Faculty Consulting Agreements
In the current economic climate, with innovation often critical to survival, many in industry are eager to consult with academic faculty to examine and critique industry developments, opine on trends in the field, assess data, and generally help industry operate at the cutting edge. Faculty members, in turn, are often eager to provide such services, as their own work may be advanced through interactions with industry. Faculty may see opportunities for innovation with industry that are not possible through their own institutions. Most academic institutions support their faculty in providing consultative services as long as faculty comply with their institutional policies on research and consulting activities.
Understanding Institutional Policies
Companies and faculty members who are considering entering into faculty consulting agreements should recognize that their perspectives may be different when it comes to issues such as confidentiality, ownership of intellectual property, and non-compete requirements. Since faculty members are not in a position to change the policies of their own institutions or grant themselves exceptions, companies who wish to retain faculty need to understand their institutional policies and work with them to resolve any issues of concern. With faculty members generally required to inform their institutions of their intent to enter into consulting agreements, and institutions increasingly requiring internal review and approval of agreements, it is all the more important for companies to understand institutional policies since they are likely to be negotiating not just with faculty members, but with institutional counsel, as well.
Companies understandably wish to maintain their proprietary information strictly confidential, and they expect any consultant they retain to agree to strict confidentiality conditions. Academic institutions, in contrast, have a mission to disseminate information broadly. Data is openly critiqued, methods and plans are shared, and research is expected to be published. Companies should review the confidentiality provisions in their consulting agreements to be sure the requirements are narrowly tailored to the specific needs of each relationship so that academic consultants are actually able to comply.
Companies should also be aware that institutions need to protect their own information, as well, albeit for different reasons. Institutions cannot permit faculty consulting relationships to become mechanisms for companies to gain commercial advantage using institutional information. Institutions may require their faculties’ consulting agreements to include provisions to assure that companies do not acquire access or rights to proprietary information of the institution or gain access to confidential student or patient information.
Companies are entitled to claim ownership of intellectual property developed by consultants under the terms of consulting agreements, but this should not include intellectual property that was developed by consultants prior to performing services under the agreements or contemporaneously with such services. Distinguishing among these categories of intellectual property may be challenging in light of the overlapping fields of activity between companies and faculty they are likely to hire as consultants, but it is crucial. Companies do not want to find themselves in protracted and expensive disputes over intellectual property ownership issues with consultants and their institutions. A faculty consulting agreement should generally include confirmation that the work to be performed under the agreement does not overlap with the consultants’ work for an institution—or for any other company with which the consultant works or has worked in the past.
In the academic setting, publishing research results is critical and expected. Companies should discuss with potential faculty consultants whether they wish to restrict the consultant from publishing materials relating to the consulting services (not including confidential or proprietary materials, of course), and companies should be aware that they cannot restrict faculty consultants from publishing the results of research performed at or through their institutions that may be in the same field as company products or services.
Use of Names, Logos and other Marks
Companies and institutions share an interest in controlling the use of their names, logos, trademarks and service marks. Neither should expect to gain special advantage by using the name or marks of the other. Faculty consulting agreements should address both permitted uses and restrictions on use of names and marks so that a clear understanding is in place going forward.
Ellen Lubell can assist you in carefully considering the terms of faculty consulting agreements, and in negotiating agreements that are the foundation for successful collaborations.
“It is incumbent on companies to understand the policies and practices of the institutions from which they draw consultants and to address these issues directly.”