INVO executes agreements that range from CTAs to license agreements. The number of agreements that we execute each year has continued to grow, signaling the external interest in Northwestern's inventions.
The two main paths to commercialize academic inventions are by licensing to established companies or licensing to spinout companies. Most co-development partnerships will include some type of licensing agreement. Exclusive licenses or options are generally executed for technologies that require significant prior investment to reach the marketplace, or are so early state the exclusivity is necessary to induce investment needed to determine utility.
Confidential Disclosure Agreement (CDA) and Non-Disclosure Agreement (NDA)
(Note: Except for those related to or relevant for clinical trials)
A Confidential Disclosure Agreement (also known as a Non-Disclosure Agreement or a Proprietary Information Exchange Agreement) is necessary when unpatented or unpublished ideas or data have to be disclosed to another party who must maintain such information confidential. CDAs are legally binding documents that enable the exchange of information that is not yet in the public domain.
CDAs are generally signed to protect inventions disclosed to us. The novelty criteria of patentability require that an invention has not previously been made available to the public, where the public constitutes even one individual or group of individuals. Any disclosure prior to filing of patent applications negates the novelty criteria. Disclosing novel ideas or data prior to patent filing under a CDA preserves the novelty, hence there is no loss of patentability. Therefore, it is critically important to consider CDAs before approaching companies or individuals for developing novel ideas.
We work with the PI to ensure that a CDA is executed appropriately to protect proprietary information associated with an invention. Please contact MTA before entering into discussions about your unpublished information with a commercial entity or its scientists or employees.
It is generally INVO’s preference that the Invention Manager work with the founder to create an option agreement in lieu of a license for the technology at the outset. An option is fast and less expensive. In addition, it gives the founder more time to meet the conditions necessary to execute a license.
For startups in which Northwestern faculty, students or staff are considered to be founders, INVO will grant an exclusive option for 6 months at no charge to the startup, assuming there are not multiple potential licensees competing for the technology. The optionee, in this case, can extend the option for another 6 months by paying an agreed upon fee. Other conditions that may have to be met to extend the option include bona fide fundraising effort, finding an interim CEO and/or completion of a business plan.
For startups in which Northwestern faculty, students or staff are not considered to be founders, the cost for the option must be negotiated with the INVO Invention Manager.
Legal fees for patent prosecution are typically deferred during the option period. Though, licensee agrees to reimburse INVO for such legal costs upon license execution. If for some reason, extraordinary legal expenses have been accrued during patent prosecution, a reimbursement plan will be established to help the startup.
If the founder cannot meet the conditions, the technology has been tied up only for the duration of the option. The optionee has an exclusive right to license the technology as long as the agreed upon conditions are met before the license option expires.
A license agreement is associated with an invention(s) that have been disclosed to INVO. We negotiate the terms of the license with the potential licensee, often with input from the inventors. Template license agreements for both therapeutic licenses and digital licenses can be downloaded from the Forms section of this website.
Before execution of the License Agreement, a draft copy of the agreement is made available to the principal inventor upon request. The License Agreement will be attested by the University's General Counsel and executed by the executive director of the Technology Licensing in INVO.
Inter-Institutional Agreements (IIA)
An Inter-Institutional Agreement is necessary when an invention is made jointly between researchers at Northwestern and another institution. The intent of this agreement is to coordinate the filing and prosecution of patent application(s), the marketing of the technology to potential licensees, and how the legal expenses and license revenue will be shared among the institutions that asserts the ownership rights to the joint inventions. This agreement generally assigns the patent and licensing responsibility to one institution. If a joint invention is made with a commercial entity the possibility of licensing the university's rights to the commercial joint owner shall be explored.
All joint inventions must be disclosed to us, even if the other institution offers to handle the invention.
Corporate Collaborative Agreements
There are a variety of corporate service agreements, including but not limited to a fee for a service provided by a company, a fee for materials received by the company for research and evaluation, and pilot projects of short duration (less than 10 weeks). These agreements generally are negotiated and executed by INVO.
INVO believes that innovation occurs at the intersection of disciplines and institutions. Collaborations with government and industry are essential ingredients to the creation of new knowledge and entrepreneurship. INVO encourages research collaborations with industry. INVO initiates interactions, nurture relationships and negotiations with industry on behalf of Northwestern's inventions and inventors.
Agreements could involve research, co-development or licensing terms. They might or might not involve financial terms. INVO's key guiding principle in negotiating agreements is to ensure that Northwestern’s teaching, research and public impact mission as well as its values and interests are maximized.
