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Re-Engineering the University-Industry Partnership. From the University-Industry Congress to the University-Industry Demonstration Partnership Albert Johnson Corning October 12, 2006. The current state of affairs….

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Re engineering the university industry partnership l.jpg

Re-Engineering the University-Industry Partnership

From the University-Industry Congress to the University-Industry Demonstration Partnership

Albert JohnsonCorningOctober 12, 2006


The current state of affairs l.jpg
The current state of affairs…

  • In the nexus between Government, Universities and Industry, two of the three links work reasonably well. However, much could be done to improve the link between Academia and Industry.

  • Relations between Industry and Universities often flounder on the issue of Intellectual Property, and academic institutions are often accused of being an impediment to commercialization, despite the existence of the Bayh-Dole Act.

  • To really transfer effectively academic innovation into commercializable products, one must work on making the weak link stronger.


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Objectives of the University-Industry Congress (2003-2006)

  • Convene a “congress” of delegates from industries, universities, and government to explore the principles that should govern industry/university collaboration and identify an array of strategies for translating those into research agreements.

  • Hold a “summit” of national leaders of industry, university and government at the National Academies to develop and endorse principles/strategies for research agreements that will foster the creation and commercialization of new knowledge.


University industry congress l.jpg
University-Industry Congress

Five Major Meetings:

  • First Congress – San Francisco in August 2003

  • Second Congress – Washington, D.C. in October 2004

  • Third Congress – Washington, D.C. in February 2005

  • Fourth Congress – Washington, D.C. in June 2005

  • Fifth Congress – Washington, D.C. in October 2005

    Balanced Membership:

  • Universities: public, private, S M L

  • Industries: various sectors, S M L

  • Government: OSTP and Commerce plus NSF and NIH

    Sponsors:

  • Kauffman Foundation

  • Sloan Foundation, Wallace Coulter Foundation

  • Boeing, Extrude Hone (now Ex One), Hewlett-Packard, Microsoft


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Summit held in Washington DC on April 25, 2006 at the National Academies

(approx. 170 registered attendees representing 32 companies, 47 universities, and several nonprofit/foundation/government)

National Academies’ Keck Bldg.

... in Washington, DC


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University-Industry Demonstration Partnership National Academies

Founders Circle Members (6)

  • Ex One

  • Hewlett Packard

  • Kauffman Foundation

  • National Science Foundation

  • Pfizer

  • University of Illinois at Urbana-Champaign

    Industry Members (10)

  • Alfred E. Mann Foundation for Biomedical Engineering (regular member exception)

  • Corning

  • Dow Chemical Company

  • Essilor

  • Glaxo-Smith-Kline

  • IBM

  • Intel

  • Minerals Technologies Inc.

  • Monsanto Company

  • Praxair, Inc


University industry demonstration partnership7 l.jpg

University Members (30) National Academies

Arizona State University

Boston University

Brandeis University

Carnegie Mellon University

Georgia Institute of Technology

Georgetown University Medical Center

Iowa State University

Keck Graduate Institute

New Jersey Institute of Technology

North Carolina State University

Ohio State University

Pennsylvania State University

Purdue University

Rice University

Syracuse University

University of California, Berkeley

University of California, Davis

University of California Los Angeles

University of Iowa

University of Kansas

University of Maryland

University of Minnesota

University of North Texas

University of Notre Dame

University of Oklahoma

University of Oregon

University of Tennessee

University of Texas at Austin

University of Wisconsin

Washington State University

Wright State University

Convening Authority

Government-University-Industry Research Roundtable of the National Academies

University-Industry Demonstration Partnership


Main problem congress tried to address l.jpg
Main problem Congress tried to address National Academies

  • Negotiation of sponsored research agreements (particularly over intellectual property) is a barrier to industry-university research collaboration in the United States.

    • Takes longer

    • Increases transactional costs

    • Little/no benefit results

    • Advantages to work overseas


Time to agreement too long university view l.jpg

> 30 DAYS National Academies

90

100

90

80

Time to complete agreement

80

70

% of agreements completed

70

60

60

50

%Percentage of Total

Frequency

50

40

40

30

30

20

20

10

10

0

0

<1

1-10

10-20

20-50

50-75

75-100

100-125

125-150

150-175

175-200

200-225

225-250

250-275

275-300

300-325

325-350

350-375

375-400

400-425

425-450

450-475

475-500

500-525

Days to Completion

1½ years and counting!

