OSR-Evanston Standard Research Agreement

Ben FreySenior Contract and Grant Officer

Office for Sponsored Research, Evanston Campus

OSR-Evanston Quarterly NetworkTuesday, November 19, 2013

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

Research Agreement Components

• Statement of Work• Budget• Research agreement

It is important that each component “talks” to the others!

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?

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

Standard Research Agreement Terms

• Term• Funding/Payment• Intellectual Property• Confidentiality• Publication• Termination• Indemnification / Liability• Publicity• Notice• Miscellaneous

Funding Terms

• Cost-Reimbursable (preferred)– 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.)

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

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

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

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

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 forprosecution

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

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

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

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

Other Terms

• Governing law: Illinois state law or leave unspecified• Dispute resolution: Arbitration preferred• Jurisdiction: Illinois or leave unspecified

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

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

Questions?