NSF has been increasingly adopting new terms in select NSF-Industry programs. Faculty who are considering applying for NSF funding should be aware of these terms as they prepare proposals, especially if they or their postdocs/students have entrepreneurial interests.
In order to accept these types of terms, ensure the PI is aware of the terms, specifically that the Company is granted a non-exclusive, royalty free license fully and the TLO may need to negotiate (if the Company does not decline it). The PI should understand the possible ramifications for future licensing to other third parties, such as startups.
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The award terms and conditions will state that recipients shall grant to the sponsoring parties (NSF and Company) a non-exclusive, worldwide, paid-up, non-transferable, irrevocable royalty-free license to all intellectual property rights in any inventions conceived or first reduced to practice in the performance of the Program work under the funding agreement. [Note: the Bayh-Dole Act provides similar rights to the U.S. Government for patents on inventions made under federal funding.] The license to Company will include its subsidiaries and contractors, at its discretion, to the extent that such use is specifically in connection with Company’s products and/or services. Recipients shall grant the license to Company as named in the award letter unless Company opts to decline the license. Such license shall not extend to recipients' background intellectual property; however, individual recipients and Company may negotiate, voluntarily, in good faith, a mutually acceptable resolution to background intellectual property, if desired, though NSF shall neither enforce nor participate in any such negotiations between recipients and Company, nor will any funds provided by NSF to the recipient be contingent upon such negotiations. Company will be named as a sponsoring party for all awards. Recipients may delay the publishing of data and software describing inventions to first permit the filing of patent applications. That said, NSF terms and conditions will require that recipients promptly publish all results, data, and software generated in performance of the research.
Please reach out to the NSF Liaisons and the TLO if you have any questions or would like to discuss the specific items mentioned above prior to submitting a proposal.