It is important to appreciate from the outset that one party’s background IP may be so fundamental to the project that the other collaborator may require a license to commercialise the product/service after the R&D project has been completed. Remuneration may be appropriate at that stage, e.g. through royalty or milestone payments.
Effective collaboration cannot exist without open communication, so being secretive or treating collaborators with suspicion would clearly be counterproductive. To safeguard both sides, consider adequate protection for any important background IP before it is disclosed to the other party…It is also a good idea to establish clear guidelines as to what information may be published, and when. On a practical level, this may mean that sufficient notice must be given to the other party before a publication is made, and each party may have the right to veto the inclusion of certain information in a publication. Of course, any public disclosures relating to a new invention or design must be delayed until after any desired patent or design application has been filed.
The collaboration agreement should set out who is responsible for making decisions about whether protection for IP generated as part of the collaboration (“foreground IP”) should be sought, when to do so, and in which jurisdictions. Also agree on who will make decisions during the examination of any patent applications that are filed, who will determine how to enforce the IP rights, and who will bear the costs.
Successful R&D collaborations will generate new “foreground” IP, so it is important to think ahead about who will own any such IP.IP ownership rules vary from country to country. Inventors typically have the initial ownership of their invention, but national laws and/or employment agreements may well deter- mine that ownership rests with another party, usually the inventors’ employer. Particularly in the case of universities, the source of any funding for the relevant research may also affect ownership.
The issue of ownership of foreground IP can be a stumbling block in collaboration negotiations. Joint ownership is a possibility, but this can have significant drawbacks, as explained in Box 1, so it is advisable to come to an alternative arrangement. Although ownership of IP can be advantageous, ensuring that both parties receive the broader benefits provided by the collaboration should be the overriding objective during negotiations.
The most common scenario following industry-academia R&D collaborations is for the university to own the resulting IP and to grant the industry partner a nonexclusive licence to use the IP in a specified technical field and/or geographical area. The collaboration agreement could, alternatively, grant the industry partner the right to negotiate for an exclusive licence to the IP, or to buy the IP outright from the university. The agreement may specify that the university has the right to use the IP and the technology for academic research and teaching. It is important to develop a broad framework agreement and be flexible within it, so that each set of results does not cause fractious renegotiation. The framework agreement can set out where non-exclusivity and exclusivity will exist, and when IP will be owned by the university or the industry partner. The UK Intellectual Property Office has recently launched the “Lambert 2” tool-kit for industry-academia IP negotiations. It includes 11 model agreements relating to a variety of commercial situations, as well as helpful guidance notes. They are easy to modify so that the wording can be tailored to your needs.