Background
In the process of conducting research, researchers at
the University of Oklahoma are requested to conduct “research
related services” for an outside company. The provision
of such services fits with the research and service missions
of the University when: 1) the University is uniquely
qualified to offer such special “services”;
2) those services provide additional research and experience
for the University’s faculty, staff, and students;
and 3) access to those services or specialized equipment
is not readily available through local commercial means.
These services may include the utilization of specialized
expertise of the faculty or specialized instrumentation
that may be offered to the company. Quite often, this
will include testing of certain materials for the outside
company (sponsor).
Services
For purposes of this type of agreement, services are
defined as “small, specifically-designed”
projects and are confined to those projects that provide
services involving classification, diagnostics, or testing
of a sponsor’s data, samples, mechanisms, procedures,
or products. These services are performed using University
resources, including personnel, equipment, or facilities.
These services must be unique in some fashion and should
not present competition to private industry. The rationale
for University involvement in this kind of service or
testing is that since University faculty conduct research
that is often on the leading edge of scientific investigations,
they are uniquely qualified to provide certain kinds of
services that are not readily available locally from anyone
in the private sector. The services provided should not
be perceived as being in competition with private companies.
UNDER $25,000: Ordinarily, these projects are defined
as "small, specifically-designed" projects and
shall be for less than $25,000. In some instances, larger
projects may be considered for processing under this format.
Rationale should be provided as to why the larger project
should fall under this consideration and approval must
be provided from the Office of Technology Development
prior to use of the Service Agreement. Most projects exceeding
a cost of $50,000 will require the use of a Sponsored
Research Agreement.
Requirements
Publication and Use: The
results of the activities performed under a Service Agreement
must be available for publication and for use in support
of the University's research mission.
Confidentiality: If the
service(s) contemplated under this agreement require the
provision of Sponsor’s proprietary information,
the terms of confidentiality shall be set forth in a Confidentiality
Agreement executed by both parties.
Patent Rights: In performing
a Service Agreement, the University is simply involved
in the provision of services involving sponsor-provided
information and not in the creation of new knowledge or
new technologies. Consequently, the University will make
no claims on patent rights in regard to sponsor-owned
materials or information provided for the Project. The
concept here is that under a Service Agreement, University
faculty are providing testing or diagnostic services,
not performing basic or applied research. However, the
University will retain rights to inventions which are
not related to a sponsor's product or processes or fall
outside the scope of the Project's Statement of Work.
For instance, if University personnel are analyzing a
sponsor's material with a scanning electron microscope
(SEM) and we discover a new analytical method involving
the SEM, the resulting method would belong to the University.
The University does acknowledge the potential for its
services (testing and diagnostics) to potentially lead
to small improvements to a sponsor's material or product,
but feel that such incremental advances should be the
property of the sponsor. However, University personnel
who are involved in such discoveries must be listed as
co-inventors in accordance with U.S. patent law. The University
shall also retain a right to use any such improvements
for internal, research purposes.
Certification: As Service
Agreement clauses regarding intellectual property differ
from the provisions in the University Standard Research
Agreement wherein basic or applied research is involved,
a Service Agreement Certification
( PDF | WORD
) form will need to accompany the pink routing sheet.
A Service Agreement will not be approved without execution
of this Service Agreement Certification form by University
personnel.
Company: Faculty proposing
to use a Service Agreement to conduct work on behalf of
a sponsor should consult with the Office of Research Services-Cost
Analysis (ORS) to determine if service rates are necessary
for consistently billing the activity for the sponsor(s).
Once the ORS has received the Service Agreement Certification
and the proposal has been approved through the routing
process, ORS shall submit to the sponsor the University
standard Service Agreement, which has been approved by
University Legal Counsel and Office of Technology Development.
Please be advised this policy only addresses the use of
the University standard form. Any proposed changes to
the University standard form, or use of a sponsor's form,
requires review and approval by the appropriate University
offices through the Office of Research Services. In order
not to delay approval of the Project, any proposed changes
to the University form or submission of a sponsor's form
must be submitted well in advance of the proposed Project
start date to allow adequate time for review. As negotiations
and discussions on these matters often take weeks to complete,
any proposed changes to the University standard form or
use of a sponsor's form should be submitted to the Office
of Research Services for review and consideration at least
four (4) weeks in advance of the proposed Project start
date.
Cautions
University faculty should not co-mingle service projects
with any other research activity within their labs. Special
attention should be given so as not to employ inventions
or new technologies developed or created on federally-sponsored
or company-sponsored research projects in such a way as
to encumber these inventions by the terms of the Service
Agreement. A complete segregation of service activities
should be accomplished through the use of separate lab
notebooks. The University and individual investigators
do not want to see major technological developments encumbered
by small service agreements.
The University must recover full costs including facilities
and administrative costs.
|
