GENERAL FAQ ABOUT THE AFFILIATION AGREEMENT
WHY CAN’T WE CHANGE THE AFFILIATION AGREEMENT?
The Georgetown S2ERC is a site of the S²ERC Industry/University Cooperative Research Center (I/UCRC), supported by the National Science Foundation (NSF) under a Phase I I/UCRC grant. The S2ERC includes other sites, namely Ball State University and Virginia Polytechnic Institute. As an affiliate at Georgetown you will have full affiliate rights in the entire I/UCRC, not just the Georgetown site.
Full affiliate rights means you have access to the results of all university research from all sites, not just the results from research conducted at Georgetown. It also means you have the same intellectual property rights to non-Georgetown research as you do for Georgetown research. What makes this possible is every affiliate of every site signs the same agreement. There is no need to sign a new agreement every time you want to use the results from other universities in the I/UCRC or want to collaborate with other universities or affiliates. We all have substantially the same agreements. Moreover, because we have the same agreement across all the sites, you have the same industry advisory board (IAB) rights in the I/UCRC as you enjoy in the S²ERC at Georgetown.
HAS ANYONE ELSE SIGNED THIS AGREEMENT?
The NSF insists on all I/UCRCs having substantially the same agreement to encourage inter-center project collaboration. Collaboration is much easier if all affiliates, no matter what center they belong to, have the same expectations for participation, reporting, and intellectual property rights for any project they get involved in.
In over 35 years of the I/UCRC program, over 1,100 companies have signed this agreement in one form or another. If you are from a large company, check with your legal department. You may well find someone in a division in your company has already signed this selfsame agreement, or one just like it. For that matter, your company may have forgotten it signed an agreement. Contact the center co-director for more information.
All of the current S²ERC affiliates, which is close to 30 enterprises, have signed the same affiliation agreement that you see. None of them have any deviations from the agreement as given to you.
WHAT PRECISELY AM I BUYING?
The funds you deliver to the Georgetown S²ERC site funds various research projects conducted under the auspices of the Security and Software Engineering Research Center at Georgetown. Affiliates pay money into the S²ERC at Georgetown to fund projects that are of interest to the affiliate. There is a minimum investment of $40,000 per year. Many projects are considerably more expensive than $40,000. Some projects may cost less than $40,000.
Besides funding research at Georgetown, you are recognized with one IAB vote with a minimum $40,000 investment and two IAB votes with a minimum $80,000 investment. Note that these are minimum figures. Affiliates at Georgetown have made payments in excess of $250,000.
The IAB provides input as to where your research dollars get spent. Some projects may span multiple years. Some projects complete ahead of schedule. Some projects run over budget. Because of this, the final, day-to-day spending of funds is the responsibility of the site director. Moreover, funds paid in one fiscal year may be used in a subsequent fiscal year. The IAB is kept abreast of funding and spending.
In summary, what you are doing is paying money into a pool that funds particular research projects that you choose. While we do our best to match budget to funding, we may shift the timing, or, with your knowledge, what projects get funded with your money.
WHAT ARE THE INTELLECTUAL PROPERTY PROVISIONS IN THE AFFILIATION AGREEMENT?
In lay terms, the intellectual property provisions in Paragraphs F and G state:
- Georgetown owns all intellectual property, whether or not patent or copyright protection is available, arising out of research performed by the S²ERC done at Georgetown.
- All affiliates have non-exclusive, royalty-free rights to use all intellectual property arising out of research performed by the S²ERC, subject to the next bullet.
- An affiliate, with the approval of all current S²ERC affiliates, can negotiate with Georgetown to have an exclusive, royalty-bearing license for intellectual property arising out of research performed by the S²ERC at Georgetown. The affiliate will also pay for any and all costs associated with securing and enforcing a patent (if any) for protecting the intellectual property.
HAS ANY S2ERC SITE EVER FILED FOR A PATENT RELATED TO S2ERC RESEARCH?
Georgetown recently joined the NSF-sponsored S²ERC. Before becoming the S2ERC, Ball State and Iowa State were part of the NSF-sponsored Software Engineering Research Center, or SERC. In the close to 30-year history of the (Security and) Software Engineering Research Center I/UCRC, there has never been intellectual property filed related to SERC or S²ERC research asserted against a S2ERC member.
DOES THE LACK OF S²ERC PATENTS INDICATE A LACK OF INNOVATION?
Absolutely not! Affiliates in the S²ERC have a measured return of 7- to 10-times on investment. S²ERC research has won awards from the NSF and others. Many affiliates have incorporated the results of S²ERC research into their processes and products. Most importantly, affiliates renew year-after-year. Some of the original SERC affiliates are still in the program, after 30 years.
The lack of S²ERC patents is the result of affiliates acting rationally and in their best self-interest. It makes little sense to negotiate an exclusive license and pay for the patent costs if an affiliate is not interested in exclusive licensing or asserting any rights under the license. It is free already, so why pay for a patent? In the case where it might make sense for an affiliate to negotiate an exclusive license and assert rights, the protections offered by the Affiliation Agreement means an affiliate can ensure the intellectual property is protected and licensable.
WHAT DO I DO IF I WANT AN EXCLUSIVE LICENSE TO A S2ERC INVENTION?
One of the benefits of S²ERC membership is the possibility of licensing S2ERC inventions on an exclusive basis. If an affiliate desires a license, they can negotiate for an exclusive option and then an exclusive license with the university that developed the intellectual property. Per the Affiliation Agreement, the affiliate pays for all patent expenses, including legal fees, filing fees, search fees, enforcement actions, etc. Over and above that, the terms for an exclusive license also include the payment of appropriate royalties to the University. The IAB is made aware of any licensing requests, so other affiliates will be aware of such negotiations. Note this is a center-wide policy. If research at another university is of interest, you can contact that university. Again, all IAB members from all sites will be aware and have to approve of any exclusive licensing requests.