Corporate Partnerships and Intellectual Property

Report
Corporate Partnerships
and Intellectual
Property
Presented by the Office of University Advancement
and
the Office of Sponsored Programs
Historical Role of Corporate Donor
vs. the Paradigm of
Corporate Investor
With receding economics, global competition, increased
financial accountability and public scrutiny, corporations
are handling philanthropic dollars in a strategic way rather
than on an ad-hoc basis. Corporations have moved from
the role of donor to that of investor seeking long-term
strategic business relationships with academia.
Corporations are seeking more accountability when giving
measurable results and more productive forms of
recognition.
source: Five Essential Elements of a Successful Twenty-First Century University Corporate Relations Program,
White Paper presented at the NACRO Conference, August 1-2, 2011.
Corporate Investors Seek Holistic
Value through a Comprehensive
Academic-Industry Approach
A. Over the last 4 years corporations have been decreasing
the number of universities with which they are working.
B. Companies have even begun to establish academic
relationships with foreign universities due to their interest
in global growth, abundant R&D personnel, and more
favorable intellectual property terms.
C. Fewer corporate resources are now available to U.S.
universities, which have to work harder to attract and build
partnerships with corporations.
source: Five Essential Elements of a Successful Twenty-First Century University Corporate Relations Program,
White Paper presented at the NACRO Conference, August 1-2, 2011.
Example of Process used by
Corporation seeking
Technology/Partners
Companies evaluate universities as prospects for partnership. Their
evaluation process might go as follows:
• Identify Wants: List of technology, products needs and external
resources required to meet growth objectives.
• Find: Identify universities, companies, technology start-up ventures
(venture capital opportunities), brokers, government labs, vendors,
suppliers, other sources that provide “wants.”
• Get: Determine deliverables, set plans, and negotiate agreement to
access resources.
• Manage: Ensure that relationship meets targets/goals (includes
metrics, alliance management, ongoing interactions).
source: Kimberly-Clark University Program, Presented at the NACRO Conference, August 16-17, 2007
Example of Process used by Corporation seeking
to Create Partnership with University Once
Corporation Identifies Desired University Partner
O Develop fully-aligned strategy for university collaborations
• Current focus = Research
• Phase II = Align with Recruiting, Philanthropy, Licensing
O Deliver value to the Enterprise
• Meet business needs
• Address technology gaps and accelerate development
O Strengthen communication/coordination, both internally and with
partners.
O Manage strategic university relationships as a partnership to ensure
full value is attained.
As a company builds trust with the University and the relationship
deepens, more engagement opportunities arise.
source: Kimberly-Clark University Program, Presented at the NACRO Conference, August 16-17, 2007
Levels/Areas of
Engagement Activities
Sponsorship
Support
Awareness
• Career Fairs1
• Interviews1
•EDU Account2
Phase One
• Student Consultant4
•Hardware Grants3,5
• Curriculum Dev./
Involvement
ABET Support &
• Industry Affiliates/
Fundraising3
Advisory Program3
•Workshops and
•Research Grants3
Seminars4
•Internship/Co-op
• Support Contract3
•Software Grants3
•Student
Organizations
Sponsorships3
•Philanthropic
Support6
•Guest
Speaking/Lectures4
Phase Two
Phase Three
Strategic
Partner
• Executive
Sponsorship3,6
• University
•Joint
Initiative
Partnership3,5,6
Sponsorship3
•State Education
•Undergraduate
Lobbying3
Research Program •Major Gifts3,5,6
Support3
• Business
•Graduate
Development2,5
Fellowships5
•Collaborative
KEY:
Research Program
1. Recruiting
Report5,3
2. Education Sales
•Outreach
3. UR Account
Programs6
Managers
•Support for
4. UR Programs
Proposals for
5. UR Research
Education
6. Other
(NSF,NASA,etc.) 3,5
(Philanthropy,
•BETA Programs3
Alumni, Executive)
Phase Four
Phase Five
sources: Five Essential Elements of a Successful Twenty-First Century University Corporate Relations Program, White Paper presented at
the NACRO Conference, August 1-2, 2011.; HP Relationship Continuum, Wayne C. Johnson, Former VP, HP University Relations
One Stop Shopping:
Identifying University-Wide Areas of Partnership
Philanthropy
Recruiting
Board
Service
Research
Executive
Development
source: Five Essential Elements of a Successful Twenty-First Century University Corporate Relations Program,
White Paper presented at the NACRO Conference, August 1-2, 2011.
Office of Sponsored Programs (OSP)
and Corporate And Foundation
Relations (CFR): Who Handles What?
A.
