Universities have a huge amount to offer businesses in collaborative research and development projects, but who owns the technology?
Simon Cooper, managing director and patent attorney, suggests some key pointers for businesses to help avoid IP ownership issues further down the line.
It is important to recognise that technology can be owned, but this doesn’t happen automatically. Intellectual Property (IP) is a collective term for intangible assets, including inventions, know-how, designs and trade marks, which may be protected and therefore owned through IP Rights, such as patents. The most important IP Rights for technology arising from a research and development project are usually patents, which protect inventions and must be applied for, and know-how, which is technical information that can be kept confidential.
1. Identify your background IP
If you are a business or other organisation looking to work with a university on a research and development project, an important first step is to understand the IP that you, as a business, are bringing to the project. This is called background IP. For inventions, this means identifying what is patentable and ensuring that patent applications are filed before agreeing to commence a research and development project with a university. For know-how, this means identifying the confidential information that you possess that is critical to the research project, and which you will therefore need to disclose to the university, but which you wish to remain confidential and continue be owned by you.
2. Draw up a licence agreement with the university
An agreement to allow others to use your IP, whilst you retain ownership, is called a licence. Licences may not require any payment, and this is common where you are receiving other benefits from allowing others to use the technology. Alternatively, licences may require payment, which may include lump-sum payments and ongoing royalty payments, as appropriate. For research and development projects with universities, you will almost certainly have a wider agreement, which will include one or more licences.
The agreement with the university will identify your background IP, which you own, and set out the terms under which the university may use it. For example, the agreement may allow the university to use your technology free of charge during the research project. Following completion of the research project, the university may want or need to continue using your technology and hence royalty payments may be agreed.
Ensuring your existing technology is protected and identified in the agreement with the university will give you the confidence to have open communication with the university, without fear that you will lose control or ownership of your existing technology. The university will also undertake a similar exercise, which will ensure that this open communication works both ways, and existing technology for all parties is adequately protected.
3. Agree in advance who will own any technology developed during the project
There will also undoubtedly be an expectation that the research and development project will generate new technology and new IP. This is called foreground IP. Before a project starts, a critical issue to agree is who will own this technology and IP, and who will be able to use it following the end of the project and the terms of that use, for example whether royalty payments will be required. A common scenario in collaborations between universities and businesses is that IP generated by a university is owned by the university, and a licence is provided to the business to use the IP in their technical field. However, many other arrangements are possible, including the resultant IP being owned by the business, which is common if the university is providing a service in return for payment, for example.
4. Obtain IP protection where appropriate
Following agreement at the commencement of the project regarding who will own the technology and IP, it is in both parties’ interests to then ensure that protectable technology and IP is identified during the project and, if appropriate, patent applications are filed. The identification of protectable technology will involve patent searches, which will enable the assessment of whether the technology that has been developed is new and sufficiently inventive to be protectable by a patent and whether a patent application should be filed.
Talk to a patent attorney at the earliest opportunity if you are considering working collaboratively with a university to ensure that you both gain maximum value from your collaboration. Call us on +44 (0)115 9477977 or email email@example.com.