Industry-Sponsored Research Week
Industry-Sponsored Research Management sample issue

Patent infringement risks may be few, but don’t ignore them in industry partnerships


By David Schwartz
Published: June 12th, 2018

How much risk of patent infringement is associated with industry-sponsored research? For garden variety deals — company supports work in principal investigator’s lab, school licenses discoveries to company — not much, say attorneys and other experts. But some of the subtler set-ups between schools and private industry might make patent infringement a bigger problem, they caution, because they involve closer contact between researchers and corporations.

In the University of Wisconsin-Madison’s patent infringement lawsuit against computer chip maker Intel Corp — settled for a reported $110 million — the school claimed that Intel Core processors used work by UW researchers. In the case, Intel said it had supported research at UW with $90,000 in “gifts,” entitling it to the IP that resulted. Because the funding agreements didn’t specifically give the processor company that right, a judge ordered the case to trial, adding that any infringement was not willful because of the contractual ambiguity.

That lawsuit highlighted what Blakeslee LLC principal Wesley D. Blakeslee, JD, CLP, considers to be the biggest problem with industry-sponsored research when it comes to patent infringement — which, he emphasizes, is a real threat that more schools should have on their radar. He says the case illustrates the inherent legal dangers in the kind of close, personal industry-academia relationship that underpins many successful partnerships.

Sponsored research agreements rarely directly address infringement, Blakeslee notes, explaining that “the issue arises more in deals that are more of a collaboration, in which faculty and members of the commercial entity work together” but in a less formal arrangement than a sponsorship agreement.

Also problematic are start-up companies that sponsor research, “where the faculty member has stock or another financial interest in the company,” he adds. “Lots of university IP goes out the back door.” Indeed, he emphasizes, “any type of faculty consulting agreement with industry creates the problem.”

Wisconsin’s Apple suit is a case in point, he notes. Coverage of the UW lawsuit pointed out how the case “put a spotlight on Intel’s once-cozy relationship with [the PI], who was chair of the computer science department and who routinely presented his data to Intel, recommended his students for jobs there, and sought recommendations from Intel for awards and government grants.”

He also “worked with [the company] to structure its gifts so they would not pay for university administrative costs,” according to news reports covering the case. An incriminating e-mail from the corporate sponsor referred to an end run around UW’s “bureaucrats” that involved a “gift” from Intel that’s “officially unrestricted, unofficially for the work in the proposal.”

In addition, a smoking gun e-mail from the PI referred to “a gentleman’s agreement with Intel not to aggressively seek patents” — and to inform Intel if he did.

A detailed article on the risk of patent infringement in corporate-sponsored research appears in the May issue of Industry-Sponsored Research Management. To subscribe and access the full article, along with the publication’s complete archive of best practices and strategies for building corporate partnerships, CLICK HERE

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CRISPR paying off for Broad Institute as spinout Editas Medicine ponies up $125M in research funding


By David Schwartz
Published: June 12th, 2018

CRISPR-based therapeutics developer Editas Medicine is returning in a big way to the institution it spun out of. The company, formed in part from research done at the Broad Institute, has agreed to provide up to $125 million in research funding to the Broad in exchange for the exclusive right to be the first to negotiate license agreements for genome-editing inventions that arise from the sponsored research. continue reading »

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Coming Thursday: Case Study of UGA’s Industry Engagement Team and Industry Express Program


By David Schwartz
Published: June 12th, 2018

The University of Georgia has made it a key priority to enhance industry partnerships based on a model that is “relationship-focused” rather than transactional — and it’s paying off in new sponsored research agreements and other valuable linkages that are sowing the seeds of long-term, mutually beneficial partnerships.

One notable recent effort of the UGA Industry Engagement team is the Industry Express program. This new program benefits industry partners by making the negotiation of research agreements a faster and more transparent process, with three options featuring well-defined terms that help eliminate uncertainty about licensing costs.

Tech Transfer Central’s Distance Learning Division has secured two of UGA’s research leaders to present this detailed, case study webinar: Enhance University-Industry Collaboration: Case Study of UGA’s Industry Engagement Team and Industry Express Program, scheduled for June 14. You’re invited to join Crystal Leach, PhD, Director of Industry Collaborations, and Cory Acuff, PhD, Associate Director of Licensing, for an inside look at UGA’s key initiative and strategies.

For complete program details and to register, CLICK HERE.

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Research exec responds to criticism of Canada’s industry partnerships


By David Schwartz
Published: June 12th, 2018

After an investigative report in the Globe and Mail raised concerns and criticism over Canada’s IP practices in industry research deals with China’s Huawei and other tech firms – charging universities with “selling out” to foreign entities that pose national security as well as economic threats — University of Toronto VP for research and innovation Vivek Goel fired back. continue reading »

Managing Conflicts of Interest in the Commercialization of University Research is a three-session distance learning collection that provides you and your university a solid set of guidelines and proven strategies to ensure COI issues related to commercialization activity are addressed effectively. For complete details, CLICK HERE

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Boston University and J&J Innovation announce five-year alliance around lung cancer prevention and treatment


By David Schwartz
Published: June 12th, 2018

Boston University and Johnson & Johnson Innovation LLC announced a five-year alliance with a long-term vision to defeat lung cancer. They are creating a Johnson & Johnson Innovation Lung Cancer Center on the BU campus. In addition, Avrum Spira, MD, BU professor of medicine, pathology and bioinformatics, has been hired by J&J Innovation as global head of its Lung Cancer Initiative and will direct the new center. continue reading »

