CRA Intellectual Property & Technology Transfer 2 — Questions and Answers
Question 1: A Material Transfer Agreement (MTA) is used to govern the transfer of:
- Financial funds between sponsored research accounts
- Tangible research materials between institutions or companies (Correct answer)
- Intellectual property rights in a licensing arrangement
- Personnel between collaborating research institutions
Correct answer: Tangible research materials between institutions or companies
An MTA is a contract that defines the terms and conditions under which tangible biological or chemical materials (e.g., cell lines, compounds, reagents) are shared between organizations.
Question 2: Copyright protection for works created by university employees in the scope of their employment generally belongs to:
- The individual faculty member who created the work
- The student who collaborated on the project
- The university as the employer under the work-for-hire doctrine (Correct answer)
- The federal sponsor if federal funds were used
Correct answer: The university as the employer under the work-for-hire doctrine
Under the work-for-hire doctrine, copyrights in works created by employees within the scope of their employment typically vest in the employer (the university), though many institutions have policies granting faculty rights to scholarly works.
Question 3: Which of the following is an advantage of maintaining a trade secret over seeking patent protection?
- Trade secrets provide a 20-year term of exclusive legal protection
- Trade secrets can be maintained indefinitely as long as secrecy is preserved (Correct answer)
- Trade secrets require public disclosure of the invention
- Trade secrets are enforceable against independent third-party discoverers
Correct answer: Trade secrets can be maintained indefinitely as long as secrecy is preserved
Unlike patents which expire after 20 years and require public disclosure, trade secrets can last indefinitely as long as reasonable steps are taken to maintain their confidentiality.
Question 4: The SBIR (Small Business Innovation Research) program requires that small businesses receiving awards:
- Transfer all IP developed under the award to the federal government
- Retain the principal research at U.S.-based small businesses and keep data rights (Correct answer)
- License any resulting patents nonexclusively to all domestic companies
- Partner with a university for all Phase II activities
Correct answer: Retain the principal research at U.S.-based small businesses and keep data rights
SBIR policy requires that the principal research be conducted by the small business concern and that data rights are retained by the awardee, supporting commercialization by domestic small businesses.
Question 5: An inter-institutional agreement (IIA) in technology transfer is typically needed when:
- A student transfers from one university to another mid-semester
- An invention is jointly made by researchers at two or more institutions (Correct answer)
- A university hires a faculty member from a competing institution
- A company sponsors research at a single university
Correct answer: An invention is jointly made by researchers at two or more institutions
When researchers at two or more institutions jointly develop an invention, an inter-institutional agreement defines how the institutions will share ownership, costs, and commercialization revenues.
Question 6: In a sponsored research agreement, an option-to-license provision typically grants the sponsor:
- Immediate exclusive rights to all inventions made under the agreement
- The right to negotiate a license to sponsor-funded inventions within a defined period (Correct answer)
- Co-ownership of all patents filed during the agreement term
- Veto power over the university's invention disclosure process
Correct answer: The right to negotiate a license to sponsor-funded inventions within a defined period
An option-to-license provision gives the sponsor a time-limited right to negotiate and execute a license for inventions arising from the sponsored research before the university offers them to other parties.
Question 7: Technology Readiness Levels (TRLs) are used in technology transfer to:
- Rank universities by the number of patents they file annually
- Assess the maturity and development stage of a technology for commercialization (Correct answer)
- Determine the appropriate royalty rate for licensing agreements
- Classify research publications by impact factor
Correct answer: Assess the maturity and development stage of a technology for commercialization
TRLs (originally developed by NASA, scale 1-9) provide a standardized framework to assess how mature a technology is, from basic research through full commercial deployment.
CRA Intellectual Property & Technology Transfer 2
A Material Transfer Agreement (MTA) is used to govern the transfer of: