Agreements

Agreement and Contracts

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OSU Advantage facilitates a range of agreements designed to protect information and streamline collaborations between the university and industry partners. Most OSU employees do not have signature authority to sign agreements on behalf of the university. Our team has the appropriate authority, and our professionals are experienced in the efficient negotiation and execution of these agreements. For confidentiality agreements and Material Transfer Agreements you may find it helpful to complete one of the following two background information forms:

• Confidentiality Agreement Form
• Material Transfer Agreement Form

Please scroll down to learn more about different types of agreements or contact a professional in our office to begin the process.

Primary Agreement Types

• Confidentiality Agreements

  Also known as: Confidential Disclosure Agreement (CDA), Non Disclosure Agreement (NDA), Proprietary Information Agreement (PIA), Confidentiality Transmittal Record (CITR), or Secrecy Agreement. This is a legal document between at least two parties that:
  • (a) allows confidential materials, knowledge, or information to be shared with each other for certain purposes,
  • (b) restricts access by others, and
  • (c) maintains it as confidential for a specified time period.

• Material Transfer Agreements

  A Material Transfer Agreement (MTA) is a legal document that governs the transfer of tangible research materials between at least two parties, with the recipients intending to use the materials for their own research purposes. The MTA defines the rights of the provider and the recipient with respect to the materials and any derivatives. Biological materials such as reagents, cell lines, plasmids, and vectors are the most frequently transferred materials. MTAs may also be used for other types of materials, such as chemical compounds and even some types of software.

• Industry Research Contracts

  OSU conducts low-cost, world-class research that benefits industry partners. Our collaborative approach speeds up product development, offers economic and social advantages, and provides valuable learning experiences for students. Explore our models:
  • Standard Model
  • Alternative Model

• Option Agreements

  A legal document in which one party pays the other for the exclusive opportunity to review intellectual property and evaluate the marketplace for a specified time period, in a specified field of use with the intention of later executing a license agreement to commercialize an innovation, idea or product.

• License Agreements

  A legal document in which one party pays the other for a non-exclusive or exclusive opportunity to commercialize intellectual property and/or know-how, in a specified field of use, for a specified time period, and under specified conditions.

Other Agreement Types

• Allocation of Rights

  A legal document accompanying a Small Business Innovation Research (SBIR) award or a Small Business Technology Transfer (STTR) award. The agreement outlines background intellectual property and reserves rights for the award recipient, similar to terms contained in an Option agreement.

• Assignment

  OSU employees are required to sign an Assignment to re-confirm the transfer of all personal property rights provided by a patent, or an undivided fraction of all of the rights as conditioned by employment at OSU. These patent Assignments are recorded with the U.S. Patent and Trademark Office to further protect OSU’s interest in a patent.

• Intellectual Property Management (Proposal)

  Proposals submitted with more than one entity usually require a short section, a long section, or a full separate agreement, regarding the management of intellectual property between the parties. OSU Advantage helps craft these sections acknowledging the needs of industry, the government or other universities, while staying consistent with United States law and OSU policies.

• Insignia Agreement

  The OSU Licensed Innovation insignia was created to allow authorized users (individuals or companies who have licensed innovation from OSU) to leverage the strong research and technology reputation of Oregon State University in marketing their own products and solutions. The Insignia Program Guidelines provide specifications for the display of the Insignia upon execution of an “OSU Licensed Innovation Insignia Agreement”. OSU may amend the Insignia Specifications from time to time.

• Inter-Institutional

  A legal document governing the protection, administration, and licensing of intellectual property that is jointly owned with another entity. Typically one entity will allow the other to take the lead and to provide a administrative percentage fee if the intellectual property is successfully licensed.

• Memorandum of Understanding

  Generally a non-binding agreement with another organization that defines the roles, responsibilities, and expectations of each party.

• Royalty Sharing

  An agreement signed by all of the inventors on an invention. It details the distribution percentages for each inventor of the entire share of royalties that is designated for “the inventor.”

• Sponsored Research

  A legal document between a sponsor and OSU. It provides the details of work, time frame and any of a variety of other specified conditions including intellectual property rights.

Industry Research Contracts Models

Standard Contracting Model

With the standard contracting model, industry sponsors can:

• Define research objectives with clear milestones and schedules, accompanied by fixed-price invoicing.
• Protect their confidential information from unauthorized disclosure or use.
• Conduct a review process of all publications prior to release.
• Obtain a non-exclusive, royalty-free license to all intellectual property generated from the research results.
• Enjoy an option to negotiate a royalty-bearing, exclusive license to intellectual property generated from the research project.

Alternative IP Contracting Model

For some industry-sponsored projects, at an additional cost, it is possible for industry partners to obtain exclusive patent rights upfront, rather than negotiating for them after project completion.

OSU can offer this prepaid exclusive patent option when:

• The sponsored research will be conducted in a building that is permitted for private benefit sponsor engagements. (When portions of buildings are built or maintained using tax-free bonds, those buildings are typically restricted against private benefit uses.)
• The principal investigator and their Dean or direct superior agree to accept the possible limitations on future research that may result from an exclusive license and related terms and conditions.