Any invention developed wholly with use of USB or QSSB funding shall be owned by the U.S. Government as represented by USB or the QSSB, and all revenue derived from such invention shall accrue to the U.S. Government as represented by USB or the QSSB.
If, as a result of discussion with a university or other contractor, it is determined that ownership must reside with the other party for the project to be conducted, then ownership may reside with the other party subject to the following:
- That USB or QSSB receive a nonexclusive paid-up license to use and sublicense the invention; or
- If the right to sublicense cannot be negotiated, the USB/QSSBs shall have the right to require the university or licensees of the university to issue licenses to eligible parties to ensure exploitation (march-in rights).
Where USB or a QSSB is providing all funding for a project, any royalty income resulting from the invention should be retained by USB/QSSB. But where funding is provided by another party (including contribution of indirect costs by the university or contributions from other sources including the other party to the agreement), the agreement may include a sharing of royalties based on the pro rata contribution by each party or a requirement that the other party repay USB or the QSSBs for its contribution.
If, by the nature of the project, the sharing of royalties or payback of contribution cannot be negotiated, the sharing of royalties or payback of contribution shall not be required. This is permissible only in situations where: (i) USB’s or the QSSB’s funding and resource contribution is minor relative to the contributions made by other parties to the project; (ii) the contractor already developed a new technology or product, but is seeking dollars to scale up its process or enhance the amount of soy being used; and/or (iii) the contractor already has a patent or patent pending, but is seeking additional investment to scale up its process or enhance the amount of soy being used; and (iv) the waiving of the sharing of royalties or payback of contribution has been approved by USB. Any such agreement shall include a provision requiring the use of U.S. soybeans and sponsorship recognition for USB or the QSSB. When feasible, such agreements shall also include march-in rights for USB or the QSSB if the contractor fails to commercialize the invention. Further, all agreements shall include a provision requiring the payment of royalties or a payback of contribution should the other party switch from U.S. soybeans to a competing vegetable oil or soybeans sourced from outside the U.S. during the life of the project and during any subsequent commercialization.