University-Company Collaborations

University employees who are engaged in any external activity with a company they have founded or a company they intend to consult for – regardless of whether they are a company founder – must have the activity approved as an External Professional Activity for Pay (EPAP) prior to engaging in the activity. EPAP approval for external activities is required regardless of whether there is a license to University IP.

As part of the licensing process of a technology, the employee’s Conflict of Interest (COI) will be reviewed for all potentially affected University activities. COI management when equity is received requires careful planning, so University employees with equity in the company taking a license should begin the COI review process early. COI review of University activities is required for licensed IP, regardless of whether you are engaged in external activities with the company.

For many technologies, the company can proceed with development without further engagement from the University. Where material, software, or methods must be transferred, it is expected that the transfer will take place over a short window of time (a few months or less).

No ongoing support is provided by OTC and should not be provided by University employees, including any founders in their University roles. Support may be provided by University employees and programs toward helping startup companies with their business needs. Companies are not granted rights to improvements developed after the license is signed, and UNC individuals must not share any improvements with the company except under confidential disclosure agreement for the purpose of allowing the company to determine if it wishes to license new intellectual property.

See the FAQ regarding external professional activity for pay and conflict of interest if you wish to work with your company outside of the University.

No. Companies cannot have access to University laboratory meetings or unpublished research results. Companies can contact investigators or the commercialization manager regularly to ask if there is new IP available for licensing. Companies that sponsor research in University laboratories can have access to unpublished results when appropriate and/or schedule meetings to discuss only the results directly from the research project they are sponsoring with the individuals supported on that project.

University investigators may not direct subcontracted work or requisition purchases from companies in which they have a personal interest (themselves or a family member). The University may still engage in these activities so long as the individual directing the activity has no personal interest in the company.

Companies seeking research and development support may be able to sponsor research in your laboratory. Companies should expect this engagement to be treated as an arm’s length transaction. With one exception (phase I SBIR/STTR), all commercial research sponsors are treated equally ─ no discounts or special access is provided. Typically, commercial research sponsors are granted a time-limited option to license inventions arising out of their sponsored project, which may result in intellectual property (IP) being added to the existing license or the negotiation of a new license (whichever is preferred by the sponsor).

Companies who receive federal funds under the SBIR and STTR programs may subcontract some of their work to your laboratory. The University will waive F&A costs for work subcontracted to the University under a phase I SBIR/STTR award. The University Office of Sponsored Research (OSR) has detailed guidelines on how to administer SBIR/STTR regulations within the University. Contact OSR for more information.

SBIR: A full-time University employee cannot be the overall principal investigator for the company in the grant proposal. A University employee must be the principal investigator for the University subcontract. Review the rules carefully. There are program limits on the percentage of work that can be subcontracted to the University. Plan ahead: Proposal submission, grant administration, and COI management are complex and may require secondary oversight or data review. Some activities may be prohibited.

STTR: A full-time University employee may be the overall principal investigator (scientific PI) in the grant proposal if permitted by the funding agency (prohibited by some agencies). This University person may not be the signing official for the company with the funding agency. Plan ahead: Proposal submission, grant administration, and COI management are complex and may require secondary oversight or data review. Some activities may be prohibited.

For more information, refer to the easy guide for University employees.

Companies seeking access to University research service programs can obtain services from all core facilities that offer their services to external users (not all University support programs offer services to external users). Companies should expect to pay the full commercial rate; no discounts are offered to licensees of University intellectual property.

Maybe. University employees are permitted to consult with prior approval as an external professional activity for pay (EPAP). Consulting is generally limited to providing technical advice on company activities or business support (fundraising, advisory board, etc.). Technical advice is provided from your general knowledge of your field and does not include sharing unpublished research information from your University laboratory. A University employee planning and carrying out research at the company will not be approved as an external activity. Companies seeking this type of support should sponsor research at the University within your laboratory.

Once IP has been licensed, a potential revenue stream is created. That revenue can be influenced, positively or negatively, by the results of continuing research with or on related technology. When University employees stand to benefit from a technology’s commercial success and are also involved in University research on the technology, a COI exists. Most COI can be managed by a combination of disclosure, oversight and attention to the key principles of transparency, separation and independence.

In order to ensure that ongoing research is not disrupted, the University inventors must have their activities reviewed for COI before the license is signed and, in some cases, adhere to a management plan developed by the COI review committee. Some research sponsors require that the management plan be reported to the sponsor.

Special attention and stricter rules will be applied during the review process to areas such as human studies/patient care and student supervision/education. For human studies which are clinical trials, there is a nationally accepted standard that the conflict cannot occur. University employees with equity in the licensing company should begin the COI review process early. COI management when equity is received requires careful planning. The COI Program will meet with faculty to discuss the implications of the potential licensing. Review can be initiated online.

Note:

• COI review of University activities is required for licensed IP, regardless of whether you are engaged in external activities with the company.
• EPAP approval for external consulting activities is required regardless of whether there is a license to University IP.

No. COI management plans are only for the purpose of managing University activities. COI management plans do not affect company activities, although they can affect how you engage with the company. If your company has questions about the status of COI review, please have them contact the commercialization manager negotiating the license. Commercialization managers do attend COI meetings and can provide status updates in the event of delay.

