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Attracting corporate partners with pre-set IP terms

Flexibility, distinctive branding mark UW-Madison’s new IP options program

This article appeared in the March 2024 issue of University-Industry Engagement Advisor. Click here to subscribe.

Standard IP agreement options are certainly nothing new for major research universities, but the University of Wisconsin-Madison asserts that its recently launched Badger IP Industry Advantage differs from many others in more than one way. First, say its leaders, they intentionally went as far as they reasonably could in their offerings, to eliminate the need for negotiations as much as possible. (See the program’s details here.)

“We thought through the upper limits of what we would do,” shares Robert Gratzl, JD, UW-Madison’s assistant director of contracts, research, and sponsored programs. “What won’t we do? We’ve given the best options available.”

“We have heard feedback from industry partners and potential partners, as well as internally from our researchers, that it would benefit all parties to have a clear, upfront approach to interactions and to provide consistency in offered and accepted IP terms,” adds UW–Madison interim vice chancellor for research Cindy Czajkowski, PhD. “We have historically engaged in negotiation for IP terms, and we will continue to do that, but ideally, we want to save time and expenses by offering the best possible IP terms upfront. We want to be clear, transparent, and able to provide a timely response to industry sponsors.

“We’re not saying we won’t negotiate IP terms, because there may be instances where a company wants something other than the terms offered through the Badger IP Industry Advantage,” she continues. “But in most cases, we’re offering the best possible option upfront.”

Then there are the names of the options themselves. Many such university programs simply offer “Option I,” “Option II,” and “Option III,” but UW-Madison has chosen to call theirs “The Classic,” The Varsity,” and “The Bascom” — all related to specific aspects of university history and tradition. “We wanted them to be fun and interesting,” explains Natasha Kassulke, director of strategic communications. “We have great pride in our history of 175 years, the success we’ve had in therapeutics, and we’re highly motivated to talk about that whenever we can.”

Getting to ‘go’

Badger IP Industry Advantage was approved through campus leadership earlier this year and is just now in the process of being rolled out. What was the rationale for the program, and how was it developed? The underlying impetus was “to remain among the best in a competitive research environment, and to grow The Wisconsin Idea (that education should influence people’s lives beyond the boundaries of the classroom) most fully by transforming lives and providing innovation for the public good. We know that now, more than ever, we need partners — industry partners,” Czajkowski explains.

“To develop the Badger IP Industry Advantage models, we benchmarked against our peers; we looked at the regional and national landscapes for university-industry partnering, and we looked at ourselves,” she continues. “We participated in an assessment as part of the Association of Public & Land-Grant Universities (APLU) process for designation as an Innovation and Economic Prosperity (IEP) university; IP was a part of that assessment.”

The university assembled a working group that included legal affairs, the Wisconsin Alumni Research Foundation (WARF), research and sponsored programs, the Office of Business Engagement, and others, she reports, “to review that assessment and to document historic IP agreements and discuss aspects of IP agreements that would go on to be the basis for the Badger IP Industry Advantage.”

“We worked on the IP model for over a year,” adds Gratzl, who was part of the group. “We did a lot of work behind the scenes. What do other universities do? What have we done historically? If we’ve done the same as other universities, why not memorialize this? We’ve gone through [many] iterations.”

Czajkowski notes that Office of Business Engagement and industry engagement professionals across campus “have been instrumental” in gauging industry needs related to IP. “We also have feedback from PIs who have worked with industry and those who are interested in working with industry,” she adds.

What sets it apart?

Gratzl notes that there are aspects of the program that differentiate it from those at other universities. For example, he says, “one area where we’re most divergent is rather than having an upfront fee for a non-exclusive license, we’re giving sponsors a little more leeway. If you see an invention [that interests you], we give you the right to use it internally, and then you have the right for a non-exclusive license or you have the right to negotiate an exclusive license (This is what the university refers to as the Varsity Model. See program options below.)

