Allocation of rights agreement

An allocation of rights agreement is the written agreement an STTR small business must negotiate with its partner research institution before award, allocating intellectual property rights and the rights to carry out follow-on research, development, or commercialization.

How it works in a university-industry collaboration

It has to cover at least three things (SBA Policy Directive, §8(d)):

1. Who's responsible for and owns inventions, including expenses, liability, revenues, and profits.
2. Which party may obtain U.S. or foreign patents.
3. Which party may continue the research, including follow-on awards outside STTR.

The small business submits it with the proposal and certifies that it's satisfactory, so check your solicitation for exactly what it asks for and when.

SBA's model agreement sets the defaults. Inventions belong to the party whose people conceived them or first actually reduced them to practice, and joint inventions are jointly owned. The small business gets an exclusive option to license the institution's inventions, and if it extends the option, it reimburses the institution's patent costs up to the end of the option period. The government keeps a nonexclusive, royalty-free license. The option periods, royalties, and revenue split are left to the parties to negotiate.

Does an SBIR need one?

No. SBIR has no allocation of rights requirement, so IP terms with a university go in the subaward. Under Bayh-Dole, each side can elect to keep title to the inventions it owns from federally funded work, subject to the government's license (35 U.S.C. 202).

What Helikon does with it

A Helikon project can carry the SBIR/STTR agreement type, with a timeline and contract requirements such as the rights agreement. Helikon Labs isn't a law firm, so take the agreement itself to your counsel and the institution's research office for review.