Repository: UIHistories Project: Board of Trustees Minutes - 1984 [PAGE 436]

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1983]

UNIVERSITY OF ILLINOIS

427

SOHIO "Center of Excellence Award" (Exceptions to the Genera/ Ru/es)

(18) In early 1983, the Standard Oil Company of Ohio announced a national competition to encourage innovative university-based research in partnership with industry. From among 1,000 research proposals submitted, the proposal "Center of Excellence in Crop Molecular Genetics and Genetic Engineering," prepared by the agronomy department of the College of Agriculture at Urbana-Champaign, was one of five selected by S O H I O to receive an award. Under a five-year program, S O H I O will provide up to $2 million for direct support of research in the Department of Agronomy and other cooperating campus units. The agronomy proposal differs from the usual pattern of industrial sponsorship in that it provides for the broad enhancement of existing research programs within the department and in other campus units. Specific arrangements are also provided to encourage cooperative exchanges between University of Illinois and S O H I O scientists. Confirmation of the award is contingent upon the successful negotiation of a sponsored research agreement. The principal issue of negotiation concerns SOHIO's entitlements to resulting intellectual property rights. The agreement provides that the University has the first option to file for legal protection of resulting inventions or may file at SOHIO's request and expense. Title to inventions by University research staff and any resultant patents or plant variety certificates vests with the University. S O H I O and its affiliates receive an irrevocable, nonexclusive, royalty-free license to practice under any patent, plant variety certificate, or computer programs covered by copyright. The granting of such a royalty-free license and the absence of provisions to recapture licensed rights by the University are exceptions to The General Rules Concerning University Organization and Procedure. S O H I O is also granted an option to an exclusive, royalty-bearing license on resulting licensable subject matter exercisable within three years following the date of filing of the patent application. If elected, SOHIO's exclusive license will have a minimum term of ten years from the date of issue of the patent, but subject to due diligence in commercial development after five years. S O H I O agrees to pay the University a reasonable royalty to be negotiated at the time such exclusive license is elected, but at half the normal royalty rate for the first five years after commercial startup. S O H I O also receives the right to terminate its exclusive license on sixty days notice and retain the nonexclusive license granted in the agreement. S O H I O may sublicense third parties, but will share resulting royalty income with the University on a negotiated percentage based on the respective contributions of the University and S O H I O to the licensed technology. If the parties fail to agree, an equitable royalty sharing ratio will be determined by arbitration within specified ranges. T h e University Patent Committee has reviewed the proposed agreements and has recommended that they be approved. The vice president for academic affairs concurs. I recommend approval. O n m o t i o n of D r . D o n o g h u e , this r e c o m m e n d a t i o n w a s a p p r o v e d .

Recommendations of the University Patent Committee

(19) The University Patent Committee has recommended the following actions concerning inventions made at the University of Illinois. (Background information has been sent to the Committee on Patents of the Board of Trustees.) 1. Generalized Talley Ones Counter and f'recharge Circuitry — Robert K. Montoye, formerly research assistant in computer science, Urbana-Champaign, inventor; developed under the sponsorship of the National Science Foundation.