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Forging Successful University-Industry Collaborations

Article  in  Research Technology Management · March 2008

DOI: 10.1080/08956308.2008.11657492

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 FORGING SUCCESSFUL
UNIVERSITY–INDUSTRY COLLABORATIONS
Replacing adversarial dialogue with engagement can bridge
the cultural divide in negotiating research agreements.
Beth Burnside and Lou Witkin
OVERVIEW: In an increasingly global, networked
market for R&D it is more important than ever to col-
laborate. In the past, intellectual property negotiations
have been formidable barriers to forming effective col-
laborative university–industry arrangements. Experi-
ence has shown that it is possible to reduce negotiation
from 20–26 to 1–2 months by using a model to build a
team, agreeing on a pre-determined process, and being
committed to finding creative ways to reach agreement.
Hewlett-Packard’s experience in using such a model
with the University of California at Berkeley and the
(California) Bay Area Science and Innovation Consor-
tium has shown how creativity and insight are essential
Beth Burnside is vice chancellor for research and chan-
cellor’s professor of cell and developmental biology at
University of California, Berkeley. She is responsible for
university/industry relations, research compliance,
research communications and research support for the
Berkeley campus. Her administrative portfolio includes
management of 40 campus research units, 12 research
museums and remote field stations, and the offices of
sponsored projects, technology licensing and lab animal
care. She has recently established two new offices to
facilitate and expand the impact of Berkeley research,
including the office of university/industry liaison. She
received her B.A., M.A. and Ph.D. in biology at the Uni-
versity of Texas, Austin. burnside@berkeley.edu.
Lou Witkin is a program manager with 35 years experi-
ence with Hewlett-Packard. During the past 10 years he
has worked in HP’s university relations group develop-
ing several programs that have resulted in successful
long-term collaborations between HP’s businesses and
universities worldwide, as well as encouraging curricu-
lum advances in engineering disciplines. He is also
exploring factors that contribute to building long-term
strategic partnerships with universities. He received a
B.S. and M.S. in electrical engineering from the Univer-
sity of Denver. lou.witkin@hp.com.
26
to achieving convergence and also helps explain why
standard agreements cannot effectively address the situ-
ational challenges.
KEY CONCEPTS: technology transfer, university-
industry collaborations, intellectual property, negotia-
tion.
In an increasingly competitive global market for research
and development, the United States is falling behind in
significant ways. It lags behind Asia and Europe in pro-
duction of technical degrees, scientific papers and high-
tech exports:
• Latest figures for science and engineering degrees as a
percentage of total new degrees show that in 2004 the
U.S. had 14 percent, behind 28 other countries including
China at 39 percent, Japan at 25 percent, and Ireland at
23 percent (1).
• In 2005, the U.S. had fallen to seventh in total R&D
expenditures as a percentage of GDP, following behind
Sweden, Japan and Korea. From 1995 to 2005, the
U.S. fell to 25th in average annual growth rate of
R&D expenditures as a percentage of GDP, with the
U.S. at 3 percent, behind China at 18 percent, Ireland at
8 percent, Russia at 6 percent, and the EU at 3.5 percent
(1).
• The U.S. share of worldwide high-tech exports has
been in a 20-year decline. Since 2001, the trade balance
for high-tech products has fallen into deficit.
In this environment, U.S. industry is beginning to move
sponsored research overseas in search of growth
potential, abundant R&D personnel, and more favorable
intellectual property (IP) terms from foreign universities.
Thus, at a time when the emergence of technological and
economic competitors requires increased university–
industry (U/I) collaboration in the U.S., many informa-
tion technology industry and university research
institutions agree that the difficulties of negotiating U/I
collaborative research agreements are a barrier to
American competitiveness.
Research ! Technology Management
The Collaboration Imperative
The “go-it-alone” approach to innovation and develop-
ment is no longer viable. Today the complexity of
problems and the need for multidisciplinary approaches
requires interaction, the flow of ideas and knowledge
exchange. Collaborating and partnering enables innova-
tion ecosystem development and new industry creation
(2,3).
The U.S. innovation ecosystem has thrived on U/I
research collaborations, yet their potential is being com-
promised by conflicts over IP issues. Technology
transfer (IP licensing) is not necessarily the most
important form of U/I interaction. It is serial, occurs at a
late stage in the process, takes a long time (often 20–26
months), and may not maximize the flow of ideas. It con-
tributes less than research collaborations to the prepara-
tion of students for joining the professional workforce.
