Hi all, I’m sharing what we are using for our IP rev share clause in grant agreements (developed with the outstanding Amy Ryan at Arnold & Porter, based on my 19 years in tech transfer before this role). I’ve gotten positive feedback on this from a few institutiions so far, but we are still working on our first grants, so I’m sure some of this will change in the months ahead based on the negotiations. I’ll re-share a final version once we have our first executed agreement. In case it is useful, feel free to email me and I’ll share the full IP clause we are using in our template (again, pending negotiation still).
(a) Revenue Share. In acknowledgement of Foundation’s provision of the Grant, once Institution’s Net Revenue exceeds $1,000,000.00 USD (One Million U.S. dollars), Institution shall share with Foundation any additional Net Revenue in the same proportion that the funding provided by or on behalf of Foundation for the Project bears to the overall funding received by Institution that led to the development of the applicable Project IP; provided however that in any event, Foundation’s share shall not be less than 10% or greater than 50%. For these purposes, the term “Net Revenue” means any and all gross revenue and other consideration of any nature (including the cash value of liquidated equity) received by Institution or any of its affiliated entities or technology transfer offices in exchange for the license (whether exclusive or non-exclusive), option, or other exploitation or commercialization of any Project IP, including all up-front, milestone and royalty payments and non-royalty sublicensing consideration fees, less (i) in the case of Project IP that is jointly owned by Institution and one or more other academic research institutions, payments required to be made by Institution to such joint owner(s) in the event of commercialization of such jointly owned Project IP, provided there is a written agreement between Institution and such joint owner(s) specifying the amount of such payments, (ii) payments that Institution makes to any of its inventors of the relevant Project IP in accordance with Institution’s publicly available policies, and (iii) any direct, unreimbursed, documented, out-of-pocket costs paid by Institution to one or more third parties for patenting or licensing the relevant Project IP. The method and timing of payments to Foundation shall be mutually agreed by Institution and Foundation, provided however that in all cases the Net Revenue share shall be payable at least annually. In order for Foundation to be aware of any circumstance that may trigger its right to a revenue share, Institution shall notify Foundation within thirty (30) days following: (A) the licensing, optioning or other transfer of rights to any third party to practice any Project IP for commercial purposes of which Foundation has not otherwise been notified previously, and shall share a copy of the license, option or other agreement with Foundation; and (B) Institution’s receipt of Net Revenue in excess of $1,000,000.00 USD (One Million U.S. dollars).
