Thanks for the opportunity to pontificate!

At VCU we find that it can take from one contact to many months to
consumate a university-industry research agreement.  However, some things
have paid off, and many commercial sponsors tell me we are easier -- and
faster -- to deal with than many universities.

We hold to fairly stringent requirements for retention of ownership of
intellectual property BUT
1)  If PI certifies that IP is very improbable and waives rights, VCU will
not waste time fighting for rights retention.
2)  Our deal for commercial sponsors is fair to both parties, and is
structured to encourage  IP development.    In summary, we own IP created
on the project, but allow the sponsor an exclusive option to negotiate in
good faith for a license for commercial purposes, and simultaneously allow
the sponsor to use it royalty free in research.  Our hope is that the
sponsor will find many profitable uses and be even more eager to license.
We offer an option rather than a "first right of refusal" because, if the
sponsor has not been interested at first, their having a continuing "first
right" makes marketing to others very difficult.  Of course VCU realizes
that sponsors often have patent rights coming into a research agreement
with VCU, and we are quite happy to recognize these in the agreement if
there is any possibility that some people might get confused as to who has
what priorities.  Further, if there is a true collaboration between sponsor
researchers and VCU researchers, VCU is willing to negotiate reasonable
language regarding joint ownership of inventions.

Our "default" is retaining complete publication rights.  If a full
professor indicates a willingness  to waive these rights in a given case,
we will.  If a junior faculty member wishes to waive them, we check with
her chair, because publication is so intimately tied to promotion and
tenure.  We offer pre-publication review for inadvertant disclosure of
sponsor's proprietary information, and 90 day delay for seeking IP protection.

We understand commercial needs, and will work with them.  We do not accept
commercial bullying.  eg:  they need access to technology (usually through
a license) but do not need ownership (title to patent).  We try to educate
them of our needs -- mostly the openness needed by the scientific method,
and how our reward system works.

Up front I'll tell a commercial sponsor that our two environments are
different, but have overlap.  When we're working in the overlap, we can
create a win-win situation.  Once we leave the overlap, it becomes a
zero-sum game: for them to win, we must loose.  We both want to recognize
when we leave the overlap, so we can politely say, "This one just didn't
jell.  But we remain friends and will look for other projects that are
win-win."  This approach works, and speeds negotiation.

A major delay can be the time taken for review by legal offices.  That's
usually beyond our control, but the PI doesn't realize that.  Sometimes
that is speeded up by geting rid of middle men and putting a university
person with the authority to make decisions directly in touch with a
decision maker in the company.

These techniques work, and uusually speed up the processes.

But anything other than instant acceptance of what hits your desk will be
considered bureaucratic delay by the PI.

Chuck

At 02:21 PM 3/3/99 -0600, you wrote:
>At the risk of upsetting a few, I would like a general guestimate from the
>group about how long on average it takes to negotiate a research agreement
>with a commercial sponsor.  Seems to be a bone of contention with our
>faculty lately.  I would like an idea of what is reasonable to expect - if
>there is such a number.
>
>I am looking at general research, testing services, and clinical trial type
>agreements and not licensing, teaming agreements, or agreements associated
>with specialized federal centers.  Please respond to me directly with a
>ball park figure.  If you want to throw in some anecdotal info like wildest
>scenarios or best practices or helpful hints, that would be great.  I can
>compile the info and repost just the results to the list.  Thanks.
>
>
>======================================================================
> Instructions on how to use the RESADM-L Mailing List, including
> subscription information and a web-searchable archive, are available
> via our web site at http://www.hrinet.org (click on "Listserv Lists")
>======================================================================
>
Herbert B. Chermside, CRA
Director, Sponsored Programs Administration
Virginia Commonwealth University
PO BOX 980568
Richmond, VA  23298-0568
Express Delivery Only:
 Sanger Hall, Rm. 1-073
 11th & Marshall Streets
 Richmond, VA  23219
Voice:  804-828-6772
Fax     804-828-2521
OFFICE e-mail   xxxxxx@VCU.EDU
Personal e-mail xxxxxx@vcu.edu
http://views.vcu.edu/views/ospa/

======================================================================
 Instructions on how to use the RESADM-L Mailing List, including
 subscription information and a web-searchable archive, are available
 via our web site at http://www.hrinet.org (click on "Listserv Lists")
======================================================================