1. Partnering with Business and Industry
Jake Ward
University of Maine
Department of Industrial Cooperation
430 Corbett Hall
Orono, Maine 04469

2. Value Partnerships
Maine has made a large investment in University resources
People - expertise
facilities - unique laboratories
equipment
Many companies have limited but critical needs that don’t justify internal expense
Jake Ward, Director
Tuesday, September 18, 2018

3. Partnerships
The project is of mutual interest and benefit to the Company and University;
the project will further the multiple missions of the University (Education, Research, and Public Service) in a manner consistent with its status as a non-profit, tax-exempt, educational institution,
and may derive benefits for the Company, University, and society by the advancement of science and engineering through discovery.
Jake Ward, Director
Tuesday, September 18, 2018

4. Types of Partnerships Collaborative Research Contract Research
Industrial Consortia
Contract Service
Access to facilities and equipment
Student Projects
Internship, Co-ops
Jake Ward, Director
Tuesday, September 18, 2018

5. Collaborative Research
Common theme to explore
Company/University partner with or without outside funding
Federal, state, other funding programs
Co-proposers or prime/sub contractors
Examples: NIST , DOE, SBIR/STTR - Company lead
More traditional NSF, NIH, DOD - University lead
Simple joint collaboration with no external funds
Jake Ward, Director
Tuesday, September 18, 2018

6. Contract Research Company has identified a specific problem or need
Company funds
Fee for service project developed
solutions can be proprietary to company
Jake Ward, Director
Tuesday, September 18, 2018

7. Industrial Constoria Group of companies with common theme
Annual contribution support research program
Consortium provides research direction
Results shared with consortium
Jake Ward, Director
Tuesday, September 18, 2018

8. Contract Service Specialized services
Testing, analyis, technical training that may not exist in private sector
Company specific, fee for service
Based on existing capabilities, staff and facilities
Sometimes student involvement
Jake Ward, Director
Tuesday, September 18, 2018

9. Access to Facilities and Equipment
Company has their personel use labs and/or equipment
Usually fee for service based on the equipment and duration
Company assumes liability for their people and damages
Jake Ward, Director
Tuesday, September 18, 2018

10. Class design, senior capstone projects
Student Projects
Class design, senior capstone projects
Company provides topics, some materials and supplies cost, and advice
Typically fall within one or two semesters
Jake Ward, Director
Tuesday, September 18, 2018

11. Internships and Co-ops
Opportunities for student experience
Companies get to see students before graduation
Some formal programs (P&P), most departments will facilitate
Jake Ward, Director
Tuesday, September 18, 2018

12. Intellectual Property
Patents determined by Inventors
Background IP belongs to Owner
Research License if needed for project
Foreground or New IP belongs to Inventor/Assignee – maybe joint
Commercialization Rights
First option to commercialize University IP typically to commercial partners
Jake Ward, Director
Tuesday, September 18, 2018

13. University IP – We follow the rules
Governered US Patent Laws
Bayh-Dole provisions
State Laws
University System Policies
IRS rules for Non-profit status
Our Agreements are designed to comply with these rules.
Jake Ward, Director
Tuesday, September 18, 2018

14. Realistic Expectations
Every institution/faculty/company is different
Expectations need to be individualized (no “cookie cutter”)
Not every institution belongs in the RD&C space
Deal by deal (more likely by individual researcher)
Don’t/can’t force a personality change
ALL want more “Investment” in R&D.

15. Cultural Differences Academic Commercial
Grants, risk averse Profit, investment, risk
sharing
Transfer very early Value creation before
transferring
Investigator sets research Management sets research
Priorities Priorities 15

16. Cultural Differences Academic Commercial
Collaboration, publication Secrecy
Pending publications Patent driven by business
Often drive patent decision
Budgets Fed style Total costs
Direct/Indirect Costs+Profits 16

17. Patent Process http://www.umaine.edu/dic/Standardops.html
Bayh- Dole &
Publish/Patent or perish vs. public disclosure
Identify Inventors/Creators
Identify “sponsorship” if applicable – i.e. (grant, contract, other)
Identify ownership in accordance with the University of Maine System Policy
Identify reporting requirements
By sponsor

18. Deciding to Commercialize
Cont.
5. Identify existing or potential commercialization partners
6. Identify additional R&D funding to move development forward
7. Conduct In-house Prior Art search as applicable – Maine Patent Program –
8. Conduct Professional Prior Art search as applicable
Typical Go/No-Go decision
Next Funding

19. Licensing Technologies
Key Licensing components
Define Technology/IP
Define Territory
Exclusive vs. Non-exclusive
License Fees
Royalties - % of Sales
Minimum Royalties/Sales
Other performance requirements
Sub-licensing terms
Claw Back Provisions