Tech Transfer eNews Blog

Take steps to avoid traps and pitfalls in faculty consulting agreements


By Jesse Schwartz
Published: January 13th, 2021

A detailed article on minimizing the COI and legal risks in faculty consulting agreements appears in the December issue of Technology Transfer Tactics. To subscribe and access the full article, as well as the publication’s 13+ year archive of best practices and success strategies for TTOs, click here.

Faculty consulting agreements are full of potentially serious issues involving conflicts of interest, legal liability, and ethical considerations. Unfortunately, the faculty entering into these agreements are often inexperienced with such matters and can find themselves embroiled in serious consequences down the road.

The university can be dragged into those problems, so tech transfer leaders should educate and help guide faculty members through these agreements even when the university is not a party, says K. Lance Anderson, JD, member and deputy CEO with the law firm Dickinson Wright in Austin, TX.

The increase in entrepreneurial opportunities such as start-ups, as well as growth in university-industry engagement activity, creates a large danger zone for faculty consulting agreements, Anderson says.

The sheer number of consulting agreements is on the rise with both individual faculty and institutions, he notes. That puts more pressure on agreement negotiators, since these deals often involve private sector entities that don’t understand how to work with universities, Anderson says.

“It’s amazing what you will hear as far as the expectations of some of these [companies], which completely disregard things like public policy or research integrity or things like that,” he observes. “They simply don’t understand some of the motivations or the risks that come along with working with institutions.”

Their contracting positions will often include elements that may not be workable given the faculty member’s current position or relationship with the institution, which may have its own state laws to worry about, Anderson says. Conflicts of interests can arise, and the private sector party may enter into an agreement with unrealistic expectations, he says.

When conflicts related to faculty consulting hit the headlines, they usually involve research integrity, Anderson says. Typically, this would involve a faculty researcher who is accused of having a significant financial interest that could sway the outcome of certain research.

These cases can often be avoided with a properly structured consulting agreement, he says, which can address both conflicts of interest for faculty and for the institution.

Institutional review needs to happen in advance of a faculty member entering into these consulting agreements, Anderson says. The university may not be party to the agreement, but it could require a rider where it can clarify certain provisions or ensure that the agreement does not conflict with the faculty member’s other obligations, he adds.

Intellectual property rights are another key area of concern. Typically the commissioning party starts with trying to make the arrangement a work for hire and the parties work backwards from there, Anderson says.

However, “that would conflict with a vast majority of the intellectual property policies of these institutions, particularly if that consulting agreement is involving the same subject matter that the faculty is involved in at the institution, which would be most of the time,” Anderson explains. “Then there’s the actual or potential conflicts of interest which would really boil down to financial interests or other upside relationships based on the outcome of certain performances under that consultant agreement.”

For example, if faculty is granted equity as part of the consultant agreement, that’s going to trigger a potential conflict of interest, Anderson says. Use of institutional property is another potential problem. “You don’t want private use manifesting via these consulting arrangements, and you want your policy to establish this as well,” he says.

Click here to continue reading this article with a subscription to Technology Transfer Tactics. Already a subscriber? Click here to log in.

Anderson spoke at the recent webinar “Faculty Consulting Agreements: Mitigating COIs while Supporting Faculty Inventors,” sponsored by Technology Transfer Tactics. The session is available in on-demand video, DVD, and print transcript. Click here for details.

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U of Bath licenses non-addictive compound for chronic pain to Phoenix PharmaLabs


By Jesse Schwartz
Published: January 13th, 2021

Preclinical drug company Phoenix PharmaLabs has entered into a license agreement with the University of Bath in England to advance a non-addictive treatment for chronic pain. continue reading »

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Considerations for Negotiating and Drafting Enforcement Terms in IP License Agreements


By Jesse Schwartz
Published: January 13th, 2021

Universities and their tech transfer offices must be prudent when negotiating terms for agreements granting rights to third parties in university-developed inventions. Among many considerations a TTO must address during negotiations are the scope of rights granted to the third party (e.g., scope of geographic and field of use grants) and the university’s desire to be involved in, or to avoid, future U.S. litigation. These concepts are interrelated and should be considered together.

Case in point: A recent Federal Circuit ruling in Gensetix v. Board of Regents of the University of Texas System is yielding important lessons about the proper way to construct license agreements — particularly with regard to rights to enforcement among licencees — as well as the role of sovereign immunity when a litigant seeks to force a state university to join an infringement suit.

Tech Transfer Central has teamed up with legal experts from Intellectual Property law firm Oblon, McClelland, Maier & Neustadt to guide TTOs and legal counsel in drafting agreement terms to maximize their ability to achieve desired goals — and avoid involuntary joinder — when granting rights in university inventions to third parties. The case also has critical implications for those bringing infringement suits without participation from “necessary parties.” Join us on February 17th for Considerations for Negotiating and Drafting Enforcement Terms in IP License Agreements.

