University of Sheffield Commercial Contract Negotiations
The information provided below sets out in simple terms how the University will seek to manage commercial research and consultancy contracts with your company.
At the University of Sheffield we value opportunities that allow us to work more closely with business and industry. Such interactions not only have obvious intellectual and commercial value but also provide the basis for real knowledge exchange. Whatever the nature of the interaction with your business, we will endeavour to ensure all legal and contractual matters are dealt with as swiftly and smoothly as possible. Once you have agreed in principle to work with a member of our academic staff, the University will allocate a named individual to your project who will work with your company and the relevant member of academic staff to ensure a mutually beneficial contract is in place prior to work commencing.
Whilst contractual relationships between your company and the University may take a variety of forms, ranging from collaborative research, through contract research to consultancy, the nature of this relationship will be properly reflected in any contracts we sign with you. In order to make negotiations as smooth and transparent as possible, we set out below our basic negotiating position and contractual needs. Within these parameters the University will endeavour to be flexible and adapt its position to suit each individual case.
Ownership of results and arising Intellectual Property (Foreground IP)
The University acknowledges that where a company has commissioned a specific piece of contract research, they will normally seek ownership of the Foreground IP. We also accept that the contracting company will often be in the best position to protect and commercialise this IP. Provided that the contractor has agreed to pay a price acceptable to the University we will normally concede on ownership of arising IP.
In circumstances where the interaction can be described as truly collaborative, with each party contributing intellectually and financially, the University has an obligation to the public interest (given that much of its funding is from government, research councils, the DTI etc. ) and will therefore seek to protect its commercial as well as its academic interests. In these circumstances the University will discuss with your company and any other partners involved in the project which party(ies) should own the Foreground IP and the terms under which any assignment of rights shall be made.
Where your company provides the most appropriate route for exploitation we will seek to reach a fair compromise over ownership. For example, the University may agree that your company take ownership of the Foreground IP, or receive an exclusive license within an agreed field, in return for a fair and reasonable royalty from the proceeds of exploitation, paying due regard to the relative financial and intellectual contributions of each party. This will obviously require negotiation and the person allocated to your project will happily explore with you a full spectrum of options (including shared ownership, licensing options, exit clauses, etc) in order to quickly achieve a mutually beneficial agreement.
In all situations, the University´s primary objective will be to ensure that high quality research is carried out and the knowledge it generates is transferred for wider benefit, whilst achieving a fair balance in financial benefit for those parties involved in the research. Regardless of rights to commercially exploit Foreground IP, the University will invariably exercise its rights to use Foreground IP for internal teaching and research purposes as this enables us to fulfil our obligations to HMG in respect of maintaining academic excellence. This will be properly expressed in any contract or agreement and we will be receptive to allied confidentiality issues.
University Know-How and pre-existing knowledge (Background IP)
Often a company will wish to work with the University because we already possess know-how and pre-existing knowledge ("Background IP") necessary for the undertaking of a new piece of research. In the majority of situations the Background IP required to undertake a piece of research is self-evident from the beginning and, where appropriate, we will undertake to identify it in the contract with your company. Where our Background IP is required to commercialise the Foreground IP, the University will normally undertake, subject to other third party obligations, to negotiate a fair and reasonable licence on that Background IP to your company.
Confidentiality
The University understands that when working with a company the parties may need to exchange confidential and commercially sensitive information. We routinely issue and accept confidentiality agreements to protect early stage discussions with companies. Similarly, we regularly include confidentiality clauses in our research agreements. Care is also taken to ensure our staff and students understand fully the importance of maintaining professional levels of confidentiality when working with companies.
We also understand that the existence of a formal contractual relationship between ourselves and a company may by its very nature be commercially sensitive and, unless permitted to do so, we will not disclose any details of such a relationship except for accounting purposes.
Publication
In order to maintain our academic excellence and reputation now and in the future, it is important that our academic staff are able to publish the results of their research wherever possible. Therefore, when undertaking research with your company, the University will normally seek to reserve its right to publish the results of that work. We do however understand that in many cases the company will need to use the Foreground IP commercially and we will normally agree to delay publication for a reasonable period to allow patents to be lodged and to liaise with the company over the presentation of any commercially sensitive results that are in a proposed publication.
Warranties, Guarantees and Indemnities
As a University it is our practice to use reasonable endeavours to ensure all work is carried out to the highest standard (that is how we maintain our position of excellence). However, results of research can never be guaranteed and it is our policy not to offer any kind of warranty or guarantee that specific research objectives can be met, but rather to undertake to work with the company to agree alternative routes when research generates unanticipated results. Furthermore, we will not normally accept any liability for use a company may make of the results of our research, although we will of course endeavour to work co-operatively to mitigate any problems they may encounter.
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