Transcript Slide 1

Working with Industry:
What Can We Do To Facilitate
Contract Negotiation?
NCURA Regions VI and VII Meeting
Park City, Utah
April 24, 2007
Jeri Muniz
Director, Sponsored Projects
University of California, Irvine
Working with Industry
Getting to Yes…
How Do We Get There?
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The Landscape
Understand Both Parties
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The Approach
Do Your Homework
Let’s Look at Specific
Scenarios and Clauses
Keys to Navigating the
Gray
How Do We Manage?
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UCI’s perspective
Understand your University
Understand the motivations and authority
of each major player:
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Faculty
Sponsored Projects
Technology Transfer
Vice Chancellor for Research
Legal Counsel
Build internal unity
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Coordinate internally; speak with one voice
Understand your University
Communicate with the PI before the negotiation
 Gather info
How did the project come about?
Urgency of project (Has the work already started?)
What does the PI expect out of the project?
What do both parties bring to the table?
Is there history with the Sponsor?
Are we the only game in town?
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Answer questions
• Explain Industry’s position and the impact on the
research team
• Clarify university policies, if necessary
Understand your Partner
Get to know the Sponsor’s negotiator
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Authority
Experience
Personality
Incentives
Availability
Ask Why?
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Understand their motivations
What research results and IP rights do they expect?
What will they contribute to the project?
Timeframe
Do Your Homework
Review the agreement
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Understand the project
Isolate the issues
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Compare with standard language and principles
Compare with previous agreements with Sponsor
Inform PI of the potential issues (discuss timeframe)
Develop analysis and rationale
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Explain why
Identify alternative or fallback positions
Offer to draft language/propose alternate language
Ready, Set, Go…
Let’s look at specific clauses
and scenarios…
Confidentiality
Institutions want to:
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Limit confidentiality
obligations
Deal with only one set
of confidentiality terms
Comply with public
records disclosure
regulations and
statues
Industry wants:
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Absolute confidentiality
Often extending to the
budget, contract, other
study-related documents,
and research results
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No time limit on the
obligation of
confidentiality
To hold PI to a personal
confidentiality
agreement
To avoid having to mark
confidential documents
Scenario #1: Confidentiality
Project: Evaluation of a learning program at
Sponsor’s facilities
Type of Agreement: Sponsored Research Ag.
Sponsor: Mid-size local company
Sponsor’s Negotiator: Outside Legal Counsel
University Negotiator: SP Office
Extra Motivation:
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First agreement between University and Sponsor
(PI considers this a critical partnership ~ with a
potential for future funding)
Work already started
Scenario #1: Confidentiality
Actual Contract Language
Sponsor proposed the following language:
“2. Confidential Information. University acknowledges and agrees that the names and addresses of
the Sponsors Corporations’ benefactors, donors, corporate partners and affiliates
(collectively “Contacts”) and all other confidential information relating to those actual or
prospective Contacts as well as other information such as but not limited to curriculum
material, learning tools or teaching methods that has or could have commercial or other
value in the purposes for which the Sponsor or its Contacts are engaged or in which they
contemplate engaging and information, that, if disclosed without authorization, could be
detrimental to the interests of the Sponsor or its Contacts (the “Confidential Information”),
whether or not such information is identified as Confidential Information. By example, and
without any limitation, Confidential Information includes the Sponsor’s student records,
employee records, and the Sponsor’s and the Corporations’ corporate partner agreements,
benefactors lists, donors lists, information relating to the Sponsor’s curriculum, teaching methods,
copyrighted materials, software and graphics created for the benefit of the Sponsor, business
plans, strategy plans, development plans, accounting/financial records (including, but not limited to,
balance sheets, financial statements, tax returns, payable and receivable information, bank
account information and other financial reporting information), and private information related in
any way to correspondence, history, gossip, stories, facts, rumors, photos, data, and other
information not generally known by or available to the general public …”
NOTE: This is just the definition….they then went on to obligate us to keep EVERYTHING
confidential.
Scenario #1: Confidentiality
Contract Issue(s):
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Everything is confidential!
Relationship with Sponsor
Existence of the agreement, and the specific terms and conditions
Anything University personnel see while visiting the company’s
facilities
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University shall not engage in gossip, rumors..
What’s your approach?
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What do you need to understand about the University? The PI?
The Sponsor? The Sponsor’s negotiator?
What resources do you have available?
What examples would you use to explain your position?
How do you facilitate the negotiation?
Patent Rights
Institutions want to:
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Protect academic
freedoms
Ensure that patentable
inventions are
diligently developed
and advanced to
market for public
benefit
Industry wants to:
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Own all ideas,
inventions, patents,
know-how
Broadly protect their
proprietary compound
or device
Scenario #2: IP
Project: PI-Initiated trial to treat psoriasis with
an FDA approved drug (approved for the use to
be studied)
Sponsor : Big Pharma
Industry Negotiator: Internal Legal Counsel
University Negotiator: SP Office
Extra Motivation:
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Parties negotiating for three months
PI is anxious ~ VCR has been informed
Scenario #2: IP
Actual Contract Language
Sponsor originally proposed ownership of all
inventions but then proposed the following
language:
“6.
