OSR-Evanston Standard Research Agreement

1. OSR-Evanston Standard Research Agreement OSR-Evanston Quarterly Network Tuesday, November 19, 2013 Ben Frey Senior Contract and Grant Officer Office for Sponsored Research, Evanston Campus

2. Why have a Standard Research Agreement? • A predictable starting point for negotiations offering terms favorable to the University • Helps set sponsor expectations about the business and legal framework of a nonprofit, tax-exempt educational institution working in the public interest • Sponsors commonly request them • And sign them! • It is negotiable…to a degree

3. Research Agreement Components • Statement of Work • Budget • Research agreement It is important that each component “talks” to the others!

4. Starting Questions • What kind of sponsor is it? • Industry • Is federal or state funding involved? (Not always obvious!) • International • Has Northwestern dealt with the sponsor in the past? • Will Northwestern be able to publish the research results? • Who owns the results, deliverables, and inventions? • Is this fundamental, unclassified research, suitable for Northwestern?

5. Overarching Goals • Facilitate successful relationships with a range of sponsors • University currently focusing on corporate-funded sponsored research • Disseminate results • Own intellectual property and use for academic/research purposes • Leverage IP in commercial market (INVO helps here) • Limit University liability • Mitigate costs and risk in future disputes

6. Standard Research Agreement Terms • Term • Funding/Payment • Intellectual Property • Confidentiality • Publication • Termination • Indemnification / Liability • Publicity • Notice • Miscellaneous

7. Funding Terms • Cost-Reimbursable (preferred) • Best suited for open-ended, hypothesis-driven research • Northwestern is paid on the basis of invoices representing financial information (expenditures) • Least risky contract type for Northwestern • Fixed-Price • More like commercial transaction • Northwestern is paid on the basis of invoices representing technical information (deliverables) • 50% up front, 40% upon milestone, remainder when we complete • Risk of exceeding budget to provide deliverables (such as re-performance obligations, etc.)

8. Freedom to Publish • Northwestern subscribes to the principles of academic freedom stated by the American Association of University Professors (AAUP) • Professors entitled to full freedom in research and in the publication of results, subject to the adequate performance of their academic duties • Freedom to publish serves the scientific community as a whole, as well as the public • Northwestern’s need to publish can present challenges in working with industry, but not usually insurmountable

9. Publication Terms • Unrestricted right to publish methods, data, and results of research in academic and scholarly publications • Research results cannot be designated sponsor “confidential information” • Reasonable period for sponsor to review materials before publication (≤90 days) • Sponsor cannot edit or influence results • Distinction between publication/publicity

10. Confidentiality Terms • It is necessary sometimes for confidential information to be exchanged as part of the performance of a research project • Scope of the confidential information provided should not be overly broad • Must be marked in writing as confidential when disclosed, or shortly thereafter • Finite period for disclosing and protecting confidential information • Sponsor may review intended publications for a limited time period to ensure no confidential information is being released • Occasionally, parties enter into a non-disclosure agreement (NDA) in advance of the research agreement

11. Intellectual Property Terms • Northwestern is the sole owner of the inventions Northwestern personnel solely create • Sponsor is the sole owner of the inventions sponsor personnel solely create • Northwestern and Sponsor are joint owners of the inventions jointly created by Northwestern and Sponsor personnel • Each party presumed to own its own background IP

12. Intellectual Property Terms • Northwestern (INVO) handles patent prosecution for Northwestern and joint inventions • Generally, if a sponsor wants a patent filed, it pays the relevant fees • Otherwise, Northwestern can file a patent application at its own expense • Flexibility on who handles/pays forprosecution

13. Intellectual Property Terms • In exchange for funding research, sponsors commonly expect/receive a non-exclusive, royalty-free (“NERF”) license • Option to negotiate exclusive royalty-bearing license • NU license may set geographic or field-of-use restrictions • Northwestern MUST retain license rights to use inventions for research and educational purposes • May have rights under Bayh-Dole Act

14. Termination Terms • Each party should be able to terminate freely (“for convenience”) with reasonable notice • Sponsor pays non-cancelable obligations (often personnel costs • The termination of a sponsored research project is uncommon

15. Liability Terms • Work done on a reasonable efforts or best efforts basis • Northwestern makes no representations or warranties about the work done under the project; research results are provided “as-is” • Northwestern’s liability limited to the value of the research agreement • Sponsor indemnifies Northwestern for either party’s actions other than Northwestern’s gross negligence • At minimum, Northwestern should not be liable for Sponsor’s actions

16. Export Control Terms • Northwestern conducts research openly; no sensitive or classified work • The ability to publish freely underpins this • As do the University’s non-discrimination policies • Increasing work under government contracts, international collaborations and industry sponsorship can more often raise export control issues • Fundamental Research Exclusion • Coordination with new Office for Export Controls Compliance (OECC), led by Lane Campbell, Director

17. Other Terms • Governing law: Illinois state law or leave unspecified • Dispute resolution: Arbitration preferred • Jurisdiction: Illinois or leave unspecified

18. How Flexible Is This Agreement? • Not intended to cover all circumstances and projects • Starting point for negotiations; the sponsor may also have their preferred (or inflexible) terms • Publication terms are largely non-negotiable, except for logistics • IP terms may be more flexible and will depend on the statement of work, technology and business issues • Legal terms reflect Northwestern’s nonprofit status; disclaimer of warranty and limitation of liability very important • Opportunities must be weighed with risks • Agreement risks may require PI, department chair and dean’s office approval/guarantee

19. Tips for Agreement Processing • Agreements are most easily processed by OSR when we were involved at the proposal stage • Please forward the statement of work and budget to OSR along with your agreement request or draft • Feel free to flag any issues of concern to OSR • InfoEd agreement screens and GM055s can provide updated information on the status of your agreement

20. Questions?