What does the Office of Industry Engagement and Intellectual Property Office Do?
In addition to building industry relationships for the benefit of NDSU, our office also manages:
- industry-sponsored research agreements;
- non-financial research agreements; including material transfer agreements, confidentiality/nondisclosure agreements and data use agreements; and
- invention disclosures; including reporting of inventions to research sponsors, assessing disclosures, and working with the NDSU Research Foundation in filing for appropriate protection of new inventions and plant varieties.
We are interested in research opportunities at NDSU. What's the first step?
Most projects begin with a discussion between researchers and company technical experts to determine how NDSU can contribute to your R&D efforts. If you have not yet connected with an individual at NDSU, the office of Industry Engagement and Intellectual Property can help identify researchers with the appropriate research interests and expertise to meet your research needs. After these discussions, NDSU can prepare a research plan, timeline and budget for your discussions.
What type of agreements does my company have to sign?
During initial discussions, your company and NDSU researchers may decide that an agreement to protect certain confidential information is necessary. NDSU has a simple template agreement for this step. Once a research plan has been approved, the Industry Engagement and Intellectual Property Office will provide a research agreement for your company review. NDSU has several sponsored research options.
When can the research begin?
While there are unique situations that may require research project to commence on a specific date, in general, no work will begin on a project before a research agreement has been signed and an account for research expenses has been established by NDSU Grant and Contract Accounting.
Can we make changes to the research project after it begins?
Changes to an active project can be accommodated. These changes, including scope of work, budget, or period of performance, will require a written amendment to the research agreement that is signed by each party's authorized personnel.
Who owns the inventions and research results that are developed during our research project?
The ownership of inventions and research results will be explicitly specified in the research agreement. Consistent with federal policy and prevailing higher education practice, NDSU will maintain ownership of all inventions and other research results developed by NDSU researchers. A sponsor will maintain ownership of all inventions and other research results developed by their employees. When a sponsor is actively engaged in the research project, it is likely that an invention could be developed mutually by the sponsor’s employees and NDSU researchers, which would result in the invention being jointly owned.
How will we be able to access the inventions that are developed?
NDSU has established options for sponsors to obtain access to the research project's inventions with minimal negotiations on fair and reasonable terms. At a minimum, you will recieve a royalty-free license covering all inventions and other research results for your own internal research purposes. In addition, NDSU always grants the sponsor the first option to negotiate a commercial license for any inventions that are developed in the course of the research.
More information about alternative intellectual property terms options is available on the Engaging in Research web page.
What if the research project involves preexisting technologies or intellectual property?
Background intellectual property (BIP) is any technology or intellectual property owned or controlled by a party prior to, or outside of, the contractual agreement under discussion. BIP could include inventions, patent applications, patents, copyrights, trademarks, mask works, or trade secrets.
If company BIP is necessary for the performance of your sponsored research project, that information must be disclosed to NDSU during the preparation of the scope of work. This will ensure protection of the BIP and enable a limited license to be granted to NDSU for the term of the project.
If your project would benefit from NDSU BIP, you would be provided the opportunity to discuss the availability of the BIP for licensing prior to inclusion of the BIP in the research project.
Does NDSU guarantee or provide a warranty on the research?
NDSU cannot guarantee any specific results from its research efforts. While NDSU personnel will use reasonable efforts to perform the research project using generally accepted scientific standards, all research, development, or other activities conducted by NDSU and the data, deliverables, other results, and intellectual property resulting from such research are provided to you "as is." Similarly, when the research results in an invention, NDSU cannot provide you with a warranty of merchantability, fitness for a particular, or guarantee that the practice of the invention will not infringe a third party's property rights.
What is an option to license?
NDSU's standard Industry Sponsored Research Agreements provides the sponsor with an option to license inventions developed in the course of the research. This option to license provides the sponsor with a time-limited right to negotiate a full license agreement for any invention upon election or request additional time to assess an invention for commercial potential can be accommodated through a separate option agreement.
Can we review publications resulting from the research?
A sponsor is always granted the right to review manuscripts and other public disclosures of research results to guard against inadvertent inclusion of sponsor confidential information as well as to allow time to protect inventions that are described in the proposed publication. NDSU can agree to delay publication up to 90 days to allow a patent applications to be filed at the sponsor's expense.
How can I include NDSU researchers in my federal research award?
If the proposal is funded, the terms of a subaward would be determined by a combination of the federal Notice of Award, the Standard Terms and Conditions for Institutions of Higher Education and the Agency-Specific Requirements.
How will NDSU protect my confidential information?
NDSU requires that a nondisclosure agreement or other agreement containing confidentiality provisions be executed prior to the exchange of any confidential information. Once the agreement is signed, the exchange of confidential information should be limited to only that information necessary to conduct informative discussions that meet the research projects's objectives. NDSU policy requires that any confidential information that is provided to NDSU must be identified as "confidential" at the time of disclosure.
Is the sponsor allowed to provide NDSU with materials for the research?
It is recommended that a material transfer agreement be in place before you provide any proprietary research materials to NDSU. Alternatively, contract terms protecting the materials can also be included in a sponsored research agreement.
What types of services are available at NDSU?
NDSU has numerous centers on campus with the ability to provide services to campus and the surrounding community. The Industry Engagement and Intellectual Property Office can connect you with one of these centers or other researchers at NDSU who may be able to provide services under a NDSU Testing Services Agreement.
Will NDSU keep the research project and results confidential?
As a public educational institution, NDSU fully adheres to the principles of academic freedom, and as such, will not maintain a research project on its results as confidential. State law and NDSU Policies 343 - Confidential Proprietary Information and 344 - Classified Research restrict the University from entering into any contract which limits the freedom of the University to disclose (1) the existence of the contract, (2) the general nature of the research to be conducted or (3) the identity of the parties to a research contract.
However, NDSU will not publish or otherwise disseminate information that has been provided to NDSU as confidential information. NDSU will provide a sponsor the opportunity to review any proposed publication and will delay any publication in order to make a patent filing decision for any invention disclosed in the proposed publication.
NDSU researchers can agree to maintain data as confidential information in the conduct of a service under NDSU's Testing Services Agreement, however NDSU will maintain the right to publish any new scientific findings or methodologies that arise in the performance that service.