Agreements

Introduction

Caltech/JPL enters into a variety of agreements to arrive at a mutually beneficial research and business arrangements with outside parties, including industry partners. These agreements are intended to benefit Caltech/JPL, NASA, the industry partner, and the general public.

License Agreements

Caltech is interested in licensing its intellectual property so that the research performed at Caltech and JPL will be commercialized for the greatest public benefit. The goal is to produce a win-win-win for our licensees, Caltech, and the public.

Caltech/JPL licenses technology on reasonable terms in a professional negotiation process with our industry partners. When arriving at an agreement, we consider the nature of the innovation, the stage of the technology, and the needs of the licensee to arrive at a mutually beneficial business arrangement. If you are interested in discussing a license agreement, please contact Dan Broderick.

Space Act Agreement

The Space Act Agreement is an agreement between NASA and a research sponsor, and it allows the sponsor to make use of NASA scientists and facilities for the benefit of the sponsor and NASA.

Under the JPL Space Act Agreement, the sponsor is granted rights to use the technology developed under the Space Act Agreement only for noncommercial internal use purposes.

If you are interested in entering into a Space Act Agreement with an industrial partner, please contact Ken Wolfenbarger. Also, you may consult the CMS document titled “Doing Business with JPL”.

Space Act Agreement Option

Research sponsors entering into a Space Act Agreement require commercial rights to intellectual property if they plan to commercialize the technology developed under the Space Act Agreement beyond government contracting. Caltech will enter into an Option Agreement with the sponsor that provides the sponsor the right to an exclusive or nonexclusive commercial license to the intellectual property created under the research. Typically, Caltech will grant an option to an exclusive license for foreground intellectual property (technology developed under the Space Act Agreement). JPL will also make a reasonable effort to identify and include an option to a nonexclusive license to the intellectual property already owned by Caltech that may be useful or necessary to practice the foreground intellectual property (the background intellectual property).

Startup Option Agreement

Entrepreneurs that need to raise funds to start their business may enter into a Startup Option Agreement with Caltech. The Option Agreement gives the entrepreneur a certain amount of time (typically one year) to write a business plan, raise capital, and start their company, after which they can enter into a license Agreement with Caltech on pre-defined terms. The Startup Option Agreement is similar to the standard Option Agreement except that it may include equity and improvements to the license technology

Standard Option Agreement

A company that is interested in a license to Caltech/JPL intellectual property may need time to perform internal validation of the technology and initiate a development program before embarking on a license to develop innovative new products. An Option Agreement provides the optionee an agreed upon time period to do this, with predefined license terms so that they can hit the ground running when they are ready to license.

Nondisclosure Agreements

JPL and a third party may need to disclose confidential information to each other in order to effectively move forward with a research proposal, and may therefore enter into a Nondisclosure Agreement (NDA). The Contract Management Section handles JPL NDAs, and the Nondisclosure Agreement Request Form is at: nda.jpl.nasa.gov

If a potential licensee is interested in receiving a confidential patent application, a Caltech NDA may be entered into. Please contact Dan Broderick for Caltech NDAs.

Memorandum of Understanding (MOU)

A Memorandum of Understanding (MOU) may be entered into with JPL/Caltech and a research sponsor that expresses the mutual understanding of expectations towards a common objective. An example of an MOU would be the intent to perform research that draws on the synergistic and collaborative research strengths of JPL and an industry partner, including general research objectives, intellectual property rights, publication rights, and projected expenses. There are occasions when a large research sponsor may require an MOU for approval at a high organizational level before formal contracts (such as a Space Act Agreement or Option Agreement) may be negotiated and signed.

Material Transfer Agreements

If you need to send or receive proprietary materials to or from a third party, please see innovation.caltech.edu/patents-licensing/mtas