An inter-institutional agreement (IIA) for a jointly owned invention is the contract two or more research institutions sign when their researchers co-invent something patentable and each institution ends up holding a share of title. It answers the questions a patent’s default legal rules leave open: which institution takes the lead on filing and prosecuting the patent, how the two (or more) parties split the resulting costs, how they split any licensing revenue, and who has the authority to actually sign a license with a company. Without one, each co-owner is legally free to license the invention on its own — without asking, and without paying the other institution a cent.
This guide covers the joint-ownership use of the term specifically. “Inter-institutional agreement” is also used more loosely for non-funded research collaborations and for allocating single-IRB review responsibilities in multi-site human-subjects studies; those scenarios are covered in CASRAI’s guide to managing multi-institutional research collaborations. This page is about the version technology transfer offices negotiate when a patent, and the money it might eventually generate, belongs to more than one institution.
The Core Terms an IIA for a Jointly Owned Invention Should Cover
| Provision | What it decides | Default if left unaddressed |
|---|---|---|
| Lead institution / prosecution control | Which party’s patent counsel drafts, files, and manages office actions with the patent office | No default — both institutions have an independent right to file, risking duplicate or conflicting applications |
| Cost-sharing | How filing, prosecution, and maintenance fees are split or advanced by the lead institution and reimbursed | No default — costs fall wherever counsel happens to be engaged |
| Revenue sharing | How licensing income is divided between the co-owning institutions, and whether patent costs are recovered first | No default — each co-owner keeps whatever it independently earns |
| Licensing authority | Whether one institution can grant a license alone, or both must consent; exclusivity and field-of-use sign-off | Under 35 U.S.C. 262, each co-owner may license or practice the invention without the consent of, and without accounting to, the other owner |
| Inventor assignment | Confirms each institution has a valid, executed assignment from its own inventors before the IIA is signed | No default — a missing assignment breaks the chain of title regardless of what the IIA says |
| Federal-funding flow-through | Where either institution’s contribution was federally funded, which party owns Bayh-Dole election-of-title, disclosure, and government-license obligations for its share | Each federally funded co-owner independently carries its own Bayh-Dole obligations under 37 CFR 401.14, regardless of what the other institution does |
| Dispute resolution | How the parties break a deadlock — e.g., over accepting a specific license offer — without either side being able to unilaterally veto or unilaterally license around the other | No default — disputes fall back to general contract or property law |
Why the Agreement Is Necessary: the Default Rule Under Patent Law
US patent law does not treat joint ownership of a patent the way it treats joint ownership of real property. There is no built-in duty for one co-owner to share proceeds with the other, and no requirement that one co-owner ask permission before dealing with the invention. The controlling statute, 35 U.S.C. § 262, states it plainly:
“In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.”
Read literally, that means Institution A could grant a royalty-bearing exclusive license to a company on its own, and Institution B — despite owning an equal share of the same patent — would have no statutory right to a cut of that royalty and no ability to block the deal. It also means Institution B could turn around and license the same technology to a direct competitor. As a general matter of patent law, courts have also required that all co-owners join as plaintiffs to bring an infringement suit, which means a single reluctant co-owner can effectively block enforcement against an infringer unless the IIA specifies otherwise. An IIA is the “agreement to the contrary” the statute contemplates: it is the only way to convert those default, unilateral rights into a coordinated arrangement both institutions can rely on.
How Jointly Owned Inventions Arise
Joint ownership between institutions typically shows up in a handful of recurring situations:
- Collaborative research under a sponsored research agreement or research collaboration agreement. Researchers at two institutions working on a jointly designed project each contribute inventive input to the same invention. See CASRAI’s guide to research collaboration agreements and the related walkthrough of collaborative research contract key clauses.
- Multi-site clinical or translational research, where investigators at a coordinating center and one or more participating sites jointly conceive an improvement to a device, assay, or protocol.
- Core-facility or shared-instrumentation collaborations, where staff at a shared resource (sometimes housed at a third institution) contribute inventive work alongside a PI’s own lab.
