1. OSR-Evanston Standard Research Agreement
OSR-Evanston Quarterly Network
Tuesday, November 19, 2013
Ben Frey
Senior Contract and Grant Officer
Office for Sponsored Research, Evanston Campus

2. Why have a Standard Research Agreement?
A predictable starting point for negotiations offering terms favorable to the University
Helps set sponsor expectations about the business and legal framework of a nonprofit, tax-exempt educational institution working in the public interest
Sponsors commonly request them
And sign them!
It is negotiable…to a degree

3. Research Agreement Components
Statement of Work
Budget
Research agreement
It is important that each component “talks” to the others!

4. Starting Questions What kind of sponsor is it?
Industry
Is federal or state funding involved? (Not always obvious!)
International
Has Northwestern dealt with the sponsor in the past?
Will Northwestern be able to publish the research results?
Who owns the results, deliverables, and inventions?
Is this fundamental, unclassified research, suitable for Northwestern?

5. Overarching Goals
Facilitate successful relationships with a range of sponsors
University currently focusing on corporate-funded sponsored research
Disseminate results
Own intellectual property and use for academic/research purposes
Leverage IP in commercial market (INVO helps here)
Limit University liability
Mitigate costs and risk in future disputes

6. Standard Research Agreement Terms
Funding/Payment
Intellectual Property
Confidentiality
Publication
Termination
Indemnification / Liability
Publicity
Notice
Miscellaneous

7. Funding Terms Cost-Reimbursable (preferred) Fixed-Price
Best suited for open-ended, hypothesis-driven research
Northwestern is paid on the basis of invoices representing financial information (expenditures)
Least risky contract type for Northwestern
Fixed-Price
More like commercial transaction
Northwestern is paid on the basis of invoices representing technical information (deliverables)
50% up front, 40% upon milestone, remainder when we complete
Risk of exceeding budget to provide deliverables (such as re-performance obligations, etc.)

8. Freedom to Publish
Northwestern subscribes to the principles of academic freedom stated by the American Association of University Professors (AAUP)
Professors entitled to full freedom in research and in the publication of results, subject to the adequate performance of their academic duties
Freedom to publish serves the scientific community as a whole, as well as the public
Northwestern’s need to publish can present challenges in working with industry, but not usually insurmountable

9. Publication Terms
Unrestricted right to publish methods, data, and results of research in academic and scholarly publications
Research results cannot be designated sponsor “confidential information”
Reasonable period for sponsor to review materials before publication (≤90 days)
Sponsor cannot edit or influence results
Distinction between publication/publicity

10. Confidentiality Terms
It is necessary sometimes for confidential information to be exchanged as part of the performance of a research project
Scope of the confidential information provided should not be overly broad
Must be marked in writing as confidential when disclosed, or shortly thereafter
Finite period for disclosing and protecting confidential information
Sponsor may review intended publications for a limited time period to ensure no confidential information is being released
Occasionally, parties enter into a non-disclosure agreement (NDA) in advance of the research agreement

11. Intellectual Property Terms
Northwestern is the sole owner of the inventions Northwestern personnel solely create
Sponsor is the sole owner of the inventions sponsor personnel solely create
Northwestern and Sponsor are joint owners of the inventions jointly created by Northwestern and Sponsor personnel
Each party presumed to own its own background IP

12. Intellectual Property Terms
Northwestern (INVO) handles patent prosecution for Northwestern and joint inventions
Generally, if a sponsor wants a patent filed, it pays the relevant fees
Otherwise, Northwestern can file a patent application at its own expense
Flexibility on who handles/pays for prosecution

13. Intellectual Property Terms
In exchange for funding research, sponsors commonly expect/receive a non-exclusive, royalty-free (“NERF”) license
Option to negotiate exclusive royalty-bearing license
NU license may set geographic or field-of-use restrictions
Northwestern MUST retain license rights to use inventions for research and educational purposes
May have rights under Bayh-Dole Act

14. Termination Terms
Each party should be able to terminate freely (“for convenience”) with reasonable notice
Sponsor pays non-cancelable obligations (often personnel costs
The termination of a sponsored research project is uncommon

15. Liability Terms
Work done on a reasonable efforts or best efforts basis
Northwestern makes no representations or warranties about the work done under the project; research results are provided “as-is”
Northwestern’s liability limited to the value of the research agreement
Sponsor indemnifies Northwestern for either party’s actions other than Northwestern’s gross negligence
At minimum, Northwestern should not be liable for Sponsor’s actions

16. Export Control Terms
Northwestern conducts research openly; no sensitive or classified work
The ability to publish freely underpins this
As do the University’s non-discrimination policies
Increasing work under government contracts, international collaborations and industry sponsorship can more often raise export control issues
Fundamental Research Exclusion
Coordination with new Office for Export Controls Compliance (OECC), led by Lane Campbell, Director

17. Other Terms
Governing law: Illinois state law or leave unspecified
Dispute resolution: Arbitration preferred
Jurisdiction: Illinois or leave unspecified

18. How Flexible Is This Agreement?
Not intended to cover all circumstances and projects
Starting point for negotiations; the sponsor may also have their preferred (or inflexible) terms
Publication terms are largely non-negotiable, except for logistics
IP terms may be more flexible and will depend on the statement of work, technology and business issues
Legal terms reflect Northwestern’s nonprofit status; disclaimer of warranty and limitation of liability very important
Opportunities must be weighed with risks
Agreement risks may require PI, department chair and dean’s office approval/guarantee

19. Tips for Agreement Processing
Agreements are most easily processed by OSR when we were involved at the proposal stage
Please forward the statement of work and budget to OSR along with your agreement request or draft
Feel free to flag any issues of concern to OSR
InfoEd agreement screens and GM055s can provide updated information on the status of your agreement

20. Questions?