Frank HelminskiLegal Counsel

Siemens HealthcareMalvern, Pennsylvania

The views expressed here are my own

and not necessarily those of Siemens.

Ten Things I’d Like our Tech Transfer Colleagues to Know when Negotiating a

Master Research Agreement with Siemens

Ten Things to Know

• 1. If we aren’t going to get NERF rights, then there’s no point in talking.

Ten Things to Know

• 2. Let’s both be up-to-date on Compliance issues.

Ten Things to Know

• 3. Please don’t ask us to make general commitments for future research funding unconnected with specific project agreements.

Ten Things to Know

• 4. The point of having an MRA is to prevent having to renegotiate everything in each project agreement, so let’s put in as much as we can.

Ten Things to Know

• 5. If we will need to have separate agreements with your University and your Medical Center, then please let us know up front.

Ten Things to Know

• 6. Don’t use Bayh-Dole as an excuse to limit our IP rights.

Ten Things to Know

• 7. Our business is commercialization, so if we don’t get background IP rights, we’re not in good shape.

Ten Things to Know

• 8. Please remember that we’re a multi-national corporation and take our directions from HQ in Germany. That sometimes makes negotiations slow, and deal points rigid.

Ten Things to Know

• 9. It’s OK if you can’t or won’t indemnify us, but then don’t ask us to indemnify you.

Ten Things to Know

• 10. Bringing researchers into the nitty-gritty of contract negotiations isn’t . . . always . . . helpful.