PROPRIETARY RIGHTS
All information resulting from the Study conducted under this Agreement, including all
data, results, conclusions, discoveries, inventions, know-how and the like, whether
patentable or not (“Data”) shall be fully disclosed by Institution and/or Principal
Investigator to Sponsor.
Sponsor shall have the unrestricted right to freely utilize all such Data in
whatever manner it desires. All Data shall be the property of Institution.
Institution hereby grants Sponsor an exclusive, irrevocable, fully paid-up,
royalty free, worldwide license, with the right to sublicense, import, make, have
made, use, offer to sell, sell and have sold all such Data. Institution and/or
Principal Investigator shall assist Sponsor, at Sponsor’s expense, in the preparation of
all documentation necessary to effectuate and perfect Sponsor’s rights in such Data.”
Scenario #2: IP
Contract Issues:
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Outright grant of an exclusive license to everything
(inventions, data, know-how, etc.)
What’s your approach?
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What do you need to understand about the University?
The PI? The Sponsor? The Sponsor’s Negotiator?
What resources do you have available?
What examples would you use to explain your position?
How do you facilitate the negotiation?
Indemnification
Institutions want to:
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Avoid third party
liability (RAs)
Be recognized as a
“skilled pair of hands”
(CTAs)
Be held harmless from
claims or damages
resulting from
following sponsor’s
protocol or instructions
(CTAs)
Industry wants to:
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Contain costs
Minimize liability
By refusing to indemnify
By shifting liability to
others
Scenario #3: Indemnification
Project: Development/Testing of a survey tool;
surveying alleged victims of elder abuse
Type of Agreement: Collaboration Agreement
(No Funding)
Sponsor: Mid-size local company
Industry Negotiator: Contracts Specialist
University Negotiator: SP Office
Extra Motivation:
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Pressure from Sponsor to execute the agreement
(“There’s no funding ~ so what’s the problem?”)
Project linked to other ongoing projects
Scenario #3: Indemnification
Actual Contract Language
Sponsor proposed the following language:
“UCI shall indemnify, defend with counsel approved in writing by the Sponsor,
which approval shall not be unreasonably withheld, and hold the Sponsor, and
their officials, officers, employees, agents (“SPONSOR INDEMNITEES”) harmless
from and against any and all liability, loss, expense, or claims for injury or
damages arising out of the performance of this Collaboration Agreement, but only
in proportion to and to the extent such liability, loss, expense, or claims for injury or
damages are caused by or result from the negligent or intentional acts or
omissions including the actual or alleged sexual misconduct of UCI, its officers,
employees, or agents.
Sponsor shall indemnify, defend, and hold UCI, its officers, employees, and agents
harmless from and against any and all liability loss, expense, or claims for injury or
damages arising out of the performance of this Collaboration Agreement, but only
in proportion to and to the extent such liability, loss expense, or claims for injury or
damages are caused by or result from the negligent or intentional acts or
omissions of Sponsor, its officers, employees, or agents.
Scenario #3: Indemnification
Contract Issue:
 University is to indemnify, for all acts or
omissions, including alleged or proven sexual
misconduct or abuse
What’s your approach?
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What do you need to understand about the University?
The PI? The Sponsor?
What resources do you have available?
What examples would you use to explain your position?
How do you facilitate the negotiation?
Keys to Facilitating
Negotiations with Industry
Understand your University
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Involve the PI
Unify all stakeholders ~ speak with one voice
Utilize the experts and/or decision makers
Know the whys ~ use different examples to get
your point across
Understand your Industry Partner
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Actively listen ~ Ask why?
Be proactive and responsive
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Don’t delay!
Be ready with multiple examples to explain your
position
Be creative!
How do you manage it all???
UCI’s Perspective…
What can you do as an Office?
UCI’s Perspective
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Workload Management System
Electronic System to Track the Status of Negotiations
Feed Information into a Research Portal
(available to the campus/faculty)
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30-45-60 Day Status Reports
Awareness and management of negotiations
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Preventive medicine!
Creates proactive game plans for the timely resolution of active
negotiations
Troubleshooting in a team environment to maximize learning
opportunities in a group using real contracts/negotiations
What can you do as an Office?
Officer Tool Kit
 Provides one-stop shopping for all resources related
to topic/sponsor issues
Rationale
Template language and agreements
Access to internal/external guidance
Previously negotiated agreements (and the
corresponding history)
 Shared access
Enhances consistency
Self-updating
Thank you!
More questions?
Jeri Muñiz
Director, Sponsored Projects
University of California, Irvine
[email protected]
949-824-2897