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SPS PrimerNegotiations – A
Practical Review
Michael LenetskyKen Packman
Allen BovaErnie Davis
SPS Primer – Week 4
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SPS Primer
It is said that if you know others and know yourself you will not be imperiled in 100 battles. If you do not know others but know yourself, you win one and lose one. If you do not know others and do not know yourself you will be imperiled in every single battle.
“The Art of War”, Sun Tzu
Negotiations :A Practical Review
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SPS Primer
Purpose of this presentation
To understand issues in award negotiations Why does it take so long to sign an award? What issues are GCOs looking at in the award? Are other offices involved and how?
General framework: Briefly discuss role of various offices Examine some problematic contractual language
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SPS PrimerContract
A legally binding agreement involving two or more people or businesses (called parties) that sets forth what the parties will or will not do. The majority of contracts must be in writing to be enforceable. A contract is formed when competent parties -- usually adults of sound mind or the authorized representatives of business entities -- mutually agree to provide each other some benefit (called consideration), such as a promise to pay money in exchange for a promise to deliver specified goods or services or the actual delivery of those goods and services. A contract normally requires one party to make a reasonably detailed offer to do something -- including, typically, the price, time for performance and other essential terms and conditions -- and the other to accept without significant change.
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SPS Primer
Contracts include: Awards Requests for Proposals or Quotations (RFP and
RFQ) Research Agreements Material Transfer Agreements (MTA) Non-Disclosure Agreements (NDA)
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SPS PrimerNegotiation
To arrange for or bring about through conference, discussion and compromise.
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SPS Primer
Role of SPSand Grants Officers
Serve as contractual point of contact. Negotiate mutually acceptable agreement
in shortest possible time. Ensure interests of Cornell are observed. Maintain excellent relationship with
sponsor. Ensure Cornell can comply with terms and
conditions.
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SPS Primer
Cornell Center for Technology, Enterprise, & Commercialization
(CCTEC)
Intellectual Property Managementat Cornell
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SPS Primer
Office of IP Management & Licensing
Ithaca & Weill
Office of Economic Development
Cornell Research Foundation
The CCTEC Umbrella
•IP-owning shell corporation•License signatory•Patent enforcement
•IP management (e.g., contracts, patents, royalty distribution, Gov’t compliance)•Technology evaluation & marketing•Licensing•Venture creation•Assist corporate research contract negotiations•Provide IP expertise & advice•Educational outreach
•“town/gown” working group•Cornell ED clearinghouse•Technology outreach to local/regional companies•Assist in attracting companies to region•Support venture creation
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SPS PrimerObjectives
Intellectual Property Management & Licensing (IPM&L)
To provide professional advice and counsel to faculty and staff at Cornell University on intellectual property and related business matters in a timely and responsive manner.
To identify, protect, and transfer intellectual property developed at Cornell University for commercial development in the public interest.
To optimize the return of financial and related resources to Cornell, its inventors, its research enterprise.
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SPS PrimerCRF Organization
501(c)(2) organization Wholly owned by Cornell University Board of Directors appointed by Cornell -
faculty, administrators, alumni Ownership of intellectual property
developed at Cornell IPM&L is CRF’s agent
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SPS PrimerThe Bayh-Dole Act
Public Law 96-517Patent and Trademark Act of 1980
Intended to promote investment by the private sector in commercialization of federally funded research discoveries for the public good
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SPS Primer
Obligations of Bayh-Dole
Universities must file patents on inventions they elect to own
Encourage collaboration with industry to promote the utilization of inventions
Preference for small businesses Manufacturing in U.S.
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SPS Primer
Obligations of Bayh-Dole
Government retains non-exclusive license and march-in rights
Report patenting and utilization
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SPS PrimerCornell’s Patent Policy
Cornell owns inventions made in the course of Cornell work conducted by appointees
Not limited to grants or contracts from extramural agency
Inventions assigned to CRF, managed by IPM&L
Ownership tied to inventorship: - Sole and Joint
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SPS PrimerCopyright Policy
Traditional Works -books, manuscripts, artistic works
Encoded Works -software and other works that support the electronic capture, storage, retrieval, transformation and presentation of digital data.