University research is always evolving, and it is federal regulation that COI must be reviewed per project on an annual basis. Once a license is completed, new research projects and activities must be reviewed prior to initiation, and all management plans are reviewed on an annual basis. Not all activities are conflicted, but once the license is completed, all new and ongoing University activities are reviewed if they are using the licensed intellectual property.

If you would like to serve as a consultant to a company as an activity outside of the University, you must have the activity approved by the University prior to engagement with the company. Consulting is limited to providing technical advice on company activities or business support (fundraising, advisory board). Technical advice is provided from your general knowledge of your field and does not include sharing unpublished research information from your University laboratory. A University employee planning and carrying out research at the company will not be approved as an external activity. Companies seeking this type of support should sponsor research at the University within your laboratory. Ongoing EPAP activities must be approved annually. University employees are not permitted to use University resources as part of their EPAP activity, including but not limited to use of the IRB, assignment of student work or use of proprietary software licensed to the University. You may use your computer and phone, but remember that all University email is subject to the Open Records Law of the State of North Carolina.

Note:

• EPAP approval for external consulting activities is required, regardless of whether there is a license to University IP. Activities for companies in which you hold equity require approval as an EPAP, even if you are not otherwise paid for the activity.
• COI review of University activities is required for licensed intellectual property (IP), regardless of whether you are engaged in external activities with the company.

EPAP is approved per activity (one-time engagements) or the University’s fiscal year annually for ongoing external activities. University research is always evolving. You may take on responsibilities within the University that prevent renewal of an external activity that was approved in a prior year, or the activity itself may change from year to year.

University employees can sign consulting contracts in their individual capacity once an EPAP activity is approved. You should be careful not to use your University address or email as part of the contract.

Since you are an employee of the University, you must fulfill obligations to the University and are subject to the University policies. Therefore, in order to protect your role at the University, you should insist that the following language, or language substantially similar to the following, be included in all private consulting contracts before you sign them:

“This Agreement is made subject to the understanding by Company that Consultant is a member of the faculty of University of North Carolina at Chapel Hill (“UNC”), that Consultant must fulfill certain obligations including teaching, conducting research, and directing a research laboratory, and that, as a result of Consultant’s employment, UNC has certain rights to intellectual property developed by Consultant, including the right to receive a disclosure of any inventions of the Consultant. Any rights to intellectual property which may be conveyed by this Consulting Agreement shall be subject to the rights of UNC as set forth in its Patent and Copyright Policies and Patent Procedures. In the event of any inconsistency between this Agreement and the policy and procedures of UNC, the policy and procedures of UNC shall control.”

Do not sign any IP assignment documents unless they have been reviewed and approved by the Office of Technology Commercialization (OTC). IP is reviewed on a case-by-case basis, and it is necessary to have OTC approval prior to a University employee making any IP assignment to the company.

Section V of the University Patent and Invention Policy provides guidance regarding inventions which may be inventor owned. Such inventions must first be disclosed to the University for review in light of the policy requirements. Employees should not assume that a consulting activity is outside the scope of their University employment and should ensure that the consulting contract scope of work matches the scope of work provided in the approved EPAP. The policy does not allow for prospective or blanket assignment of a University employee’s inventions before they are developed. The University will provide an acknowledgement letter that an invention is not University owned upon completion of the review, so long as the Patent and Invention Policy requirements have been met.

The University will not provide a letter to the company releasing inventions in advance of the consulting. IP is reviewed on a case-by-case basis, and it is necessary to have Office of Technology Commercialization (OTC) approval prior to a University employee making any IP assignment to the company. Section V of the University Patent and Invention Policy provides guidance regarding inventions which may be inventor owned. In certain cases, in order for an invention created by a University employee in the course of consulting to be employee owned, he/she must have obtained prior approval from his/her department chair, school dean or similar administrative officer to engage in such consulting activity, and notice must have been provided to OTC. In all cases, inventions must be disclosed to the University for review to determine if the policy requirements for inventor-owned inventions have been met. Employees should not assume that a consulting activity is outside the scope of their University employment. Employees should ensure that the consulting contract’s scope of work matches the scope of work provided in the approved EPAP. The policy does not allow for prospective or blanket assignment of a University employee’s inventions before they are developed. The University will provide an acknowledgement letter that an invention is not University owned upon completion of the review, so long as the Patent and Invention Policy requirements have been met.

COI self-submission instructions

If you or a family member have received equity in a company carrying out activities that may be related to your research, and/or UNC-Chapel Hill is licensing intellectual property on which you are an inventor to a company, please submit a self-initiated conflict of interest (COI) disclosure for this event detailing the relationships.

The disclosure is submitted online with the following steps:

1. Name the company as the Sponsor
2. Enter “equity received from <<COMPANY>>” OR “OTC license to <<COMPANY>>” as the Title
3. Your role should be entered as “PI”
4. Include a list of any currently funded research that may be related to the company or IP in the additional information box at the end of the disclosure.
5. Please also include a list of technologies being licensed if applicable.

Please be aware that the disclosure must be submitted even if you and your family have no relationship with the company outside of a license being negotiated. If you plan to also consult for the company or serve as a company officer, that activity must be pre-approved as an external professional activity for pay (EPAP) (note that holding equity is/will be considered compensation/pay for company engagement, even if you are not paid a salary).