Now that you have an idea to develop, or have identified a scientific question to answer, you will start building your scientific project and, if needed, find partners that can complement your expertise in order to reach the intended R&D results.
Collaborative research has, indeed, become increasingly frequent, following the trend of open innovation.
Closed Innovation Vs Open innovation
Figure 1: Closed innovation model versus the open innovation model (“Open Innovation: The New Imperative for Creating and Profiting from Technology” (2003))
Traditionally, new business development processes and the marketing of new products took place within institution boundaries (Figure 1) – what is now called closed innovation. The companies/R&D institutions were convinced that they were the only ones in their field performing well.
However, several factors have led to the erosion of closed innovation (Chesbrough, 2003):
1- the mobility and availability of highly educated people has increased over the years. As a result, large amounts of knowledge exist in other research laboratories.
2- when researchers change jobs, they take their knowledge with them, resulting in knowledge flows between institutions.
3- the availability of venture capital has increased significantly, which makes it possible for good and promising ideas and technologies to be further developed in dedicated entrepreneurial companies, to which the technology can be licensed.
4- other companies in the industry supply chain, for instance suppliers, play an increasingly important role in the innovation process.
As a result, companies, but also R&D institutions, have started to look for other ways to increase the efficiency and effectiveness of their innovation processes. For example, through active search for new technologies and ideas outside of their companies; through cooperation with Universities, suppliers, and competitors, to create customer value.
This trend generates an opportunity for Universities and other R&D institutions to work together with companies and to bridge the gap of funding that exists during the development of a product or service coming from discoveries and technologies developed at Academia. This funding gap, often called the Valley of Death, occurs for Universities in the later stages of applied research and product development and for companies, where the largest lump of funds is demanded for production and selling of the products (Figure 2).
Figure 2: Valley of Death: the gap of funding for Universities and Companies during product development (adapted from http://buildtestsolutions.com/).
Knowledge transfer is the process that applies between Universities and Industry in order to decrease this gap, sharing knowledge, technologies and IP Rights, to maximize the number of research results that effectively reach the market, as products and services valuable for society.
In practice, knowledge transfer or technology transfer is achieved through contracts. These Technology transfer agreements are useful to manage and define the conditions of exchange and trades involving knowledge assets between two or more parties. Citing the European IP Helpdesk, through these contracts “the parties agree on the terms governing a particular situation and commit themselves to perform or not to perform certain obligations”.
A contract is only valid if signed by the legal representative appointed at your institution and is legally binding, meaning, the parties have a legal right to enforce it (demand that the obligations under the contract are fulfilled by the party concerned).
At IRIS we support you with all contracts deemed necessary by the best practices of technology transfer, at all steps of the Innovation cycle. We are supported by the legal advisors of NOVA.ID.FCT, so that commercial terms are framed with the most appropriate legal terms. Contact the Department of IP & TT to know which is the most suitable contract for your situation and to negotiate such contract with your partners.
IMPORTANT DISCLAIMER: There is no one-size-fits-all strategy to prepare and negotiate knowledge and technology transfer agreements. The agreement information can vary depending on the fields of the technology/ knowledge that constitutes the object of the agreement; the internal policies and strategy of the organization and goals of the researchers involved in the development; the goals and strategy of the other party involved in the agreement; the negotiation process among parties, etc. Contact IRIS to ask for support and advice.
At the R&D stage of the Innovation cycle of your Idea there are important issues you should consider while managing your Intellectual Property with your research team and partners, minimizing risk and maximizing impact:
What is Confidential information and how to exchange confidential information without losing confidentiality?
Confidential information refers to information that must be kept secret. While any information can be confidential, not all the information generated within a R&D institution or company must be kept secret. What is confidential is then judged by said R&D institution or company on the circumstances of each individual case, based on the necessity of it not being disclosed.
Confidential information may refer to personal information (e.g. journals, pictures), professional information (e.g. information supplied in the course of professional duties) and information in the context of business, commerce, or trade (i.e. trade secrets or Results that have not yet been disclosed to the public and that may be valuable IP assets).
How do we keep information Confidential?
Obligation of confidence arises when an agreement has been reached between parties to maintain the information confidential. This can be done by the signature of a Non-Disclosure Agreement (NDA) or the insertion of confidentiality clauses within a contract.
NDAs are legal binding contracts under which conditions for information disclosure and penalties for undue disclosures are defined. These contracts can be in the form of one or two way, depending if just one intervenient/part is sharing information or both parties are exchanging confidential information, respectively. Multilateral NDAs involve several parties disclosing and receiving information, which is common to exist for example, when you are preparing a proposal for funding within a consortium.
When should Information be kept Confidential?
When there is interest in exchanging knowledge about a technology or knowledge developed (e.g. when looking for partners, investors, etc.) without putting information at risk and penalising those who invested in its development, it is common to use NDAs.
NDAs should be used when:
● you are starting to build a proposal for funding, and you are going to exchange unprotected information or your project idea with your partners;
● Before you file a patent application and you need to disclose information about your invention with third parties;
● you engage in conversations with partners towards the co-development of novel knowledge and technology (including software) which IP protection strategy is not yet defined or you know that the best way to increase value is by maintaining a trade secret
● there is the need to provide more detailed information that is not included in the public IP rights documentation or on a scientific article.
