Is this portal for only STEM-related research?
Absolutely not. The functionality of the Research Enabled portal can benefit companies and university experts across all disciplines. Companies, organizations and even governmental entities have more than hard-science research challenges that could be addressed by university experts from non-STEM disciplines, from business-related matters (HR, processes, training, etc.) and access to data to research on human behavior, criminal justice and much more.
Also, incorporating perspectives from social sciences and other fields can provide important new perspectives to industry on their technology-related challenges. This might include products for the home, new medical technologies, or ways to address climate change, global health, safe transportation, etc.; industry research challenges could benefit significantly from or even be solved by incorporating expertise from the social sciences and other disciplines in combination with or apart from STEM sciences.
How do I determine whether to submit a Research Challenge, which is expected to result in new IP being generated, or an inquiry through Search for Expertise & Resources, which typically will not result in new IP?
If you have need of new research to be done in any discipline, use the “Research Challenge” tool. Such work might include applied research aimed at finding a solution for a current problem facing society or a business; descriptive or analytical work including fact-finding inquiries and analysis of existing data; clinical, one-time or longitudinal research; or other projects focused on delivering new approaches and analyses.
If you need access to pre-existing resources such as scientific equipment or facilities, an expert to analyze your company’s materials using the university’s high-end equipment, existing data collected under already completed projects, or other work under which new IP will most likely not be generated, use the “Search for Expertise & Resources” tool. This tool can also be used to help you identify and connect with a university expert with whom you can collaborate to pursue federal or other funding. IP ownership issues would be addressed in a separately negotiated agreement in compliance with federal or other agency guidelines and rules.
What agreements need to be in place (and when) for projects initiated on the portal?
- A Research Agreement with a statement of work and approved budget must be executed for new research projects. A standard Research Agreement template is available on the portal for quicker processing; however, a custom Research Agreement can also be negotiated with the relevant campus’ sponsored programs office.
- A Service Contract is required for work-for-hire contracts made with the university. An example of work done under a Service Contract is analysis of a company’s proprietary materials -- work that is most often not exploratory research that is expected to result in new intellectual property (IP). A standard Service Contract template is available on the portal for quicker processing; however, a custom Service Contract can also be negotiated with the relevant campus.
- A Non-Disclosure Agreement is necessary prior to any disclosure of proprietary information. While the initial research proposals are intended to be non-confidential, further discussions may require an NDA. We recommend erring on the side of safety and always having an NDA in place prior to meeting with individual researchers who have submitted a proposal. A standard Non-Disclosure Agreement template is available on the portal for quicker processing; however, a custom confidentiality agreement can also be negotiated with the relevant campus.
- A Data-Use Agreement is necessary to have executed prior to receiving data from the university, particularly when the data is HIPAA-related. It is also suggested that companies wishing to share data with the university as part of a collaboration or work-for-hire consider negotiating a Data-Use Agreement with the relevant campus.
- An Option Agreement is required for a company to evaluate IP developed and owned by the university. The university does not entertain other potential licensees under an exclusive option agreement. A no-fee, 6-month option with a 6-month license negotiation period is included in the Standard Research Agreement.
- A License Agreement or Assignment Agreement is required for a 3rd party to make, use, sell (commercialize) IP developed by the university.
- Find your campus contact for agreements.
What are the standard agreement templates available on the portal?
The Research Enabled portal offers three standard form agreements designed to speed up the process for negotiating and executing agreements. If your company does not wish to use a standard form agreement, the portal will collect and provide the relevant information for the contract, provide that information to you and the authorized administrative representative at the relevant campus, and connect you with that representative to negotiate a custom agreement. This might take a little longer than a standard agreement but provides additional flexibility to shape an agreement most appropriate for the situation at hand.
The standard form agreements include:
- Standard Research Agreement: includes a no-fee 6-month option and 6-month license negotiation period for any IP developed under the agreement.
- Standard Service Contract
- Standard Mutual Non-Disclosure Agreement
Find your campus contact for agreements.
What is Intellectual Property (IP)?
Intellectual Property (IP) protects discoveries, inventions, concepts, designs, data, know-how and creative works and includes patents, trademarks, copyrights, and trade secrets. IP rights require that 3rd parties obtain permission to exploit or leverage the owner’s exclusionary rights. The four most common types of IP are explained in more detail below:
- Copyright is the right to control the copying, displaying, distributing, and making of works derived from original works of art and authorship. Copyright protects the expression of ideas as they exist in a tangible format rather than the ideas and facts themselves.
