Office of Research Administration Grant and Contract Services (GCS)

Types of Contracts and Why We Use Them  Sponsored Agreements  Research Agreements  Private Industry  Interagency Cooperation  Grants  cost-reimbursement  fixed-price

Types of Contracts and Why We Use Them  Cooperative Agreement  Subaward or Subcontract  Purchase Order  Consulting Agreement  Subcontract

Types of Contracts and Why We Use Them  Unfunded Agreements  Memorandum of Understanding (MOU) or Memorandum of Agreement (MOA)  Confidentiality Agreements  Material Transfer Agreement  Gifts

Sponsored Research Agreement (SRA)  DEFINED  Basic Research (government definition)  Intellectual contribution, invention or discovery  Peer-reviewed publication, Presentation at scientific meeting likely

Sponsored Research Agreement (SRA)  Case by case review  academic-industry partnership  promoting University’s research and academic mission  assuring compliance with applicable laws and regulations.  PURPOSE  Protect IP (Bayh-Dole Act)  Publish (academic freedom)  Specific Issues Later

SRA v. Services Agreements  Sponsored Services Agreement:  Not basic research  No intellectual contribution, invention or discovery  Simply providing service based on expertise  Publication, Presentation unlikely  Service projects  may be commercial transactions (tax issues)  no new IP  fair market rates

What is a Subagreement?  Subrecipients vs. Vendors  specific scope of work  own PI  Dealer, distributor, merchant or other seller providing goods or services that are necessary for conducting a federal program.

Subcontract vs. Consulting Agreement  What is a Consultant?  bona fide consultant (expert advisor)  fixed rate  set their own hours, use their own equipment and materials, choose their work methods, and are responsible for paying taxes on their earnings as consultants.  Tax Form 1099  “work for hire” all intellectual property and copyrightable information is assigned  Consulting arrangements are not a substitute for subcontracts and are not intended to be used when part of the project is performed at another institution.

Subcontract vs. Consulting vs. Service Agreement  What's the difference?  Subcontract: a formal agreement with an organization (not an individual) to perform specific tasks in support of the proposed project independent of the PI.  Consultant: an outside expert in some aspect of the scope of work of the proposed project who serves on the project for a limited amount of time as an individual under the supervision/coordination of the PI.  Service Agreement: an agreement that generally results in the delivery of a product to the University, such as translations, reports, position papers, abstracts, training, and web pages. Service agreements may be issued to either individuals or companies.  Examples?

Critical Deal Topics in Research Agreements *  Intellectual Property  Publication  Confidentiality  Indemnification * Thanks to BethLynn Maxwell, Ph.D., J.D. UT System

Intellectual Property Concerns  What you invent is yours  What I invent is mine  What we jointly invent is jointly owned  Inventorship follows US patent law  Ownership follows inventorship  $$$ does NOT equal ownership

Intellectual Property Concerns  Money for UTA  NERF (Non-Exclusive, Royalty Free)  Internal research only - Good  To make, use, and sell, and sublicensable - Bad  Option to negotiate royalty-bearing license

Publication  When Can We Publish?  What Can We Publish?  Pre-Publication Review Process  What is a Reasonable Delay?  Research Institutions – Non-Negotiable  Principal Investigator owns the copyright in his/her publications

Confidentiality  Length of Confidentiality Obligations  Balancing Reasonable with Realistic  Other projects as Research Institution

Indemnification  Seek broadest indemnification possible  UTA indemnity only to the extent authorized by Constitution and laws of State of Texas  Defense and settlement subject to the statutory duties of the Texas Attorney General

Contract Negotiation  Review or prepare draft contract  Identify problematic terms and conditions  Negotiate terms and conditions  Contact, advise, and support PI regarding unusual risks, and other issues to be addressed

Form G  Form G = Non-Conforming Agreement re: IP, publication, indemnification provisions  Weigh Benefits Against Risks  Identify Non-Conforming Provisions in Agreement  Do Benefits Outweigh Nonconformity?  Administrative Approval/Procedural Process at UTA  Form G’s are Not Discouraged

NDA (a/k/a CDA, Confidentiality or Proprietary Information Agreement)  Important Elements:  Definition of Confidential Information.  Explanation of Purpose for Disclosure.  No Disclosure.  No Use.  Limits on Information Deemed Confidential.  Term.

NDA (a/k/a CDA, Confidentiality or Proprietary Information Agreement)  Frequently Asked Questions:  1. Should an NDA cover the results of a research study?  2. Should an investigator just sign his/her own NDA as the sole University signature?  3. When should an investigator consider asking another party to complete an NDA?  4. Should an NDA cover issues like publication pre-review and intellectual property?

NDA (a/k/a CDA, Confidentiality or Proprietary Information Agreement)  four concepts  public domain  known already  independently developed  lawfully disclosed

NDA Goals and Policies  Always mark as “Confidential”  Written form and clearly marked  Oral, visual, non-written NOT confidential, unless reduced to writing within [decide] days  Agency of the State of Texas  Open Records Requests pursuant to the Texas Public Information Act (PIA).

NDA Goals and Policies  No additional copies  Return, destroy, certify  Max five (5) years  Termination on date certain (1 year, extend if nec.)  No license or publicity without written consent.  Provided “AS IS” with no warranties.  Export Control Regulations

Material Transfer Agreement  Types of MTAs  between academic or research institutions  academia to industry  industry to academia  Uniform Biological Material Transfer Agreement (UBMTA)

Material Transfer Agreement  Definition and Purpose  Possible Conflicts  Publication  Use of research results  Ownership of technology generated by the research  Tax Status  Funding Agency Requirements

Material Transfer Agreement  Potential Issues in MTAs  Confidentiality  Delay in publication  Use of materials in sponsored research projects  Definition of material  Loss of control of intellectual property  Conflicts with existing agreements or law (Bayh-Dole)  Compliance issues  live animals or custom antibodies  human tissue  hazardous materials and/or select agents  Conflict of Interest requirements for financial disclosure.