More industry partners seeking upfront IP options in Master Research Agreements
Excerpted from the September 2023 issue of University-Industry Engagement Advisor. UIDP members can view the entire issue here.
In their constant search to meet the needs of industry partners, a growing number of top research universities have been offering upfront IP options in their sponsored research agreements. At the same time, a number of those SRAs have taken the form of Master Research Agreements, or MRAs. The question is, do the two “work well” together?
The answer appears to be “mostly yes,” according to Kristina Thorsell, senior project advisor with UIDP. “It’s becoming more popular to offer them; that’s not to say the uptake is higher,” she says. “But it’s more popular for companies to request them.”
In fact, she adds, some companies take the approach that they will only accept upfront IP options in an MRA. “There are companies that refuse to sign a master unless it has an IP option,” she notes, but adds this caveat: “That does not mean it’s being exercised all the time; it means they want the option in the menu of options.”
And the universities? “A lot of it comes down to internal pressures at the university,” says Thorsell. A number of those that do offer upfront IP, like the University of Minnesota and The Ohio State University, offer the same options for MRAs as they do for one-off sponsored research projects.
“We look at MRAs just like we look at other projects,” says Leza Besemann, CLP, associate director technology commercialization at U Minnesota. “Everything applies in both scenarios.”
David Mess, director of IP management at Ohio State, sees an even greater need for the options in an MRA. “We saw that this ends up being a point more frequently in a master agreement, because I think there’s a greater need for flexibility — work that can be performed but not necessarily known at the time of entering into an agreement.”
In the case of both these universities, while the idea of an MRA is that it covers “all” research projects involving the partners, when it comes to upfront IP options, though they are available to the partner each project is treated individually.
“There’s a need for the research team, as well as the sponsor, to be aligned on how the IP is to be treated ahead of time,” says Mess.
“Each project offers three options, and for each project the company decides what is the best fit for that project,” adds Besemann.
While universities that offer these options may still be perceived as pioneers, Thorsell argues that may not be the case. “The perception among many universities is still that these are new; they are not,” she asserts. “From a university perspective, if they have not done many upfront IP deals, they may feel more comfortable putting them in a master with a special partner rather than in a publicly facing template. On the other side is that companies are pushing for this — upfront in any form is a signal the university is willing to work with the company, even though statistics show upfront IP terms are not exercised that often.”
Besemann agrees. “On the ‘master’ side, a lot of [universities] tend to keep the [IP] piece hidden. I do not think all universities want to tell companies publicly what they offer in the masters; they want to do it in private.”