Time-to-agreement too long!(university view)


Time to agreement too long industry view l.jpg
Time-to-agreement too long! National Academies(industry view)

80

Negotiation

70

153 days on average from T2-T7

60

50

Days

40

SOW

30

Dow

Approval

Other Party

Approval

RA Draft

20

Distributed

10

Review

0

T1

T2

T3

T4

T5

T6

T7


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Inconsistency a headache: National AcademiesTerms and conditions all over the map

Character of Terms

20

Assignment & Right To Practice

10

0

0

10

20

Deadline & Right of First Refusal


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Universities are also impeded National Academiesby current IP practices

  • 95-97% of all research projects result in NO licensable intellectual property.

  • Sponsored research office spends disproportionately more on staffing (about 5x more, per dollar received) to manage industry-funded research agreements, compared to government-funded research agreements.

  • Long time to agreement can result in complete loss of project. If wait is too long

    • Source of funding disappears (change in management, new fiscal year...)

    • Technology of interest becomes outmoded (6 month cycle time for IT)

    • Funding spent on legal fees outweighs project cost (at this point, most companies will walk away)

    • Sponsor unlikely to return for another project

    • Faculty become discouraged

    • Students move on


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Evidence that U.S. industry is moving sponsored research overseas

  • Half of IRI survey respondents admit to sponsoring research overseas as a result of difficulty in IP negotiations with U.S. universities

  • Volume of industry sponsored research growing overseas: in 2003, MIT at $81.5M, Tsinghua at $79.7M

  • Hewlett-Packard congressional testimony (9/17/02)


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Two financial reasons why overseasit is important to solve this problem

Industry Sponsored Research (Millions of $)

Net Licensing Income (Millions of $)


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U.S. R&D source of funds: 1953-2002 overseas

SOURCE: National Science Board, Science and Engineering Indicators-2004


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Focused On: overseas

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”

University-Industry Congress


Framework led to three guiding principles l.jpg
Framework led to three guiding principles overseas

  • A successful university-industry collaboration should support the mission of each partner. Any effort in conflict with the mission of either partner will ultimately fail.

  • Institutional practices and national resources should focus on fostering appropriate long-term partnerships between universities and industry.

  • Universities and industry should focus on the benefits to each party that will result from collaborations by streamlining negotiations to ensure timely conduct of the research and the development of the research findings.


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This sounds like apple pie, but each principle is deeper than it looks. For example...

  • A successful university-industry collaboration should support the mission of each partner. Any effort in conflict with the mission of either partner will ultimately fail.

    • This explains why universities can sometimes give away IP in highly applied projects but not in fundamental research (reverse is true for companies).

    • Because companies must return a profit to shareholders, their IP arrangements must reflect their business models. These differ drastically between companies, a reason why no “one size fits all” agreement will ever work across companies, while master agreements for a specific company (or division within) often will work.


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Results of the Congress are fourfold than it looks. For example...

  • A set of guiding principles for University-Industry partnerships

  • A collection of living studies (case examples) of how institutions have used innovative ideas for resolving problems that commonly arise in U-I agreements

  • Preparations to launch the test phase of a U-I demonstration partnership (UIDP), a new forum for developing solutions to difficult IP problems.

  • Development of a new software tool for creating intellectual property agreements. This turbo-negotiations approach takes into account the needs and contributions of the parties in guiding the negotiators through the process of building an agreement.


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The launching of the UIDP will allow institutional beta-testing of new approaches to contracts

  • Working groups will be focused on designing institutional experiments.

  • There will be a broad information-sharing forum on latest news, best practices, etc.

  • UIDP is modeled on the 20-year success of the Federal Demonstration Partnership in driving institutional change on a national level.


First project of proposed uidp turbonegotiator l.jpg
First project of proposed UIDP: TurboNegotiator beta-testing of new approaches to contracts

  • Interview tool aimed at guiding both sides to come to agreement on nature of project.

  • Answers to interview questions allow project to be plotted in n-dimensional “project space.”

  • Depending on location in project space, software suggests potential applicable clauses.

  • Each clause can be clicked on for more information on history, use, pros and cons for industry/university... great depth of expertise.


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One origin of IP disputes: Industry and University do not begin with same mental concept of project

  • “TurboNegotiator” model would have up-front interview instrument that allows each partner to examine underlying assumptions regarding the type of project they are working with.

