The Researcher's Tool Kit

Resources for working smarter

1 Comment

How to address Intellectual Property in a grant proposal

More and more funders now require or encourage a statement about your plan for sharing intellectual property (IP) associated with the project they may fund.  For example, the National Institutes of Health (NIH) requires specific plans for sharing data, materials, and software generated with NIH funds.

toolkit-24157707 copy

The NIH Technology Transfer Center provides general guidance for preparation of IP Management Plans and lists various sample plans that can be used by extramural funding applicants to prepare IP management plans when required by program announcements.  Sample plans provided by NIH include:

IP Plan #1 – Sample letter that shows how Universities including co-investigators, consultants, and collaborators can describe a data and research tool sharing plan and procedures for exercising intellectual property rights. The letter is to be used as part of the University’s application.

IP Plan #3 – Sample Research Resources and Intellectual Property Plan for use by an Institution and its Collaborators for intellectual property protection strategies covering pre-existing intellectual property, agreements with commercial sources, privacy, and licensing.

IP Plan #4 – Sample letter from Research Institutes and their principal investigator and consultants, describing a data and research tool sharing plan and procedures for sharing data, research materials, and patent and licensing of intellectual property. This letter is designed to be included as part of an application.

IP Plan #6 – A sample Intellectual Property Management Plan which covers the objectives of the plan and a summary of how the issues are addressed in the plan.

Some academic institutions also provide sample language to assist you in addressing this need for your use in external funding proposals.  As always, you should revise samples to address any requirements from your funder and to include specific information from your application.  Adapted language should reflect the tools that you expect to create if you receive funding or any research tools involved in your proposed project.  The level of detail often recommended is reflected in the sample below from the University of Chicago website for use in preparing applications to the NIH:

“The University of Chicago is committed to the open and timely dissemination of research outcomes. Investigators in the proposed activity recognize that promising new methods, technologies, strategies and computer software [revise as applicable to the nature of the research program] may arise during the course of the research. The Investigators are aware of and agreed to abide by the principles for sharing research resources as described by NIH in Principles and Guidelines for Recipients of NIH Research Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources.

While the investigators expect that research tools will be freely shared with the research community, opportunities for technology transfer through commercialization will be explored as appropriate. Working with the University community, the University of Chicago’s Office of Technology and Intellectual Property (UChicagoTech), manages intellectual property at the University of Chicago. UChicagoTech serves faculty, staff and students by commercializing inventions, ideas and software developed at the University to ensure that new knowledge benefits society.

UChicagoTech works with researchers to assess the commercial potential of new ideas. UChicagoTech’s goals are to disseminate new ideas so the public can benefit from discoveries, and to generate revenues for research and education. When the best means of disseminating discoveries and new intellectual property is collaboration between the University and commercial entities, UChicagoTech has a special role to play. It protects the rights of the inventors and the University-and then typically works with industry, granting licenses so that a company will develop the discovery and bring it to the market. Revenues from licenses secured by UChicagoTech are shared with the inventor, the inventor’s laboratory, and the inventor’s academic division. Where opportunities arise for corporate sponsored research related to the NIH-funded research programs, the University expects any agreements to conform to the principles described by NIH in the 1994 policy Developing Sponsored Research Agreements: Consideration for Recipients of NIH Research Grants and Contracts.”