Elizabeth Drotleff: OSU’s Industry Liaison Office is the office you can come to for help in outreach, industry and initiating and cultivating relationships with companies to enter into research collaborations. We help to smooth the process so faculty can concentrate on the science.
I work very closely with Mike Adkins from OSU Office of Sponsored Programs and Jay Dahlman from OSU Technology and Commercialization Office. Each one of our offices is responsible for a different stage of the collaboration process.
Mike Adkins: When we need to talk about a research agreement we work with Elizabeth’s office. I take care of negotiating the research agreement. This could be a service intensive agreement, etc. I work to make sure we’re setting up the appropriate agreement.
Timelines are tough to nail down. It could be a week to a year of negotiating with the companies, it just depends on the complexity.
We work with intellectual property agreements. We sometimes pull Jay into this. You should get Jay’s office involved at the beginning of this process. We also help with the submission of a proposal. We can review your internal budgets, especially. If we get outside of what I’ve been allowed to approve then we go to TCO.
Jay Dahlman: Our office handles intellectual property (IP), licensing, industry sponsored research, etc.
We can be creative with the language as long as we are within the state of Ohio law. The question we need to ask is should we be doing this, what’s the best interest of the faculty member, what’s beneficial for the university?
The purpose of the office is to identify assets. We try to engage frequently with faculty to see what people are working on. We try keep up with faculty grants, etc. Faculty are the life blood for us. You invent things and we support you.
It’s a cradle to grave office, we can look at the value, the idea, the marketability, etc. We can start developing an intellectual property strategy. We help get the industry interested enough to want to license or collaborate.
If sponsored work needs to be done and a company will fund it, then we bring Mike in. We transfer our assets at OSU to industry to generate revenue, etc.
OSU copyright policy means you can have revenue from these agreements.
Mike: If a company asks for confidentiality or a non-disclosure agreement (NDA), these funnel through Jay’s office. I can catch all questions and direct you to the right person though, so feel free to reach out to me.
These arrangements are usually established before entering into a research agreement when the company has some confidential information and wants to protect the information.
Jay: Material Transfer Agreements: for profit entities requesting access to different materials with the end goal of commercialization. We can leverage value, etc. if an industry contact is looking to get a hold of some materials — get my office involved! We need to get the proper agreement in place. They will benefit monetarily through those materials, you should too.
Elizabeth: There are typically no costs associated with a NDA. There’s no monetary value
Mike: Our federally negotiated rates do not cover all costs, our current rate is 56%. This covers building space, lab space, janitorial and admin services, etc. You should try to get 56% F&A because it still won’t recoup the entire amount needed.
If you get push back from an industry partner on the rate, we can have discussions about lowering the amount, but it will only come with college and department approval. This is done through the ePA-005.
Once you submit the ePA-005, it is automatically routed for approval to the college and department. I also get an email notification. Once it’s approved, then it takes my approval to move forward with lower rate negotiation if you need it.
Elizabeth: In general, our offices are here to have business and legal discussions that you don’t need to be having with the company contact. We want you to preserve your positive relationship with the company. We can have the difficult conversations. Take advantage of the services we provide.
When it comes to the overhead rate, a 56% rate is incredibly inexpensive. The companies sometimes have a misconception that this is profit for us, but that’s why you want to pull us into the conversation so we can help explain its purpose. Just pass it on to Mike or myself and we can have the conversation.
While your department and college can agree to a lower overhead rate, university policy is if the company is paying less than the government rate, they do not have a choice between IP access models.
It is strongly not recommended to lower this rate.
Mike: Examples of different kinds of contracts OSP does with industry include: Service and Testing with industry, for example you may get some seeds that the company wants you to test in our plots. We’re testing and giving the data back to them. We’re not analyzing, we’re just giving test results. There is no expectation of IP.
If the company wants to see an IP agreement, we wonder if they want us to do actual research and do more than just service and testing. In that case, we would use a standard research agreement, IP included. We’re looking to protect your right to publish, we don’t want the sponsor to direct your publishing, we protect students working on the project. Let us know ASAP if you have a student, we can protect final dissertation or thesis. If the company restricts right to publish, it may impact the student’s ability to finish their work and graduate.
Master Agreement: there is a large volume of work, all forms taken care of upfront.
