University of Wisconsin-Madison (UW) investigators may receive consulting agreements from outside entities to perform activities that fall outside the scope of their duties as a UW investigator. Consulting agreements may sometimes include terms that can reach into UW research and conflict with university policies, often relating to requirements related to confidentiality, and rights to intellectual property.
Since this activity is independent of the university (although it must be reported on the Outside Activities Report to the university annually or within 30 days) the agreements are therefore not signed or formally reviewed by the UW School of Medicine and Public Health or UW’s Research and Sponsored Programs office (RSP). UW/UW Medical Foundation providers are required to submit consulting agreements to the Industrial Interactions Review Committee (IIRC) for advance approval. Questions may be directed to Diane Reed (email@example.com).
These agreements should not be entered onto WISPER. Therefore, it is strongly suggested that you review the terms of the agreement (with a particular emphasis on the language concerning confidentiality and intellectual property) and consider retaining a private attorney to review the agreement to protect the investigator’s personal interests.
Alternatively, the investigator may submit a request to the UW Law and Entrepreneurship Clinic for review and advice on contractual matters.
The most common issues that the investigator should be aware of are the following:
Definition of intellectual property covered by the agreement
Consulting agreements often contain language that requires assignment of intellectual property to the company. It should be clearly stated that such intellectual property is only that which is generated as a direct result of the consulting services. Less precise language could be interpreted as giving the company rights to intellectual property created at the University of Wisconsin School of Medicine and Public Health as a result of the investigator’s university research, which would be unacceptable to the university.
Definition of confidential information covered by the agreement
Companies often expect that information generated by the consultant be kept confidential. As with intellectual property, imprecise definitions of confidential information could lead to ambiguity about the status of information the investigator generates while doing university research. Confidential information as defined in a consulting agreement should be clearly limited to that which arises as a result of the consulting activity.
A clear distinction is made between consulting and university-related activities. Any activity that relates to research being conducted currently at the UW School of Medicine and Public Health by the investigator, or is in preparation for research to be conducted at the university by the investigator, is not consulting, and the investigator should not enter into a private agreement to receive compensation for doing this work.