Specifically, INVO looks for assurances that:
- All reasonable efforts are made towards moving technologies to the market and make the research and innovations available to the public;
- Northwestern's academic freedom, scientific integrity, the pursuit of knowledge and open exchange of ideas and information are protected. We are particularly watchful for any restriction that could limit the right of faculty to publish or present the results of research; and
- Northwestern will be provided a fair return if the product is successful in the marketplace.
Other relevant agreements, but not executed by INVO
Individual Confidentiality and Consulting Agreements
Individuals cannot sign on behalf of Northwestern for CDAs if it relates to research conducted at Northwestern.
Often, faculty, students, and staff are asked by a third party to sign a CDA to receive information from the company. If a CDA relates to projects or activities clearly outside research conducted at Northwestern or Northwestern responsibilities, we recommend that the investigator reviews the CDA with his or her personal legal counsel. CDA’s may include terms and conditions beyond confidentiality, such as IP ownership or enforcement clauses, and should prompt a consideration of whether the CDA is properly between the company and you in your individual capacity or is more appropriately between the company and Northwestern.
Individual Consulting AgreementsIn addition to CDAs or under the label of a CDA, a third party may ask a faculty member to serve as a consultant or advisor to a private company or individual. The agreements presented take a variety of forms, including consulting agreements, personal services contracts, and employment agreements, among other things. Consulting agreements can come with a variety of terms and conditions that should be evaluated and negotiated by an investigator with his or her personal legal counsel.
The resource below describes general advice, not legal advice, from the university perspective for faculty considering entering individual consulting agreements.
Please note that individuals cannot sign mutual CDAs or consulting agreements if they relate to research or activities conducted at Northwestern. The Office of General Counsel can assist in determining whether a proposed agreement is a university or individual agreement, and check for potential conflicts with university policies.
Material Transfer Agreement (MTA)
A Material Transfer Agreement (MTA) is a written contract used to govern the transfer of research material between organizations. The sharing of research products (such as compounds, software, cell lines, transgenic animals, plasmids and monoclonal antibodies, etc.) is critical to continuing progress in science, and it is the University’s intention to facilitate the exchange of material between researchers at academic institutions, government agencies and corporate entities.
An MTA is established between a provider institution and recipient institution to document the material being transferred and terms and conditions with respect to issues such as ownership, permitted uses of the material, publication of results, development of inventions and liability. Establishing conditions prior to the transfer of material avoids issues and misunderstandings after the research has begun. Because different collaborations require different agreements, MTAs are negotiated on a case-by-case basis.
View MTA guidelines and forms on the Office for Sponsored Research website.
Material Evaluation Agreements
Material Evaluation Agreements (MEA) usually come to play when companies express interest in testing or evaluating novel materials for their specific purposes. Please contact email@example.com to discuss the potential need for an MEA. These agreements, in addition to providing confidentiality terms, protect the novel material, define the tasks to be performed, ensure the sharing of the evaluation results with Northwestern, and render additional restrictions.
Industry Sponsored Research Agreements
The Office for Sponsored Research (OSR) is responsible for executing the Industry Sponsored Research Agreements. These agreements are forwarded to us by OSR when the intellectual property terms of the agreement encumber the principal investigator's (PI) prior intellectual property or unduly restrict the future intellectual property.
We review the agreements on behalf of OSR at their request to ensure protection of intellectual property rights and that there are no conflicts with any existing commitment to third parties. If the PI's earlier inventions are licensed or are otherwise obligated to some degree to a third party and the subject matter of the inventions overlap with the scope of the work anticipated under the agreement, the intellectual property terms may need to be modified to eliminate conflict among Northwestern’s obligations. We encourage PIs to engage in direct dialogue with our staff under those circumstances.
If an invention stems from corporate-sponsored research, the PI is responsible for disclosing the invention to us in compliance with Northwestern's Patent and Invention Policy. We will send a copy of the invention disclosure to the sponsor promptly upon receipt and follow up with patent filings, as appropriate.
In a Collaboration Agreement, both parties agree to contribute resources, such as materials, equipment, personnel, or specialized expertise to the project and work together to find an answer to a particular research inquiry. If collaboration is anticipated for which an agreement needs to be signed by both parties, please submit a statement of work/protocol along with the other party's contact information to firstname.lastname@example.org. If you have received a Collaboration Agreement from an outside organization, please send it to email@example.com. Once the terms of the agreement are final, we will sign on behalf of the University and send one fully executed agreement to the collaborator’s organization. A copy will be sent to the PI.