Collaborate or die is the modern imperative. Giving up
on industry-sponsored research at U.S. universities
would be costly for both sides, depriving industry of the
creativity of outstanding university faculty and depriving
universities of industry partnerships critical both to
research and to education of the future industry
workforce. For universities and industry to go their
separate ways would put U.S. competitiveness at risk.
Challenges and Differences
Although the cultural divide between universities and
industry in negotiating research agreements is real and
considerable, there are ways to bridge the gap. Universi-
ties function in an intricate IP environment due to
complex third-party IP obligations to federal and state
governments as well as to academic researchers. Univer-
sity negotiators have much less flexibility over IP than
their private sector counterparts. This situation,
combined with the fact that university and industry nego-
tiators are sometimes unfamiliar with each other’s per-
spectives, leads to what we term a “silent breaking”
scenario:
Two researchers wish to work together on a research topic (across
U/I boundaries). They meet and define an area of mutual interest.
Their organizations begin the process of negotiating an agreement
framework. The researchers wait for the agreement details to be
h a mm e r ed out be f o r e co mm encing the r ese a r ch. T i m e p a sses
(sometimes 2+ years).
T he negoti a tion p a r ties beco m e inc r e a singl y f r ust r a ted th a t
agreement is elusive. The deadline for the grant/funding opportunity
passes. The researchers give up; the ideas become valueless and the
relevance of the work expires. The negotiators give up, each blaming
the practices, values or positions of the other as being irresolvable
and unreasonable. Both sides conclude that they will not engage each
other in the future. Both sides incur huge legal expenses, more than
would ever be recovered in licensing fees (this is usually an underap-
preciated hidden sunk cost.)
Industry shifts research funding to offshore alternatives (India,
China, etc.). Universities focus more on government funding and turn
March—April 2008
away from industry collaboration. Executives don’t even want to
raise the topic, let alone address the problem or hope for a solution.
“Walking away” becomes the de facto accepted practice. The “silent
breaking” continues.
New Models
UC Berkeley’s New Industry Relations Paradigm
In late 2003, IP management at UC Berkeley was restruc-
tured to support Berkeley’s reputation as a cutting-edge
research institution. The new Intellectual Property and
Industry Research Alliances office (IPIRA) was estab-
lished to streamline industry relations by creating a “one-
stop shop” for U/I partnerships (see illustration, next
page), thereby addressing the need for:
• faster, more sophisticated contract negotiation with
industry for “incoming” requests in an era of increasing
volume;
• better service to faculty to support research; and
• elimination of independent (and sometimes
competing!) silos of activity.
IPIRA consists of two peer divisions under common
management: the Office of Industry Alliances and the
Office of Technology Licensing. Its mission is:
• to recognize, establish, nurture, and maintain multifac-
eted relationships with both public and private
companies;
• to enhance the Berkeley campus research enterprise by
facilitating relationships with companies through cen-
tralized management of intellectual property and
industry research alliances;
• to attract and facilitate research support from the
private sector;
• to develop and strengthen new and more flexible types
of agreements to reflect changing relationships with
industry;
• to support economic development through technology
and knowledge transfer (including entrepreneurship);
• to accomplish the above while upholding the mission
and values of a public university.
IPIRA acknowledges the importance of U/I collabora-
tion as an innovation accelerator that fosters translational
research and fuels economic development. In IPIRA,
technology transfer consists of both “incoming” and
“outgoing” arrangements. Corporate support for
research and industry collaboration are valued as highly
as traditional metrics, such as licensing revenue, for
measuring “technology transfer” success.
Success in IPIRA means success in all aspects of
industry–university partnerships. Thus, in the new
model, new metrics may be applied for measuring
27
 UC Berkeley established its new Intellectual Property and Industry Research Alliances office (IPIRA) to streamline
industry relations by creating a “one-stop shop” for university–industry partnerships.
success. A given outcome, (for example, the grant of a
royalty-free license to IP) no longer detracts from the
bottom line of the technology licensing office if it
provides value of another sort to the campus as a whole—
such as attracting research funding or corporate collabo-
rations.
IPIRA’s realigned metrics and motivations enabled, for
the first time, the employment of a full spectrum of IP
management strategies to achieve the goal of maximiz-
ing Berkeley’s impact on society. In the first year after
IPIRA’s establishment, corporate-sponsored research at
Berkeley nearly tripled, negotiation times for research
and material transfer agreement contracts were dramati-
cally reduced, and new contract templates were
developed.
