Contract Accord 13: Specialized Services and Testing Agreements
Revision Date: August 2013
Page Updated: January 2020
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See All Contract Accords Sign-up for Updates!OVERVIEW AND BACKGROUND
This Contract Accord addresses agreements that fall outside traditional industry-funded Sponsored Research Agreements (SRAs) and go by various titles depending on the institution or organization involved.
Specialized services agreements, testing agreements, fee for service agreements, and no IP agreements all refer to contracts for projects in which the University has a special capability that the Company seeks to access (Testing Projects). These special capabilities of the University may include specialized equipment, facilities, or expertise that the Company may not possess or have the expertise or ability to operate. One common factor of Testing Projects is that they do not generally produce results that the University intends to publish.
Here are three common situations that would constitute a Testing Project:
- The Company provides the materials and a protocol that the University uses to conduct the testing with its specialized equipment, personnel, or facilities.
- The Company provides materials for the University to use with its specialized techniques, methods, or parameters to provide results to the Company.
- The University provides direct access to its specialized facilities or equipment for the Company to conduct their own testing with limited technical assistance from the University.
Testing Projects frequently involve the Company’s existing background intellectual property (IP). Meanwhile, the University’s role is routine testing of a sample of materials or data without requiring any analysis by University research faculty or staff. In other words, the University performs the tests and provides the results to the Company. Since the testing does not involve methods unique to the particular Testing Project and the test materials belong to the Company, the likelihood of the University making an inventive contribution during conduct of the project is quite limited. Therefore, IP can be addressed using pre-determined terms that require a limited amount of negotiation or may not be addressed at all.
If IP provisions commonly contained in Testing Project agreements state that the title to rights in any project foreground IP associated with the Company’s existing background IP or test materials will be assigned to the Company, even if University personnel are determined to be inventors.1 Should there be a serendipitous invention made by the University during the project that is unrelated to the Company’s background IP, then rights to such project foreground IP will belong to the University unless otherwise specified. These serendipitous inventions may be more likely if the University’s role goes beyond routine testing and involves other budgeted services, such as evaluation of test results or data.
Facilities and administrative (F&A) costs for these projects may be different from on-campus research rates that Universities negotiate with their federal cognizant agency. The direct costs of these services may be a standard industry rate based on a fixed rate per unit of activity and may not be negotiable depending upon the University’s policies. (See UIDP Contract Accord 12: Budgeting.)
Because timing of these projects is often critical to the Company’s on-going research, pre-determined contracting vehicles are used in order to “fast track” the negotiation and execution of the agreement.
These projects fall closest to the area of applied research on a continuum from basic, theoretical research to applied and product-testing research. Since there is a low investment for both parties, there is also a low probability of invention.
INDUSTRY PERSPECTIVE
- An industry research and development (R&D) program often needs testing expertise, equipment, or facilities that are not available within its organization.
- Ongoing internal projects frequently depend on the results of externally sponsored testing in order to be validated and to continue (i.e., feedback first from ‘beta test sites’ then from ‘early adopters’).
- Testing Projects often need to be initiated quickly, which requires a contracting vehicle that is easy to negotiate and an expedited process.
- Master agreements for these Testing Projects are desirable.
- Testing Projects are usually low dollar investments with no expectations of patentable IP.
- Testing Projects are normally conducted in a short period of time (3-9 months).
- Companies expect to own all foreground IP developed by University personnel that is associated with any of their existing background IP involved in the Testing Project.
- In addition to owning the results of the Testing Project, the Company may need University expertise to evaluate the data and results that are produced during such projects. These extension activities may be subject to different terms than those contained in the Testing Project agreement.
- The Company expects confidential treatment of all the information, company-provided materials, and testing results.
UNIVERSITY PERSPECTIVE
- Universities have developed unique equipment, facilities, methods, and techniques using funds from various sources that they can make available to others outside the University who would not otherwise have access to these capacities.
- Universities offer the excess capacity of their unique facilities and equipment when they are not being use for the University’s core missions of education and research. They also offer the supporting expertise in methods and techniques for the use of specialized facilities and equipment.
- University-sponsored program offices prefer to offer access to specialized services/testing efforts with agreements that require little or no negotiations.
