Whether a technology research grant is a gift or provides the grantor a license in any resulting intellectual property is sometimes unclear. To the grantor, such ambiguity could lead to lost revenue or even potential liability for practicing a patented process it assumed it had rights to. Indeed, two months ago, a federal district court decided a case involving the nature of a software company’s research grant to a university based on contract language that gave the software company “unrestricted rights at no cost to the results of this research.”
The principal issue was whether such language gave the software company the right to practice the hardware patent produced from the research. In ruling in favor of the university, the court stated that the contract was ambiguous as to a grant of patent rights and ruled that given the circumstances underlying the agreement, the parties did not intend to transfer to the software company an express or implied license to the patent in exchange for the funding. See Wisconsin Alumni Research Foundation v. Intel Corp., 2009 WL 3003835 (W.D. Wisc. Sept. 17, 2009).
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