Sponsored Research Agreements with Industry
Sponsored Research relationships typically result when there is an overlap of scientific and technology interests between a company/company scientists and institutional investigators. Alternately investigators may want to use some materials, compounds or equipment proprietary to a company in their own research endeavors. In both scenarios, institutional investigators benefit from additional funding and company expertise and the company benefits from the data generated from cutting edge research.
Once both sides have defined the research scope and plan, Innovation professionals will, with their peers at a company, negotiate an agreement to govern the research. The agreements typically contains terms regarding the research plan, funding, ownership of intellectual property, confidentiality and publication in addition to other standard contract terms.
Intellectual Property Management
Innovation is responsible for the management of intellectual property generated in Partners HealthCare, including all intellectual property arising out of Massachusetts General Hospital and Brigham and Women's Hospital. Typically intellectual property will be disclosed to the office and appropriately protected by patents or copyright. Once an appropriate licensing partners has been identified, rights to intellectual property will be granted under license and option agreements as described below.
In many situations the ideal commercialization agreement is an exclusive license. This is the preferred structure when substantive resources and investment must be allocated to further develop the technology. The exclusive right to the intellectual property will give the company a competitive advantage in the market by preventing others from practicing the technology for a period of time. Typical financial terms for an exclusive license contain an upfront fee, provisions for milestone payments, sublicensing provisions, diligence milestones, and a royalty to the institution, as well as reimbursement of all past and future patent expenses.
In many instances, a non-exclusive license is the appropriate vehicle to accomplish the objectives of the collaboration and/or commercialization, particularly if the company is merely seeking the right to practice under the intellectual property without infringing. Financial terms for a non-exclusive agreement usually include an up front fee, and future royalties.
This is the ideal agreement structure if a prospective partner wants a period of time to do further validation work or evaluation while protecting their right to license the intellectual property exclusively or non-exclusively at a future time, usually in the next six months to a year. An option agreement usually requires an option fee in consideration for the technology being "taken off the market." Financial terms for the eventual exclusive license can be negotiated in advance, or at the time of exercise. Often, Option Agreements include sponsored research to be conducted in the inventor's laboratory.
Confidentiality Disclosure Agreement
The Confidentiality Agreement (“CDA”), also referred to as a Non-Disclosure Agreement (“NDA”), is a document that facilitates the exchange of proprietary information between an investigator and persons in industry, academia, or financing. The exchange of information may thus be mutual or unilateral. The CDA may serve as the prelude to a license agreement, to the development of a prototype, to a business partnership, or to a scientific collaboration. The execution of a CDA in advance of the exchange of information permits the participants to share ideas and new technology without jeopardizing valuable patent rights and without placing one’s intellectual property at risk of being pirated.