Sponsored Projects and Research Collaborations

Sponsored Research Projects

Research Contracts

Approximately one-fourth of the research conducted at BYU is sponsored by commercial entities - about three times the industry/government for most universities. The university, across the campus, has a long history of working closely with industry in programs ranging from altruistic student training programs to focused research which is expected to lead to the creation or enhancement of a product for the company. All funded projects must be delimited by a contract, and all industry sponsored contracts will bear full overhead. The Office of Research and Creative Activities is responsible for negotiating these contracts and administering the projects. The Technology Transfer Office will work with ORCA on intellectual property matters. Final approval for the terms of the agreement is given by the Associate Academic Vice President for Research.

This section is given as a guide for the faculty, and to provide information that they can use in their initial conversations with potential sponsors. However, faculty should not begin negotiations of the terms of a contract with the company without first consulting with ORCA and/or the Technology Transfer Office.

A university is a unique institution where freedom of thought and action to pursue learning and new knowledge are an inalienable part of its mandate. The university does not do "work-for-hire" where its personnel and facilities are used to fulfill production or service contracts. All sponsored projects must contain a significant scholarly, academic component. The university will accept some routine work as part of a contract if there is a significant academic or creative constituent. The University also supports the independence of its faculty and their ability and right to manage and control the work of the contract. Consultation with company representatives is usually very beneficial and may be an especially important part of some educational programs, but ultimate control of the project must remain with the faculty principal investigator. If the company insists on control, a consulting arrangement should be considered.

Consulting

Faculty consulting activities are, in most circumstances, encouraged by the university (see Expectations of a Faculty Appointment), but they are generally to be conducted outside the domain of the university. The faculty may make incidental use of university facilities in their consulting activities, which would include their office, computer, etc., and even some use of laboratories and equipment/instruments. However, projects which involve extensive use of laboratories or equipment or any employment of a student should be handled as a sponsored research contract. It is never appropriate for faculty acting as a consultant or for the company to hire a student to work in university facilities because of liability issues. For more information on consulting, see the Consulting Policy in the electronic handbook. You can access it through Route Y.

Gifts

Some companies generously give gifts to the university with "no strings attached." With such gifts, the money may be directed to be used in a certain area, but the company has no control of any kind over the work, and receives no deliverables of any hardware, software, proprietary reports, intellectual property rights, etc. If, however, the company desires to receive a deliverable, data or intellectual property rights; then a research contract, bearing overhead, must be negotiated through the Office of Research and Creative Activities.

Confidentiality and Publication

Perhaps the single most important aspect of our research is the prospect of publishing the results. This is the lifeblood of academia and is essential to student progress and employment and to faculty advancement and development. However, some sponsors desire a very high degree of confidentiality and secrecy. We may divide confidential information into two categories. First, the sponsoring company may possess information which it considers confidential and which is needed to perform the research. The University believes it is reasonable to hold such in confidence. However, the company must recognize that the academic culture in general is used to sharing information in a variety of forums. Students will talk with one another on campus and at conferences. Faculty share research approaches and results. Therefore, the receipt of confidential information should be minimized and confidentiality agreements signed only when really necessary. Also see Confidentiality: Patenting vs. Publishing or Presenting.

Second, information generated by university personnel in performance of the research may be critical to the company, but the University maintains a very strong stand and insists that we must ultimately be free to publish. However, we generally agree to allow the sponsor to review manuscripts and ask that BYU remove any of the company's confidential information which may have been inadvertently included. The company may also comment on the publication's content, but it may not control the content. The University may also agree to delay publication for a maximum of 90 days (see BYU Intellectual Property Policy) to allow patent applications to be filed. Confidentiality provisions beyond these are negotiated only under rare circumstances.

Intellectual Property Rights

Ownership of Intellectual Properties: The BYU Intellectual Property Policy specifies that the University will retain ownership of all intellectual properties developed in a sponsored project.

The primary reason for this policy is to insure the academic freedom of our faculty. By retaining ownership, the university will always be free to use the results of its research in future activities within the university. (Commercial rights will usually be granted to the sponsor.)

The second justification for retaining ownership is the university's significant contribution to the development of the intellectual property both before and during the project.

i. In almost all cases, the university will have already been working in the field and will have created a significant amount of know how and intellectual property before the commencement of the sponsored project.

ii. BYU typically contributes, without charge, significant amounts of activity of the faculty who usually receive little if any additional compensation for their work on the project. Students also are typically involved much more than their actual work time.

iii. BYU charges sponsors indirect costs at a rate negotiated with the Federal government. Currently, the rate is 48% of direct costs. However, the University's actual indirect costs are near 63%. Thus, the university financially contributes 15% to each project.

