UIDP University-Industry Demonstration Partnership THE UIDP UNIVERSITY – INDUSTRY DEMONSTRATION PARTNERSHIP 12 July 2007 James J. Casey,

UIDPUniversity-Industry Demonstration Partnership

http://www.uidp.org

THE UIDP UNIVERSITY – INDUSTRY

DEMONSTRATION PARTNERSHIP

12 July 2007

James J. Casey, Jr., Esq. Attorney and Consultant

Board of Directors, NCURAMilwaukee, WI, [email protected]


http://www.uidp.org

Agenda

• Introduction• University-Industry

Congress/Partnership• University-Industry

Demonstration Partnership– Special Focus: TurboNegotiator

• Summary


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University-Industry Congress2003 - 2006

Joint Sponsorship•Government – University – Industry

Research Roundtable (GUIRR)

• Industrial Research Institute (IRI)

•National Council of University Research Administrators (NCURA)


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University-Industry Congress

• Focused On:– Challenges becoming

successes – Building trust and

teamwork– Defining and prioritizing

the issues– Finding a “Common

Cause”– Developing flexibility– Building on existing

efforts:• Working Together,

Creating Knowledge (BHEF)

• Responsible Partnering (EIRMA)

• Issues:– Understanding core

missions that are fundamentally distinct and occasionally opposed

– Understanding each party’s bottom line

– Moving science into commerce

– Old questions, new solutions

– Moving from “policy” to “reason”


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PROBLEM

Negotiation of sponsored research agreements is a barrier to industry-university research collaboration in the United States.


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Why Is It So Hardto Negotiate IP?

• Negotiation of intellectual property rights in sponsored research agreements has become a barrier to industry-university research collaboration in the United States.– more contentious– takes longer– increases transactional costs– little/no benefit results


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Policy Impacts Revenue and Partnerships

Strong IP ControlFlexible IP Position

Private Research Funding

Potential Licensing Income

University Industry University Industry

More Creative Research

Less Groundbreaking ResultsMore

CollaborationsFewer

Collaborations


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So what’s happening today?

•“A three-decades-long trend of increasingly strong ties between industry and universities may have ended.”

From NSF InfoBrief Published September 2006


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Academic R&D from Industry

From NSF InfoBrief Published January 2007


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U.S. R&D, Source of Funds: 1953–2002

SOURCE: National Science Board, Science and Engineering Indicators-2006

Con

stan

t 2

00

0 D

oll

ars

in

bil

lion

s


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Sponsored Research Funding Exceeds

Licensing Revenue

Source - Source - AUTM Licensing Survey, Fiscal Year 2004AUTM Licensing Survey, Fiscal Year 2004

Ind

ust

ry S

po

nso

red

R

esea

rch

(Mill

ion

s o

f $)

Net

Lic

ense

In

com

e(M

illi

on

s o

f $)

-

500

1,000

1,500

2,000

2,500

3,000

1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004


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Are Foreign Universities More “Sponsor Friendly” ?

US Universities

31%

69%

Foreign Universities

85%

15%

Sole university inventions assignedto Dow or owned jointly

Sole university inventions solelyowned by University


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UIDP – Potential Benefits

• Improve the research relationship between industry and universities, in general and in particular (focus right now is not on licensing of existing U tech funded by Feds)

• Attract more funding from I to U • Improve American innovation and

competitiveness• Deliver solutions, not just talk


http://www.uidp.org

UIDP focuses on collaborative beta-testing of new approaches to sponsored research, licensing arrangements, strategic U-I

partnerships.• There will be a broad

information-sharing forum on latest news, best practices, etc.

• Working groups will be focused on designing institutional experiments.

• UIDP is modeled on the 20-year success of the Federal Demonstration Partnership in driving institutional change on a national level. (www.thefdp.org)

Forum

Demonstrations


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How to Improve theAgreement Process

• Negotiators should know more about the proposed project than a written statement of work– Why do the researchers want to work together?– Who framed the problem? – Who made creative contributions to the statement of

work?– Who has Background IP? – Who has key information or materials or prior research

results needed for the project to happen?

• The terms proposed should be appropriate for the facts of the situation.


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Paradigm Shift

• Current paradigm: negotiations are

policy based– partner has an IP policy that drives

terms and conditions in agreements

• New paradigm: negotiations are principle based– partner decides what parameters

should be considered in deriving appropriate terms and conditions


http://www.uidp.org

Project Parameters• Who had the idea for the research project

(professor, sponsor, both together)• Who has background technology and/or IP• Type and importance of non-financial

contributions from sponsor (proprietary information, non-commercial materials, results from in-house research, etc)

• Type and importance of non-labor contributions from university (specialized equipment/facilities, building on prior research results, etc)

• Nature of research (fundamental to applied)• Scientific discipline (biology, chemistry,

biomedical engineering, civil engineering, etc.)• Likelihood/expectation of inventions


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Evaluate/Map: Example

Nature of Research

1-1

1 = Fundamental-1 = Applied

1 = high probability of patent-1 = low probability of patent

Invention Probability1

-1SOW: “Identify cause of problem with existing company product.” (-1, -1, -1)

Relative Investment1

-1

1 = high for University-1 = high for Sponsor

ProjectSpace


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How TurboNegotiatorWould Work

– Define and describe “Project Space”– Populate Project Space with examples of

suitable agreement terms– Develop a questionnaire to probe parameters

for any project, use answers to map that project onto the corresponding sector in Project Space

– Develop software that can guide the process• ask questions; input provided by stakeholders • use responses to map project to a sector• provide the example agreement terms for that sector

– may include explanations and +/- for choices


http://www.uidp.org

TurboNegotiatorWhat It Is…

• Rational basis for building an agreement– use example terms as the starting place for a negotiation

• A process rather than a solution– improves understanding of parties’ needs and

contributions

• Interactive– should encourage discussion and include input from all key

stakeholders – all the people needed to answer the questions

• professor/company researchers• contracting officer/negotiator

• Constructive– suggests terms that are fair and reasonable– negotiation takes less time– project gets started faster; could include time-to-

agreement metric


http://www.uidp.org

TurboNegotiatorWhat It Is Not…

• Proscriptive– is not the “right” answer or the only

answer

• Coercive– if either party is not happy with the

outcome the parties can walk away or take a different approach

• Forcing a win-lose outcome


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TN: Summary Features

• Ability to quickly craft an individualized agreement

• Accepts that K negotiators are under trained-hands on resource and tool

• Requires parties to agree on project scope before proceeding to clause selection

• Measures its own success by a “time to agreement” module (tickler file)


http://www.uidp.org

Summary

• UIDP represents solution-based, incremental focus on U/I collaboration

• TN needs more development but represents a strong move forward

• Education/Training remains important in both sectors

• Communication remains critical


http://www.uidp.org

QUESTIONS?

Documents

UIDP University-Industry Demonstration Partnership THE UIDP UNIVERSITY – INDUSTRY DEMONSTRATION PARTNERSHIP 12 July 2007 James J. Casey,