Forming Productive Relationships with Commercial Partners

blank Lady in laboratory
Important Information
• UA System Patent Policy

• UAB Conflicts of Interest Policy
• UAB Conflicts of Commitment Policy
In recent years, UAB has received millions of dollars in research funding from industry. This funding reflects the high regard that companies have for UAB's facilities and the scientific expertise of its faculty and staff.

Companies frequently engage experienced UAB researchers as consultants. A company and a researcher also may define a research project to be conducted within the university. In the latter case, a sponsored research agreement (SRA) is negotiated that defines the contractual terms and governs the relationship between UAB (the researcher's employer) and the company.

Industry-sponsored research typically generates research results and data that are provided (usually in summary report form) to the sponsor. These university-industry relationships get even more interesting when intellectual property is likely to be created during the conduct of the sponsored research project.

During the negotiation of SRAs, many industry sponsors attempt to assert ownership in intellectual property that may be created by UAB employees. Such companies contend that their financial support and/or the provision of materials or equipment entitle them to own such intellectual property. UAB's Office of Grants and Contracts Administration (OGCA) negotiates the terms of all SRAs and strives to include language to ensure that UAB retains ownership of intellectual property created by UAB's employees.

The UAB Research Foundation (UABRF) assists OGCA in these negotiations and recommends that companies be granted only an option to negotiate a license for intellectual property created during the conduct of an industry-sponsored project. This advice is consistent with UAB's patent policy which requires that researchers disclose and assign their inventions to UABRF.

UABRF views the industry participants in SRAs as excellent sources of future licensees for intellectual property created by UAB employees. The companion article in this newsletter describes a long-term relationship with a Japanese pharmaceutical company (now merged into Daiichi Sankyo) that began with an agreement to sponsor research. As discussed in that article, UABRF has exclusively licensed to Daiichi Sankyo the intellectual property created with their support, and clinical trials are being conducted.

Intellectual property is an important component of sponsored research, and UABRF is pleased to participate with OGCA in managing this aspect of SRAs. OGCA ensures that the terms of SRAs are consistent with UAB policies and guidelines as well as federal and state laws. For example, companies are not permitted to restrict the publication of research results beyond certain reasonable limits. A company may be allowed to review manuscripts prior to publication and may require the removal of their own proprietary information. The company also may require that a publication be delayed to permit time for the preparation and filing of a patent application. Legal advice regarding the terms of such agreements is provided by the Office of Counsel.

SRAs, as well as agreements that do not include financial support but rather the provision of materials or equipment, must be signed by an authorized signatory for UAB. (The principal investigator cannot be a signatory to SRAs.) Researchers are encouraged to enter into research relationships with industry and to seek guidance from OGCA, UABRF, and the Office of Counsel regarding the contractual arrangements that need to be made before research can be conducted at UAB.

Posted on 9/15/2009 12:10:00 PM