OSP – Federal and state grants, clinic projects,
research collaborations, industry subawards.
B.
CFR – Foundations, non profits, certain industry
partnerships, corporate donors.
C.
Office of Research - Technology transfer,
intellectual property, material transfer agreements.
Tools to Evaluate Corporate/University
Partnerships
source: Five Essential Elements of a Successful Twenty-First Century University Corporate Relations Program,
White Paper presented at the NACRO Conference, August 1-2, 2011.
How this Relates to You
Philanthropy
Commercialization,
IP, Licensing, &
Economic Dev.
Board
Service
Research
Collaborations
Executive
Development
Developing a Corporate
Partnership
O Consulting relationships
O Alumni employment relationships- i.e.
O
O
O
O
O
Lockheed Martin
Professional organization contacts
Employers of adjuncts
Conferences & networking events
Collaborations on other research projects
Departmental/college advisory boards
Types of Corporate Partnership
Agreements
Gift Agreements (CFR)
Sponsored Research Agreements (OSP)
Contracts
• Licenses/Intellectual Property
• Fee-for-Service
•
Gift Agreements
O Usually outlines expectations of the funder,
including use of funds for purposes
described in the proposal
O Often requires written approval for the use
of funds that differs from proposed budget
and return of unexpended funds
O Can require narrative and financial reports
on outcomes of project and expended funds
Sponsored Research
Agreements (OSP)
O Contracts (including Clinic Projects)
O Material Transfer Agreements
O Subawards from industries contracting with
federal, state, or other partners
Licenses/Intellectual Property
O Must be agreed upon in writing prior to start of any project, usually as
a Research Agreement or Memorandum of Understanding (MOA)
O Each agreement will be unique to the company and work to be
performed
O Licensing Intellectual Property
1.
2.
3.
4.
5.
Depends on language of Research Agreement
Any IP owned by Rowan may be licensed to other companies; terms of
agreements are unique to each agreement
Exclusive vs. non-exclusive
Length of agreement
Ability to sub-license
O Royalty Distribution
1.
2.
3.
Depends on language of Research Agreement
Rowan IP Royalty Policy (50% to inventor)
None if company is sole owner of IP
Fee-For-Service
O Available for Standard Services that can be provided to any
consumer in the general public.
a. Example: Routine laboratory testing
b. Fixed Price: sponsor must not request remainder of
unexpended funds
c. No proprietary data may be involved
d. Must not involve human subjects, animals, biosafety
issues, recombinant DNA, radioisotopes, or hazardous/toxic
substances
O No university overhead collected; funds stay within the department.
O Department /academic unit is responsible for financial
management of the project.
O Requires an official agreement; templates are available through
OSP.
Issues in Partnering
1. Publications
Depends on Language of Research
Agreement
• Invention must not be disclosed until
after protection has been filed
• New system: first to file (instead of first
to invent)
2. Intellectual Property Ownership
•
•
•
Joint Ownership
Rowan Owns with Exclusive License to
Sponsor
Issues in Partnering (con’t)
3.
Conflicts of Interest
• Exist when it can be reasonably determined that an investigator’s
personal financial and other concerns could directly and
significantly influence the design, implementation or reporting of
grants and sponsored projects activities
• Include immediate family (spouse/partner and dependent
children)
• Require disclosure of any significant financial interests that
would appear to be affected by the project such as:
1.
2.
3.
Anything of significant monetary value (including salaries or
payment for services)
Direct equity interests (stocks, options, ownership interests)
IP rights owned by investigator
• Principal investigators are responsible for ensuring that all
participants provide any conflict of interest disclosures
• If conflict of interest exists, Rowan University Disclosure
Statement must be completed; reviewed by Disclosure Review
Committee
Issues in Partnering (con’t)
4. Consulting
• Completed outside normal scope of work
• No money transferred to Rowan
• No Rowan resources/students used to
complete projects
• No protection for faculty/ staff acting as
consultants
Questions?
Deanne Farrell, University Advancement
Director of Corporate and Foundation Relations x5418
Sarah Piddington, office of Sponsored Programs
Director of Technology Transfer x5482
Dr. Shreek Mandayam, Office of Research
Associate Vice Provost for Research, x5333
Stephanie Lezotte, Office of Sponsored Programs
Pre-Award Contracting Officer x4124
Additional information: A free webinar will be hosted on February 2, 2012.
For more information or to register, see the OSP Workshop website at
http://www.rowan.edu/provost/grants/workshops/index.cfm
Workshop is hosted by NCIIA and Oregon State University
Note: All source material can be found at the NACRO Toolbox webpage:
http://web.mac.com/nacro/NACRO/Toolbox.html

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