UW unveils intellectual property models to build industry partnerships

By Natasha Kassulke, natasha.kassulke@wisc.edu

From new options for cancer diagnosis and treatment to improved wireless communications, UW–Madison researchers are developing game-changing innovations for the marketplace with the support of industry partners.

But fostering these industry-university research partnerships has historically depended on negotiating terms that at times has required a lot of back and forth and uncertainty.

Now, an intellectual property (IP) model program adopted by UW–Madison is making it easier and faster for UW researchers to license laboratory discoveries to businesses and entrepreneurs who can then turn them into important and even life-saving commercial products.

With the Badger IP Industry Advantage program, companies interested in conducting research through the University can avoid some of the past speed bumps in tech transfer – the cycle of bringing knowledge and technologies to society through actions such as commercialization and publication. The “Advantage” program will make research agreements and associated intellectual property licensing more transparent, simpler, and mostly negotiation-free on fair terms.

“With the Badger IP Industry Advantage program, we are better equipped to create partnerships that build on UW-Madison research discoveries to bring new products to market that address society’s emerging challenges,” says Cynthia Czajkowski, interim vice chancellor for research.

UW–Madison is a global research powerhouse, spending more than $1.5 billion annually for groundbreaking inquiry.

“To remain among the best in a competitive research environment, and to realize the Wisconsin Idea, we need industry partners,” Czajkowski says. “We also know that real-world projects benefit our researchers, students and industry alike.

With the Advantage program, when a company is interested in conducting a research project with UW–Madison faculty and staff, it can lock in greater financial certainty for access to intellectual property.

The three Badger IP Industry Advantage models — The Classic, The Bascom and The Varsity — represent the most common ways industry can partner with the university for research purposes. The names are a nod to UW’s nearly 100-year history in the cycle of research, discovery, and commercialization, and its pride in The Wisconsin Idea.

The Classic is the best option for sponsors who desire maximum flexibility in contract terms. It provides, with no upfront fee, a traditional approach of waiting until intellectual property is created to negotiate a license to arising technology.

The Varsity is a good option for sponsors who prefer to evaluate the technology before deciding on licensing options and want certainty on nonexclusive access to resulting patents while also retaining an option for exclusive rights.

The Bascom is a good option for sponsors who want access to exclusive rights under resulting patents for a fixed and predictable cost.

All options include the requirement that the UW–Madison Principal Investigator and Sponsor mutually agree on the selected model.

“IP is a complex topic and the IP models in the Advantage program help us to communicate IP expectations for agreements more clearly,” explains Chris Kozina, assistant vice chancellor of industry engagement. “Businesses appreciate flexibility, simplicity and knowing where to go for information. We now have a shared view across UW–Madison schools and colleges, about expectations in working with outside partners. And we have designed these models with mutual benefit in mind for all parties involved.”

“There may be instances where a company wants something other than the terms offered through the Badger IP Industry Advantage,” explains Bob Gratzl, assistant director of contracts for Research and Sponsored Programs. “And we can always negotiate. But in most cases, we’re offering the best possible option upfront with the three models.”

Moving the needle on IP agreements came during the UW–Madison’s application for the Association of Public and Land-grant Universities (APLU) Innovation and Economic Prosperity (IEP) Universities Designation.  UW–Madison received this designation in November 2022.

APLU awarded UW–Madison this designation based on the university’s significant, sustainable, and campus-wide commitment to economic engagement, including its past and future focus on innovation and entrepreneurship, technology transfer, talent and workforce development and public service and community engagement.

To earn the designation, institutions complete a rigorous self-study and stakeholder engagement process. They also identify their economic development strengths and areas of growth and improvement.

For its self-study, UW–Madison leadership assembled a working group to review historic UW-industry IP agreements, conduct state and national peer institution benchmarking, and discuss with researchers and other internal partners, aspects of IP agreement that the university is comfortable granting routinely.  Industry partner feedback also played an important part in developing the Advantage program.

“Companies both in and out of state have told us that they have been waiting for this,” says John Garnetti, director of the Office of Business Engagement. These models help us to better communicate what was already possible and approved. I think this will streamline the process and eliminate a lot of confusion upfront.”

The Wisconsin Alumni Research Foundation (WARF) also has been an essential partner in the process. WARF was created by University of Wisconsin visionaries in 1925 as the university’s designated patenting and licensing organization. Unlike any other university technology transfer office in the nation, WARF covers all the costs of UW–Madison intellectual property commercialization and defense.

“I think as more businesses see how terrific UW-Madison researchers are – how fast, and creative and committed they are – this program will grow quickly and become a major bridge between the university and industry,” says Michael Falk, chief intellectual property and licensing officer for WARF. “What is especially exciting about this new program from our perspective is that it will increase the quantity and breadth of business partnerships. This is good for our professors and other researchers because it opens new areas of research and provides the resources to pursue cutting-edge research. And it is good for all of us because this program will speed up the transfer of early-stage technologies to real world applications.”

UW–Madison, along with the state, is poised to drive a significant increase in innovation and economic growth, bolstered by new federal funding and strengthened partnerships between academia and industry. The Advantage program plays an important role in that plan.

The university recently joined a consortium of 15 public and private partners in a Phase 2 application to the Department of Commerce Economic Development Administration Regional Technology & Innovation Hub program. Wisconsin is among 31 regions that had been selected for the highly competitive Phase 1 Tech Hub designation.

“As a leading global public research university, it is our responsibility to ensure that our work has public benefit. We want potential industry partners to look at the great research we do here at UW-Madison and get excited,” Czajkowski says. “And then, together, we get to work.”

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