Q: What issues must I consider when entering into a contract which involves rights to "intellectual property" such as patents, trademarks, copyrighted materials, or new inventions and ideas?

A: Intellectual property interests of the University must be protected, whether those rights are pre-existing (such as the right to use and reproduce CSU's name, logos, and trademarks) or are anticipated to be created under the contract (such as new designs and logos, or ideas and inventions to be developed during a research program).

For more information about intellectual property issues in sponsored research programs, such as those involving the development of ideas, inventions, or formulae, contact the Office of Sponsored Programs at 970.491.6355.

In contracts under which it is anticipated that the University's name, logos, or trademarks may be used or reproduced by the contractor, adequate protections must be included in the contract language. A typical provision designed to address these issues is:

Intellectual Property
University is and shall remain the sole owner of its own name, designs, symbols, logos, trademarks and service marks. Notwithstanding any other provision of this Agreement, for the term of this Agreement, and in conjunction with the services contemplated herein, the University hereby grants Contractor a non-exclusive, non-transferrable, limited license to use such trademarks and intellectual property associated with the Colorado State University and its programs for the purposes of carrying out the activities described in this Agreement. Contractor shall display and use all trademarked and copyrighted materials of the University in the manner reasonably designated and approved in advance by the University. This license shall terminate upon expiration or termination of this Agreement, or upon notice by University of termination of the license granted herein, whichever occurs first.

For contracts in which the contractor is responsible for creating, reproducing, modifying or marketing materials implicating University intellectual property rights, an appropriate provision must be used to protect the University's ownership of such rights, for example:

Any software, research, reports, studies, data, photographs, negatives or other documents, drawings or materials prepared by contractor in the performance of its obligations under this contract shall be the exclusive property of the University and all such materials shall be delivered to the University by the contractor upon completion, termination, or cancellation of this contract. Contractor may, at its own expense, keep copies of all its writings for its personal files. Contractor shall not use, willingly allow, or cause to have such materials used for any purpose other than the performance of contractor's obligations under this contract without the prior written consent of the University provided, however, that contractor shall be allowed to use non-confidential materials for writing samples in pursuit of the work. The ownership rights described herein shall include, but not be limited to, the right to copy, publish, display, transfer, prepare derivative works, or otherwise use the works.

Other contracts may involve the University's use of an outside contractor's copyrightable materials. A typical provision addressing the rights involved in such a transaction is:

The University is hereby granted an irrevocable, nontransferable, nonexclusive, paid-up, perpetual license to display publicly, perform, copy, reproduce, prepare derivative works, and distribute any works, drawings, documents, data or software delivered under this contract. For purposes of this license, "University" includes any other person or entity performing services for the University to the extent required for use, modification, or maintenance of the works, drawings, documents, data or software delivered under this contract.