For complete program and faculty details or to register, click here.

Also coming soon:

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Ohio State U start-up develops portable battery pack to replace gas generators


By Jesse Schwartz
Published: January 13th, 2021

A student-led start-up from Ohio State University (OSU) has developed a portable power source that could replace emissions-heavy gas generators. continue reading »

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Bristol U start-up develops groundbreaking gene therapy for kidney diseases


By Jesse Schwartz
Published: January 13th, 2021

A Bristol University start-up has developed a novel technique to treat Nephrotic Syndrome, a rare genetic disease that is known to cause kidney failure. continue reading »

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Western U researchers develop rapid, accurate and cost-effective COVID-19 antibody test


By Jesse Schwartz
Published: January 13th, 2021

Researchers at Western University in Canada have developed a rapid, accurate and cost-effective COVID-19 antibody test.

The test can be completed in five minutes, has greater accuracy than current tests, and is scalable, making it more ideal for community level use. It can use blood or plasma samples to detect antibodies with 100% specificity and 98% sensitivity.

Western professor Shawn Li led the test’s development, made possible by the $20 million Ontario COVID-19 Rapid Research Fund.

WORLDiscoveries, Western’s tech transfer arm, has applied for a U.S. provisional patent on the technology and is actively seeking industry partners to license and manufacture the test in order to make it commercially available to healthcare providers in Canada and abroad.

Source: WORLDiscoveries

Survey of Technology Transfer Office Experience During the Pandemic is an in-depth report filled with data comparing university TTOs’ responses to the adversity and unprecedented challenges associated with the COVID-19 pandemic. Click here for details.

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Sports tech company licenses see-through protective mask from VA


By Jesse Schwartz
Published: January 13th, 2021

A sports technology company has licensed a protective mask from the U.S. Department of Veterans Affairs (VA) that allows users to speak and be heard more easily. continue reading »

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U of Hawai’i at Mānoa start-up advances technology to reduce solar power costs


By Jesse Schwartz
Published: January 13th, 2021

A start-up from the University of Hawaiʻi (UH) at Mānoa is developing a liquid metal coating that could reduce manufacturing costs of lighter-weight solar power mirrors. continue reading »

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Now Available: The Life Science Venture Capital Directory


By Jesse Schwartz
Published: January 13th, 2021

The Life Science Venture Capital Directory contains comprehensive contact information for virtually all life science venture capital funds. Our contact database of more than 350 life science VCs — which you can download and incorporate into your own VC research, includes:

  • The fund name
  • Website URL
  • Funding inquiries contact details including e-mail
  • Link to team member list

Once you purchase and download the Excel-based Life Science Venture Capital Directory, you can incorporate it into your own research and marketing efforts without spending the countless hours you’d need to compile this comprehensive list on your own. Just click here for details or to order, and in minutes you’ll have all the contacts you need to put your investor search on the fast track.

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Tel Aviv U start-up produces yeast-based milk that looks and tastes like cows’ milk


By Jesse Schwartz
Published: January 13th, 2021

A start-up from Tel Aviv University (TAU) is developing dairy-free, eco-friendly food products that are identical in taste and color to those made from cows’ milk. continue reading »

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EpiVario enters option agreement with U Penn to advance potential Alzheimer’s treatments


By Jesse Schwartz
Published: January 13th, 2021

Preclinical drug company EpiVario has entered into an option agreement with the University of Pennsylvania (Penn) to advance potential treatments for early-stage Alzheimer’s disease. continue reading »

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Comings and Goings


By Jesse Schwartz
Published: January 13th, 2021

The Polsky Center for Entrepreneurship and Innovation at the University of Chicago has chosen Christine Karslake, an experienced start-up investor and consultant, to serve as managing director of Polsky Science Ventures. In this newly created role, Karslake will lead the formation and launch of science and technology start-ups across all fields of research at the University of Chicago.

Karslake most recently served as founder and CEO of Quest Strategies, a company that provides strategic consulting to high-growth companies. Prior to that, she served as vice president of Innovation and Entrepreneurship at the St. Louis Economic Development Partnership, which provides funding to life science and information technology startups. Karslake also founded STL Export Accelerator, the nation’s first accelerator focused specifically on the export industry.

“I have spent the majority of my career finding ways to add value and support the launch and growth of new innovative start-ups,” she says. “The opportunity to join the Polsky Center and manage a diverse portfolio of companies stemming from University of Chicago research was something that deeply aligned with my career interests.”

Bill Payne, executive director of science and technology at the Polsky Center, comments, “We are thrilled to have Christine join the Polsky Center team. Her extensive management experience and proven track record will allow us to bring world-class venture support to our University of Chicago research-based start-ups.”

Source: Polsky

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