Breakthrough Spring 2017 | Page 34

SUPPORT
As sensible as it may sound during negotiations , co-ownership of IP rights should be avoided
Why is patent protection desirable ?
A well-drafted patent can be used :
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To prevent competitors from commercialising your technology
To help sell the technology or generate income through licence fees or royalty payments
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To give potential investors more confidence in your business
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To claim tax relief through the Patent Box
Collaboration agreements should cover IP ownership , payments and royalties , confidentiality , liability for IP costs , fees for access to academic infrastructures and exit plans .
In recent years , UK universities have actively tried to ease the concerns of industry by developing common approaches to licensing agreements . The University and Business Collaborations Agreement Toolkit ( or Lambert Toolkit ) is a set of standard licensing agreements and guidance notes specifically designed for university-industry research collaborations . The updated Toolkit is freely available from : bit . ly / lambertkit
Key COLLABORATION DISCUSSION Points :
Put a broad framework agreement in place and be flexible within it . A successful project will probably yield findings at multiple stages . By keeping your framework agreement broad , you will avoid having to re-negotiate terms at every stage .
Be clear about your own ' Background IP '. Although new IP will be developed during the collaboration , your company will have pre-existing know-how , trade secrets , inventions , designs and / or trade marks . The university may need to use this IP as part of the collaboration , so you will need to define it in the agreement and set out when and under what terms the university can use it .
You may wish to protect your Background IP , e . g . through patents , before entering into collaboration negotiations . An initial IP filing can be done quickly , so seeking protection need not delay collaborations .
Establish clear guidelines regarding what information can be published and when . Academics are under a constant pressure to publish , but university IP managers are aware of the detrimental effect premature publications can have on a business , particularly in terms of obtaining patent protection . Share information but keep track of what is being disclosed publicly . A patent attorney can check planned publications to ensure they would not adversely affect the desired patent protection . mutually beneficial IP Discuss IP ownership and responsibilities sooner rather than later . This will avoid disputes if commercially promising results are achieved . Ownership of research-derived IP is not the only , or necessarily most appropriate , way of reaping benefits from the IP .
Therefore , a mutually beneficial arrangement on IP ownership can usually be reached between collaborators if the matter is discussed proactively before research begins .
For instance , the collaboration agreement might set out that the company pays the university to conduct some research . The IP generated is owned by the company , who has the right to file for patent protection and the responsibility for costs associated with obtaining patent protection . The company may agree to grant the university a license to use a defined part of the IP generated in teaching and future non-commercial research . In some scenarios , the parties may agree that if certain commercial milestones are reached , then the company will make an
34 | UKSPA breakthrough | SPRING 2017