INDUSTRY SPONSORED RESEARCH

1. INDUSTRY SPONSORED RESEARCH David Erem University of Kentucky Office of Sponsored Programs

2. Different Goals Different Philosophies • INDUSTRY: • Profit Driven • Often shorter term product and market requirements. Fast paced environment. • IP considered “Lifeblood” • Open to collaboration but wants “control” • “Work-For-Hire” is normal. • Extremely sensitive to Confidentiality of their Proprietary Information/Material.

3. UNIVERSITIES • Non-profit by charter and structure. Important to clearly maintain in view of IRS and mission. Work-For-Hire contradicts this. • Often longer-term goals for research – “Cutting Edge” – “Pie-In-The-Sky” – Sometimes immediate Practical Applications, Sometimes Not. • Control and ownership of developed IP important, especially in light of consistent compliance with Bayh-Dole, state requirements, IRS, and mission. Again, Work-For-Hire contradicts this. • Collaborative by nature – open to free exchange of ideas.

4. HOW TO RESOLVE? • FIND THE COMMON GROUND. • Be open to thinking outside the box, and negotiate or compromise what can be negotiated within university/state restrictions and policies. • Be sure industry knows your limitations – what are truly “deal-breakers” regarding terms. • Be sure industry knows your “role” – should not be seen as a “company’s lab”, but rather as a collaborating partner. • Reach out early and often!

5. HOW TO CONNECT • Companies often directly find university researchers doing work of interest in their field – at conferences, via publications, at professional meetings, sometimes through campus Tech Transfer offices. Most corporate technology mangers maintain their own ties to academia, and contact university commercialization offices. • Faculty Researchers should be pro-active in reaching out to and directly contacting prospective industry partners, to see if areas of inquiry are a good match, if a company has funds for research and specifically what kind of research. BUT – in these preliminary contacts researchers need to be very clear that only their Sponsored Research Office has the authority to negotiate specific and binding Agreement Terms & Conditions. Therefore, it’s always good to get an OSPA or Tech Transfer office involved early in the process. Can also provide a potential corporate partner with a preliminary list of terms and language either required or unacceptable.

6. HOW TO CONNECT • PI’s can also find potential corporate sponsors of research by investigating which non-profit philanthropic arms of for-profit companies have active financial support for the campus. These Non-Profit arms can possibly lead to relationships and work being sponsored directly by the for-profit mother company via research agreements (rather than gifts).

7. Areas of Concern in Negotiating Research Agreements with Industry • Type of Agreement (Fixed price, Cost Reimburseable, etc.) and method of payment. • Term of Performance • “Best Effort” versus Must Perform and Deliver! • “Work-For-Hire” - not acceptable. • Publication Restriction Clauses – “comment versus approval” – affects not just Not-For-Profit status but also could impact Export Compliance!

8. Areas of Concern in Negotiating Research Agreements with Industry • Intellectual Property – probably most important issue. • Background IP – no rights granted unless explicitly stated. • University should own IP it develops, and offer industry sponsor an option to negotiate license. • Company will often want to own all IP, consider all IP joint, or have a automatic NERF to all university developed IP with an option to negotiate an exclusive license. Philosophies and policies regarding NERFs vary at each institution.

9. Areas of Concern in Negotiating Research Agreements with Industry • Confidentiality - proprietary information should be identified as such in writing! • Disputes – should have a clearly defined process for handling disputes. Most public universities cannot accept binding Arbitration. • Default/Re-Work/Acceptance versus Termination for Convenience • Indemnification • Venue/Choice of Law

10. What Does Company Get • All reports, deliverables and data in deliverables per the specific Statement of Work. • Option to negotiate either non-exclusive or exclusive license to university-developed IP. • Connections to technically competent students involved in the specific research for possible future recruitment. • Proven partner in the university for longer term technology development efforts.

11. What Does University Get • Support (financial and technical) for research ideas. • Support for educational mission (students). • Real World connection and possible applications for developing research ideas. “Synergy” • Commercialization partners.

12. The Win-Win • University gets financial support, first option commercialization partner and the synergy of working with a real world company. • Company gets access to cutting edge research, first option to licensing new IP, connection to trained students for possible recruitment.