PKD Foundation
Intellectual Property Policy
All PKD Foundation research grants and fellowships are subject to this intellectual property policy. By accepting a PKD Foundation award for a research project, the Principal Investigator or other personnel contributing to and working on the project, as well as the Institution(s) with which they are affiliated, agree to be bound by the terms and conditions of this policy. The Principal Investigator, other personnel, or Institution(s) shall be identified herein as grantee.
Though the primary purpose of the PKD Foundation in funding scientifically meritorious research is to advance its mission to find a treatment and cure for polycystic kidney disease, the PKD Foundation recognizes research outcomes having public health, scientific, business or commercial application or value may be made in the course of research supported by the PKD Foundation. It is the PKD Foundation’s intent that such discoveries are widely disseminated at the earliest possible time and remain available for public use. Thus, this intellectual property policy adopts necessary safeguards to make reasonably certain that potentially beneficial discoveries are developed regardless of their commercial profitability. This intellectual property policy seeks to ensure the practical application of discoveries resulting from research funded (either fully or partially) by the PKD Foundation while still providing the grantee sufficient flexibility regarding the funding of research and the patenting and developing of any resulting discoveries.
- All inventions, research outcomes, materials, methods, processes, products, programs, software or discoveries (hereinafter “discovery” or “discoveries”) resulting from the support, in whole or in part, of the PKD Foundation research funds must be reported to the PKD Foundation promptly in writing.
- The grantee agrees to notify the PKD Foundation promptly of the decision to apply for letters of patent or other legal protection for intellectual property. Copies of any patent application, invention disclosure and other pertinent materials must be filed with the PKD Foundation at the time the patenting process is commenced. The PKD Foundation reserves the right to review any patent application before filing and shall notify grantee in writing when it desires to exercise such right. The PKD Foundation agrees to keep all information regarding such applications confidential.
- The grantee shall pay expenses surrounding the pursuit of any patent rights including but not limited to preparation, filing, and prosecution of the patent application. In addition, the grantee shall pay issuance, maintenance, and any other expenses surrounding the grant and maintenance of any patent.
- The grantee shall be required to procure assignment rights from inventors or any other party in order to minimize disputes and to further this policy. The grantee shall file the appropriate paperwork with no expense to the PKD Foundation to insure that assignment rights are preserved and filed with the U.S. Patent and Trademark Office and any other patent office.
- When the grantee receives or disburses the PKD Foundation funds that supported the discovery, the PKD Foundation’s policy shall govern as provided:
· The patent application and the patent, if subsequently granted, shall not be sold or assigned without written approval from the PKD Foundation;
· The grantee shall make the discovery available for commercial licensing upon reasonable and non-discriminatory terms and conditions;
· The grantee may grant an exclusive license under such patent to any for-profit entity or person with written approval from the PKD Foundation;
· No patent or patent application shall be abandoned without prior notification to the PKD Foundation in writing, and permitting the PKD Foundation to take ownership and pursue the patent at its own expense; the PKD Foundation reserves the right, as assignee or otherwise, to prosecute any patent application that is abandoned or may become abandoned as it relates to this policy;
· The grantee or its licensee shall use its reasonable efforts to make research discoveries available for the public benefit within a reasonable period of time. The grantee and its licensee shall incorporate diligence provisions into a license agreement;
· The grantee agrees that if discovery is not licensed or optioned three (3) years after the issuance of a United States patent, or such longer time period as the PKD Foundation considers reasonable, and if the grantee has not made reasonable progress in bringing such discovery to practical application, the grantee, upon the PKD Foundation's request, shall assign the discovery and any rights to the PKD Foundation; or
· The grantee agrees that when it licenses any invention or intellectual property to a third party for commercialization that it will include provisions in the license to obligate the licensee to commercialize the technology in a diligent manner, and to include specific diligence requirements and milestones. The grantee shall be responsible for monitoring such diligence provisions, and in the event that the licensee has failed to commercialize the technology in accordance with such diligence provisions, the grantee shall either re-negotiate revised diligence provisions with the licensee, as appropriate; terminate the license and seek other licensees; or convert the exclusive license to a non-exclusive license and seek other licensees. In the event the grantee terminates a license or converts the exclusive license in accordance with this provision and does not seek another licensee within a reasonable period of time upon termination or conversion, the grantee shall assign its right in the technology to the PKD Foundation, to the extent it is legally able to do so. The grantee retains the right to use such technology for educational and research purposes under such circumstances.
- The PKD Foundation shall defer to the established patent policy of the grantee in the absent of any specific PKD Foundation policy language. If the grantee has no established and applicable patent policy, the PKD Foundation shall have the right to determine the disposition of the patent rights.
- The PKD Foundation reserves the right to participate in the income derived from all discoveries, including the sharing of licensing fees and royalties. Should the PKD Foundation choose to assert this right, the PKD Foundation’s expectation is to receive net income proportionate to the PKD Foundation’s proportion of support for the work or research giving rise to the discovery. The PKD Foundation’s participation shall be determined within one year, or a reasonably prompt time, after reporting of the discovery to the PKD Foundation by mutual agreement between the grantee and the PKD Foundation. If agreement is not reached, the grantee and the PKD Foundation shall agree to submit such issue to binding arbitration for determination of the PKD Foundation’s share or participation. Costs incurred to bring the arbitration action shall be split evenly.
Because the PKD Foundation funds scientific research in order to further its mission, any patent or
royalty revenue received by the PKD Foundation shall be reinvested into its research program.
- If any discovery is made with the joint support of the PKD Foundation and an agency or department of the United States Government, the PKD Foundation acknowledges that the Bayh-Doyle Act codified at 35 U.S.C. §§ 200-212 shall govern. Notwithstanding the Bayh-Doyle Act, grantee shall protect PKD Foundation’s rights and interests in the discovery in accordance with this policy.
- If any discovery is made with the joint support of the PKD Foundation and some other health agency or funding organization, not an agency or department of the United States Government, that other organization, the grantee, and the PKD Foundation shall negotiate a mutually satisfactory disposition of the invention rights.
POLICY MODIFIED 09/4/07