Gratzl concedes that team members “went back and forth” on this decision. “We could do an upfront fee, but we wanted to give folks the most flexibility,” he explains. “The clincher was when we were working with a sponsor and we said we had this model in the works, and they said, ‘We’d rather not pay up front, but have time to have a non-exclusive determination later.’ Another said they’d rather pay upfront for an exclusive. Two sets of companies looked at it differently, which gave us a good benchmark. We said, ‘Let’s leave this as it is and see what happens.’”

While he is the first point of contact, Gratzl explains it is WARF — the university’s commercialization arm — that “operates” the process. “They need to know who [the industry partner] wants to work with, and what study it wants; the process is not top-down,” he states. “Ideally this is a place where they can see options and ask questions, but at the core we need to have the PI want to work with them. If professor Johnson is thinking about doing a start-up, at that stage the Bascom is probably not in their best interest. Still, discussions need to happen with the PI; ‘What do you want to offer the company?’ ‘This is what [this model] means for your future — is that the one you want?’ Some faculty are more entrepreneurial than others. In our notes to campus, the decision on final selection must be agreed to by both the company and the PI.”

And what about the unique names of the models? “Our contribution needs to go beyond the university; we need industry partners to transform lives,” notes Kassulke. “We needed to think creatively about how to get attention and stand out from the other universities.”

That feeling was behind the decision to highlight things that had a tie-in to major figures and features of the university’s history. For example, while the “Bascom” is a building in the heart of the campus, it is also named after John Bascom, a president of the university in the 1800’s. “‘Varsity’ is, of course, our school song,” Kassulke continues. “Our alumni remember singing that, and I think they will recognize it.” The Classic comes from the “Crazylegs Classic,” an annual race/walk named after famous Wisconsin football player Elroy “Crazylegs” Hirsch.

And the program’s title was a must, “just to make sure we had the ‘Badger’ brand,” says Kassulke. “Our mascot since 1889 is widely recognizable. Branding is important; it tells the world how we do things differently and helps us reach out to alums and students. They benefit also — for example, from getting jobs through industry partnerships.”

“What sets Badger IP Industry Advantage apart is that it represents UW-Madison, which has a long history — 175 years — of discovery and therapeutics that have changed the world,” adds Czajkowski. “We are investing in our faculty and research infrastructure and our cores.”

Getting off the ground

As the program is in its earliest stages, Kassulke is hoping for “strong word of mouth” as a marketing vehicle. “The Office of Business Engagement will tell sponsors, WARF is very interested [and is involved] in our research park, and the alumni foundation will be telling people about this far and wide,” she predicts. “I’ll do social media, a very important tool for our office, and will reach out to the communications office for publications and news releases.” In addition, she notes, the schools and colleges will interact with visitors’ groups using their social connections. In addition, Gratzl “will be doing training around campus,” she notes.

“I have a presentation put together,” says Gratzl, “And for sure I’ll work with the Office of Business Engagement — they’re the front door to companies trying to figure how to work with the university. I’ll talk with them about what the program is overall so they can sell it. I’m working to develop handouts. Beyond that, I’ll work with the units. We also have department folks actively talking with companies.” This way, he explains, “at least they can give high level descriptions.”

Outside of those groups, he continues, there are team negotiators and a variety of deans’ offices. “We will have a completely separate presentation, talking about how this works in practice,” he explains. “We’ll also have template agreements. We’ve taken standard research agreements and incorporated an attachment that highlights what the IP language will look like if someone selects an option.”

Many benefits expected

Leaders at UW-Madison are anticipating a number of benefits to be realized from Badger IP Industry Advantage. “What is especially exciting about this new program from our perspective is that it will increase the quantity and breadth of business partnerships,” says Michael Falk, chief intellectual property and licensing officer at WARF. “By creating for business a transparent and easy-to-understand program for tapping into the world class talent of the university to solve real world problems, there is every reason to think companies will more often look to UW-Madison for solutions to real commercial problems. This is good for our professors and other researchers, because it opens up new areas of research and provides the resources to pursue cutting edge research. And it is good for all of us because this program will speed up the transfer of early-stage technologies to real world applications.”

