It is generally INVO’s preference that the Invention Manager work with the founder to create an option agreement in lieu of a license for the technology at the outset. An option is fast and less expensive. In addition, it gives the founder more time to meet the conditions necessary to execute a license.
For startups in which Northwestern faculty, students or staff are considered to be founders, INVO will grant an exclusive option for 6 months at no charge to the startup, assuming there are not multiple potential licensees competing for the technology. The optionee, in this case, can extend the option for another 6 months by paying an agreed upon fee. Other conditions that may have to be met to extend the option include bona fide fundraising effort, finding an interim CEO and/or completion of a business plan.
For startups in which Northwestern faculty, students or staff are not considered to be founders, the cost for the option must be negotiated with the INVO Invention Manager.
Legal fees for patent prosecution are typically deferred during the option period. Though, licensee agrees to reimburse INVO for such legal costs upon license execution. If for some reason, extraordinary legal expenses have been accrued during patent prosecution, a reimbursement plan will be established to help the startup.
If the founder cannot meet the conditions, the technology has been tied up only for the duration of the option. The optionee has an exclusive right to license the technology as long as the agreed upon conditions are met before the license option expires.
A license agreement is associated with an invention(s) that have been disclosed to INVO. We negotiate the terms of the license with the potential licensee, often with input from the inventors. Template license agreements for both therapeutic licenses and digital licenses can be downloaded from the Forms section of this website.
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 Licensing in INVO.
Industry Sponsored Research Agreements
The Office for Sponsored Research (OSR) is responsible for executing the Industry Sponsored Research Agreements. These agreements are forwarded to us by OSR when the intellectual property terms of the agreement encumber the principal investigator's (PI) prior intellectual property or unduly restrict the future intellectual property.
We review the agreements on behalf of OSR at their request to ensure protection of intellectual property rights and that there are no conflicts with any existing commitment to third parties. If the PI's earlier inventions are licensed or are otherwise obligated to some degree to a third party and the subject matter of the inventions overlap with the scope of the work anticipated under the agreement, the intellectual property terms may need to be modified to eliminate conflict among Northwestern’s obligations. We encourage PIs to engage in direct dialogue with our staff under those circumstances.
If an invention stems from corporate-sponsored research, the PI is responsible for disclosing the invention to us in compliance with Northwestern's Patent and Invention Policy. We 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 agreeements generally are negotiated and executed by INVO.
NVO believes that innovation occurs at the intersection of disciplines and institutions. Collaborations with government and industry are essential ingredients to the creation of new knowledge and entrepreneurship. INVO encourages research collaborations with industry. INVO initiates interactions, nurture relationships and negotiations with industry on behalf of Northwestern's inventions and inventors.
Agreements could involve research, co-development or licensing terms. They might or might not involve financial terms. INVO's key guiding principle in negotiating agreements is to ensure that Northwestern’s teaching, research and public impact mission as well as its values and interests are maximized.
Specifically, INVO looks for assurances that:
- All reasonable efforts are made towards moving technologies to the market and make the research and innovations available to the public;
- Northwestern's academic freedom, scientific integrity, the pursuit of knowledge and open exchange of ideas and information are protected. We are particularly watchful for any restriction that could limit the right of faculty to publish or present the results of research; and
- Northwestern will be provided a fair return if the product is successful in the marketplace.
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 us. The novelty criteria of patentability require that an invention has not previously been made available to the public, where the public constitutes even one individual or group of individuals. Any disclosure prior to filing of patent applications negates the novelty criteria. 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.
We work with the PI to ensure that a CDA is executed appropriately to protect proprietary information associated with an invention. Please contact firstname.lastname@example.org before entering into discussions about your unpublished information with a commercial entity or its scientists or employees.
Material Evaluation Agreements
Material Evaluation Agreements (MEA) usually come to play when companies express interest in testing or evaluating novel materials for their specific purposes. Please contact email@example.com 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 render additional restrictions
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 party's contact information to firstname.lastname@example.org. If you have received a Collaboration Agreement from an outside organization, please send it to email@example.com. Once the terms of the agreement are final, we 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 PI.
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 us, even if the other institution offers to handle the invention.
At the request of a faculty member, we will review and provide comment and advice on the intellectual property clauses of individual consulting agreements. Our services in this regard are purely consultative.
MTA, CDA, or Collaboration Agreements 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. If any changes have occurred, please contact firstname.lastname@example.org.