IP in Corporate Research Collaborations
Each year, Columbia researchers invent more than 400 new inventions based on science conducted in Columbia’s research labs. Columbia Technology Ventures (CTV), the tech transfer office for the university, files approximately 200 provisional patent applications, executes over 100 licenses and options, and help in the creation of over 20 new IP-backed start-ups, involving over 750 inventors across Columbia's campuses. CTV currently has approximately 1,500 patent assets available for licensing, across a wide spectrum of fields in life and physical sciences.
- When companies collaborate with Columbia scientists, one of the issues that needs to be addressed is how IP will be treated. Some of the most common structures are as follows:
- If an external company is funding a specific research project in a faculty lab at Columbia, CTV will typically negotiate a Sponsored Research and Option Agreement (SROA) with that company. The most common form of SROA will grant the company funder a time-limited exclusive right to negotiate for a license to both the background IP (pre-existing) and foreground IP (developed under the funded research program). There are many variations on these agreements, however, depending on the company’s needs. For instance, the company may want a non-exclusive or an exclusive license; may want the economic terms of the potential license to be outlined in advance; may request a non-exclusive license to the foreground IP for their own internal research purposes even if they do not ultimately license all of the IP per the option.
- If the company is providing its own proprietary data sets or materials, a Material Transfer Agreement (MTA) may be needed. It may also request further rights to inventions that necessarily incorporate those company assets, and may put further restrictions on how those assets can be used.
- Companies will occasionally request that a Master Agreement be negotiated in advance, governing all future projects done at Columbia. Since these Master Agreements are very difficult and time-consuming to negotiate, it is Columbia’s practice to not negotiate Master Agreements until either multiple projects have already been completed, or the Company makes a binding multi-year commitment to fund significant research projects at the university.
- Industry Affiliate Programs within Columbia often will offer industry certain benefits relating to IP. These should be discussed case-by-case with CTV in advance, to help guide the discussions with industry. For more information on Industry Affiliate Programs at Columbia, please see the following page: https://industry-relations.site.drupaldisttest.cc.columbia.edu/industryaffiliateprograms
- Given the potential variations of all of these agreement types, it is best to involve CTV as early as possible in these discussions. CTV will either directly work with the company on the agreements, or else provide guidance to Sponsored Projects Administration (SPA) for them to do so. Failing to involve CTV & SPA early in the discussions can end up with misaligned expectations or unnecessary delays.
For more information, see: