What to do when a company contacts you? While some of us already routinely cooperate with the industry or small and medium sized entities (SME), for many others this is completely new territory. And anything new comes with uncertainties. In addition, some scientists might have reservations about being influenced or restricted in their research by possible collaborations. What happens to the data? Is it still possible to use collaborative findings for publications? Where can help be found and answers to all these questions? Let’s start and shed some light into this matter.
When a company gets in contact with you, the first step is trying to find out what exactly their demand is and if a win-win situation can be generated. Perhaps with the help of a company something new can be developed that would not have been created by you on your own?
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During the first telephone call, you should think carefully about what you would like to disclose about yourself and your research (e.g. unpublished and ongoing research projects). If you have the impression that you are dealing with a trustworthy company, it is advisable to arrange a first meeting. If you feel uncertain about how to proceed in such a meeting, it is recommended to seek advice from the relevant university institutions (e.g. Industry Liaison Office, Technology Transfer Office).
Next steps
If an interesting collaboration or a possible transfer of results subsequently arises, the company will very quickly wave documents bearing mysterious abbreviations such as "NDA" and "CDA". These are nothing more than legally effective non (NDA) or confidential (CDA) disclosure agreements designed to protect mutual interests. Both parties have now the freedom to talk to each other about cooperation possibilities and/or results/products without the fear of giving away valuable knowledge and thus, losing possible compensation. All information remain protected and must not be disclosed to the outside.
If you need such a document as a member of the university, it is always advisable to ask the Legal Department (University of Tübingen, Dept. I) or the Technology Transfer Office (University of Tübingen, Dept. II, Sec. 3.2).
Types of cooperation
If the initial discussions between a company and the researchers turned out to be fruitful and both parties could imagine a cooperation, these various types may be considered:
1) Provision of a service
2) Research cooperation
3) Transfer of materials, research results or personnel.
In a service agreement, one party commissions the other to provide a service (e.g. a scientific measurement or investigation). Often, all costs incurred are borne by the party placing the order. In return, the commissioning party receives all the data created and all the rights associated with it. The commissioning party is compensated according to the expenses incurred. The rights to inventions are usually regulated separately.
For a scientific institution this may not sound attractive at first, but sometimes this is the first step to get in contact with a company, so that afterwards e.g. work placements for students, external bachelor and master theses as well as cooperation and/or personnel transfer can be established.
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The second option is somewhat more complex, because in a cooperation both parties want to do research or develop something together. In the process, each party contributes know-how to the project, among other things. And thus, it must be regulated who bears the financing, who provides the structures and who contributes how much working time. Since time, resources and capital are already invested here, both parties assume that there will also be a usable outcome. And that's why you also have to think about fair utilization. If a joint product is created and is to be sold, the question arises as to who receives how much of the proceeds. When patents are created, it must be clarified which party will apply for them, who will bear the initial and subsequent costs, who will decide on dissemination and who will decide on the selected countries. Who owns the patent and who may use or even exploit it and how? These questions are regulated by the IPR section of the contract, the so-called “Intellectual Property Rights”. In these agreements it should be taken into account that the need to publish scientific results as quickly as possible conflicts with the need to protect inventions with patents. Clear agreements are needed here that meet both needs.
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A transfer agreement can be similarly complex if it is not simply a question of a one-time payment sale. If, for example, you do not want to give the asset completely out of your hands, but only limit its use in terms of exclusivity, regionality and duration, a license agreement is suitable. Here, all possible variations are conceivable, both with regard to the rights of use and the payment modalities.
A special variant of transfer between universities and companies is the transfer of personnel. Since highly qualified employees are trained by universities, these persons are naturally interesting for companies and therefore, are often acquired directly from the university. In some subject areas, highly competitive situations can arise and companies therefore try to draw attention to themselves at an early stage. In addition to the classic recruitment events held by companies at universities, this can also be done, for example, through internships for students, but also through an offer for external bachelor's and master's theses.
In addition to personnel, materials can of course also be transferred. For this procedure, there are certain MTAs (Material Transfer Agreements). This mechanism serves to facilitate the free transfer of copyrighted materials and/or information between scientists at one's own institution and other institutions, regardless of whether they are profit or non-profit. According to NIH (National Institute of Health, Bethesda, USA), MTAs are used when the following circumstances exist:
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The research materials to be transferred are mostly biological or chemical in nature. Otherwise, they are generally tangible research results that: (a) are not commercially available; and (b) are provided to the recipient to enable reproduction, duplication, evaluation, or validation of the recipient's research or to evaluate the potential commercial utility of the material.
Who can help?
Advice on how to contact and cooperate with companies: Industry Liaison Office (Dept. II, Sec. 3.1) and Technology Transfer Office (Dept. II, Sec. 3.2).
Contractual documents are available from: Legal Department (Dec. I) and Technology Transfer Office (Dept. II, Sec. 3.2).
Transfer options: Technology Transfer Office (Dept. II, Sec. 3.2)
Transferoptionen: Technologietransfer (Dez. II, Abt. 3.2)