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UIDP Contracting Forum Speaker Spotlight: Sophia Herbert-Peterson, Georgia Tech Research Corporation

Sophia Herbert-PetersonSophia Herbert-Peterson is director of industry contracting for Georgia Tech Research Corporation, the contracting entity for sponsored research at the Georgia Institute of Technology. She will present a session on foreground and background intellectual property at the UIDP Contracting Forum 2020.

UIDP: What is one pearl of wisdom you wish you knew earlier in your career that’s associated with background intellectual property (IP)?

Herbert-Peterson: It’s important to communicate clearly with a principal investigator (PI) and sponsor as to whether background IP will be required to perform a research project. From the PI’s perspective, their research is generally concentrated in a particular field and is a continuation of previous research. As a result, the PI may unknowingly incorporate background IP into a new project without advising the sponsor or university. This could potentially create significant problems for the research project if the sponsor is then required to seek a license to background IP that was not anticipated, or even worse, if the research agreement required advance notice or approval before background IP could be incorporated into the project. Communicating clearly at the outset can avoid these pitfalls.

We have to keep in mind that researchers aren’t lawyers; they’re scientists. The PI is probably just thinking about the evolution of the research or the technology, not about the implications for IP. To them, it’s all probably fluid, but there are discreet moments of invention along the way. We have to keep track of that in the contracting process.

UIDP: What is one key change in the contracting landscape over the past three years that makes this a can’t-miss learning opportunity?

Herbert-Peterson: In an effort to make it easier to provide sponsor access to foreground IP concurrent with the negotiation of sponsored research agreements, universities are developing new contracting models. For example, some universities are starting to offer an up-front exclusive license to foreground IP for the life of a patent, while other universities are moving toward an assignment of foreground IP. Understanding these models is certainly a can’t-miss learning opportunity.

UIDP: From your perspective, what is the number one reason for a contracting professional to attend UIDP’s Contracting Forum?

Herbert-Peterson: The number one reason is to collaboratively work with members from universities and industry on complex contracting issues and to gain a better understanding of each other’s perspectives. By working together, we can leverage our expertise and experience and contribute to a knowledge collective that drives the state of the art. The ability to share our knowledge and expertise is really invaluable.

Are you registered? Don’t miss the UIDP Contracting Forum 2020, Jan. 28-29 at SkySong, the Arizona State University Scottsdale Innovation Center.

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