BASIC’s University-Industry IP Project
During the time when UC Berkeley was creating IPIRA,
a parallel effort was initiated by BASIC, the Bay Area
Science and Innovation Consortium, to improve the
university/industry IP relationship. BASIC is an action-
oriented collaboration of the region’s major research uni-
28
versities, national laboratories, independent research
institutions, and R&D-driven businesses and organiza-
tions. It is dedicated to:
• Developing innovative collaborative programs that
take advantage of the unique capabilities at Bay Area
R&D institutions to provide solutions for critical
national and regional challenges.
• Demonstrating the critical linkage between the Bay
Area’s infrastructure and its economic vitality.
For more than three years, Wayne Johnson, HP’s vice
president of university relations worldwide, led a
regional effort sponsored by BASIC to address IP issues
which were becoming more contentious and complex
and interfering with the research collaborations essential
to competitiveness. The BASIC IP team quickly identi-
fied improving collaboration as its goal, and focused spe-
cifically on IP negotiation problems in the IT industry.
Its mission was to achieve a shared understanding of
general principles, practices and frameworks that would
more effectively advance the IP interests of public and
private research institutions and to enable a more
Research ! Technology Management

effective alignment with existing activities at the state
and national level. At the outset, project members agreed
that U/I negotiations frequently fall into a vicious cycle
which is IP-centric, lacks trust and good will, is destruc-
tive of long-term relationships, and takes too much time,
effort and money to arrive at convergence.
The BASIC IP team envisioned a U/I negotiating process
in which shared principles and constructive procedures
would produce collaborative rather than conflictive
partnerships—a process by which industry and universi-
ties could reasonably and easily reach agreement:
• Identify and configure a team (both sides).
• Hold one face-to-face meeting (perhaps over lunch or
dinner).
• Hold two conference calls.
• Hold one or two concluding meetings and reach
agreement.
• Move forward with the research and collaborate!
Sponsored Research Interaction Process Model
Through a series of these types of efforts, the BASIC IP
team has developed various models, practices and frame-
works to enable timely, successful contract negotiations.
One example of this work is the Sponsored Research
Interaction Process (SRIP) model, which is designed to
help companies and universities navigate the complex
landscape of IP contract negotiations.
This model bears fruit when institutions value the col-
laborative relationship more than they do any single col-
laboration opportunity, utilize their networks to
advantage, and value research support as highly as
license revenue. The model is described at http : //
www .hpl.hp.co m / r ese a r ch/u r /coll a bo r a tion/ip/
basic.htm. It charts an overall dynamic process that
breaks through cultural and negotiation barriers and
establishes a joint process for successfully concluding
sponsored research negotiations.
The essence of the SRIP model is:
• Build a team.—Convene teams with the appropriate
members on both the university and industry sides. Each
team member should have a clearly identified role. Have
a lead person on each team accountable for getting to
timely agreement. Have the principals and negotiators
meet face-to-face to build relationships and enhance
rapport.
• Work from the big picture (model).—Set goals at the
right level to gain agreement, and establish metrics, such
as the amount of sponsored research funding, that reflect
relationships and not just transactions.
• Utilize a process that the team commits to use (secure
“buy-in”).—Secure strong sponsorship and commit-
March—April 2008
Continually
emphasize
relationships rather
than transactions.
ment to making it work. Educate all team members about
the process they will use.
• Work the process creatively.—All concerned must be
prepared to offer creative insights for getting around
tough problems and navigating impasses.
• Have an escalation path.—When stuck, leaders must
elevate reasoning to a higher-level of intent, focusing on
the broader collaboration relationship and how the
planned research work will benefit both sides.
Using the Model To Negotiate Successfully
The model described above was recently put to a real-life
test in the negotiation of a DARPA agreement between
HP and UC Berkeley. The challenge was to successfully
negotiate an agreement, despite the fact that previous
negotiations had been unpleasant and unsuccessful.
Whereas prior negotiations had been the province of
each organization’s attorneys (who felt that they owned
the negotiation process) senior executives from each
organization (directors and vice presidents of engineer-
ing on the industry side, and vice chancellor for research
on the university side) led this negotiation. By eliminat-
ing the opaque attorney-to-attorney negotiation process,
the negotiating team participated in face-to-face gather-
ings which built cross-team rapport and “relationship
currency” that could be drawn upon later at difficult
points throughout the process.
