Industry-University IP Transactions: Maximizing Collaborative Potential

1. Industry – University Transactions: Rights to Future Intellectual Property Varda N. Main Director, Technology Licensing Rochester Institute of Technology Industry – University Transactions Committee LES 2002 Annual Meeting

2. Achieving Win-Win Collaborative Relationships • Relationships between not-for-profits and for-profits • Collaborative research • Other partnering arrangements • Directed, sponsored research • Contractor or consultant

3. Differing World Views • Academic • Advancement of science • Experience for students • Working with colleagues • Corporate • Competitive advantages

4. Rights to Future Intellectual Property • What rights does the academic partner really need? • What rights does the corporate partner really need?

5. Rights to Future IP: University Needs • Ability to publish and give presentations in a timely manner • Timing of publications and presentations • Delay may effect ability to get needed grants • Delay may effect ability to attract and retain students • Delay may effect tenure and other promotion decisions • Effect of long review/approval process by sponsor • Grant submissions • Papers and talks

6. Rights to Future IP: University Needs • Freedom to continue to do research in that area • On own • In collaboration with other universities • In collaboration with other corporate sponsors • Will future research require access to BIP by collaborators?

7. Rights to Future IP: University Needs • Ability to provide students with meaningful research experiences • Need to be able to incorporate research results into thesis/dissertation/research paper • Delay may effect graduation and job search

8. Rights to Future IP: University Needs • Ability to grow IP portfolio and then to leverage it • IP portfolio enhances university reputation and ability to attract and retain quality faculty, staff and students • IP portfolio provides additional source of funding for research • Universities are not consulting shops

9. Rights to Future IP: The University View of the Corporate Needs • Ownerships of all arising IP is preferred position • Exclusivity without FOU restrictions • Exclusivity in FOU • Delayed disclosure

10. University Issues that Corporate Partners Need to Understand • Bayh-Dole Act • Who owns the IP generated by university “personnel”? • Does the university own student IP? • What if the student is first and foremost an employee of a company? • Does the university own adjunct or visiting faculty IP? • What hat is the professor wearing? • University employee? • Independent consultant?

11. University Issues that Corporate Partners Need to Understand • What can be negotiated before the research work is performed and the IP is generated? • IRS Rev. Proc. 97-14 • Will any work be done as part of a class project; e.g. capstone projects? • Will any work be done as part of thesis or dissertation work? • Who will sit on the defense committee? • Who may attend the defense?

12. Valuing Future IP • How to arrive at a fair apportioning value of the IP that is yet to be developed? • What is the value-add of the university BIP? • What is the value-add of the corporate BIP?

13. Protecting Future IP • Patenting strategy • Timing of filing patent applications • Jurisdictions • Funding for • Controlling prosecution of

14. Can it be done?Is it worth it? • ABSOLUTELY……….. • In 2000 2.7B$ of corporate sponsored research was reported by 190 universities in the AUTM Survey. • Representing ~10% of all sponsored research