IP rights established through contracts

When setting up collaborations with external partners you should have the following points at the forefront of your mind.

COMMUNICATE AND COLLABORATE WITH YOUR LEGAL TEAM

When looking to engage on projects with external parties, you should take the time to read certain sections of the legal agreements being negotiated by your colleagues in the Legal Office. You should collaborate with those experts to ensure the deal reflected in the document aligns with your constraints and expectations – before you get committed to starting the work!

PROTECT YOUR BACKGROUND

One section that requires excellent attention is the part of the agreement usually referred to as Background. Normally this section will:

a) describe under which terms and conditions the parties involved in a project will give each other access to their existing IP for delivery of the joint work;

b) explain how ownership, access to-, and use of existing IP (or any improvements to it) will be managed by the parties after completion of the project.

THINK ABOUT YOUR VISION FOR RESULTS

A second section equally important is the one entitled Results, Resulting IP, Arising IP or Foreground IP – and any other variations of those terms which could refer to IP being created in a project!

You should read that section of the agreement and ensure you understand how ownership, access to, use of and exploitation of IP being created will be managed.

The terms and conditions for these vary hugely depending on the type of project - and even between different agreements for the same type of project. That is because they must reflect the nature of the objectives for joint projects.

Because outputs generated in one project can be useful for scientists beyond that specific activity, you should allow a good amount of time to explain to your collaborators and internal legal experts what you hope to achieve from the project – before agreeing to work together.

WILL YOU WANT TO PUBLISH?

Finally, as academics, you should also read and understand the sections on Confidentiality and Publications / Public Disclosures since they will influence your ability to talk about the project, the work being undertaken and the results being generated individually or collectively.

A good agreement for collaborative R&D projects will enable scientists to make disclosures by following a process through which they can obtain authorisation for publications. This process enables all partners to spot any IP which might need to be protected to enable commercial exploitation – before disclosure happens. Again, seek advice from your legal experts!

DON’T LET THE LEGAL LANGUAGE DAUNT YOU

In addition to reading the sections above, you should also look at the definitions for those terms. These can usually be found in the beginning or back of agreements but are sometimes embedded in the document.

The language can be daunting at first, but your internal legal experts will be keen to help you understand it! Don’t shy away from it; learning this will help you improve your commercial awareness and should be helpful in your scientific and impact activities.

THINK BROADLY ABOUT IP, IN BACKGROUND AND RESULTS, AS WIDELY AS POSSIBLE

You should think about existing IP (or that to be created in the projects) as widely as possible when communicating and collaborating with your internal legal experts to ensure the agreements being negotiated are fit for purpose.

IP can be very widely defined to include any methods, techniques, tools, materials, know-how, data sets, models, software and many other types of ‘creations of the mind’.