Industry-Sponsored Research Week
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OHSU’s IMPACT licensing options speed negotiations with industry partners

By David Schwartz
Published: May 9th, 2017

Intellectual property licensing was taking up too much time in negotiating industry-sponsored research at Oregon Health & Science University, so Andrew R.O. Watson, PhD, CLP, director of technology transfer, started looking for examples to learn from in setting up a better system.

The result is a new program called Improved Access to Technology, or IMPACT, which Watson characterizes as a tool for speeding up negotiations when necessary. Under IMPACT, industry sponsors can choose from OHSU’s standard IP and license terms or an upfront non-exclusive or exclusive license; no pre-existing IP is involved.

Watson’s office talks to the principal investigator about each model, and both the office and the PI have to sign off on the one chosen. The first two options are available to most industry sponsors of non-clinical research, Watson explains, but they’re not available for research awards or sub-awards from government, non-profit or other non-commercial sponsors.

The upfront fees are non-refundable and non-creditable. Other standard license terms apply, including a requirement that full project costs — direct and indirect — be paid by the sponsor.

“This is a tool we can use,” Watson says. “If it appears negotiations around IP are going to be a hot topic, then one of the first things we do is involve the PI and make sure he or she understands the program. It’s fairly new, and not everybody knows about it, so we explain the benefits and downsides.” If the PI is willing, that’s the point where the tech transfer office brings up IMPACT with the sponsor.

Of course, the problem that led to IMPACT was so much negotiation time being spent around IP rights and licensing rights in SRAs. “One of the outcomes we’re hoping for is a reduced negotiating time, both on the university and the company sponsor side, around a key issue,” Watson comments. “We’re trying to reduce the time and money spent on it and speed up execution of those agreements.”

He emphasizes that “we don’t require the IMPACT licensing options to be used. If it looks like negotiations are going to get lengthy, then we have this in our toolkit to offer sponsors, if they’re not aware already.”

There’s insufficient data so far to make any characterizations about what kinds of sponsors tend toward opting for the IMPACT options. “A handful have taken us up on it, and other companies say, ‘No, thanks,’” he says, “so we continue the normal negotiating process. Other university programs that have something like this might be more on the requirement side, the take-it-or-leave-it side.” He adds: “We’ve had very large companies take it, and very small companies. Also, companies of all sizes have decided not to move forward with it.”

It’s too early as well to quantify the improvement in negotiating speed. “We don’t have numbers behind that right now,” Watson reports. “But my sense is it has accelerated a few of the deals that otherwise maybe would have involved more protracted, lengthy negotiations.”

A detailed article on the IMPACT program appears in the May issue of Industry-Sponsored Research Management. For details or to subscribe, CLICK HERE.

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