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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]
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
Agenda
• Introduction• University-Industry
Congress/Partnership• University-Industry
Demonstration Partnership– Special Focus: TurboNegotiator
• Summary
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
University-Industry Congress2003 - 2006
Joint Sponsorship•Government – University – Industry
Research Roundtable (GUIRR)
• Industrial Research Institute (IRI)
•National Council of University Research Administrators (NCURA)
UIDPUniversity-Industry Demonstration Partnership
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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”
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
PROBLEM
Negotiation of sponsored research agreements is a barrier to industry-university research collaboration in the United States.
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
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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
UIDPUniversity-Industry Demonstration Partnership
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Academic R&D from Industry
From NSF InfoBrief Published January 2007
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
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
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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.
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
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
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
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
UIDPUniversity-Industry Demonstration Partnership
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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
UIDPUniversity-Industry Demonstration Partnership
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
UIDPUniversity-Industry Demonstration Partnership
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
UIDPUniversity-Industry Demonstration Partnership
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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)
UIDPUniversity-Industry Demonstration Partnership
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
UIDPUniversity-Industry Demonstration Partnership
http://www.uidp.org
QUESTIONS?