Researchers from the Oregon Health & Science University (“OHSU”) and Intel Corporation (“Intel”) discovered a mutual interest in studying the aging population in the U.S. They proposed to enter into a multi-year research collaboration to perform research on the aging population by creating the “Living Lab” – homes and apartments wired to monitor daily activities – with the goal to determine if behavioral changes could be quantified and used as predictors of disease and to develop new technologies to help the aging population continue to live independently in their own homes.
The collaboration anticipated OHSU and Intel scientists working together to develop technologies and products. IP rights were an immediate issue that needed to be addressed, as well as where and how university faculty and engineers would work together. Each entity wanted (or had to because of laws) to own the IP resulting from the project.
In addition to IP issues, there was also a significant difference in the culture. OHSU scientists wanted to focus on basic research in the collaborative efforts without worrying about cumbersome reporting requirements. They wanted maximum flexibility in determining research direction and outcomes. OHSU management, on the other hand, wanted to use the collaboration to showcase the capabilities of their departments and develop a long-term relationship with Intel. Executive management wanted to ensure that OHSU would receive a fair financial gain from any product developed in the collaboration. As such, the technology transfer team had to accommodate the varying objectives of researchers, department chairs and executive leadership.
The Intel engineers were mainly focused on product development. Intel management was interested in basic research outcomes as well, however their primary focus was to use the facilities at OHSU to develop and test products. The Intel legal team’s primary objective was to ensure that all contractual obligations were acceptable and favorable to Intel.
The technology transfer team recognized the different drivers for each stakeholder and worked proactively to address their needs. A negotiation team was created at OHSU and Intel was asked to do the same. Each team comprised of scientists, decision-makers and individuals with legal expertise. Rather than start with template agreement language, which often leads to protracted negotiations, the negotiation teams were tasked to craft an agreement to fit the needs of the research and development.
Because each team had scientist, management and legal stakeholders represented, each with their own distinct needs and drivers, the initial meetings focused on achieving consensus on the goals and objectives of the project. The negotiation teams met twice in person to review the scope of activities, and to discuss contractual terms.
During the course of the meetings , there was a frank discussion about how the two entities would work together, including the relative importance of each party’s needs. Based on this discussion, the teams created a matrix of desired outcomes and contractual expectations. This included IP issues associated with the basic research activities, as well as the development, testing and feedback on potential products and technology. By using this matrix to draft the agreement, the entire process from first contact to final agreement took about three months.
- Understand the other party. In any negotiation, it is important to understand the other party’s position, needs and drivers. Determine what is most important, and where there can be areas of flexibility.
- Don’t start negotiations with agreement templates. At the heart of each negotiation is the ability to understand and address the need of the other party. If negotiations are initiated by exchanging standard form agreements, the focus shifts from addressing the needs to acceptable (or unacceptable) language and changes the nature of the negotiation from collaboration to confrontation.
- Involve decision-makers in the process. Having decision-makers, or individuals trusted by the decision-makers as part of the negotiation team is vital. They can understand the issues first hand, offer advice, and provide immediate feedback. If decision makers cannot be involved, they should be updated regularly and their input should be sought on any issue that may be substantial for the entity.
- Consider short and long-term goals. Focusing on one set of goals over another can create conflict and lead to disappointment, especially if one party is focused on short-term goals and the other party is focused on long-term goals. It is important for both parties to decide where the focus should be and reflect that in the agreement.
- Don’t let IP issues get in the way. This is an area that usually causes heated negotiation. It is important to understand what each party is bringing to the table (resources, background IP, contributions to creating new IP etc.) in order to craft terms to address how IP rights will be allocated.
At the heart of every negotiation there is a simple transaction, a value exchange that can be represented in monetary and/or non-monetary terms. The key is to determine what is valued by the other party and to negotiate a collaborative agreement in which each organization provides the other with the value they seek for a reasonable cost.
Arundeep S. Pradhan
Foresight Science & Technology Pte Ltd
27 West Coast Highway, #02-22, Office 10, SG, 117867
Phone: +65 8357 2808, Email: firstname.lastname@example.org
Mr. Pradhan is a pioneer in the field of technology transfer. At Foresight Science & Technology he manages the Licensing & Partnerships, Technology Transfer Training and West Asia Sales groups. He joined Foresight as part of a merger with Apio Partners, of which he is a co-founder. He started his career at the University of Utah, where he helped build a program that is renowned for its innovation. Mr. Pradhan is the former associate vice president of Technology Transfer & Business Development at Oregon Health & Science University, where he developed Technology Transfer 3.0, integrating technology transfer, business development, economic development, industry alliances and startups. He has been instrumental in developing seed and investment funding programs at universities. He is active in economic development to support university startups and bioscience cluster development.
Mr. Pradhan is an expert in negotiation, strategy, management and operations and forging multi-partner, multi-national alliances. His experience spans a number of industrial sectors. He has worked extensively with economic development agencies and has advised on innovation policy across the globe.
He is a former president of AUTM and the AUTM Foundation. As President of AUTM in 2009, he led the organization to develop its first comprehensive a strategic plan; engage on policy issues with respect to patent reform, the Bayh-Dole act, economic development, commercialization of university research; and, increase the international outreach of AUTM. Mr. Pradhan was the President of the AUTM Foundation in 2011 where he helped to create a model for sustainable revenue to fund programs within the Foundation. He was on the on the AUTM Board of Trustees 2006 to 2007 (Vice President for Annual Meeting), 2008 (President Elect) and 2010 (Immediate Past President.)