The joint team(s) concentrated on the high-level
concepts and agreement elements of the negotiation
rather than the premature exchange of contract language
drafts, immediately shifting the emphasis from textual
nitpicking and legalistic overreaction to consensus
building. The negotiation team set an aggressive time
frame (one month), which created a sense of urgency.
(The appropriate timeframe depends on such factors as
the cost of negotiation vs. value of the research outcome,
the competitive landscape, and time-to-market.)
Prior contract negotiations tended to be open-ended,
often due to impasses on only a single point. Having the
key organizational leadership participate on the teams
lessened the possibility that a single person with
29

authority could trump all prior progress by the teams.
Strong leadership and adherence to process were needed
right up to and through the end in order to have the
agreement converge.
What We Learned
Key lessons that emerged from this experience with the
SRIP model include:
• A pragmatic discussion to focus attention on situations
that are likely to occur in practice is a much better use of
the negotiating team’s time than striving for complete-
ness and trying to foresee and account for every eventu-
ality in the contract.
• The discussions are much more constructive when IP
considerations are separated from the more important
task of defining a mutually productive working relation-
ship.
• Broad multi-tier relationships are invariably more suc-
cessful than single-point relationships. When a company
and university have deep multi-tier relationships with
interactions among counterparts at several levels,
alternate avenues for resolving impasses are opened.
When discussions and negotiations between a company
and university are confined to a single set of players, the
negotiations are usually unsuccessful or hopelessly pro-
tracted.
• People tend to adopt entrenched positions and argue
for them, focusing on repeating their views rather than on
advancing progress toward agreement. As a result, they
exercise limited creativity in finding a solution, focusing
instead on “we need this because . . .” and stalling on the
complexity and irresolvability of the situation. Their
“can’t do” philosophy focuses on “educating” the other
side rather than engaging in true negotiations.
Key lessons learned from using the process framework
inside the SRIP model are:
• Negotiators must recognize that the negotiation
process is parallel and iterative rather than linear.
• Although there are no “cookie cutter” formulas for U/I
negotiations, reasoning from first principles and
adapting the practices for the specific situation seems to
yield success.
• Selection of the collaboration model and IP positions
should be driven by business need and academic need.
• Work from the process/pattern level down to the
details (not the other way).
• Success requires constant shepherding and facilitating
from the top leadership on both sides to ensure that the
team members do not work from local points of view and
narrow agendas (e.g., sidebar conversations/email
renegade battles).
View publication stats
30
HP has been able to
negotiate agreements
with UC Davis in less
than one month!
• Work toward a timeframe (e.g., negotiation to
complete in less than one month).
• The leadership should be prepared to reconfigure the
team if necessary, especially if talks stall, and continu-
ally emphasize relationships rather than transactions.
• Use attorneys effectively in the process, protecting
their time and employing their expertise and insights at
the appropriate points in the negotiation.
Recent Negotiations
We continue to use these frameworks, models, prin-
ciples, and practices in negotiating agreements. Using
the SRIP model, HP and UC Berkeley shortened the time
to negotiate a DARPA subcontract to two months.
Building on this success and the relationships that were
established, HP has also been able to negotiate other
agreements with UC Davis in less than one month!
Overall, team members much prefer these frameworks to
the chaos of the past. There are fewer disappointments,
fewer occasions when the right individuals are not
present, fewer surprises, more team participation, greater
satisfaction in the outcome because of the precedent,
proof of principle and applicability to future negotia-
tions. When universities and industry value their ongoing
relationships more than any single transaction and utilize
their networks to advantage, the overall dynamic is posi-
tively changed, making it possible to enable the collabo-
rations that are imperative to mutual success ! "
Acknowledgement
The description of the IPIRA program was contributed to
by Carol Mimura, assistant vice chancellor for IPIRA.
References
1. 2007. OECD Science, Technology and Industry Scoreboard.
2. Johnson, Wayne. 2006. The Collaboration Imperative. Universi-
ties and Business: Partnering for the Knowledge Society. Glion V
Colloquium, Economica, Paris, France.
3. Burnside, Beth, and Witkin, Lou. 2006. University-Industry Col-
laborations: Recent Trends, Challenges, and Advances in Making
These Work in Successful Engagements. Industrial Research Institute
Fall Meeting, October.
Research # Technology Management