TRANSMITTAL LETTER FOR BOARD MEETING OF JUNE 21, 2018
COMMITTEE ON MONITORING AND RESEARCH
Mr. John P. Murray, Acting Executive Director
Title
Authorization to enter into a Joint Ownership Agreement between the Metropolitan Water Reclamation District of Greater Chicago and the Iowa State University Research Foundation Related to Intellectual Property
Body
Dear Sir:
Authorization is requested to enter into a Joint Ownership Agreement (JOA) with the Iowa State University (ISU) Research Foundation related to intellectual property (IP) developed as a result of cooperative research efforts. The JOA will expire on its own when the last of the intellectual property rights that are the subject of the JOA expire.
The Board of Regents of ISU and the Metropolitan Water Reclamation District of Greater Chicago (District) entered into a Master Agreement (MA) dated February 6, 2014, and amended January 5, 2017, for the purpose of conducting research projects under a Research Project Specification. Under the MA, ISU has been providing research and other services in, but not limited to, the following areas: nutrient recovery through algal technology; algae harvesting and separation; and beneficial use of algae. These areas were identified because they represented compliance with regulatory requirements, as well as future opportunities for the District in the areas of resource recovery and sustainable operations.
During the research projects, both ISU and the District have cooperatively developed a new application of the algal biofilm treatment system, which was not specifically included in the original Scope of Work of the Research Project Specification. This cooperative effort has resulted in IP, which identifies Dr. Kuldip Kumar and Mr. Thomas Kunetz of the District and Drs. Zhiyou Wen, Martin A. Gross, and Juan Peng of ISU, as co-developers. A joint patent application will be filed and administered by the ISU Research Foundation (ISURF) after the District’s Board of Commissioners’ enter into the JOA with the ISURF. The ISURF will manage the marketing and licensing efforts of the IP rights whereby the ISURF and the District will each receive 50 percent of all net revenues generated by the licensing of those IP rights. The ISURF and the District will share equally all costs related to the filing of IP with the United States Patent and Trademark Office. However, at this time the District will not bear any cost related to the patent application and associated undertakings, but the ISURF will deduct mutually agreed upon costs from any net revenue earned in the future prior to sharing with the District.
Approval is requested from the Board of Commissioners to enter into a Joint Ownership Agreement with the ISURF, and to grant authority to the Acting Executive Director and the Director of Monitoring and Research to execute documents as necessary to effectuate this agreement.
Requested, Edward W. Podczerwinski, Director of Monitoring and Research, EWP:KB:HZ:KK:kq/jvs
Respectfully Submitted, Kari K. Steele, Chairman Committee on Monitoring and Research
Disposition of this agenda item will be documented in the official Regular Board Meeting Minutes of the Board of Commissioners for June 21, 2018