| (a) To the extent that there is a conflict between
this chapter and the Grant Contract between the Institute and the
Grant Recipient, the Grant Contract terms will control.
(b) The Grant Recipient may retain, assign or transfer
all or a portion of any of the Intellectual Property Rights relating
to the project results. Any such assignment or transfer to a third
party is subject to the following requirements:
(1) The Grant Recipient shall notify the Institute
of the proposed transfer or assignment;
(2) The Grant Recipient shall ensure that the assignment
or transfer is subject to the licenses, interests and other rights
provided to the Institute pursuant to the Grant Contract and any applicable
law or regulation; and
(3) Unless the transfer is taking place pursuant to
an exercise of the United States government's rights under 35 U.S.C. §203,
the Institute may provide comments to the Grant Recipient related
to the proposed transfer or assignment of rights, which the Grant
Recipient shall consider in good faith and use reasonable efforts
to account for and incorporate such comments into the actual transfer
or assignment of such rights.
(c) Unless specifically authorized by the Institute,
Grant Award proceeds shall not be used to pay the costs or expenses
associated with the efforts to protect the Intellectual Property Rights.
(d) As a condition of accepting Grant Award funding
from the Institute, the Grant Recipient agrees to the following required
commitments as defined in the Grant Contract with regard to any project
results:
(1) To use commercially reasonable efforts to protect,
develop, commercialize, or otherwise bring Project Results to practical
application to the fullest extent feasible as determined by the Grant
Recipient. The Grant Recipient is relieved of its obligations pursuant
to this section so long as the Grant Recipient complies with paragraph
(3) of this subsection and §703.19 of this chapter (relating
to Opt-Out and Default).
(2) To share with the Institute a portion of the benefit
derived from the commercial development of the Project Results, as
set forth in the Grant Contract.
(3) To notify the Institute in writing prior to declining
to pursue, abandoning, waiving or disclaiming some or all Intellectual
Property Rights related to the Project Results. Such notification
shall be made with sufficient time to provide the Institute an opportunity
to license or pursue the appropriate applications and other protections
for such Intellectual Property Rights to the fullest extent permitted
by law.
(4) To keep the Institute promptly and reasonably
informed regarding the activities undertaken by the Grant Recipient
to protect and/or commercialize the Project Results and to consider
in good faith Institute input, if any, regarding same. Such activities
may include, but are not limited to, the following:
(A) Filing of an invention disclosure forms (including
updates and revisions);
(B) Creation of commercial development plans;
(C) Application, issuance, prosecution and maintenance
of patents; and
(D) Negotiation of final term sheets and License Agreements.
(5) To allow access to the books and records of the
Grant Recipient for the purpose of conducting an audit during normal
business hours with reasonable notice to verify amounts paid to the
Institute pursuant to this chapter. Notwithstanding the time limitation
provided in §703.13 of this chapter (relating to Audits and Investigations),
the right to audit the books and records of the Grant Recipient to
verify amounts required to be paid to the Institute shall continue
for so long as the payments shall be made.
|
| Source Note: The provisions of this §703.16 adopted to be effective August 1, 2010, 35 TexReg 6656; amended to be effective March 2, 2014, 39 TexReg 1386; amended to be effective December 7, 2016, 41 TexReg 9527 |
