SOW Reviews

SOW reviews should encompass these potential areas:

  1. Appropriate phrasing that complements cost-reimbursement contract type, such as:
    1. Scope of Work
    2. the goal or aim of the research is…
    3. UT’s PI will endeavor to perform surveys and perform the analysis in the below areas, time and budget permitting…
    4. The research objectives for the project are…
    5. Use of the words “may” versus “will” or “shall”
  2. Appropriate phrasing that complements fixed price contract type, such as:
    1. Statement of Work and deliverables
    2. UT will complete the outlined steps below…
    3. The results of the research shall demonstrate whether or not “X” technology can be further maximized or adapted for use with…
    4. A precise description of items to be delivered
  3. SOWs which indicate need for changes, further reviews/approvals or information may be based inclusion of these types of things:
    1. Foreign travel and/or work on foreign soil will be performed (export and tax implications)
    2. “Governance” or “partnership” implications
    3. Subcontractors or consultants, without letters of commitment/proposals
    4. Warranties
    5. Permitting Sponsor’s acceptance or approval of publications or deliverables
    6. Language indicating that the results will be owned by Sponsor and kept as confidential
    7. IP promises or statements, including that technology shall be developed and transferred to Sponsor upon conclusion of the work and/or that certain IP, including background IP or software, will be utilized or incorporated into the work.
    8. Exchange of visiting scientists
    9. Material transfers
    10. Purchase or loan of equipment
    11. Contract terms of any kind
    12. Obvious errors and/or conflicts with rest of proposal
    13. Unclear language
    14. Cost-sharing
    15. Any language indicating encrypted technology (software and devices), obvious military or dual use technologies, anything intended for use in space, space launch, ground control of space craft or satellites, nuclear reactor technology and materials, advanced composite materials, sonar, radar, lidar, laser, GPS, advanced computers/technology/software, thermal imaging cameras, advanced electronics/components/technology, select agents
    16. Scopes of work involving research with animals, or human participants
    17. Scopes of working involving protected individual information (HIPPA, FERPA,etc.)
  4. SOW’s should be worded in such a way that they do not admit or predict the successful “obvious” outcome of experiments based on prior art references, particularly if the PI believes that patentable IP could emerge from the work and/or background IP is involved. This can come back to haunt the PI/University on patent applications. Negative buzzwords such as “suggestion”, “obvious”, “motivation” and “predictable” should be reviewed for this purpose and removed if it would damage the cornerstone of future patents. However, at UT, if the PI does not wish to protect any future IP position, patent or commercialize the technology that could emerge, don’t worry about this aspect, as the PI can simply publish as they wish. Ultimately, except for terms and conditions being contained in the SOW, the PI makes the final call on the SOW content. For more information see 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103.
  5. 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter
    1. A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.