Frequently Asked Questions

Disclaimer: This FAQ is only meant to be a guide and does not replace the legally binding terms described in the Sponsored Research Agreement for ASRC Sensor CAT.

 

1. What happens to IP that is developed during the CAT project agreement?

  • If the IP was solely developed by students, faculty, or employees of CUNY, the IP will belong to CUNY (University Intellectual Property).

  • If the IP was solely developed by employees of Company, the IP will belong to the Company (Sponsor Intellectual Property).

  • If the IP was developed by students, faculty, or employees of CUNY together with employees of Company, the IP will belong to both CUNY and Company (Joint Intellectual Property).

 

2. What happens to IP that is developed during the CAT project agreement but is outside of the field of use?

  • If the IP was solely developed by students, faculty, or employees of CUNY, the IP will belong to CUNY (Non-Field University Intellectual Property) with no obligation to Company.

 

3. What happens to IP that was developed before the CAT project?

  • Nothing. Neither CUNY nor the Company can make claim to prior existing IP (Background Intellectual Property).

 

4. Who will pay for the patent application fees for University and Joint IP?

  • Company will have the option (for 60 days) to request CUNY to apply for patents and Company will pay for the fees. Company will have the right to request license or ownership of the IP.

  • If Company does not request CUNY to apply for patents (for 60 days), CUNY will have the option to apply for patents and CUNY will pay for the fees, with no obligation to license the IP to Company.

 

5. Can Company license University and Joint IP?

  • CUNY will grant Company a non-exclusive, non-transferrable royalty-free license to use University/Joint IP to make, reproduce, sell, and offer to sell in field of use.

  • Company must pay for patent application fees or reimburse CUNY for incurred fees.

  • If the Company’s total revenue directly associated with the licensed University or Joint IP exceeds $20M USD, Company will pay CUNY 1% of that total revenue.

 

6. What if Company wants exclusive license to University and Joint IP?

  • CUNY will grant Company an exclusive, royalty-bearing license to use University/Joint IP to make, reproduce, sell, and offer to sell in field of use.

  • Company must pay for patent application fees or reimburse CUNY for incurred fees.

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