Research Collaborations with Industrial Partners and Technology Transfer, Policies Regarding

Title: Research Collaborations with Industrial Partners and Technology Transfer, Policies Regarding
Policy Owner: Vice Provost for Research
Applies to: Faculty, Staff, Students, Others
Effective Date:
For More Information, Contact Director, Office of Technology Commercialization
Contact Information: (860) 486-3010
Official Website: http://research.uconn.edu/

 

Purpose: In addition to publications, presentations, and graduate theses, which communicate research findings to scientific colleagues throughout the world, research may also result in an invention.  Inventions and their commercialization have always been a significant component of this country’s economic growth and, in addition, are critical to its international competitiveness and economic health. As a result, a large number of state and federal laws have been developed to facilitate this process and increase the rate at which valuable inventions move from the laboratory into the marketplace.  The policies below govern this process at the University of Connecticut.

Scope: The following policies apply to all faculty, employees and students at all of its campuses.

THE UNIVERSITY’S POLICY ON RESEARCH-RELATED AGREEMENTS:

Sponsored Research Agreements/Contracts: A research collaboration is formalized by a Sponsored Research Agreement/Contract.  The sponsor and the faculty member must agree on the specifics of the work to be completed and the tentative budget.  It is University policy that, once the scope of work has been agreed upon, the final budget and all other aspects of the final contract are negotiated via the Office for Sponsored Programs (OSP) on the Storrs campus and the Office of Research and Sponsored Programs (ORSP) at the Health Center.  The contract identifies the expectations and needs of both parties, and strives to incorporate the potential for adequate return on investment for both. It also addresses a variety of issues including period of performance; amount of funding; scope of work; the disposition of data; deliverables; intellectual property rights; ownership of equipment; liability; publication rights; termination; governing law; space; and indirect cost rates.

It is the faculty member’s responsibility to be sure that the OSP or the ORSP is involved early in the process.  Faculty and staff are not authorized to formally negotiate nor to sign these or other contracts on behalf of the University.

Service for a Fee Agreements: At times, the University may perform service-for-a-fee, if such work is consistent with the department’s or school’s academic mission, and if the University is uniquely qualified and positioned to do so. Such work is not research, and is akin to running previously developed tests on a sponsor’s materials.  The materials and data provided, as well as those generated, may be proprietary to the sponsor.  A pre-agreed Statement of Work is required, and to avoid problems, the Principle Investigator should not vary from it or any other relevant agreed upon conditions.  Service for a fee funds cannot be used to conduct research.

Confidential Disclosure Agreements (CDA): A CDA is designed to protect proprietary information belonging either to the University or the potential sponsor, the exchange of which may be essential to the initiation and eventual progress of a research project or to the marketing of an invention. The University is very sensitive to the need to protect its proprietary information, as well as of businesses to protect theirs, and encourages the signing of a CDA whenever any confidential information is exchanged.  CDAs can be prepared or reviewed and signed by the OSP, the ORSP, or the Center for Science and Technology Commercialization (CSTC).

Material Transfer Agreements (MTA): Depending on the circumstances, certain research related materials such as proteins, DNA, cell lines, microbes, plants, animals, and chemicals, may be “transferred” from the University to an outside entity, or such materials may be received by the University from an outside entity. These transactions are mutually beneficial, because the sharing of materials greatly expands research opportunities. Generally, all material transfers going out of the University must be accompanied by a formal agreement that may address a variety of issues including definition of materials; ownership of inventions; licensing; government rights; confidentiality; indemnity; publication; and, ownership of data. Frequently, incoming materials will be accompanied by an agreement from the source.  MTAs will be generated, reviewed and negotiated by the OSP, the ORSP, or the CSTC like any other research-related contract. Often such agreements are succinct descriptions of the transaction, and do not take long to complete.

