INTELLECTUAL PROPERTY ASPECTS OF COLLABORATION - Collaborative Computational Technologies for Biomedical Research - page 141

ways, from one-time fees to annual fees to annual royalties based on a percent-
age of revenues received by the licensee. If a licensee failed to pay revenues
as promised, then the license could be terminated by the patent owner. The
conditional license is a powerful tool. Patent licenses can also contain perfor-
mance obligations, but these can be harder to negotiate at very early stages
before the patent itself is fi led.

9.4.3 Tools and Systems

The slowdowns imposed by materials transfer negotiation and by complex
patent licensing negotiation have created some demand for standardized
systems. However, those systems remain in the early stages. Three examples
are presented here: a legal system covering both MTAs and patent licenses
intended to facilitate industry-academic collaboration, an e-commerce system
intended to address discoverability and cataloging of innovations, and a soft-
ware system to provide a “wizard” for negotiating university-industry
collaboration.

9.4.3.1 Creative Commons—MTAs and Patent Licenses Creative Com-
mons, a nonprofi t organization that is famous for providing copyright licenses
that facilitate voluntary sharing, has developed a set of new MTAs that
use modular contract options to promote the development and evolution of
standard MTAs for transfers between academia and industry. The new
MTAs published by Creative Commons provide for a more fl exible range
of options while at the same time adhering to the core guidelines of rapid
transfer, low transaction costs, and increased research use advocated by
the National Institutes of Health (NIH) guidelines on access to research
tools [20] .
Creative Commons MTAs distinguish between activities for internal use
and commercialization, and they do not provide options that restrict publica-
tion or that contain reach-through royalties, grant backs, commercialization
options, or other obligations with regard to downstream inventions made by
the recipient. Creative Commons has developed a simple, Web-based user
interface that guides a user through key considerations and options associated
with selecting a particular MTA [21] and has already accomplished the integra-
tion of the MTAs into online systems such as the iBridge Network for use on
life sciences research tools. These material transfer agreements are already
available and in use for research materials such as stem cells, for uses ranging
from the narrow (neurodegeneration fi eld-of-use restraints) to the wide (com-
mercial and clinical use rights granted in advance).
The patent licenses developed by Creative Commons are the second com-
ponent of the legal system. First, to promote basic research, the patent owner
commits to nonenforcement of patents against users engaged in basic non-
profi t research (“the research nonassertion pledge”). Second, the patent owner
may provide a public license offer to enable use of specifi c patents chosen by