Penn has a robust history of successfully collaborating with for-profit industry partners to facilitate cutting edge research activities and advance the frontiers of science. These industry engagements take many forms, spanning everything from the exchange of materials, data and information, to sponsored and/or collaborative research programs. The PCI Corporate Contracts team assists with reviewing, negotiating and finalizing agreements between Penn and industry partners to formalize these arrangements.
For additional information on how the PCI Corporate Contracts team can assist you, please contact us at CorpCont@pci.upenn.edu.
Types of Contracts
Collaborative Research Agreements (CRAs)
CRAs are contracts between Penn and one or more industry partners that are cooperating and jointly participating in the conduct of a research program. A CRA describes the actions that each party has agreed to undertake and defines the obligations of each party participating in the collaborative research effort and defines the rights and obligations of each party to the agreement, such as confidentiality obligations, rights to the results and intellectual property that are generated in performance of the project, the right to publish the results, and use of name.
CRAs are similar to Sponsored Research Agreements but govern more varied collaborative research endeavors. A CRA would be appropriate, for example, where the project involves participation in the research by scientists from both Penn and the industry partner, or where the industry partner is also providing materials for use in the research. Projects giving rise to a CRA may or may not involve funding from the industry partner.
Confidential Disclosure Agreement (CDA)
A CDA, also sometimes referred to as a or Non-Disclosure Agreement (NDA), is a binding, legal agreement between two or more parties that allows the parties to exchange defined categories of confidential information to further a clearly articulated purpose (e.g. discussion of a possible collaboration, sponsored research, or license agreement between the parties), and outlines what the receiving party can and cannot do with the disclosing party’s confidential information (e.g. not share it with others that are not already bound to the same terms of confidentiality). Importantly, CDAs can protect the patentability of any proprietary information, patent applications, data, or know-how that has not yet been published. Without this type of protection, valuable intellectual property rights may be irretrievably lost. CDA’s can be “mutual” meaning both parties are planning to exchange confidential information with the other party, or they can be one-way, meaning that only one party will be disclosing confidential information.
When would I need a CDA?
Any time you know or suspect that you will be discussing unpublished data, information, or know-how with an industry partner for any reason, a CDA is advisable. When first discussing a relationship with an industry partner, a non-confidential discussion is strongly suggested to allow the parties to have a better understanding of the proposed transaction and to ascertain whether there is sincere interest in conducting a more in-depth discussion.
Data Use Agreements
If Penn wishes to obtain and use data from a company to facilitate research, or conversely when an industry partner wishes to utilize data from Penn, the parties will need to execute a Data Use Agreement. The Data Use Agreement outlines what the receiving party can and cannot do with the providing party’s data.
Equipment Loan Agreements
If Penn or one of its researchers wishes to obtain a piece of equipment from an industry partner to facilitate research and if the industry partner is willing to loan, as opposed to sell, said equipment to Penn, the parties will need to execute an Equipment Loan Agreement. The Equipment Loan Agreement outlines the uses Penn is permitted to make with the loaned equipment and the obligations Penn owes to the industry partner in exchange for the loan (e.g. a copy of beta testing results).
Facility Use Agreements
Some of Penn’s core laboratories are available for use by outside parties. If an industry partner wishes to use facilities or equipment on Penn’s campus to perform research, the parties will need to execute a Facility Use Agreement. The Facility Use Agreement outlines the terms and conditions by which the industry partner is permitted to utilize Penn’s facilities and/or equipment, such as confidentiality obligations and the company’s liability for any damage to Penn’s facilities and/or equipment beyond reasonable wear and tear.
Fee for Service Agreements
From time to time an industry partner will propose contracting Penn to perform services on the industry partner’s behalf, as opposed to funding Penn’s performance of exploratory research. This type of arrangement requires a Fee for Service Agreement. Given Penn’s status as a non-profit institution, research, teaching and training activities conducted at Penn should be beneficial to the general public, advance Penn’s research and education mission and not be for the sole benefit of a commercial party. As a result, Penn only utilizes Fee for Service Agreements in exceptional circumstances where the work to be conducted is consistent with Penn’s academic and research missions, is not exploratory in nature, and does not involve intellectual contributions by a Penn researcher.
Master Research Agreements
When a Penn researcher anticipates entering into multiple research projects with a single industry partner over an extended period of time, PCI may advocate the use of a Master SRA or Master CRA.
How are Master Research Agreements structured?
The parties reach an initial agreement as to the generally relevant terms and conditions – such as ownership of and the right to use research results and intellectual property generated from the research, publication rights, confidential treatment of information exchanged in connection with each project, and indemnification – which will apply to each research project under the Master Research Agreement. Then for each new research project under the Master Research Agreement the parties will execute an Addendum outlining each new and specifically defined research project.