- Universities often have fixed rates for use of these capacities.
- Universities participate in Testing Projects to create relationships with Companies that may then fund additional research projects at the University, recruit students, or provide other benefits to the University.
- Universities do not normally expect to produce publishable results from Testing Projects. Since publishable material is not likely to be generated in Testing Projects, the agreement may be silent on publication, may expressly prohibit publication, or may subject publication to Company approval. At a minimum, any publications should be reviewed by the Company for the purpose of removing any confidential or proprietary information from the publication. Proper credit would be given to the Company for its support.
- The University will provide a final report to the Company and often exclusive rights to use the report and data for any purpose. The University retains the right to use the data contained in the report for internal teaching and education purposes but does not retain the Company’s actual proprietary information or data for its own uses.
- Universities may retain the right to utilize results of Testing Projects for educational and teaching purposes.
- The University cannot endorse any products or services tested for Companies.
- Generally, Universities will not agree to warrant services performed or to re-perform services at no cost should the Company not be pleased with the results. Most academic institutions (especially state Universities) do not have the resources or reserves to provide warranties or to perform services without reimbursement.
- To comply with applicable Internal Revenue Service procedures, the University is not supposed to provide any services that are in competition with such services that are offered by commercial laboratories.
- Net income generated from Testing Projects may be taxable to the University as unrelated business income.
PRINCIPLES
1. It is unusual for intellectual property to be developed under these agreements, and the Testing Project agreement may be silent on IP. However, if IP is developed:
a. The Company maintains ownership of any IP related to its protocols, materials, or background IP used as the basis for the Testing Project, and foreground IP that may be developed by the University in relation to the intended solution for the purpose of the testing.
b. The University maintains ownership of anything related to its protocols, methods, to the unique services or capabilities being provided, or that is unrelated to the Company’s protocols, materials, or background IP.
2. The Company maintains ownership of the data and results of Testing Projects.
3. Time-to-contract should be as short as possible and streamlined to facilitate quick initiation of Testing Projects.
4. Deliverables vary depending on the nature of the special services but generally include a report of the results, data, and/or a processed material sample. Testing Projects are frequently carried out using proprietary protocols or materials provided by the Company.
5. The data produced by the University in performance of a Testing Project is not intended to be published, but may be by mutual agreement of both parties.
6. The Company is expected to pay the full cost of the Testing Project, including applicable F&A costs.
7. The University is not permitted to use the samples or protocols for anything other than the intended purpose under the Testing Project agreement. Reverse engineering may be expressly prohibited.
8. The University must ensure that faculty and researchers appropriately perform under the agreements in terms of conflict of interest (COI), non-use, and avoidance of potential conflict of interest in case multiple projects are similar in scope. (For additional information on COI, see UIDP Contract Accord 15: Personal Conflicts of Interest and UIDP Principled Partnerships Quick Guide.)
9. Liability of the University is usually limited under Testing Project agreements, but liability of each party should be addressed in the agreement.
10. Results are not guaranteed, warranted, or endorsed by the University conducting the Testing Project.
OUTLIERS
The following topics or issues are not addressed in this Contract Accord:
- Situations where equipment or expertise may be so exotic/expensive that only a company is able to provide it, and the University wants to access that capacity (this type of work is not discussed here; although, many of its characteristics would be closely related to collaborative research efforts that have been discussed under previous contract accords.);
- Field trials, which are specific arrangements where one party grows regulated materials for another;
- Clinical trials in human subjects (See the Accelerated Clinical Trial Agreement [ACTA] available on uidp.org.);
- Animal studies;
- Testing done under capstone or undergraduate courses (See UIDP Industry-Sponsored Capstone Projects for Academic Credit.);
- Faculty consulting agreements; and
- Work for hire not involving unique capacities of Universities.
FOOTNOTES
[1]If the Company is using federal funds to support the Testing Project, assignment of Foreground IP may not be allowed. See UIDP Contract Accord 6: Foreground Intellectual Property for a general discussion of IP rights in sponsored research agreements. Also, see the Bayh-Dole Act (P.L. 96-517, Patent and Trademark Act Amendments of 1980) http://www.law.cornell.edu/uscode/text/35/part-II/chapter-18.
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