“We know that real-world projects benefit students and industry alike,” adds Czajkowski. “I am excited to see our students getting internships and jobs with our industry partners and contributing to growing research areas including tech, health, and more. For our PIs, we expect the Badger IP Industry Advantage to save them time and resources so that they can spend more time on their research.”

For industry, she continues, “the benefits include ease of process and a timelier response to their interests. Fundamentally, we’re trying to figure out ways to make the interaction between universities and industry more beneficial to both parties — and one area that often comes up, no matter which university you are, is access to intellectual property. So, from a corporate engagement perspective, the program makes sense because it provides clarity to these sponsors, and being clear upfront is something we think will enhance the interactions and try to break down some of the back and forth and uncertainty we all face.”

Falk also believes the new program will attract new industry partners and strengthen existing partnerships. “The flexibility at the heart of this program is what will bring new industry partners to the program and strengthen existing partnerships by providing more options to engage with world class researchers,” he asserts. “The financial certainty in executing a deal will give business the confidence that they are making a smart choice to invest in UW-Madison researchers. I think as more businesses see how terrific UW-Madison researchers are — how fast and creative and committed they are — this program will grow quickly and become a major bridge between the university and industry.”

“It tells industry partners that we are open and ready to collaborate,” adds Czajkowski. “With the Badger IP Industry Advantage, we are sending a message to potential and existing industry partners that we have heard them, we value them, and that we have implemented more flexibility in our terms. This was a key input from the business community — more flexibility.”

While noting that “it’s a bit too early to tell” how strong industry response will be to the program, she notes that the Badger IP Industry Advantage has already been used with two corporate sponsors so far, “so that’s a good start.” One has resulted in the licensing of an invention, while the other partner has started doing task orders and selecting options under a master agreement. “Both are in the College of Engineering,” she reports.

“There is excitement brewing on and beyond campus about this,” Czajkowski continues. “I’m hearing it from campus leaders and from researchers. I’m hearing it from [the Office of Business Engagement] and external relations. We are planning training sessions to take to interested units on campus and will work with our networks including the campus Innovate Network, which providesupport for aspiring entrepreneurs and problem solvers at any stage of the innovation process.”

Looking ahead

In terms of long-term goals for the program, “we want to grow industry funding overall; when we look [at where we stand in] surveys, we want to go up,” says Gratzl. “I don’t know if this program by itself will make that move possible — there are layers for funding research — but it may be easier.”

For the shorter term, he adds, he wants to figure out how often these different options will be used, and how much improvement it brings in turnaround time. “I’ve spoken to other universities, and 90% of the time people take what we call the ‘Classic,’” he says. “The question is, how often are these [other options] taken versus trying to haggle over details? We’ve given the best we can offer; I’m not sure how much farther we want to go. I’ve been working long enough at this to remember universities trying to give [IP] away for free and coming back later saying they’ve not really increased their portfolio at all. What do we want to be?”

“Increasing our funding is definitely high on our list of goals,” adds Kassulke. “It’s also important to look at pushing our research into frontiers. It’s important to look at where we see interest and successes in emerging technologies, and also at helping students find opportunities for internships.”

“We are interested in creating relationships that are mutually beneficial, while increasing our industry-sponsored portfolio and our research dollars that come from industry sponsorship,” adds Czajkowski. “These partnerships not only provide for further investment to grow our impact across and beyond the state, but help inform our priorities for the future. We want to be at the table in growing and high-impact research areas that address global challenges. We also want to see internships and job opportunities for our students come out of these partnerships.”

Ultimately, she shares, she’d like to hear these “impactful” words from industry partners: “’UW-Madison is a group we can work with.’ And then,” she concludes, “we get to work.”

Contact Czajkowski at 608-265-5863 or cmczajko@wisc.edu; Falk at 608-960-9859 or michael@warf.org; Gratzl at 608-265-0560 or robert.gratzl@rsp.wisc.edu; and Kassulke at 608-219-8042 or natasha.kassulke@wisc.edu.

 


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