- Patent is the right to exclude others from making, using, or selling an invention in the country where registered. Note that patent rights do not prevent others from obtaining patents on improvements to a patented invention.
- Trademark is any word or symbol that identifies and distinguishes products or services from those of competitors
- Trade Secret is information that is not generally known, has value to a competitor, and is safeguarded with reasonable efforts to maintain its secrecy by its owner.
Infringement is an unauthorized use of IP by a 3rd party.
Additional IP Resources:
How do most universities handle IP?
Most universities require that their employees assign IP rights to their respective institutions in most scenarios with various exceptions. Therefore, in most cases, the university owns the rights for IP developed by its employees. The university typically analyzes IP disclosed to it by its employees for patentability and marketability to determine whether to pursue commercialization with an industry partner. A 3rd party that wishes to make, use and/or sell (commercialize) products or services developed using the university’s IP rights must either have a license to or have been assigned those rights.
What about IP when sponsoring research through Research Enabled?
It is expected that in most Research Challenge projects, new intellectual property (IP) will be created by the university research team that must be assigned to their institution. That IP is then transferable to the sponsor or other company.
At a baseline, the Research Enabled universities have agreed to provide the sponsor company a no-fee, 6-month option for an exclusive license to evaluate the invention and a 6-month period to negotiate a license agreement should the company choose to execute the option.
These terms are included in the Standard Research Agreement* template found on this portal, which a sponsor company can choose to use if desired. The company can also choose to work with the relevant university to negotiate a custom Research Agreement if the standard agreement terms are not acceptable.
Various scenarios can be considered regarding disposition of IP**. The ultimate goal of the partner universities is to bring the discoveries, inventions and creative works developed under portal projects to market where they can benefit society and facilitate economic development. Flexibility is key, and the universities are open to working with our industry partners to find the best, most efficient, effective and mutually beneficial IP pathways.
Should a company choose not to exercise its option to the IP developed under a portal research project it sponsors, rights to that IP will remain with the inventing university(ies) for technical and commercial analysis. The inventing university(ies) will elect to protect and market the IP to other prospective licensees or waive their interest of the IP rights back to the inventor.
NOTE: Work Product Deliverables may include items that technically are considered a type of intellectual property and that have value to the sponsor company but not to the university as commercializable IP. Anticipated Work Product Deliverables should be outlined in the Research Agreement Statement of Work and will be provided to the sponsor under the terms of the RA.
*The online Standard Research Agreement was designed to speed the agreement negotiation and execution process as much as possible. The universities are happy to negotiate a custom Research Agreement, but it will likely take a little longer to accomplish.
If IP is generated under a research agreement or contract initiated through the portal, how is it managed by the universities?
The technology transfer office (TTO) on each campus is charged with managing the intellectual property portfolio of its researchers, who are obligated to disclose prospective IP assets to their TTO who will then inform the sponsor of the research under which the IP was generated.
If it is determined that IP has been generated by a university employee as a result of sponsored research project, next steps are determined by the terms of the Research Agreement executed for the relevant project.
Under the Standard Research Agreement, terms include a no-fee, 6-month option to the sponsoring company for evaluation of the IP followed by a 6-month license negotiation period should the company wish to license the university’s rights. If a custom Research Agreement was executed, those IP terms will apply.
Should the sponsoring company decide not to license the generated IP, the university retains ownership and the right to commercialize, abandon or waive the IP to the inventors. If the university decides to pursue commercialization, one marketing tool it may use is posting the technology on the Research Enabled portal.
What if I’m bringing my company’s IP to the university for testing or other contract services?
Your company’s IP rights are not transferred to the university under a Service Contract. It is unlikely that new IP will be generated under a Service Contract; however, if either party anticipates that new IP will result, we recommend negotiating a custom contract rather than using the standard form Service Contract available on the portal in order to determine how such IP will be handled.
NOTE: Work Product Deliverables (e.g., experimental results, analysis, etc.) may include items that technically are considered a type of intellectual property that have value to the sponsor company but not to the university as commercializable IP. Under a Service Contract, Work Product Deliverables outlined in the agreement will be provided to the sponsor under the terms of the Service Contract.