- Federal cooperative agreements or CRADAs where a federal laboratory and a non-federal institution jointly conceive an invention — see CASRAI’s guide to CRADAs, which carry their own separate government-rights structure alongside any joint-ownership terms.
Ownership follows inventorship, not funding or institutional affiliation: if a researcher at Institution A and a researcher at Institution B are each named inventors on the same patent application because each contributed to at least one claim, both of their employing institutions become co-owners once each researcher has assigned their rights to their own institution (assuming, as is standard at most US research institutions, that faculty and staff are contractually obligated to assign inventions to their employer). Determining accurate inventorship first is a prerequisite to everything else in this guide — see CASRAI’s guide to prior art searching and the broader patentability fundamentals it sits alongside for how institutions typically screen a disclosure before deciding to file.
Core Provisions, in Detail
1. Lead institution and prosecution control
Nearly every IIA for a jointly owned invention designates one institution as the “lead” or “managing” party responsible for engaging patent counsel, making filing decisions, and responding to office actions, with the other institution granted consultation and consent rights over major decisions (abandoning a claim, narrowing scope, foreign filing). Lead-institution selection is often practical rather than principled — whichever TTO’s inventor made first disclosure, or whichever institution already has outside counsel engaged on a related filing, commonly takes the role.
2. Cost-sharing
The lead institution typically advances filing, prosecution, and maintenance costs and is reimbursed by the other institution according to a formula set in the IIA — often proportional to each institution’s ownership share, though a flat 50/50 split regardless of inventive-contribution percentage is also common in practice. Many agreements let the non-lead institution decline to fund continued prosecution or maintenance in a specific country, converting its interest there to something closer to a license-back or a reduced share, rather than forcing a co-owner to fund patent costs it doesn’t want.
3. Revenue sharing
Most IIAs recover patent costs from licensing revenue before splitting the remainder, then divide what’s left according to each institution’s ownership percentage — commonly an even split, though pro-rata-to-inventive-contribution formulas also appear. This is a distinct question from how each institution then divides its own share internally between the inventor, department, and institution — see CASRAI’s guide to the commonly used “one-third rule” for that separate, single-institution allocation.
4. Licensing authority
This is the provision that directly overrides the 35 U.S.C. 262 default described above. Most IIAs designate one institution (usually the lead) as the party authorized to negotiate and execute licenses on behalf of both, subject to the other institution’s consent for exclusive licenses, licenses in the other institution’s field of primary interest, or licenses to specified competitors. A smaller number of agreements instead require joint execution of every license. Either approach is a deliberate override of the statutory default — the IIA is what makes it enforceable between the parties, since Section 262 itself imposes no such restriction absent agreement.
5. Federal-funding flow-through
Where a co-owner’s contribution to the invention was made under a federal award, that institution’s own Bayh-Dole obligations under the Bayh-Dole Act and its implementing regulation at 37 CFR 401.14 — disclosure, election of title, the government’s retained license, and utilization reporting — travel with that institution’s share regardless of what the IIA says. A well-drafted IIA references each institution’s independent federal-compliance obligations rather than trying to merge them, and confirms each side has met its own iEdison disclosure and reporting requirements; see CASRAI’s guides to iEdison invention reporting and the Final Invention Statement and Certification for the mechanics.
6. Dispute resolution and deadlock-breaking
Because Section 262 gives each co-owner an independent right to act unilaterally, a poorly drafted IIA can leave the parties worse off than no agreement at all if it imposes a consent requirement without a way to break a deadlock. Better-drafted agreements include a defined escalation path (named signatories from each TTO, then institutional leadership) and a time-bound “deemed consent” clause so that a non-responsive co-owner cannot indefinitely block a license decision.
A Typical Negotiation Workflow
- Confirm inventorship and chain of title. Each institution verifies its named inventors have executed a valid assignment before any joint-ownership term is negotiated.