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Newly launched New Jersey research portal to drive industry-academic collaboration


By David Schwartz
Published: June 12th, 2018

The State of New Jersey unveiled a comprehensive database of scientific research from five prominent universities in the state at the BIO International conference last week. The “Research with NJ” database is designed to promote and strengthen collaborations between universities and industry. continue reading »

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Cryptocurrency start-up funding $50M in university partnerships


By David Schwartz
Published: June 12th, 2018

Ripple, a cryptocurrency start-up, announced $50 million in new research partnering with 17 universities in an effort to stimulate innovation in blockchain, cryptocurrencies and digital payment systems. continue reading »

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Survey of Best Practices in Pursuit of NIH SBIR & STTR Grants


By David Schwartz
Published: June 12th, 2018

A new benchmark report from Tech Transfer Central partner Primary Research Group provides a rich set of best practices and data to compare against your own strategies in pursuing NIH SBIR and STTR grants. In Survey of Best Practices in Pursuit of NIH SBIR & STTR Grants, you’ll find detailed data and dozens of easy to scan charts and figures displaying critical data you can’t find anywhere else, including:

  • Number of grants applied for and won by STTR and SBIR
  • Mean levels of funding and ranges
  • Subcontracting as a percentage of total funding
  • Percent of Phase 1 grant recipients that move to Phase 2 and Phase 3
  • Volume of applicants and grants
  • Staff time and use of consultants
  • Percentage of grants won by university spinouts
  • Advice and role models from exemplary programs
  • Use of grant discovery software and databases
  • And much more!

For complete details and to order, CLICK HERE >>

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Iowa State U links with Monsanto on water quality initiative


By David Schwartz
Published: June 12th, 2018

Iowa State University’s Department of Agronomy is joining forces with Monsanto Company in a partnership around an infrastructure project designed to monitor water quality and downstream nitrate loss. The project will provide researchers with valuable information on management practices that help keep nitrogen fertilizer from entering surrounding waterways. continue reading »

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Wistar Institute in research collaboration with Harbour BioMed to discover novel antibody therapies for cancer and infectious diseases


By David Schwartz
Published: June 12th, 2018

The Wistar Institute and Harbour BioMed have signed a multi-year, multifaceted research collaboration to co-discover novel antibodies for the treatment of cancer and infectious diseases. continue reading »

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University of Montreal cancer research institute enters research collaboration with AbbVie


By David Schwartz
Published: June 12th, 2018

The University of Montreal’s Institute for Research in Immunology and Cancer – Commercialization of Research (IRICoR) has entered into a research collaboration with biopharma company AbbVie to identify Tumor-Specific Neoantigens (TSNAs) based on a novel proprietary platform developed by Institute researchers Claude Perreault and Pierre Thibault. continue reading »

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Typical metrics for corporate engagement only tell part of the story


By David Schwartz
Published: June 5th, 2018

Industry-sponsored research metrics ain’t what they used to be.

Simply counting private company contract dollars coming in minus research-related expense dollars going out doesn’t come close to effectively measuring the impact of today’s more holistic approaches to industry-academia collaboration, and experts say new methods are needed to determine whether the more comprehensive ways of interacting are actually meeting everyone’s needs.

Universities are now answering that call, coming up with new ways to measure what matters most to them, based on all the aspects of their relationships with corporate partners.

“You need to think about industry engagement, not just sponsored research,” says Anthony M. Boccanfuso, PhD, executive director at the University-Industry Demonstration Partnership. “Corporate engagement has a lot of interdependent moving parts. The sponsored research office may value contracts, while the technology transfer office values licensing, career services values employment and philanthropic giving values dollars donated. All those things interplay, especially when you’re dealing with a company that has multi-faceted relationships with universities.”

The traditional metrics — number of executed agreements, amount of licensing income, amount of industry funding — may not be sufficient to account for all those factors. The big picture becomes much more important.

“It’s important when you’re looking at results to take into account the fact that sponsored research dollars may be lower, but the company may provide a lot of support for capstone projects,” Boccanfuso notes, “or it may hire a lot of students or provide tuition for employees, and it may also make philanthropic donations. Or there may be a lot of sponsored research dollars and none of those other things.” It’s “very important,” he adds, to “have someone at the appropriate level to evaluate that. The people overseeing the individual activities may have a limited viewpoint as to what matters in the overall relationship.”

That’s the whole point at the University of Texas at Arlington. “You can use generic metrics, but you have to adapt them to the situation at hand,” says UTA President Vistasp Karbhari. “Metrics primarily designed for individual faculty won’t work for a group of faculty, and metrics for one disciplinary area won’t work very well for interdisciplinary research projects,” he explains.

Standard metrics, he notes, such as amount of IP generated and number of agreements, are notoriously limited in the information they provide. “The problem with the standard metrics that a lot of people use — How much money do you get? How much do you spend? How many proposals do you write? — is you can write a lot of lousy proposals and never get funded,” he comments.

Nobody’s denying that money’s important in research, “whether we like it or not,” Karbhari adds. But the key to using metrics is to ensure they assess your effectiveness, not just the raw numbers. The point, he emphasizes, “is not ‘Did you write X proposals?’ but ‘How effective were you?’ It’s more the return on investment of internal money and how it’s being leveraged to get external funding.”

A detailed article on metrics in corporate engagement – including a set of useful tools for crafting more meaningful performance measures – appears in the May issue of Industry-Sponsored Research Management. To subscribe and access the full article, along with an instant library of best practices and success strategies in the publication’s subscriber-only archive, CLICK HERE.

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