Current through Reg. 49, No. 12; March 22, 2024
(a) To
the extent that there is a conflict between this chapter and the Grant Contract
between the Institute and the Grant Recipient, the Grant Contract terms will
control.
(b) The Grant Recipient
may retain, assign or transfer all or a portion of any of the Intellectual
Property Rights relating to the project results. Any such assignment or
transfer to a third party is subject to the following requirements:
(1) The Grant Recipient shall notify the
Institute of the proposed transfer or assignment;
(2) The Grant Recipient shall ensure that the
assignment or transfer is subject to the licenses, interests and other rights
provided to the Institute pursuant to the Grant Contract and any applicable law
or regulation; and
(3) Unless the
transfer is taking place pursuant to an exercise of the United States
government's rights under
35 U.S.C. §
203, the Institute may provide comments to
the Grant Recipient related to the proposed transfer or assignment of rights,
which the Grant Recipient shall consider in good faith and use reasonable
efforts to account for and incorporate such comments into the actual transfer
or assignment of such rights.
(c) Unless specifically authorized by the
Institute, Grant Award proceeds shall not be used to pay the costs or expenses
associated with the efforts to protect the Intellectual Property
Rights.
(d) As a condition of
accepting Grant Award funding from the Institute, the Grant Recipient agrees to
the following required commitments as defined in the Grant Contract with regard
to any project results:
(1) To use
commercially reasonable efforts to protect, develop, commercialize, or
otherwise bring Project Results to practical application to the fullest extent
feasible as determined by the Grant Recipient. The Grant Recipient is relieved
of its obligations pursuant to this section so long as the Grant Recipient
complies with paragraph (3) of this subsection and §
703.19 of
this chapter (relating to Opt-Out and Default).
(2) To share with the Institute a portion of
the benefit derived from the commercial development of the Project Results, as
set forth in the Grant Contract.
(3) To notify the Institute in writing prior
to declining to pursue, abandoning, waiving or disclaiming some or all
Intellectual Property Rights related to the Project Results. Such notification
shall be made with sufficient time to provide the Institute an opportunity to
license or pursue the appropriate applications and other protections for such
Intellectual Property Rights to the fullest extent permitted by law.
(4) To keep the Institute promptly and
reasonably informed regarding the activities undertaken by the Grant Recipient
to protect and/or commercialize the Project Results and to consider in good
faith Institute input, if any, regarding same. Such activities may include, but
are not limited to, the following:
(A) Filing
of an invention disclosure forms (including updates and revisions);
(B) Creation of commercial development
plans;
(C) Application, issuance,
prosecution and maintenance of patents; and
(D) Negotiation of final term sheets and
License Agreements.
(5)
To allow access to the books and records of the Grant Recipient for the purpose
of conducting an audit during normal business hours with reasonable notice to
verify amounts paid to the Institute pursuant to this chapter. Notwithstanding
the time limitation provided in §
703.13
of this chapter (relating to Audits and Investigations), the right to audit the
books and records of the Grant Recipient to verify amounts required to be paid
to the Institute shall continue for so long as the payments shall be
made.