Creating Mutually Beneficial Relationships with Industry: Needs, Wants and Paperwork

(Louis P. Berneman, EdD, Texelerate)

Definitions and concepts

  • CDA
  • MTA
  • SRA

Commercialization of new and useful technologies is an area of common interest between academia and industry.

  • The different skill sets can be complementary in this process – from underlying mechanisms and target validation (academia) to preclinical testing and product development (industry).

Types of academic-industry agreements:

  • Material Transfer Agreement (MTA)
    • Incoming MTAs from industry can be problematic, due to restrictions on use and transfer and invention rights.
    • Check to see if your institution is a UBMTA signatory.
    • The key to success with MTAs is to communicate with the TTO in a timely manner.
    • Issues to consider:
    • How proprietary is the material?
    • Is it available from any other source? Can you buy it?
    • Are you willing to give up any rights to any improvements/discoveries/inventions using the material?
  • Faculty consulting
    • IP provisions should be subject to university IP policies. IP arising from consulting work may be assigned to company without violating university policies if university resources or facilities are not used.
    • Most institutions have policies that require clearing conflict if there is a second relationship with the company (e.g. consulting for a company that is also a licensee for your patent).
    • Work with the TTO to develop the consulting agreement and manage conflicts of interest.
  • Sponsored Research Agreement (SRA)
    • The relationship is key for a successful SRA. The investigator should agree with the company’s objectives, and there should be a project champion with some influence at the company. Communication should be frequent.
    • Non-negotiable factors: secrecy of research, indemnify university, IP ownership (except in some clinical trials)
    • Negotiable factors: publication timing, research direction, scope of work, commercial rights to IP
  • There is increasing interest from pharma in these types of arrangements with academia. Some of the bigger companies have master agreements.
  • Confidential Disclosure Agreement (CDA)
    • Can be industry to institution or institution to industry
    • Carefully consider any confidentiality agreements (e.g. negotiate to allow sharing of information with post-docs/students)
  • Patent option/license
    • Academic licensing goals
      • Facilitate the commercialization of research results for the public good
      • Reward, retain, and recruit faculty
      • Induce closer ties to industry
      • Promote economic growth
      • Generate income
    • Option – brief document granting an exclusive right to negotiate a license for a period of time
      • May include material license terms (term sheet)
      • Likely to require reimbursement of ongoing patent expenses incurred during the option period; reimbursement of sunk IP costs deferred
      • May include a small initiation fee associated with option
      • Likely will have a clause relating to the university’s retained rights in the IP
    • A license is a complex document and can take many months.
      • Key non-financial terms: scope of rights granted, patent prosecution and enforcement, diligence, risk management
      • Key financial terms: royalties, sub-license fees.
    • Non-negotiable factors: IP ownership, indemnify university, use of name, due diligence (general)
    • Negotiable factors: due diligence (specifics), fees and royalties. In life sciences, royalties on sale is highly desirable.
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