Universities’ Shifting View of IP in SRAs

Laura's fellow panelists (l to r): Kevin Wozniak, Holly Meadows, and Carla Lema Tome

Laura’s fellow panelists (l to r): Kevin Wozniak, Holly Meadows, and Carla Lema Tome

Last week I was invited to participate on a panel at the 2014 AUTM® national meeting. The focus: How university technology transfer offices (TTOs) are shifting their view of intellectual property (IP) terms when securing R&D funding through sponsored research agreements (SRAs). My fellow panelists and I discussed the current models at various universities. Here’s an overview.

Releasing IP Rights to Sponsors – Penn State

With its late-2011 policy to give IP rights to the sponsor in SRAs, Penn State is considered the precedent-setter. Below is a slide from Holly Meadows’s presentation that nicely summarizes the net effect of Penn State’s policy and their four rules of industry engagement. The two-step licensing option mentioned in the third rule relates to the next model discussed.

HollyMeadowsSlide-PSUNetEffect_AUTM2014

 

Options A and B – Univ. of Minnesota and N.C. State

Option A, which Minnesota calls MN-IP Create, involves a research engagement fee of $15K or 10% of the SRA’s value (whichever is greater) with pre-negotiated fees and terms for a license agreement. Option B is the traditional partnership agreement with no preset terms.

Master Agreements Create a “Concierge” Approach – Univ. of Alabama at Birmingham (UAB)

UAB uses master agreements that enable a sponsor to provide funding over several years while allowing for IP treatment to vary in the individual projects. UAB also proactively creates “collisions” (I love this term!) between faculty and industry players to foster collaborations.

Work for Hire – Wake Forest Innovations

As Carla Lema Tome explained, WFI is the commercialization arm of Wake Forest Baptist Medical Center. It “structures, promotes, and negotiates fee‐for-service contracts for industry to use the medical center’s scientific assets. No research project sponsorship is contracted through this mechanism.”

Unified Teams and a Contract Continuum – Georgia Tech Research Corp.

Recently reorganized, the Office of Industry Engagement contains three teams:

  • Innovation Commercialization and Translational Research (ICTR)
  • Industry Collaborations and Affiliated Licenses (ICAL)
  • International Contracts and Technology Transfer (ICTT)

In addition to bringing together these previously separate groups, Georgia Tech’s model focuses on the “Contract Continuum,” which expands collaboration well beyond Basic Research agreements. As summarized in this brochure, options now are available for Applied Research agreements, Technology Demonstration agreements, and Specialized Testing agreements. (Fuentek worked with Georgia Tech on how to effectively communicate industry research opportunities to prospective partners, so feel free to contact us for more information.)

Play Nice with the SRO

It was standing-room-only in the AUTM2014 session.

It was standing-room-only in the AUTM2014 session.

Session attendees had lots of questions about how to implement these models. One recurring theme was about the need for a university’s TTO and sponsored research office (SRO) to work together. This is where Georgia Tech’s effort to bring licensing and SRA activities under one roof (literally and figuratively) pays off. However, this type of consolidation is by no means essential.

It’s important to remember that you’re all part of the same team, even if you’re separate organizations within the university. In many cases, the barriers between TTOs and SROs are caused by misconceptions. This is similar to the misunderstandings that can occur when industry doesn’t know about the limitations a university must operate under.

Instead of allowing these obstacles to solidify, have an in-person meeting with the SRO to share what each organization’s strengths (and limitations) are. Then you can find a way to work together. For example, when we worked with a university TTO in this realm, we helped the SRO realize: Oh! It’s not that you won’t let us do this, it’s that we are not allowed to do it under specific circumstances.

Avoid Running Afoul of the IRS

An important step in collaborating with the SRO is to jointly draft some standard/template language so that future IP-modified SRAs comply with all of the IRS rules surrounding corporate-sponsored research in a building paid for with publicly issued bonds. Ensuring that everyone understands what can and cannot be done when sponsored research involves a state-funded building will go a long way toward ensuring the success of your university’s SRAs and being easier for businesses to work with.

A Shifting Mindset

I was pleased and intrigued by the audience’s can-do attitude when it came to shifting the IP terms in SRAs. I think if we’d held this session a year or two ago, the sentiment would have been overwhelmingly: “You can’t do this kind of thing because of the bonded-building/IRS issues.” It’s clear that TTOs have come around to the notion that not only can SRAs with more business-friendly IP terms be done, they must be part of the overall strategy.

This is not to say that the IRS problem has gone away. In fact, it was a little unnerving that this didn’t come up at all until the moderator brought it up as the last topic (kudos to Kevin Wozniak!). As long as a can-do attitude is accompanied by a well-informed effort, IP terms in an SRA can be structured so that they don’t jeopardize a state-funded building and run afoul of the IRS.

We at Fuentek have helped several universities deal with this issue. Feel free to contact us to discuss how we can help yours shift gears without stalling. Read more about what we do.

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Posted by Laura Schoppe

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