(Note: A large majority of states (including Utah) statutorily require their universities to keep ownership of intellectual properties, and virtually all institutions, public and private, maintain this policy. Therefore, corporations that work with universities should be well acquainted with universities' requirements to retain ownership of intellectual properties.)

Licensing Intellectual Property Rights: BYU maintains that sponsors are entitled to commercial rights to technologies developed through their sponsorship. These rights usually take the form of a license to any patents or copyrights which result from the research. However, the terms may vary widely and the license may take other forms depending on the company's desires, previous commitments by the University, involvement of additional sponsors, the amount of support contributed by the company relative to previous or concurrent University support, etc. Absent unusual constraints, the sponsor will be given an option to obtain an exclusive, royalty-bearing license. The University strongly prefers to limit the rights granted in the research agreement to an option (rather than a license) because the outcome of the research, and the contributions of the parties will not be known until the project is complete. At that time, the parties will negotiate the terms of the license in good faith, taking into consideration the contributions of both parties. Typically, royalty rates are set at approximately half of the "going rate" for similar technologies in acknowledgment of the sponsor's contribution.

BYU's standard Research Agreement should be used as the basis for negotiation of all sponsored research agreements.

Sponsors at times have requested that the University grant them rights to any background technology that might be pre-existing and would be used in the sponsored project. Because background technology might be committed to other sponsors, involve other faculty, or constitute a significant asset of the university, it is BYU's policy to not grant such rights in the research contract. However, if it becomes apparent that such background technology would help in the current project, the faculty involved should notify the Technology Transfer Office and the sponsor so that an appropriate solution maybe negotiated.

Material Transfer Agreements

Biological Materials Transfer Agreement

Biological and Biochemical research often results in the isolation or creation of unique biological materials. These materials are generally complex constructs which may be replicated or which will reproduce, such as DNA, vectors, viruses, bacteria, cell lines, plants, animals, etc. The sharing of these materials with colleagues is generally accepted as an important aspect of academic research. We desire to promote the growth of knowledge throughout the community and to allow a mechanism for others to reproduce and validate our work. Sometimes these materials will also have potential commercial value. But, whatever the motivation for supplying a biological material to another individual or institution, a Biological Material Transfer Agreement should be signed first.

The National Institutes of Health, several universities and some "biotech" companies worked together and generated a "Uniform" biological material transfer agreement. After public comment and review it has been finalized. The term, uniform, means that it is generally accepted by all competent and responsible parties as being fair and equitable and that it addresses the pertinent issues, and lacking a signed agreement, the courts can use it as a guide in deciding suits. BYU has adopted this uniform agreement.

Such an agreement is necessary to
1) protect the investigator and the university from several significant liability issues,
2) insure that the material will not be used improperly,
3) maintain ownership and a reasonable amount of control of the original material and
4) define the arrangement if there is any commercial potential.
The recipient will own any intellectual property rights which it develops. However, the agreement outlines how the recipient will work with BYU in a cooperative manner in any commercial development.

The Technology Transfer Office is responsible for administering the material transfer agreements and for negotiating any changes to an agreement. All agreements must be signed by both the Associate Academic Vice President for Research and the scientist.

Biological materials should not be accepted without an agreement, and these incoming agreements should also be administered by the Technology Transfer Office and signed by the Associate Academic Vice President for Research. Note, agreements from some companies contain some very onerous terms which could place significant restrictions on a research program.

The National Institutes of Health has published suggested "Principles and Guidelines for Recipients of NIH Research Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources". They have been subject to public review and comment. Their intent is to provide a basic philosophy and guidance to the research community for the sharing of biological research tools and materials. They attempt to balance the competing interests of intellectual property owners and research users who want access to such tools to further their research. The principles and guidelines, and comments are available at: http://ott.od.nih.gov/newpages/RTguide.htm

Chemical Transfer Agreements

Biological chemicals, bioactive chemicals, or unique non-biologically oriented compounds should also be transferred with an agreement. Sometimes this can be accomplished with a Non-Disclosure Agreement, but if there is biological activity which raises liability concerns, or if there is commercial potential, an agreement similar to the Biological Material Transfer Agreement will be required. It is suggested that the scientist consult with the Technology Transfer Office.