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SPS PrimerCopyright Policy
Ownership vests with author except Subject to sponsored research agreements Work for hire Substantial use of university resources -grants
and awards from extramural sources Encoded works
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SPS PrimerUseful Web Sites
CCTEC.cornell.edu Patent and Trademark Office -uspto.gov Edison -iedison.gov COGR -cogr.edu AUTM -autm.net IBM patent data base -delphion.com
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SPS Primer
Risk Management and Insurance
Allen J. Bova
Director
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SPS PrimerInsurance
General Liability Property Employment practices (ELL) Patent Workers Compensation Professional liability Special
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SPS PrimerInsurance Issues
Licensed to do business in NY Rating requirements Additional insured versus additional named
insured versus endorsement Coverage for non-Cornell contractors No coverage for activities
Product liability Special coverage needed
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SPS PrimerInsurance Issues
Proof of coverage (certificates versus entire policy)
Waivers of subrogation Self insurance Project specific coverage (limits for this
project only) Primary issues Patent Insurance Issues (warranty)
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SPS PrimerIndemnification Issues
Sole negligence versus negligence Consequential damages (lost profits?) Inappropriate risk transfer
Risk Flow issues
Insurance matching
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SPS PrimerWarranty Issues
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SPS PrimerContracting Issues
Ken Packman
Sponsored Programs Systems
Michael Lenetsky
Population Medicine and Diagnostic Sciences
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SPS PrimerConfidentiality
The sharing of confidential or proprietary information may be necessary for the performance of the research project.
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SPS Primer
Publication and Publicity
As a university that receives public funds it is important to advise the community of the research projects that we conduct, including the name of the project, source and amount of funding.
The goal of most sponsored programs at Cornell is the publication of an article, thesis, dissertation or the presentation of a lecture.
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SPS PrimerTechnical Oversight
Retain basic freedom to conduct project. Red flag: “technical direction”. Sponsor must not have right to hire/fire
non-key personnel. Sponsor can have right to approve change
in PI. Keep reporting informal and infrequent. Define “acceptable”.
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SPS PrimerFinancial Issues
Ensure appropriate financial terms and conditions are incorporated
Minimize administrative burden: No routine submission of supporting documentation (receipts,
etc.) Use Cornell’s standard financial reporting format
Avoid reference to profits Audits Time and Materials Cash flow Re-Procurement
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SPS PrimerDiscussion
Sample Contract Language
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SPS Primer
Example Publication Clause
In the event that CORNELL wishes to publish any Study Results, CORNELL shall provide COMPANY with copies of any proposed presentation or publication at least 3 months in advance of the proposed presentation or publication.
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SPS Primer
Example Publication Clause
COMPANY shall have one month, after receipt of said copies, to object to such proposed presentation or publication.
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SPS Primer
Example Publication Clause
In the event that COMPANY makes such an objection, CORNELL shall edit the document into an acceptable version of the proposed presentation or publication.
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SPS Primer
Example Publication Clause
COMPANY may request CORNELL to delay publishing such proposed publication for a maximum of an additional one hundred twenty (120) days in order to protect the potential patentability of any invention described therein, or for an additional period as mutually agreed upon by the parties.
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SPS Primer
Acceptable Publication Clause
In the event that CORNELL wishes to publish any Study Results, CORNELL shall provide COMPANY with copies of any proposed presentation or publication at least thirty (30) days in advance of the proposed presentation or publication. COMPANY may request CORNELL to delay publishing such proposed publication for a maximum of an additional thirty (30) days in order to protect the potential patentability of any invention described therein, or for an additional period as mutually agreed upon by the parties. Nothing contained in this clause will have an effect on the filing, defense and publication of thesis or dissertation works.
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