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Connecting with Companies: A Guide to Consulting Agreements for Biomedical Scientists

Subject Area(s):  BiotechnologyGeneral Interest TitlesCareer DevelopmentHandbooksLaboratory Techniques

By Edward Klees, J.D.General Counsel at the University of Virginia Investment Management Company; H. Robert Horvitz, Ph.D.2002 Nobel Laureate in Physiology or Medicine; Professor of Biology, MIT; Member, McGovern Institute for Brain Research, MIT; Member, Koch Institute for Integrative Cancer Research, MIT; Investigator, Howard Hughes Medical Institute

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© 2014 • 156 pp., glossary, index

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ISBN  978-1-621821-07-6

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  •     Description    
  •     Contents    
  •     Reviews    


An essential guide for academic scientists and physicians who are considering consulting work in biomedicine

Before signing a consulting agreement, this must-have reference will help you understand the key issues to consider—from intellectual property, confidentiality, and compensation, to often overlooked issues such as indemnity, different classes of stock, and the relevance of insider trading and securities laws. 

Read Connecting with Companies and you will:

  • Gain invaluable, first-hand advice from the authors: a leading attorney and a Nobel Laureate in Physiology or Medicine, both with extensive experience reviewing and negotiating consulting agreements
  • Receive guidance for academics, lawyers, accountants, auditors, venture capitalists, and technology transfer departments of universities, hospitals, and research organizations
  • Understand crucial start-up issues such as 83b tax election and participating preferred stock
  • For more information visit

    Connecting with Companies is an invaluable resource for students, staff, and faculty. To assist you with ordering multiple copies for your institution, we’ve set up the following discount options:


1. Introduction
2. Issues to Consider when Negotiating a Consulting Agreement
A. Define What You Want in the Contract
B. The Contract Is a Legal Agreement-Make Sure It Is Right
1. Read the Contract
2. The Words Mean What They Say
3. If Something Is Unclear, It Might Be Wrong-or Wrongly Interpreted Later
4. Legalisms
5. If It Is Not in the Contract, You Might Not Get It
C. Do Not Assume You Have to Sign a Contract as Is
D. Protect All Intellectual Property
E. Review University Policies
1. Time Commitment
2. Disclosure of Laboratory Results
3. Use of University Resources
4. Involvement of Postdoctoral Researchers and Students
5. Conduct of Research
6. “Significant Financial Interest”
7. Employment by Company
8. Multiple Relationships with Company
9. Use of Name or University Letterhead
10. Consulting during a Sabbatical
3. What Constitutes Consulting?
A. Service on an Advisory Board
B. Conduct of Research
C. Meetings with investors
D. Serving as a Company Director or Officer
E. Advising Venture Capital Funds
F. “Expert Network” and Hedge Fund Consulting
G. Expert Witness Services-Litigation
H. Company Seminars, Speeches, Symposia-CDAs
I. A Note about CDAs Linked to Consulting Agreements
J. A Final Word Concerning Chapter 3
4. Scope of Services
5. Cash Compensation
A. Retainer
B. Consulting Fee
C. Travel Time
D. Expenses
E. Taxes on Retainers and Consulting Fees
F. Deferral of Compensation Income through Retirement Savings
6. Shares, Stock Options, and Taxes
A. Shares and Options Generally
B. Vesting
C. Acceleration Events
D. Antidilution Rights
E. Registration Rights
F. Some Thoughts about Taxes
1. Introduction: Caveats 47
2. Overview
3. Tax Risks
4. Ordinary Income (Loss) versus Capital Gain (Loss)
5. Section 83(b) Election for Restricted Stock
6. Gifts and Estate Planning
G. Fair Market Value
H. Royalty Interest
I. Interest in a VC Firm
J. Liquidation Preferences and Participating and Nonparticipating Preferred Stock
K. Conclusion
7. Confidentiality Obligations
A. Confidential Information in Your Possession
B. Company Confidential Information
1. Obligation to Keep Confidential
2. Definition of Confidential Information
3. Exceptions to the Definition of Confidential Information
4. Access to Your Manuscripts
8. IP Rights
A. Ownership Rights
B. “No Infringement” Covenant
C. “Works for Hire” and “Moral Rights”
D. Power of Attorney
E. List of Existing Inventions
9. Noncompetition
10. Time Commitment
11. Term and Termination
12. Multiple Relationships with One Company
13. Start-Up Issues
14. Other Clauses
A. Indemnity
B. Governing Law; Legal Remedies
C. Use of Consultant’s Name
D. Consulting for Affiliated Companies; Assignment
E. Survival
F. Independent Contractors
G. Representations and Warranties-Your Guarantees
15. Use of Consulting Entity
16. Conclusion
Attachment A: Basic Consulting Agreement


review:  “Consulting agreements between academic scientists and corporations not only protect discoveries and intellectual property, but also deal with risks related to securities laws, such as insider trading. Giving advice requires an in depth understanding of these issues and the different cultures of academicians versus corporate lawyers. Edward Klees and Robert Horvitz have applied the same degree of rigor that characterizes the best academic research to understanding the principles and subtleties of these agreements. They provide a clear description of critical issues that are understood by surprisingly few, e.g., liquidation preferences and participation rights of preferred stock. This section alone makes Connecting with Companies worthwhile reading for any academic scientist with an interest in the corporate world.”
      —Ansbert K. Gadicke, Managing Director, MPM Capital

review:  “This is the book I wish had been available when I started my first company. I learned an enormous amount from it.”
      —Roger Tsien, University of California at San Diego, Nobel Laureate in Chemistry, 2008

review:  “I loved this book and all potential consultants in the biomedical field will find it enlightening. I highly recommend it.”
      —Katherine Ku, Director of the Office of Technology Licensing, Stanford University

review:  “In this valuable guide, the authors provide a crisp introduction to key issues in academic-industry interactions, making it a must-read for any academic contemplating entry into a consulting agreement.”
      —Marc Tessier-Lavigne, President, The Rockefeller University