  • Identifying underlying mismatched expectations before the start of legal negotiations prevents much wasted time.


Questions for each partner would focus on basic parameters such as l.jpg
Questions for each partner would focus on basic parameters such as…

  • Nature of project (fundamental research  applied research)

  • Nature/extent of contributions and investments from each party

  • Nature of deliverables/likelihood of a patentable invention


Example of project parameter space l.jpg

1 such as…

Relative Investment

1 = high for University

-1 = high for Sponsor

1 = high probability of patent

-1 = low probability of patent

1

1

-1

Nature of Research

-1

1 = fundamental research

-1 = applied research

-1

Invention Probability

Example of project parameter space


Slide25 l.jpg

  • Tool will expose the likelihood of valuable IP such as…once both parties have unambiguously agreed on the coordinates of their project in “IP space.”

    • E.g., IT project in applied research, even with high probability of invention, almost never yields large licensing revenue.

  • Junior staff bound to templates need deeper knowledge to be flexible.

    • Instrument should provide multiple options for each situation, and educate user on consequences and implications of each.

    • Instrument should provide support for decision-making.


Example l.jpg
Example such as…

  • For example, a costly project for a company with direct impact on its current business, but with little chance of patentable inventions would be given by (-1, -1, -1).

  • TurboNegotiator output based on this answer would suggest the following terms for inclusion in the agreement:

    • ALTERNATIVE i: The University shall grant the Company a commercial license on fair and reasonable terms for an up-front payment at the time of execution of the license. Explain pros and cons of this to me (hyperlink).

    • ALTERNATIVE ii: Company agrees to fully pay or reimburse patent application expenses for those inventions it wants. University shall grant Company on fair and reasonable terms an exclusive commercial license in a field of use in return for consideration to be mutually negotiated but which may include milestone payments, and/or a licensing fee. Explain pros and cons of this to me (hyperlink).


Turbonegotiator tool is designed to address common negotiation failure modes l.jpg
TurboNegotiator tool is designed to address common negotiation failure modes

  • Does not assume a “one-size fits all” solution

    • Each project is unique – each agreement is unique. Tool designed to get as quickly and painlessly as possible to that unique solution.

  • Forces “meeting of the minds” up front: each party must identify what s/he wants out of the partnership being negotiated.

    • Addresses unspoken, differing mental perceptions of same project. Case studies show these are often at the root of an inability to reach agreement.


Turbonegotiator tool is designed to address common negotiation failure modes28 l.jpg
TurboNegotiator tool is designed to address common negotiation failure modes

  • Distinguishes between situations where treatment of IP is important vs. not important (95-97% of research agreements produce no valuable patents, but most are fought over nonetheless)

    • Forces the discussion between parties as to whether the IP is worth fighting over in this particular instance.

    • In the beginning, both parties will need to guess at IP likelihood, and have their guesses agree. In the future, one may be able to have the program predict this, based on historical data culled from sponsored research and licensing offices.

  • Educational tool for negotiators in trade-offs and IP considerations

    • Many individuals assigned to negotiate these unique, complex agreements do not have the depth of training required to navigate them. This tool provides on-demand educational material.


Turbonegotiator tool is designed to address common negotiation failure modes29 l.jpg
TurboNegotiator tool is designed to address common negotiation failure modes

  • Easy-to-use tool would assist broad adoption

    • Move towards national uniformity in approach.

  • Tool will generate its own metric of success (time-to-agreement)

    • Electronic time-to-agreement module would allow institutions to track reduction in processing time as a result of using the tool, and to correlate processing time with characteristics of the project under consideration.

    • Plan is for UIDP to try to adopt tool currently in use at Georgia Tech.

    • Nationwide adoption of the same tool everywhere would ultimately allow automated national uploading/compilation of time-to-agreement data, and allow the tracking national trends in IP negotiations.


Concluding remarks l.jpg
Concluding remarks negotiation failure modes

  • For a University to achieve the goal of innovation through commercialization will require working effectively with Industry, and vice versa.

  • National efforts aimed at supporting better processes for reaching collaborative agreements between Universities and Industry deserve support (UIDP).

  • Specific tools (e.g., TurboNegotiator) offer novel opportunities to re-examine processes which have not been very effective in the past.


For more information l.jpg
For more information negotiation failure modes


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