Each Addendum will typically include the details of the research project, the research project budget, research project timeline, payment information, and any modifications to the terms and conditions of the Master Research Agreement applicable to that particular research project. Having a Master Research Agreement is not suitable for all situations, but when appropriate, it can often greatly expedite the agreement negotiation and execution process for any subsequent individual research projects.
Material Transfer Agreements (MTAs)
In general, if Penn or one of its researchers wishes to obtain materials from an industry partner to facilitate research, or conversely an industry partner wishes to obtain research materials from Penn for a defined research program, the parties will need to execute a MTA. The MTA outlines what the receiving party can and cannot do with the providing party’s material, and defines the party’s rights to the results and intellectual property that are generated using the providing party’s materials.
Sponsored Research Agreements (SRAs)
SRAs are contracts that establish the terms and conditions under which Penn accepts funding to support the conduct of a defined research project. In addition to describing the research project to be conducted by Penn under the agreement, an SRA defines the rights and obligations of each party to the agreement, such as confidentiality obligations, rights to the results and intellectual property that are generated in performance of the project, the right to publish the results, and use of name.
Guidelines and Policies
A number of Penn policies and guidelines are taken into consideration throughout the negotiation of research agreements, including but not limited to:
As part of Penn’s mission and obligations as a non-profit research and educational institution, it has a responsibility to freely disseminate knowledge and scientific findings resulting from its research activities. As such, Penn requires that its researchers retain the first right to publish or present the results of their research in a timely manner without prior approval from an industry partner. Penn does, however, afford its industry partners the opportunity to review such publications and presentations prior to disclosure so that the industry partner may (i) identify any potentially protectable new intellectual property and (ii) ensure that its confidential information has not been disclosed in the publication or presentation. Generally, the industry partner is given thirty (30) days to review in advance of a publication submission or presentation, with the ability to request an additional sixty (60) day delay as necessary for the filing of intellectual property protection.
The objectives of Penn’s intellectual property policies are to promote the advancement of science and technology, ensure that inventions and technologies are developed in ways most likely to benefit the public, acknowledge Penn researchers and share with Penn inventors the revenue received as a result of licensing a Penn technology.
In agreements with industry partners involving performance of exploratory research activities by Penn researchers, Penn retains ownership of the intellectual property its researchers generate in performance of said activities in order to (i) comply with Penn’s intellectual property policies, (ii) allow for future research activities to proceed unhindered, (iii) satisfy federal regulations to which Penn is obligated and (iv) avoid any tax implications for Penn.
PCI understands that this policy may not always align with an industry partner’s needs, therefore we have devised a number of creative licensing mechanisms such that an industry partner realizes the benefit of the collaboration while Penn still retains ownership of its intellectual property.
Liability, Warranties and Indemnification
Penn receives no profit on its research with which to cover business risk. As such, Penn is generally unable to accept contractual provisions that guarantee a successful outcome of a project, establish firm performance deadlines, impose penalties for failure to complete a project within an estimated cost or provide for withholding of payment if an industry partner is not satisfied with the results. Additionally, Penn research agreements will contain provisions disclaiming any liability for an industry business loss. Lastly, pursuant to Penn policy, an industry partner must agree to defend and indemnify Penn for claims or liabilities arising from the research or use of research results except those arising from Penn’s gross negligence or willful misconduct.
All contracts and agreements supporting research activities must be signed by an authorized signatory of the Trustees of the University of Pennsylvania. Pursuant to Penn policy, Principal Investigators, Department Chairs and School Deans are not authorized to execute such agreements on behalf of the Penn.
Use of Name
Penn regulates use of its name, the names of its schools and programs, its shield and related insignia, trademarks and logos (“insignia”) to ensure that such use is related to the University’s educational, service and research missions and promotes its objectives. Responsibility for overseeing use of the University’s names and insignia lies with the Secretary of the University.
Unsure of which Penn contracting unit can assist with your contracting needs? Please review the Penn Research Agreement Negotiation Tree.
Submit new requests for non-monetary agreements, including:
- Data Use Agreements
- non-monetary Collaborative Research Agreements
- Equipment Loan Agreement
- Facility Use Agreements
- Master Research Agreements
- Material Transfer Agreements
through the “My MTA/NMA requests” module in the Penn Research Inventory System (RIS) and review existing requests.
Sponsored Research Agreements & Funded Collaborative Research Agreements
Submit new requests for Sponsored Research Agreements or funded Collaborative Research Agreements to PennERA and view the status of existing requests.
Fee for Service Agreement
Submit new fee for service requests through the “My Fee for Service requests” module in the Penn Research Inventory System (RIS) and review existing requests.
Submit new CDA requests involving an industry partner either directly to PCI by emailing CDA-Info@upenn.edu or by submitting a request via the “My MTA/NMA requests” module in the Penn Research Inventory System (RIS).
Contact Corporate Contracts
For the quickest assistance, email CorpCont@pci.upenn.edu.