Survey on Industry Sponsored Research Practices. David Glass, D. Glass Associates, Inc. Bill Rosenberg, Exec. Director, CVIP, Univ. Mass. MATTO Presentation 11/8/06. Background.
David Glass, D. Glass Associates, Inc.
Bill Rosenberg, Exec. Director, CVIP, Univ. Mass.
Georgia Institute of Technology
Mass. Institute of Technology
New York University
University of California, San Diego
University of Colorado
University of Georgia
University of Minnesota
University of North Carolina
University of Vermont
University of Washington
University of Wisconsin
Wayne State University
Two others (names withheld)Participating Universities26 universities contacted, 20 responded
Q1. Is your technology licensing office responsible for negotiating terms relating to intellectual property from inventions that may result from industry sponsored research? If not, who has the responsibility?
Q1a. Does your office have decision and signature authority for IP termsrelated to industry sponsored research? If not, who does?
Q1b. If you are part of public university system, do any of the individual campuses have decision and signatory authority for IP terms relating to industry sponsored research?
Q2. Is industry typically charged the same overhead as Federal overheads?
Q2a. If not, what is the typical industry vs. Federal overhead rate?
Responses from those charging different rates:
Q3. Do you offer the company sponsoring research at your institution an option to a license to the technology resulting from the sponsored research?
Q3a. If yes, will you commit to license terms in the option prior to the discovery of the invention?
Q4. Do you offer the sponsoring company an option to a non-exclusive royalty free license (NERF) to inventions resulting from their sponsored research?
Q4a. Are there particular circumstances under which a NERF will be offered (e.g. low probability of IP, minimum research contract dollar size)?
Q4b. If yes, is this applicable to particular fields (e.g. life sciences, non life sciences fields)?
Q4c. If you do offer NERFs, are there any other financial or other due diligence requirements (annual fees, reporting, patent expenses) with the license?
Q5. Does your university offer royalty free exclusive licenses to inventions resulting from industry sponsored research ?
Q5a. If so under what circumstances?
Q5b. Is this applicable to a particular field (life sciences, non life science fields)?
Q5c. If so, are there financial or other due diligence requirements associated with the exclusive license?
Q6. Who in your organization makes the final decision as to whether to offer to a royalty free license option (head of the TLO, chief research administrator, etc.)?
Q7. Will your institution accept sponsored research funding as part of the financial consideration for a license?
Q8. Is your institution experiencing greater pressure from industry in the last few years to offer options to royalty-free licenses from the outcome of research they sponsor?
Q8a. If yes, how have you responded to the pressure?
Q9. Has your institution made any significant changes to policies or practices to increase industry related activities (licensing, sponsored research) and if so, what are they?
Thanks for your attention!