For discussion purposes only. All provisions are subject to addition, elimination, or revision
by either party. All communications and discussions are tentative until execution of a written
agreement by both parties.
Draft Term Sheet
Carnegie Mellon – Company
Research Agreement
SUBJECT CARNEGIE MELLON COMPANY
PROPOSED TERMS COMMENTS
Agreement Type TBD (i.e., discrete Research
Agreements or Master Research
Agreement)
Term TBD
Compensation TBD
Ownership of IP developed CMU owns (the University cannot
solely by CMU under do work-for-hire). CMU
agreement (“CMU immediately grants to Company a
Foreground”) non-exclusive, non-commercial,
internal evaluation license.
Company options (see licensing
section below)
Ownership of IP developed Company owns. Company
solely by Company under immediately grants to CMU a non-
agreement (“Company exclusive, non-commercial, internal
Foreground”) license to use for
academic/research/administrative
purposes.
Ownership of IP jointly Jointly owned—either party can use
developed by Company and without consent of the other and
CMU (“Joint Foreground”) without accounting to the other.
Assumes Company is not making
use of any CMU facilities financed
using tax-exempt bonds (we’re not
permitted to allow private parties to
create and own IP in our tax-
exempt-bond financed facilities).
Ownership/use of IP Each party retains ownership to its
developed prior to or Background IP. If Company would
outside scope of agreement like to license any CMU-owned
(“Background IP”) Background IP, it can request to
negotiate a license. If available for
licensing, the IP would be licensed
out at fair market value (FMV)
under a separate license agreement.
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For discussion purposes only. All provisions are subject to addition, elimination, or revision
by either party. All communications and discussions are tentative until execution of a written
agreement by both parties.
Confidentiality Confidential info. that is
marked/designated would be
protected for period of 2 yrs
following end of applicable project
period.
Licensing options Within 180 days after CMU notifies
Company of any disclosures of
CMU Foreground or Joint
Foreground, Company can let CMU
know if Company would like to
negotiate an exclusive or a non-
exclusive license to the IP (of
course, no non-exclusive license
needed for Joint Foreground).
CMU would not negotiate with
others during this 180-day period.
Unless otherwise negotiated per the
guidelines below, any licenses
would be granted under a separate
license agreement, with license
fees/royalties set at FMV at the time
of the licenses.
Because of CMU’s use of tax-
exempt bond financing, the only
mechanisms for determining license
fees in advance are described in the
alternates listed below (provided
that the personnel working on a
particular research project would
agree to do the research project
with these terms—CMU could not
force certain faculty to work under
these terms, as they would limit
their opportunity to share in
licensing proceeds as contemplated
under CMU’s policies. These
alternatives are listed for discussion
purposes because they are legally
feasible for CMU. As stated above,
once we discuss and understand
what Company would like, we
would need to touch base with our
faculty):
Alternate #1: Company agrees that
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For discussion purposes only. All provisions are subject to addition, elimination, or revision
by either party. All communications and discussions are tentative until execution of a written
agreement by both parties.
all IP coming out of a project
belongs to CMU (even any
Company Foreground or Joint
Foreground). CMU could then
agree to grant Company a non-
exclusive license at $X, with the
value of “X” pre-set by the parties.
Any other parties wanting a non-
exclusive license would need to pay
FMV at the time of the license.
Company could also negotiate an
exclusive instead, but that would
need to be FMV at the time of the
license and the cost could not be
pre-determined.
Alternate #2: CMU could agree to
grant Company a non-exclusive
license at $X, with the value of “X”
pre-set by the parties. Any other
parties wanting a non-exclusive
would then also pay $X. Company
could let CMU within the 180 day
period that Company would like an
exclusive license instead (FMV at
the time of the license). If
Company decides to take a non-
exclusive at $X, Company could
always come back later, and if there
have not been any other non-
exclusive licenses granted by CMU
by that time, Company could ask to
“upgrade” its non-exclusive to an
exclusive by paying FMV at that
time.
IP protections Under any commercial license
obtained by Company, it would be
required to pay money for patent or
other IP protections (50% for a non-
exclusive, and 100% for an
exclusive). Independent of a
license, Company could ask CMU
to file IP protections on any CMU
Foreground in any country at
Company’s expense. Either party
could file IP protections on Joint
Foreground, provided that title to
the patents, etc. remain in both
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For discussion purposes only. All provisions are subject to addition, elimination, or revision
by either party. All communications and discussions are tentative until execution of a written
agreement by both parties.
parties' names. Contemplated that
the parties split IP protection costs
on joint filings, BUT a party could
elect not to contribute initially and
then reimburse the paying party for
half the costs at the time the non-
paying party decided to license out
the Joint Foreground or use it for
commercial gain.
Fundamental CMU expects its work product to be
research/export control fundamental research. CMU would
not restrict participation by
nationality. Company would not
pass any export controlled materials
to CMU without letting CMU know
and discussing arrangements.
No warranty Like other universities, CMU does
its research on an AS-IS basis and
does not offer warranties.
Indemnity Because CMU is a private, non-
profit and cannot afford to handle
claims arising out of its sponsors’
use of IP created at CMU, CMU
requires indemnification from its
sponsors. Company would
indemnify CMU for any claims
arising out of Company’s exercise
of licenses granted to it by CMU
under the agreement.
Publication For a period of 2 yrs following the
end of the applicable RPD, CMU
will provide Company 30 day pre-
publication review to flag any
Company confidential info or IP to
be patented. If patent issue, CMU
delays publication for up to another
60 days to get patent applications
filed. Publication provision would
not include pre-review or delays on
student theses/dissertations.
Termination Either party could terminate the
research project on 60 days’
advance notice. CMU would be
paid for work performed &
4
For discussion purposes only. All provisions are subject to addition, elimination, or revision
by either party. All communications and discussions are tentative until execution of a written
agreement by both parties.
uncancellable commitments made
through termination. Provided
CMU is paid for its work, CMU
would pass along any work
completed to that point and
Company would have the
licenses/options to them as
described in the agreement.
Use of names Except for CMU acknowledging
Company’s funding in publications,
etc., neither party would use the
name or trademarks of the other
party or any member of its staff in
sales promotion work, advertising
or other publicity without consent.
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