- the general use that may be made of the subject matter (research use, commercialization);
- whether only one party is obtaining rights (exclusive), more than one but still only a few (co-exclusive), or potentially many (non-exclusive);
- the specific type of applications which may be pursued by the party (field of use to develop vaccines, diagnostic products, therapeutic products, human uses, veterinarian uses):
- royalty rates, or how much the user will pay the owner for the rights conveyed by the license (fee upon signing, annual fee, % of net sales, reimbursement of patent costs, costs of enforcing and defending the patent).
A sponsored research agreement is a negotiated contract between two or more parties, typically an academic research institution and a private corporation, under which the private corporation provides financial support to the research laboratory in return for an option to license any patentable subject matter that arises out of the research. As with licenses and MTAs, sponsored research agreements contain widely variable provisions because they are negotiated on a case by case basis. Terms may include: delay of or editorial power over, academic publications related to the research; future license terms; ownership of any intellectual property arising out of the research, confidentiality provisions, etc. The research carried out under the sponsored research agreement may be either collaborative, carried out with the corporate partner, or solely conducted by the university.
An NIH grant is government financial support of an academic biomedical research project. Numerous federal laws, regulations, and policies apply to NIH grants and follow the funding into the research project. Among those are laws allowing the grantee to elect title to and own the intellectual property arising out of the grant, and encouraging the grantee to patent and license such intellectual property. NIH grant funds and funds provided by corporations under sponsored research agreements may be co-mingled into the same biomedical research project, as long as the grantee is able to reconcile the requirements of both the sponsored research agreement and the NIH grant requirements. Because certain provisions, including those related to publication and license options, requested by corporate sponsors are considered to be incompatible with NIH grant requirements, the NIH issued a guidebook for grantees called Developing Sponsored Research Agreements: Considerations for Recipients of NIH Grants and Contracts to assist grantees in ensuring that all sources of project funding are compatible.
Unique Research Resources are defined by NIH grants policy as resources developed during the conduct of NIH-funded research which are necessary for further studies. Categories of these resources include: synthetic compounds, organisms, cell lines, viruses, cell products, cloned DNA, DNA sequences, mapping information, crystallographic coordinates, and spectroscopic data.