THE UNIVERSITY’S POLICY ON INVENTIONS:

An Invention: Inventions are easy to define, but can be difficult to recognize. An invention is “the discovery or creation of a new material (either a new manufactured product or a new composition of matter), a new process, a new use for an existing material, or any improvements of any of these.”  Not all inventions are patentable. Some of the most successful commercial innovations–from pet rocks and “Ninja Turtles” to McDonalds and Federal Express–are based on concepts that would not make it through the Patent Office. In order to be patentable, an invention must have the following elements: It must be new (the novelty requirement), it must be useful (the utility requirement) and it must be non-obvious (the non-obviousness requirement).

Invention Ownership: U.S. Patent law specifies that all inventions are owned by the inventor(s) unless the inventor(s) has transferred ownership or title to another entity. This applies to the University of Connecticut.  Under Connecticut law (C.G.S., Sec. 10a-110b), the University of Connecticut has the right to own title to any invention conceived by University employees (including but not limited to full-time and part-time faculty, post-doctoral fellows, student employees, research assistants, visiting scientists, and emeritus professors) in the performance of customary or assigned duties or which emerges from any research, or other program of the University, or which is conceived or developed wholly, or partly, with the use of University funds, facilities, equipment, or materials.  That is, by virtue of employment, employees of the University of Connecticut are required to assign their right, title and interest in inventions to the University.

Copyright Ownership: The University’s copyright policy is also based on Connecticut law (C.G.S., Sec. 10a-110g) which specifies that any literary, artistic, musical or other product of authorship covered by actual or potential copyright belongs to the author(s). In those instances where such works have been produced at the direct request of the University with specific financial support from the institution or with “substantial use” of University resources (equipment, facilities and support staff), the University should seek a reasonable return upon commercialization. To do so, the author may be required to assign rights to such copyright to the University.  Such works also include software.  Also, if copyrightable material is produced under a grant or sponsored research agreement awarded to the University and the University needs to fulfill a contractual obligation, the author is required to assign rights to such copyright to the University.

Student Ownership of Inventions: The University requires students to assign rights to inventions occurring at the University under any of the following conditions: 1. When the student makes “substantial use” of University facilities and/or equipment in developing the invention (“substantial use” is a term of art and requires a review of the facts in each case); 2. When the student is an employee of the University, performing services in return for monetary compensation, and the invention arises within the scope of that employment; or 3. When the student is participating in sponsored or organized research at the University.

Procedurally, a student who believes he or she should have clear title to an invention, which is developed at the University, and which does not fall under the above categories, should contact the CSTC. Upon disclosure of the invention and examination of the details surrounding its development, the University may execute a waiver of rights regarding the invention to the student.

Policy on Sharing Financial Benefits from Commercialized Inventions: In claiming title to inventions, the University follows a policy long practiced by other universities and private corporations. However, unlike most private corporations, universities generally share the economic benefit of such inventions with the inventor(s).

The University is required by Connecticut law (C.G.S., Sec. 10a-110c) to share with the inventor a minimum of 20 percent of the amount of net proceeds (i.e. after the recovery of out-of-pocket expenses, primarily for patenting) generated by the commercialization of an invention, provided that the inventor fulfils statutory obligations. These obligations are 1. Fulfill the requirement to disclose inventions to the CSTC, 2. Cooperate in securing patent protection, and 3. Assign rights, title and interest in a patent to the University.  In addition, it is expected that employee inventors will cooperate fully with the CSTC in its efforts to commercialize the University’s inventions.  Current University policy allocates 33 1/3 percent of such income to the inventor(s) as personal income, 33 1/3 percent to support additional research (50% to the inventor(s)’s active University research program, 30% to the inventor(s)’s Department, and 20% to the inventor(s)s Dean), and 33 1/3 percent to the University.

License Back Policy: If the CSTC decides not to pursue commercialization of an invention, subject to the rights of third parties such as the federal government, it may be licensed back to the inventor under University of Connecticut policy.  The inventor will assume specific obligations such as patenting and commercialization.  Questions regarding such a license should be directed to the CSTC.