Contract Accord 3: Publication
Accord Revision Date: September 2019
Page Updated: January 2020
©2020 University-Industry Demonstration Partnership (UIDP). Please refer to the copyright and disclosure statement for UIDP Contract Accords usage and rights.
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OVERVIEW AND BACKGROUND
Nearly all Sponsored Research Agreements (SRAs) contain a clause that describes the conditions under which the results of the research project can be published. Freedom to publish is a central policy across Universities and is integral to academic promotion and tenure systems, and to graduate-level education. Publication is also a primary method of technology transfer and is important to promoting scientific advancement. Formulation of public policy and discourse about issues founded on competent research rely on publicly available research results.
Publication clauses often address formal publication. This generally includes publication in in a peer-reviewed journal articles, poster sessions, oral publication by means of presentation at a professional meeting/conference, or student publication in the form of a thesis or dissertation. Fine-tuning a publication clause requires consideration of the following:
- the anticipated results of the project;
- the parties’ intentions or sensitivities about publication;
- the impact of publication on intellectual property (IP) rights;
- dependency of publication on disclosure of confidential information; and
- the regulatory issues related to publication.
These considerations require that the parties have a clear understanding of the research project and a good working relationship with each other.
Publication clauses frequently assume that publication will be done by the University research team without significant scientific or technical input from the Company. However, if a project is conducted jointly or with significant collaboration between the University’s and Company’s research teams, joint publication is a possibility, and this should be reflected in the publication clause.
Publication clauses should be consistent with confidentiality and IP clauses. However, it should be noted that research results are generally published after the SRA has concluded. Therefore, the publication and IP clauses should address the review rights accordingly. Another important note is that Universities often exclude scholarly works, such as publications, presentations, and teaching materials, from their IP policy, thereby allowing individual faculty authors to retain copyright to these works.
INDUSTRY PERSPECTIVE
Results of research may be dependent on or derived from confidential information that was provided by the Company under a confidentiality clause or agreement. (See UIDP Contract Accord 9: Disclosure and Protection of Confidential Information.) The Company retains the right to control disclosure of their confidential information and may require that it be deleted from a proposed publication.
The timing of publications is often critical to the Company. Premature publication may jeopardize the patentability of IP disclosed in a publication. Delay of publication to allow for filing of patent applications is generally sufficient to address this timing issue. Occasionally, early publication may trigger public reactions. Companies may want to add safe harbor statements or other types of protections allowed by the U.S. Securities and Exchange Commission and other regulators to make sure that the Company is not adversely affected by a publication.
The Company expects that the PI and the University extend the standard criteria to recognize the contributions to a project by the Company’s employees and others involved. This recognition may include authorship or attribution as appropriate. Standards for attribution and authorship vary by academic field. The standards applied should be consistent with the norms of the field in which the publication appears.
Further, Companies want to protect the integrity of resulting disclosures of research results by not naming non-participating colleagues on research reports, publications, and presentations. Companies may require special consideration of publications that involve their employees as joint authors with University employees. Joint authorship may be an example of a special circumstance in which the Company would want approval rights over the publication or the right to edit parts contributed by the Company’s employee.
UNIVERSITY PERSPECTIVE
Publication is a primary objective of University researchers regardless of the source of their research funds. Peer-reviewed publication is critical to the advancement of faculty within the academic framework and is commonly a key component to earning respect and recognition within professional organizations. Graduate and doctoral students mark their entry into professional ranks by key publications in the form of theses or dissertations. Universities fiercely protect the right of their faculty and students to open publication that is unbiased and not unduly influenced, delayed, or censored by Companies.
However, Universities recognize that the Company’s need to protect commercially feasible technologies, products, and processes must be balanced with the University’s public responsibility to freely disseminate scientific findings for the advancement of knowledge and to protect the academic freedom of faculty and students to publish their research results. Therefore, University policies generally allow a review period for Companies to comment on publications and delay a publication for a reasonable period to allow patent applications to be filed.
In cases where research is being conducted at multiple sites and the full set of resulting data is not available to each of the research sites, data from any one site may not be statistically valid, and its publication may present misleading or inaccurate results. In those cases, which are common in clinical trials, publication of one site’s results may be delayed until the results of entire data set has been published or at least until the research is completed at all the sites. The length of delay of publication of site-specific results should be clearly defined in the SRA.
Some Universities allow Company approval of publication under special circumstances. However, at other Universities, publication approval restrictions are categorically unacceptable. Special circumstances are rare but may involve protection of national security or public health issues. If approval is permitted, it should extend only for a limited period of time to allow the Company to address the special circumstances.
Universities conduct research as tax-exempt organizations. Research conducted by tax-exempt organizations must be performed for the public benefit and is expected to lead to information that is published and available to the interested public. Research that is subject to restrictions on publication may be considered a business activity that is inconsistent with or unrelated to the public purpose of the University and could lead to adverse tax consequences.
Universities do not generally claim the title to publications resulting from research projects. Authors frequently are required to assign a copyright to the journal that accepts a manuscript for publication. Universities, therefore, may not be able to provide rights to the Company to use, copy, display, create derivative works from, or distribute these publications. Also, since Universities and faculty cannot control whether research will lead to publishable results or whether a particular manuscript will be accepted for publication, the SRA should not usually require publication in a journal as a milestone.
Freedom to publish is a requirement for protecting the University’s fundamental research exclusion (FRE) under export control regulations, which permits unreasonable delays only for patent prosecution. (See UIDP Contract Accord 7: Export Control.) Any separate agreement restricting publication arranged between University and Company researchers outside of the SRA may jeopardize the designation of research as being for the public benefit and preclude the University’s exercise of the FRE.
Universities expect that authorship of publications will be determined based on contribution to the publication in accordance with established academic standards. Joint authorship with employees of the Company is acceptable, provided that these standards are met. The SRA should not specify who the authors will be or require that people be named as authors irrespective of their contribution to a publication. Universities and journal editors commonly require acknowledgement of the source of support in a publication emanating from a sponsored research project.
PRINCIPLES
1. Companies and Universities should recognize that two of the primary missions of a University are to educate students and to create and disseminate new knowledge.
2. Universities should agree to delete or modify any Company’s confidential information included in a University’s proposed publication.
3. The Company should have the right to review and comment on a publication for a limited time period that is reasonable under the circumstance of the project and does not restrict publication through inaction.
4. Publication delays should not jeopardize academic progress of students.
5. Universities and Companies have a mutual interest in limited delay of publication to protect potentially patentable IP.
6. Publication of research results in a timely and appropriate manner can be beneficial to opening markets and expanding product options.
7. Joint publication of research results is appropriate in collaborative projects. Companies involved in a collaborative project may publish the findings of the project independently if the University decides not to pursue publication.
8. All authors should be included in the publication subject to the principles of authorship customary for the discipline. Non-author participants may receive attribution as appropriate.
9. University researchers and the Company should not enter into “side” agreements outside the SRA regarding timing, review, approval, content, and authorship of publications.
10. Trade secret designation of the results of an SRA is generally incompatible with the University’s publication objective since it requires that certain information be kept confidential and not published.
OUTLIERS
This Contract Accord does not include information on publication rights in “fee-for-service” agreements. For more information on “fee-for-service” agreements, see UIDP Contract Accord 13: Specialized Services and Testing Agreements.