Intellectual Property Agreements

Licenses and other agreements related to OHSU intellectual property are handled by OHSU Technology Transfer’s Technology Development and Licensing team. Specific terms of these agreements are determined and negotiated on a case-by-case basis. Reach out to techmgmt@ohsu.edu with questions regarding intellectual property agreements.

Questions regarding material transfer agreements (MTAs), industry sponsored research agreements, research service agreements, collaboration agreements and data use agreements should be sent to the OHSU Office of Proposal Award and Management, or OPAM, at mta@ohsu.edu .

If you're an OHSU employee looking to disclose a new technology, visit OHSU Innovators or contacttechmgmt@ohsu.edu.

If you're interested in starting a collaboration or partnership with OHSU, visit the Collaborations page. 

License agreements

In a license agreement, OHSU grants rights to a for-profit entity to use OHSU intellectual property.

Intellectual property that may be licensed by OHSU can include patent rights, materials, software, copyrights and/or data. For a full definition of intellectual property see OHSU’s Intellectual Property and Royalty Distribution Policy No. 04-50-001.  A technology disclosure form describing the OHSU intellectual property, funding sources and contributors is required before a license can be initiated.

The license specifies how the OHSU intellectual property can be used by the for-profit company and OHSU’s retained rights – such as the ability to continue to the use the intellectual property in OHSU research. A license can also include financial terms, if appropriate, such as a licensee’s obligations to pay patent fees, up-front fees and/or royalties on products sold. Any proceeds from OHSU license agreements are subject to OHSU’s Intellectual Property and Royalty Distribution Policy No. 04-50-001.

Startup and Equity agreements

A startup company needs to complete and sign a license agreement with OHSU to use and develop OHSU intellectual property. These agreements outline OHSU’s retained rights and how the intellectual property can be used by the startup company. These agreements also specify financial terms and can include whether OHSU will have any equity in the startup company.

OHSU members that are involved with startup companies should consult with OHSU Research Integrity on possible conflicts of interest. For more information see the OHSU Outside Activities and the OHSU Startup Guidance webpages.

Additional resources and information for OHSU startups and can be found on the Startup Support, Steps to Launching a Startup and Startup Resources webpages.

Inter-Institutional Agreements

Inter-Institutional Agreements, or IIAs, specify terms for the management and licensing of intellectual property that is jointly owned by OHSU and one or more other academic institutions. The terms of these agreements will determine which university will lead commercialization efforts of the intellectual property, including which university will file and manage patent applications, negotiate license agreements and/or how licensing revenue will be split between universities.

Other agreements

OHSU Technology Transfer can assist with the negotiation and execution of Non-Disclosure Agreements, or NDAs, related to OHSU intellectual property. An NDA is a contract between two or more parties that outlines confidential material, knowledge, or information that the parties (one or both) wish to share with one another for certain purposes, but wish to restrict access to, or by, other parties. The NDA is synonymous with a Confidentiality Agreement or Confidential Disclosure Agreement (CDA).

Information needed to complete an NDA includes:

  • Scope of work and/or description of purpose
  • Contact information for other party — investigator or legal/business development
  • Proposed date of discussions

OHSU is not responsible for negotiating or reviewing Consulting Agreements on behalf of OHSU faculty and staff. Consulting guidelines are covered in the Outside Activity/Outside Compensation portion of the Conflicts of Interest and Commitment policy.

For additional information, visit the Conflicts of interest & commitment table of contents page on O2. (Note: requires OHSU sign in)

Faculty are also advised that personal consulting agreements may result in conflict of interest situations with their university employment and, as such, must be disclosed to their respective Department Chair.

OHSU Technology Transfer recommends adding the following statement to any consulting agreement that you enter into: "Consultant is an employee of Oregon Health & Science University and has responsibilities and research projects resulting from their activities as such an employee. Not withstanding any other provisions in this Agreement, the Company shall not have any rights to any work product, intellectual property and/or other works or materials created by Consultant as a result of employment with Oregon Health & Science University."