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Industry Relations

Iowa State University

Patentable Invention and Software Assignment Guidelines

www.industry.iastate.edu/flexiblesolutions

Iowa State University has a rich history of interacting with industry across a wide range of activities. One important activity is sponsored research. The traditional method of engaging industry in sponsored research includes negotiating a contract where Iowa State maintains ownership of intellectual property that it develops, regardless of the funding source. The following sets forth the guidelines under which Iowa State will consider assigning patentable inventions and software (the intellectual property) to an industry sponsor, under a sponsored research agreement.

When the requirements described below are met, including consideration of the potential impact on future research and publication, and upon Iowa State's principal investigator's consent, Iowa State will assign the intellectual property to an industry sponsor in exchange for an additional 75% of the total cost of the research project (assignment fee).

  1. Assignment Eligibility Requirements
    1. Cost of Research
      1. Full Costs. Industry sponsor must pay the full direct and indirect cost of research, including but not limited to, faculty/staff salaries and benefits; graduate student stipend, benefits, and tuition; external rates for instrumentation and facilities; supplies; travel for PIs and graduate students; and new equipment required for the project.
      2. Co-mingling of Funds. There can be no co-mingling of funds from sources other than the industry sponsor, including but not limited to federal, state, commodity and industry sources.
    2. Subcontracts. Subcontracts and subawards must not be included in the project.
    3. Start of Research. The research may not be started prior to the full signing of all relevant documents.
    4. National Laboratories and Federal Employees. Research must not be performed in any federal facilities (such as Ames Laboratory), or include participation by employees of a national laboratory or other federal agency such as the Agricultural Research Service. This is not allowed because any intellectual property would be at least partially owned by the federal government.
    5. Conflict of Interest. If a researcher has an equity interest and/or management role in the sponsor, the project is not eligible for assignment.
  2. Intellectual Property Assignment
    1. IP Assignment Request Form. An ISU principal investigator who wants a fully-funded sponsored research project considered for intellectual property assignment should contact the Industry Contracts Team within OIPTT (industry-contracts@iastate.edu).
    2. Review by Industry Contracts Team. The Industry Contracts Team will evaluate the project for compliance with the requirements of these guidelines, consult other university administrators as appropriate, and inform the principal investigator if the request meets the requirements.
    3. IP Acknowledgement and Assignment Agreement. The principal investigator shall provide to the Industry Contracts Team a fully-signed Intellectual Property Acknowledgement and Assignment Agreement. Each ISU individual participating on the project must sign this agreement before starting work on the project.
    4. Future Project Staffing. No additional PIs, staff, students or third parties may be engaged once the project has started without prior review by the Industry Contracts Team.
    5. Assignment Fee. An Assignment fee of 75% will be applied to the total project cost (direct + indirect). The assignment charge will be considered royalty income and distrubted one-third to the Principal Investigator(s) ("PI") incentive account(s), one-third to the college or administrative unit (to be inclusive of centers and institutes) with the distribution to be agreed upon between the college and administrative unit(s), and one-third to ISURF.
    6. Payment Timing. The industry sponsor shall pay the assignment fees at the start of the project.

Please contact the OIPTT Industry Contracts Team (industry-contracts@iastate.edu) if you have any questions.