1. UIDP University-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, NCURA Milwaukee, WI, USA lawrev@hotmail.com

2. UIDP University-Industry Demonstration Partnership http://www.uidp.org Agenda Introduction University-Industry Congress/Partnership University-Industry Demonstration Partnership –Special Focus: TurboNegotiator Summary

3. UIDP University-Industry Demonstration Partnership http://www.uidp.org University-Industry Congress 2003 - 2006 Joint Sponsorship Government – University – Industry Research Roundtable (GUIRR) Industrial Research Institute (IRI) National Council of University Research Administrators (NCURA)

4. UIDP University-Industry Demonstration Partnership http://www.uidp.org 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 partys bottom line –Moving science into commerce –Old questions, new solutions –Moving from policy to reason

5. UIDP University-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.

6. UIDP University-Industry Demonstration Partnership http://www.uidp.org Why Is It So Hard to 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

7. UIDP University-Industry Demonstration Partnership http://www.uidp.org Policy Impacts Revenue and Partnerships Strong IP Control Flexible IP Position Private Research FundingPotential Licensing Income University Industry More Creative ResearchLess Groundbreaking Results More Collaborations Fewer Collaborations

8. UIDP University-Industry Demonstration Partnership http://www.uidp.org So whats happening today? A three-decades-long trend of increasingly strong ties between industry and universities may have ended. From NSF InfoBrief Published September 2006

9. UIDP University-Industry Demonstration Partnership http://www.uidp.org Academic R&D from Industry From NSF InfoBrief Published January 2007

10. UIDP University-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 Constant 2000 Dollars in billions

11. UIDP University-Industry Demonstration Partnership http://www.uidp.org Sponsored Research Funding Exceeds Licensing Revenue Source - AUTM Licensing Survey, Fiscal Year 2004 Industry Sponsored Research (Millions of $) Net License Income (Millions of $)

12. UIDP University-Industry Demonstration Partnership http://www.uidp.org Are Foreign Universities More Sponsor Friendly ? US Universities 31% 69% Foreign Universities 85% 15% Sole university inventions assigned to Dow or owned jointly Sole university inventions solely owned by University

13. UIDP University-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

14. UIDP University-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)

15. UIDP University-Industry Demonstration Partnership http://www.uidp.org How to Improve the Agreement 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.

16. UIDP University-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

17. UIDP University-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

18. UIDP University-Industry Demonstration Partnership http://www.uidp.org Evaluate/Map: Example Nature of Research 1 1 = Fundamental -1 = Applied 1 = high probability of patent -1 = low probability of patent Invention Probability 1 SOW: Identify cause of problem with existing company product. (-1, -1, -1) Relative Investment 1 1 = high for University -1 = high for Sponsor Project Space

19. UIDP University-Industry Demonstration Partnership http://www.uidp.org How TurboNegotiator Would 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

20. UIDP University-Industry Demonstration Partnership http://www.uidp.org TurboNegotiator What 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

21. UIDP University-Industry Demonstration Partnership http://www.uidp.org TurboNegotiator What 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

22. UIDP University-Industry Demonstration Partnership http://www.uidp.org 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)

23. UIDP University-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

24. UIDP University-Industry Demonstration Partnership http://www.uidp.org QUESTIONS?