The University of Minnesota has announced a new, unique approach to the way it handles intellectual property arising from research projects funded by business and industry partners. The new approach eliminates the need for protracted negotiations over rights to intellectual property that may result from industry-funded research.
Dubbed “Minnesota Innovation Partnerships,” or MN-IP, the new approach is part of the university’s ongoing efforts to work more effectively with the business community. With MN-IP, a company sponsoring research at the university will be able to pre-pay a fee and receive an exclusive worldwide license with royalties taking effect only in cases of significant commercial success (details below). MN-IP offers the added advantage of removing the uncertainty and financial concerns that often surround industry-funded research projects.
At the university and other higher education institutions, industry-funded research often involves complicated research contracts and protracted negotiations over terms related to any intellectual property that might result from the research. Both sides frequently find the experience frustrating, time-consuming and counter-productive to effective partnerships.
“We are very excited to announce this innovative strategy,” says university president Eric Kaler. “Using feedback from business partners who often criticized the university’s traditional approach, vice president for research Tim Mulcahy and his team have come up with a new approach that is a true game-changer. We expect that MN-IP will make the University of Minnesota a research destination of choice for major corporate partners looking to sponsor research at a world-class research university.”
MN-IP is the result of an initiative launched in 2010 under Mulcahy’s leadership. Staff from the Office for Technology Commercialization evaluated the university’s approach, reviewed peer institution best practices, and consulted with researchers and members of the business community before formulating this innovative strategy. The resulting MN-IP proposal was vetted with internal and external partners and received an enthusiastic response.
“We believe that MN-IP will result in a wide range of positive effects on our relationships with industry research sponsors,” says Mulcahy. “We’re transitioning from an approach that focused almost exclusively on the remote probability of royalties to one that values the many tangible and intangible benefits that accrue to the university, our corporate partners and the state from truly effective partnerships.”
“Our technology commercialization staff will be encouraged to work with faculty to attract sponsors and establish beneficial partnerships,” Mulcahy adds. “Companies will have a stronger incentive to commercialize technology resulting from university research. And consumers will benefit as these innovations are developed and ultimately make their way to the marketplace.”
MN-IP agreements are available immediately to industry research sponsors.
Basic Information About UMN-IP
- Involves pre-paid exclusive option fee amounting to 10 percent of sponsored research contract or $15,000, whichever is greater.
- Includes option to exclusive license with pre-set terms: no annual minimums or other fees; no time limits or milestones; sponsor is free to sublicense/cross-license technology; if annual sales involving licensed IP exceed $20 million, licensee pays one percent royalty fee; no cap on royalties unless invention improves on sponsor’s pre-existing product or processes.
- Sponsor pays patent costs and has the benefit of driving prosecution while collaborating with the University on patent claims.
MN-IP a "big deal," says PrezK -- a tribute to the amazing work of hundreds of #UMN faculty.—
Eric W. Kaler (@PrezKaler) December 09, 2011
Business Relations (@UMNBusiness) December 14, 2011
Post by John Merritt
Originally published on Business @ the U of M.