Research and Sponsored Programs

The Office of Technology Transfer manages three types of contracts with industry: Material Transfer Agreements (MTA’s), Non-Disclosure Agreements (NDA’s) and Research Agreements.

It can be very fulfilling to work on an industry-supported research project.  Companies are often in a position to award funding without the lengthy proposal evaluation processes inherent with governmental or nonprofit funding sources. 

Additionally, companies are looking to fund research projects that align with current market conditions, giving the university researchers unique insights into commercial research and development related to their academic interests.  T2 conducts the negotiation for all research agreements coming from the for-profit sector including privately and federally-funded efforts.

When a company expresses interest in funding a research project at CAU, the first step is for the faculty member and company representative to agree upon a scope of work and a budget.  It is typically good measure to submit your scope of work and budget to the campus Sponsored Projects Office (SPO) at the point which the company requests the scope of work and budgetary detail, regardless of whether they in fact seek an institutionally-endorsed copy.  The faculty member should work with their respective departmental administrator/SPO Liaison to prepare the scope of work and budget any other compliance paperwork (e.g. Data Sheet, conflict of interest forms).  Once SPO approves the proposal (and submits the proposal to company, if requested), the file handed over to the TIA’s industry contracts team, who will review and negotiate the research agreement which contains the final terms and conditions for the project.

It can be difficult to predict when contract negotiations will be fully complete for industry research agreements, particularly if the company is new to sponsoring university research.  Unlike federal grants, the terms and conditions for industry research agreements are not pre-written.  The terms are often highly customized to the specific company and the specific project and, during the negotiation process, two very different cultures must be harmonized.  Often, important issues like the university researcher’s right to publish are at stake.  As a result, negotiations for industry-sponsored research agreements can take as little as a week to many months.

The T2 industry contracts team will keep you apprised of the status of an industry contract negotiation.  Please do not hesitate to contact them to learn more.

• Once the initial evaluation is complete, if the invention has potential commercial applicability, T2 will draft a brief, one page description of the new technology to use for marketing. During the drafting process, a T2 representative will often contact researchers for assistance in identifying compelling data or images that will help communicate the potential importance of the new technology. T2 will also begin researching and contacting companies that work in relevant market sectors to determine their interest in securing a license and commercializing the technology.
• It is very helpful for inventors to identify any companies that they are aware of which might have an interest in the new invention. Because researchers routinely attend conferences and review published literature, researchers are often the best source of leads for potential licensees. Even if you do not know a contact person at the company, please still list the company on the disclosure form.
• At times, T2 will delay the marketing of an invention. For example, if an invention is disclosed at a very early stage and there is no data demonstrating that it actually works, it would be difficult to attract commercial interest. In this circumstance, T2 would likely delay the marketing until the research group has had the time to secure some compelling data on the invention’s potential. T2 goal is to assure that its marketing activities are conducted when the invention has the best chance of attracting commercial interest. Inventors are encouraged to assist in the marketing of inventions when they are able to do so.
• If a company expresses an interest in the technology, they generally need additional details to determine if the new invention is a potential fit. If T2 is aware of published articles that describe the invention, we will start by providing those publicly available documents to the company. If additional details are still needed (or if published articles do not exist), the inventors will need to discuss technical details directly with the company. The inventor’s direct involvement in this initial conversation is critical – with over 600 active inventions in the CAU portfolio, it is impossible for the licensing officer to know an invention and its potential as well as the inventor does. If needed, T2 will put a confidentiality agreement in place with the company prior to any detailed technical discussions.
• If a company is interested in securing a formal option or license agreement after the technical discussions are complete, the licensing officer will work out an appropriate arrangement with the company. The specific arrangement can vary widely and will depend on the circumstances.

When a company is discussing potential research collaborations with a CAU researchers, the company may express the need to share some information that it considers proprietary or confidential in order to allow for an effective and robust discussion.   In such circumstances, the company may ask that the parties enter into a Non-Disclosure Agreement (NDA), alternately called a Confidentiality Agreement, in order to protect the company’s pre-existing proprietary information.

Like both Research Agreements and Material Transfer Agreements, Non-Disclosure Agreements can contain terms that can negatively impact a research program.  Additionally, many NDAs are written from a perspective of a business-to-business (B2B) environment, making for some inherent disconnects when the terms are applied to a public university.  Consequently, it is critical that all NDAs be carefully reviewed by the MTA/NDA Officer to ensure the terms are acceptable both from an institutional perspective as well as from a perspective specific to the contemplated research collaborations. If the non-disclosure agreement’s purpose is to allow the researcher and the company to discuss a potential research project that will be conducted as a University project, then an appropriate person in the CAU Office of Technology Transfer, not the individual researcher, should sign the non-disclosure agreement.

If a confidentiality agreement is sought, please contact our T2 office.

Patent Filing

• Obtaining a patent on a new invention is an expensive proposition. Filing an initial 12-month provisional patent application is relatively affordable. However, it costs between $25,000 – $35,000 (over a period of 3-5 years) to secure U.S. rights alone. Obtaining foreign rights are considerably more expensive, depending on the scope of protection sought. T2 works with the inventors to develop an appropriate patenting strategy for the commercialization of each disclosure.
• Some new discoveries (like certain research tools or computer software) will be readily adopted through publication or open dissemination. In these cases, the best strategy may be to publish or openly distribute the new innovation rather than secure patent protection. In this situation, T2 will work with the inventors/authors to provide them with the legal tools they need, if any, to allow for open dissemination.
• If, however, an invention has potential commercial value and patent would likely be necessary to attract commercial investment, T2 will work with the inventors to secure patent protection. The timing of filing for patent protection will be based on a variety of factors, including upcoming publication dates and the invention’s stage of development. A patent application is not always filed in advance of marketing activities.
• Because language used in patent applications and patent office communications is nuanced and highly stylized, T2 hires outside patent attorneys with the appropriate expertise to handle CAU’s patent filings.

CAU inventors are not expected to draft patent applications or to directly respond to patent office communications. In advance of a filing, the inventors will be asked to provide the patent attorneys with copies of any writing (papers, presentations, reports, etc.) about the invention, preferably in an editable format (such as Word). During the patent prosecution process, the inventors will be asked to review and assure draft patent applications and office actions are technically accurate and to help distinguish their invention from similar technologies that may be cited against the patent application by the U.S. patent

• An invention disclosure does not provide legal protection. Rather, it is the document used by researchers to tell T2 about a potentially commercially relevant discovery and it is a tool for T2 to gather the information necessary to evaluate the invention or copyrightable work. If you are not sure whether an invention or copyrightable work is ready for disclosure, please do not hesitate to contact us informally. We are always happy to discuss IP issues and the commercial potential of a particular discovery or to answer any questions about the disclosure forms or the disclosure/licensing process in advance.

• Once the disclosure form is received, T2 assigns a unique case number to the disclosure. All of the inventors or authors will receive a letter acknowledging receipt of the disclosure form and the case will be assigned to a licensing officer. The licensing officer will review the invention disclosure to evaluate two key factors:
  1. whether the invention is potentially patentable under U.S. patent law (or copyrightable); and,
  2. whether the invention (or copyrighted material) has the potential to attract a company willing to develop it into commercial products.

• Additionally, the licensing officer will review any applicable funding agreement, material transfer agreement and/or research center policies to understand any preexisting intellectual property obligations owed to sponsors or other third parties and will analyze ownership, if necessary. Typically, once the initial review process is complete, the licensing officer will contact the lead inventor to discuss the invention in further detail.