Contractual Terminology

Agreement - A legal contract covering circumstances or actions.

Assignment - A written agreement transferring ownership of Intellectual Property.

Commissioned Work - A work created by someone other than the employee of an entity at the entity's request or any work requested to be completed by an employee outside of his or her Scope of Employment. Falls under copyright protection.

Confidentiality Agreement - A legal document executed prior to sharing confidential information in order to protect Intellectual Property rights. Similar to a Non-Disclosure Agreement (NDA).

Conflict of Commitment - May occur if duties or responsibilities associated with an external relationship inhibit the ability to meet commitments to the university in regard to employment.

Conflict of Interest - May occur if a university employee, researcher, faculty member or other personnel has a relationship with an outside organization and is put in a situation that would allow undue, adverse or improper influence or impact on the research, technology transfer, licensing or other process related to innovation.

Consideration - Payments in any form. May be cash, assets, equity ownership or any other item of value.

Consortium Agreement - A legal contract specifying the terms, funding and other obligations and rights of each party in a Research Consortium.

Consulting Agreement - May also be called a contractor agreement. A contract between a non-employee (i.e. a consultant or contractor) and an entity for a specific purpose or objective that specifies the work to be accomplished and payment to be made for services rendered.

Course of Normal Duties - Duties assigned to an employee by an employer. These may be duties under control or direction of the employer or may be an important factor in determining rights to ownership in an innovation by an employer. Also referred to as Scope of Employment.

Equity - Stock, stock option or other ownership rights which may be granted to an inventor in addition to, or in lieu of, other compensation from a technology licensee.

Field of Use - The area of technology or business where the licensed technology will be used, marketed or sold. Specified in a License Agreement.

Income Sharing - Proportion of income to be distributed to each party in a licensing or commercialization agreement.

Interinstitutional Agreement - An agreement between multiple universities or institutions to conduct research or technology transfer activities. Typically established when conducting joint research projects.

Joint Ownership - Ownership rights shared by two or more persons or entities.

License - Permission granted to utilize Intellectual Property.

License Agreement - A legal document specifying the terms of use of an invention and protecting ownership rights in an invention. This agreement will typically include a length of time or specify perpetuity and will include rights, prohibited uses, limitations and other legal terms.

License Issue Fee - Consideration given as an initial lump payment to the licensor.

Licensee - The purchaser or acquirer of license rights to a piece of Intellectual Property.

Licensor - The granter of a license and/or the owner of the Intellectual Property being licensed.

Material Recipient - Any entity that takes delivery of Tangible Research Property in accordance with a Material Transfer Agreement.

Material Transfer Agreement - Also called an “MTA”, is used when an inventor wants to share either patented or unpatented innovations with an academic colleague who wishes to utilize it for research purposes.

Non-Disclosure Agreement - Commonly referred to as an “NDA”. Protects confidential information by requiring that the information revealed be kept in confidence. It limits use or distribution of the information revealed and establishes legal liability for unauthorized use or exposure of information revealed.

Option Agreements - Also called Option Clauses; may be found within Research Agreements and establishes the right of the university to negotiate a license for Intellectual Property. These agreements are intended to allow a potential licensee to evaluate an invention or technology prior to signing a standard license agreement.

Owner - Person(s) or entity(s) who control the rights to something.

Perpetuity - Legal term meaning forever.

Research Agreement - Defines the terms for sponsors to provide research support to a university.

Right of First Refusal - An agreement giving a specific entity the first right, usually under a specific time period, to negotiate a license for an invention.

Royalty - Monies generated from the licensing and commercialization of inventions and technologies. Intellectual Property agreements typically contain the formula for dispersal of a percentage of royalties among the inventor, university, technology transfer office or other designated parties.

Scholarly Work - Work crated by an institution's faculty member within their Scope of Employment and in the area of which they teach.

Scope of Employment - Duties assigned to an employee by an employer. These may be duties under control or direction of the employer. Also, may be an important factor in determining rights to ownership in an innovation by an employer. Also referred to as Course of Normal Duties.

Venture Capital - Money invested in exchange for equity in a new business.

Work Made for Hire - Any work created by an employee when conducting their employment duties. Ownership of works made for hire resides with the employer. May also refer to a work by a consultant or contractor if their consulting or Contractor Agreement specifies ownership rights to the contracting entity.

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