Best Practices Memo: 

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The Memo stemmed from a paper by J Strother Moore, which included a detailed discussion of the issues involved as well as sample wording for agreements:

• "Model Language for Patent and Licensing Agreements for Industrially Sponsored University Research in Information Technology" (140 KB PDF)

The committee set up to investigate this issue was co-chaired by J Strother Moore (University of Texas at Austin) and Gabby Silberman (IBM TJ Watson Research Center).

Useful websites and reports:

• IP @ the National Academies: a guide to the Academies' extensive work on Intellectual Property and a forum to discuss ongoing work.
  
  
• Working Together, Creating Knowledge: The University-Industry Research Collaboration Initiative, 2001.
  
  
• Government-University-Industry Research Roundtable: sponsored by the National Academy of Sciences, the National Academy of Engineering, and the Institute of Medicine.
  • Simplified and Standardized Model Agreements for University-Industry Cooperative Research, 1988.
  • Intellectual Property Rights in Industry-Sponsored University Research: A Guide to Alternatives for Research Agreements, 1993.
    
    
• Association of University Technology Managers 
  • NB, their Annual Licensing Survey (found under "Surveys") is the leading source of data on licensing revenue and activities regarding U.S. universities, hospitals, nonprofit research institutions, and patent management firms, as well as from Canadian institutions. (The summary of each year's results is free. Full results require payment of a fee).
    
    
• Patents in the Knowledge-Based Economy, 2003.
  • NB, the paper: "Intellectual Property Protection in the U.S. Software Industry," S.J.H. Graham and D.C. Mowery.
    
    
• "The Growth of Patenting and Licensing by U.S. Universities: an Assessment of the Effects of the Bayh-Dole Act of 1980," D.C. Mowery et al.,  Research Policy, Vol. 30: 99-119, 2001. (Payment required).
  • See also "Observations on the Post-Bayh-Dole Rise of Patenting at American Universities," R. Nelson, Journal of Technology Transfer, Vol. 26: 13-19, 2001. (Payment required).
    
    
• University of California, Office of Technology Transfer memo on the "Electrical Engineering and Computer Science Intellectual Property Pilot Program," 2000. This permitted less restrictive terms regarding IP licensing when negotiating research agreements.
  
  
• Council On Governmental Relations: an association of research-intensive universities.
  • NB, the section on "Intellectual Property," found on their website under "Educational Materials," with reports such as:
    • Technology Transfer in U.S. Research Universities: Dispelling Common Myths, 2000.
    • University Technology Transfer: Questions and Answers, 1999.
    • The Bayh-Dole Act: A Guide to the Law and Implementing Regulations, 1999.
      
      
• Metropolitan New Economy Index, 2001.
  
  
• "The Sustainability of University-Industry Research Collaboration: An Empirical Assessment," Y.S. Lee, Journal of Technology Transfer, Vol. 25: 111-1333, 2000. (Payment required).
  
  
• "To Patent or Not: Faculty Decisions and Institutional Success at Technology Transfer," J. Owen-Smith and W.W. Powell, Journal of Technology Transfer, Vol. 26: 99-114, 2001. (Payment required).
  
  
• "Assessing the Impact of Organizational Practices on the Relative Productivity of University Technology Transfer Offices: an Exploratory Study," D.S. Sigel et al., Research Policy, Vol. 32: 27-48, 2003. (Payment required).
  
  
• "The Changing Composition of Innovative Activity in the US--a Portrait Based on Patent Analysis," D. Hicks et al., Research Policy, Vol. 30: 681-703, 2001. (Payment required).
  
  
• "Relationship Dynamics between University Research Center and Industrial Firms: Their Impact on Technology Transfer Activities," M.D. Santoro and S. Gopalakrishnan, Journal of Technology Transfer, Vol. 26: 163-171, 2001. (Payment required).