AGREEMENTS

Option and License Agreements

These agreements are associated with inventions disclosed to TTP. The terms of the license are negotiated by TTP with the potential licensee, often with input from the inventors. Before execution of the License Agreement, a draft copy of the agreement is made available to the principal inventor upon request. The License Agreement will be attested by the University's General Counsel and executed by the Executive Director of the Technology Transfer Program.

Industry Sponsored Research Agreements

OSR is responsible for executing the Industry Sponsored Research Agreements. These agreements are forwarded to TTP by the Office of Sponsored Research (OSR) when the Intellectual Property terms of the agreement encumber prior intellectual property of the PI or unduly restrict the future intellectual property.

TTP reviews the agreements on behalf of OSR when requested by OSR, to ensure protection of intellectual property rights, and that there are no conflicts with any existing commitment to third parties. If earlier inventions of the PI are licensed or are otherwise obligated to some degree to a third party, and the subject matter of the inventions overlap with the work scope anticipated under the agreement, the intellectual property terms may need to be modified to eliminate conflict among Northwestern’s obligations. TTP encourages PIs to engage in direct dialogue with TTP personnel under those circumstances.

If an invention stems from corporate-sponsored research, the PI is responsible for disclosing the invention to TTP in compliance with Northwestern's Patent and Invention Policy. TTP will send a copy of the invention disclosure to the sponsor promptly upon receipt and follow-up with patent filings, as appropriate.

Corporate Collaborative Agreements

There are a variety of corporate service agreements, including but not limited to a fee for a service provided by a company, a fee for materials received by the company for research and evaluation, and pilot projects of short duration (less than 10 weeks). These agreeemnts are generally negotiated and executed by TTP.

Confidential Disclosure Agreement (CDA)
(EXCEPT THOSE RELATED TO OR RELEVANT FOR CLINICAL TRIALS)

A Confidential Disclosure Agreement (also known as a Non-Disclosure Agreement or a Proprietary Information Exchange Agreement) is necessary when unpatented or unpublished ideas or data have to be disclosed to another party who must maintain such information confidential. CDAs are legally binding documents that enable the exchange of information that is not yet in the public domain.

CDAs are generally signed to protect inventions disclosed to TTP. The novelty criteria of patentability requires that an invention has not previously been made available to the public, where public constitutes even one individual or group of individuals. Any disclosure prior to filing of patent applications negates the novelty criteria. Whereas, disclosing novel ideas or data prior to patent filing under a CDA preserves the novelty, hence there is no loss of patentability. Therefore, it is critically important to consider CDAs before approaching companies or individuals for developing novel ideas.

TTP works with the principal investigator (PI) to ensure that a CDA is executed appropriately to protect proprietary information associated with an invention. Please contact beckyc@northwestern.edu before entering into discussions about your unpublished information with a commercial entity or its scientists or employees.

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Material Evaluation Agreements

Material Evaluation Agreements usually come in to play when companies express interest in testing or evaluating the novel materials for their specific purposes. Please contact beckyc@northwestern.edu to discuss the potential need for an MEA. These agreements, in addition to providing confidentiality terms, protect the novel material, define the tasks to be performed, ensure the sharing of the evaluation results with Northwestern, and renders additional restrictions as appropriate.

Collaboration Agreements

In a Collaboration Agreement, both parties agree to contribute resources, such as, materials, equipment, personnel, or specialized expertise to the project and work together to find an answer to a particular research inquiry. If collaboration is anticipated for which an agreement needs to be signed by both parties, please submit a statement of work/protocol along with the other parties contact information to beckyc@northwestern.edu. If you have received a Collaboration Agreement from an outside organization, please send it to beckyc@northwestern.edu. Once the terms of the agreement are final, TTP will sign on behalf of the University and send one fully executed agreement to the collaborator’s organization. A copy will be sent to the Principal Investigator.

Inter-Institutional Agreements

An Inter-Institutional Agreement is necessary when an invention is made jointly between researchers at Northwestern and another institution. The intent of this agreement is to coordinate the filing and prosecution of patent application(s), the marketing of the technology to potential licensees, and how the legal expenses and license revenue will be shared among the institutions that asserts the ownership rights to the joint inventions. This agreement generally assigns the patent and licensing responsibility to one institution. If a joint invention is made with a commercial entity the possibility of licensing the university's rights to the commercial joint owner shall be explored.

All joint inventions must be disclosed to TTP, even if the other institution offers to handle the invention.

Consulting Agreements

At the request of a faculty member, TTP will review and provide comment and advice on the intellectual property clauses of individual consulting agreements. TTP's services in this regard are purely consultative.

Amendments

MTA, CDA, or Collaboration Agreement may require amending if there are changes to the research project such as a new PI, a revised statement of work, or a change in performance period. Please contact beckyc@northwestern.edu if any changes have occurred.

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