Appendix C - IP Principles for MII.pdf

FA8650‐20‐S‐5028 Appendix C – IP Principles for MIIs

Appendix C – Intellectual Property Principles for Manufacturing Innovation Institutes

The Intellectual Property (IP) principles described below rely on standard industry practices as well as existing statutes, administrative practices and federal policies regarding funded research. The IP strategy for large consortia is difficult to develop beforehand without all parties involved. The MII IP principles contained in this document are intended to address the primary IP issues that an MII will likely face. It is intended that underneath these principles, the MII will develop specific IP strategies and plans appropriate for their industry sector, technical strategy, and business plan. The intent of this appendix is to provide a flexible framework for an MII to consider when designing their IP strategy. Within these MII IP principles, the following definitions apply:

• Institute‐Developed Intellectual Property (IDIP) is defined as intellectual property (IP) developed as a result of Institute‐funded projects. Institute funds include any funds that are payable to an awarded project by an Institute regardless of the source of funding.

• Non‐Institute‐Developed IP (NDIP) is defined as IP developed as a result of projects using Institute infrastructure but not funded with Institute funds. Examples can include externally contracted research, fee‐for‐service activities, industry crowd‐funded projects and company incubation.

Category Existing Institute IP Principles

Institute-level Intellectual Property Management

1 Individual Institutes should develop, as part of each Institute’s Governance and Membership Agreement, an intellectual property management plan that addresses, at a minimum, IP ownership, definition and dissemination of institute-developed IP and non-institute-developed IP, technology licensing, the treatment of confidential data (e.g. trade secrets) and background IP, right to publish, the handling of disputes related to IP within the Institute, and the transfer of IP to members prior to dissolution of the Institute.

Project-level Intellectual Property Management

2 Institutes should encourage applied research project team partners to prenegotiate IP terms no later than the start of a joint project. At a minimum, these pre-negotiated terms should include IP ownership, licensing, maintenance and dispute handling as well as any restrictions on publication of jointly owned IP.

IP Ownership 3 Unless otherwise stipulated in a prior agreement, all IP generated within the

Institute should be owned by the Institute member responsible for invention (individual or organization). IP with co-inventors’ should be jointly owned.

Institute- Developed IP Rights

4 Members creating IDIP should at minimum grant the Institute and members-in-goodstanding, at the time of creating the IDIP, a limited, non-exclusive royalty-free (NERF) license to use the IDIP for internal research or development purposes. License terms for commercial use (including royalties) are to be negotiated in good faith in a separate agreement from the membership agreement. Rights to IDIP are available to a member only for IP developed during the time which the member is in good standing.

Non-Institute Developed IP Rights

5 Intellectual property developed within the Institute facilities or networked organizations, without federal or Institute funds as NDIP need not be shared with other members and is not considered IDIP. Use of facilities and equipment for these purposes must be at full cost recovery rates, for all members, according to federal contract regulations. Ownership and joint ownership of patents for NDIP projects should be determined by project agreement.

The use of government-funded Institute equipment and facilities, charged at full cost recovery rates, during research conducted at an Institute, solely with industry funds, should not create a government use right or “march in right” for resultant NDIP.

Background IP

7 Background IP is owned by the supplier of the IP, and no rights are forfeited by bringing that IP into Institute projects.

8 The owner of any background IP shall allow its use by partners on a project-by-project basis for the term of and sole purpose of the project. In the event that the parties deem the said background IP may be instrumental in the further use and deployment of the technology, process or product developed via the work of the partners participating in the project, the partners will provide by license agreement for the continued use of the IP beyond the close of the said project as deemed necessary and agreed upon by the owner of the IP in the initial project agreement.

Data Rights and Management

9 As part of the intellectual property management plan of an Institute, Institutes should develop a data plan that complies with export control law, defines and differentiates the type of data within the Institute (limited rights, Institute protected, project protected, unlimited rights, etc.), and defines the data access and control needed to maintain confidentiality and cybersecurity.

The plan should make use of cybersecurity best practices. Using these cybersecurity best practices can help to standardize the protection of IP, to identify unusual activity or attempts to steal IP.

10 Pre-existing data remains the property of the original owner. Pre-existing proprietary data, labeled as proprietary, are held confidential unless released by the owner.

11 Generated data are owned by the member(s) generating the data. Generated data are held confidential for an agreed upon period of time. Data that is generated by parties under an Institute-funded project will be owned jointly by the members generating the data and the Institute unless an agreement stating otherwise is mutually agreed upon by the Institute and other parties involved. The federal government retains rights to Institute generated data and IP consistent with the authorities of the government funding agency and applicable Office of Management and Budget (OMB) published guidance.

12 Pre-existing & generated data are free to use by all members unless marked proprietary by the owner. Protection of proprietary data requires that all proprietary data must be properly marked as proprietary. Usual exclusions includes data already in possession, data independently developed, data that becomes publicly available without breach, and data from a third party received without restrictions.

Right to Publish

An MII should consider policies that allow for the results of federally funded research, if appropriate, to be made publicly available through publication.

However, some data may have significant proprietary value, and it is permitted to delay publication for a certain period of time so that participants may assess the proprietary value and patentable nature of the project findings.

Government Rights

14 To the extent permitted by law, all members, regardless of type, should have the same rights to request to retain title of the IP generated under an Institute project involving federal funding.