ILO Master Agreement: The company may not be in one specific area / department. They would have a master agreement upfront. Elizabeth’s office might think it’s a good idea and contact me.
Master agreements are great, it takes a little bit longer if you’re the first project on it. Any subsequent projects under a master agreement in place are done quickly.
Services and testing agreement goes through OSP if it’s faculty driven.
Any agreement that’s signed by a PI is invalid. Only OSP is authorized to sign off on these things.
If you aren’t sure if it’s a standard contract, just contact me and we can figure something out. We just want you to worry about the scientific research that needs to be done.
Policies and procedures change often.
Lori Kaser: You also want this documented in the PI portal so you can refer to this when you go up for tenure. The ePA-005 gives you credit for this, as well as if you are trying to get a research agreement.
Mike: Put the ePA-005 in as early on in the process as possible.
Jay: If you have money coming in as a gift, make sure you have a contract.
Mike: When my office signs the paperwork it takes all the legal repercussions off of you, the agreement is with OSU not you as an individual. If the company sues, they sue the university not you.
Jay: This is super important with CDA / NDA when PIs sign off and make themselves personally responsible.
We enter into extension or academic use agreements if someone wants to take copy written materials and produce them. We can grant commercial rights, but still allow it to go to non-profits, etc. You need to set the parameters on how you will license out for extension and for broader commercial use.
Elizabeth: If you want to engage with a company and ensure the conversations are thorough, contact the ILO. It’s my job to help you have those conversations. What are their expectations, timelines, budgetary cycles, vision of the deliverables? We will have those conversations with you.
Once we get an idea of the company’s expectations, then I better understand what the company needs from a standpoint of agreement. Then we may decide on a master agreement, or a one-off research agreement, etc. in the process of talking to them about the business aspects, we start to talk about the IP access models, i.e. how they acquire rights.
When I’m clear about the direction of the relationship, Mike and I work together to talk to the company about the nuts and bolts of the agreement.
Mike works with the statement of work, puts the appropriate budget together, etc. communicates with the company to get approval.
Then, if in the process IP is developed by the terms of the agreement and the company is going to license, you go to the TCO and Jay gets involved. If there is any background IP that generates new IP then the company may need to license that as well.
Jay: We need to make them aware that we have background IP.
Mike: If you’ve had a conversation with a company put it in the ePA-005. Then I will reach out to the company with the larger terms and conditions, but we won’t move forward with a budget, etc. until we have the internal approval.
We cannot sign an agreement until an ePA-005 is approved. Put the ePA-005s in ASAP!
Elizabeth: If you all ask us questions, it helps us. It’s okay if this is an entirely new world for you. We want to help you understand.
Jay: PI includes: Patents — a piece of paper that allows the right to exclude others from making, including or selling the right in the patent. If I have a patent to something, someone else can’t manufacture or sell the item, etc.
Copyright material — mainly in software… we are starting to see this in the extension area in content that’s valuable for other extension units or commercially.
Tangible property as intellectual property, germ plasm, novel material, chemistry, etc.
Trademarks are run through office of general council. We don’t do a lot of those.
Know How is a catch-all in a licensing agreement. Anything not explicitly described in a patent application, etc.
Elizabeth: With multiple companies on an agreement, reassure companies that we have the right firewalls in place to ensure confidentiality with each company. If the companies can each benefit from the project, we can do a research agreement with multiple companies.
With regards to the budget, we don’t expect a certain cost point. However, you all are the experts, do not sell yourself short.
Mike: Especially if the initial research project has great findings and the company wants to do more and now they have a precedent of no salary.
Jay: There is value in the know-how that you posess. It’s okay to charge for it.
Question: Generally how long does this process take?
Elizabeth: It’s hard to define this. The company might not have buy-in from the management, etc. Another delay may be because of needing to find the right person to talk to. Some companies are experienced with working with universities… some companies see this as a top priority others don’t. You can’t predict. The more conversations you have in the beginning, the more it helps when you get to the actual agreements.
Mike: It depends on who we work with. Typically it’s about a month to a month and a half. Our office gets busy during different times of the year, specifically in the summer, any extended holiday break, etc. when faculty are stepping away from their teaching responsibilities. It also coincides with the fiscal years of the companies we deal with.
Talk to faculty that have other collaborations with the companies.