addition, Environmental Health and Safety should be contacted before sending out any materials regarding compliance needed to be followed in sending out materials from the University.

Sponsored Research Agreements (SRA)

A SRA is a contract commonly used by a non-federal sponsor for the purposes of funding research at the university.

The Office of Technology Transfer works closely with the Office of Research and Sponsored Programs (RSP) in reviewing and negotiating sponsored research agreements. If there is any deviation from our standard intellectual property language, then our office is consulted to help negotiate and protect University’s Intellectual Property. A copy of our sponsored research agreement template can be downloaded from RSP’s website.

Allocation of Rights: Small Business Innovation Research (SBIR) & Small Business Technology Transfer (STTR)

SBIR and STTR are programs offered by the federal government to encourage the growth in an infant industry; these programs come attached with federal guidelines regarding intellectual property rights also referred to as allocation or rights. 

The purpose of this agreement is for the industry prime contractor and the University to understand each other’s intellectual property (IP) obligation and rights. The various agencies have published templates on this type of agreements. The agreement will list background/existing IP rights of the parties that will be used in the SBIR/STTR project, and how the parties will decide to divide the rights and obligations of any new IP that is created or developed under the project.

License Agreements

A licensing agreement provides a company or an entrepreneur the opportunity to commercialize on the technologies developed at the university. An End User License Agreement (EULA) is commonly utilized for software inventions to directly allow customers (end users) to use the software under specific terms and conditions.

The purpose of this agreement is to license University’s intellectual property to external entities. Typically, this is used to allow a company to further develop and commercialize an invention.

The following are some terms that will often be discussed with a company that is interested in taking a license to commercialize our technologies:

  1. Field(s) of use/applications
  2. Exclusivity
  3. Duration
  4. Licensing fees and royalties
    1. Upfront fees
    2. Annual fees
    3. Royalties
    4. Equity
  5. Sublicensing rights and fees
  6. Diligence milestones (from the business plan)
    1. Create a prototype by a certain date
    2. Finish testing by a certain date
    3. Make sells by a certain date
    4. Funding and management
    5. Updates on business plan