universities can and cannot engage in. This is the case for U.S.-focused collaborations as well as for international agreements, and comes after years of sustained effort to raise awareness.
Mr. Warshawsky attributes some of these problems to the downturn in the economy, combined with a trend for industry managers with experience in working with universities to retire and be replaced with managers who are more comfortable in a commercial procurement context. This is happening in negotiations with companies that have master agreements or set contract templates in place with Northwestern.
It is important to remember that the university’s core mission is to educate, both through classroom teaching and through the publication of research. Working with industry and with international partners is worthwhile if it advances this mission. Potential partners, and even faculty and departments heads eager to secure funding, may lose sight of this.
One issue that has caused difficulties lately is background intellectual property (BIP). BIP is a term used to define IP that exists before the development of an invention. In one recent negotiation, an international collaborator wanted assurances regarding BIP. The university has no capacity to check BIP at the time of an agreement or to provide such assurances. The most that happens is the faculty member provides a list of publications. The larger issue is that the university is performing research, not selling IP. The research does not come with any warranty that the result can be commercialized. Of course, the university wants to provide sponsors with opportunities to license the outputs, but cannot guarantee that there will be no bumps in the road due to background IP.
The role of the central administration is to balance the various interests at stake, to protect the integrity of the institution and the faculty, and to ensure that the university can comply with the agreements that it signs. In a recent case, an international collaborator from the Middle East was interested in supporting the development of course software. Mr. Warshawsky had to point out to a faculty member that if the sponsor was given the broad rights that it asked for, future research in that area might infringe on the copyright, raising the danger that the faculty member could be shut out of working in this area again.
In another case, a U.S. corporation refused to sign a letter of support for a faculty member seeking an NSF early career award until the university agreed to IP terms. As part of a much larger project, the faculty member and a student would be going into the company to study workflow issues, without receiving any IP or confidential disclosures from the company, with