- Identify each institution’s federal-funding posture. Determine whether either side’s contribution was federally funded and therefore Bayh-Dole-encumbered.
- Agree on the lead institution. Usually settled early, often by whichever TTO already has outside counsel engaged or received first disclosure.
- Negotiate the ownership percentage. Based on relative inventive contribution where determinable, or an even split by default.
- Draft cost-sharing, revenue-sharing, and licensing-authority clauses using the ownership split as the baseline, then adjust for practical constraints (e.g., one institution’s inability to fund foreign filing).
- Add the dispute-resolution and deemed-consent mechanics before execution, not after a licensing opportunity is already on the table.
- Route the signed IIA to both institutions’ contracting authorities (typically the TTO, not the sponsored programs office, since this instrument governs IP rather than funding) and file it against the invention disclosure record.
IIA vs. Other Research-Administration Agreements
| Instrument | Governs | Typically negotiated by |
|---|---|---|
| Inter-institutional agreement (joint-ownership use) | Ownership, cost-sharing, revenue split, and licensing authority for an invention co-owned by two or more institutions | Technology transfer office |
| Research collaboration agreement (RCA) | The scope, roles, background/foreground IP, and publication terms of a joint research project itself | Sponsored programs office (often with TTO input on the IP clauses) |
| Material transfer agreement (MTA) | Transfer of physical research materials between institutions, with no joint invention contemplated | Sponsored programs or TTO, depending on institutional policy |
| CRADA | Joint research between a federal laboratory and a non-federal party, including its own separate government-rights structure | Federal laboratory’s technology transfer office |
| Patent license agreement | The terms on which a single owner (or co-owners acting jointly) grants a third party rights to practice the patent | Technology transfer office |
For the underlying IP-ownership concepts an IIA sits on top of, see CASRAI’s comparison of background IP vs. foreground IP and the guide to Bayh-Dole march-in rights for how government rights interact with a licensed, jointly owned invention.
Frequently Asked Questions
Is an inter-institutional agreement the same as joint ownership of a patent?
No. Joint ownership is the legal status that results once two or more institutions each hold title to a share of the same patent (or patent application). The inter-institutional agreement is the contract those institutions sign to manage that joint ownership — it doesn’t create joint ownership, it governs it.
Can one institution license a jointly owned invention without the other’s consent?
Under the default rule in 35 U.S.C. 262, yes — absent an agreement to the contrary, each co-owner can license or practice the invention independently, without the other’s consent and without owing it any share of the proceeds. An IIA is what most institutions use to override that default and require consent, joint execution, or revenue-sharing instead.
What does “lead institution” mean in an IIA?
It’s the institution designated to manage patent prosecution — engaging counsel, making filing decisions, and responding to office actions — typically in exchange for the other institution’s consent rights over major decisions and cost reimbursement for its share of the expense.
Does an IIA change either institution’s Bayh-Dole obligations?
No. Where a co-owner’s contribution was federally funded, that institution’s disclosure, election-of-title, and reporting obligations under 37 CFR 401.14 apply to its own share independently of the IIA. The IIA coordinates ownership and licensing between the parties; it does not substitute for either institution’s own federal compliance.
Who negotiates an IIA for jointly owned inventions — sponsored programs or tech transfer?
Typically the technology transfer office, since the agreement governs intellectual property rights and licensing authority rather than research funding. This is a common point of internal confusion, since the broader term “inter-institutional agreement” is also used for non-IP collaboration documents that sponsored programs offices negotiate — see CASRAI’s guide to managing multi-institutional research collaborations for how the two uses differ.
Last verified 2026-08-16. Statutory citations (35 U.S.C. 262, 37 CFR 401.14) confirmed directly against Cornell Law School’s Legal Information Institute and USPTO’s MPEP. Cost-sharing and revenue-split formulas described here reflect commonly reported technology-transfer practice rather than a single binding standard — confirm the specific formula against your own institution’s TTO policy and the counterparty institution’s before relying on a percentage.