● Students are involved in a scientific project bound by confidentiality. Students are not employees of the research institution and hence not legally bound to the contract obligations that contracted employees have with its employer. KT transfer best practices recommend that NDAs are established between the student and the institution, represented by its legal representative and by the Principal Investigator of the research group.
Do’s and Don’ts to safeguard confidentiality of your work
Lab Books & Internal Protocols – keep access to these documents restricted to the researchers that “need to know” and that are bound by confidentiality. Lab Books for companies, for example, are property of the company, and many times used in court during patent enforcement disputes, to prove who and when an IP asset was developed. It is recommended that these documents do not leave the premises of your R&D Institution.
Master & PhD Thesis – keep it confidential until you know that the Results produced can be of value and protected by IP Rights. Remember that a dissertation may be kept confidential, for a maximum period of 3 years but that its defense is a public disclosure. Hence, protect before disclosing! When performed in collaboration with other institutions make sure that the Collaboration Contracts includes confidentiality terms.
Do not publish any articles, press releases, conference presentations/ posters/ proceedings, lectures or blog posts, Facebook or Linkedin posts, etc. before you file an IP rights application (e.g patent).
Do not show or sell any products incorporating your Results before you establish an NDA or file and IP Rights application, respectively.
Establish an NDA. Even if the information you wish to share is public, during conversations, ideas may be developed together. Under a confidentiality agreement, such ideas cannot be used by your partner with third parties without breaching such agreement.
Often, the beginning of a collaboration starts with an informal contact between you and a person that works for another institution. Such informal contact may lead to the proposal to perform preliminary tests with certain proprietary materials, independent if said materials are protected or not by IP Rights, produced by your research group or by your partner.
Although these informal contacts result in very interesting scientific collaborations, the informality of the first contact should not guide the rest of the collaboration. The transfer of materials between institutions must also be regulated by a formal agreement between the parties.
What type of materials should be regulated?
The word materials encompass in truth several types of Results that you can obtain. Materials can be data produced during your research, materials such as biological and chemical samples, prototypes, and software.
How do we regulate the transfer of Materials?
Materials are considered IP assets of your Institution since they were developed in the frame of your work contract. Hence, the transfer or reception of such Materials should also be regulated by specific contracts, named Material Transfer Agreements (MTAs) or material transfer clauses included in the Collaboration Agreement.
MTAs regulate the conditions under which specific materials, such as tangible research property, are transferred from the owner or authorized licensee to a recipient. These contracts can be in the form of one or two way, depending if just one intervenient/part is transferring material to another institution that will do the research or if both are sharing materials and/or research activities using said materials, respectively.
When to use MTAs?
● to carry out research with the material in the context of a R&D partnership;
● to evaluate the material performance in the recipient facilities;
● to evaluate whether to enter into a longer term partnership such as a licence agreement.
Why should we regulate the transfer of materials?
The owner of the Materials has the right to know and agree upon the conditions of use of said Materials it is transferring to another entity. Likewise, the recipient of the Materials should be informed and comply with any restrictions that the Material’s owner may impose, regarding scope of research activities, IP Rights ownership, Results ownership, and Publication rules.
When you start a collaboration, it is important that all parties are aware and agree upon the use of existing know-how, IP or IP Rights that each Party will bring to the project. This is called Background IP.
Background IP as defined in the European Projects Consortium Agreements:
“Background” means any data, know-how or information — whatever its form or nature (tangible or intangible), including any rights such as intellectual property rights — that:
a) is held by the Parties before they acceded to the Agreement, and
b) is needed to implement the action or exploit the results.
Likewise, it is important that at the beginning of the collaboration the partners define who will own the Results, who will take care of the filing and management of eventual IP Rights and who will commercialize the Results of the Project. Results are commonly referred to as Foreground IP in some contracts.
Foreground IP (Results) as defined in the European Projects Consortium Agreements:
“Results” means the tangible and intangible results which are generated under the project, including pieces of information, materials and knowledge and whether or not they can be protected by Intellectual Property Rights.
Additionally to the identification of Background and Foreground IP and definition of terms of ownership, it is also important to define the Access Rights that each IP owner grants to the Partners of the Consortium during the implementation of the Project and after the end of the Project.
Access Rights as defined in the European Projects Consortium Agreements:
“Access rights” means rights to use results or background under the terms and conditions laid down in this Agreement.
Access Rights mean licenses and user rights to another participant’s results or background, that can be restricted to a given scope of use, royalty-free or subjected to fair and reasonable compensation. They allow beneficiaries to benefit from each other’s resources, and consequently taking full advantage of the collaboration.
Access rights to another partner’s results and/or background are only to be granted if the requesting partner needs such access in order to carry out its part of the project or to exploit its own results. Moreover, it is to be noticed that, in order for the beneficiaries to exercise their access rights, this must be requested in writing.
Figure 3 – IP Background and Foreground clauses in Collaboration Agreements
At the beginning of the R&D stage it is important for partners to agree in the terms and obligations regarding IP ownership and Access Rights. If the collaboration takes place within a public funded program, these contracts are usually called Consortium Agreements. If you are collaborating with a company or another R&D institution, either in a collaborative research project (sponsored or not) or by contract research (Services) or consultancy, the IP clauses are usually part of the larger Collaboration Agreement (Figure 3).
Why should we regulate IP at the beginning of R&D stage?
● When the project is preliminary, partners often do not know if the Results will be positive, and if they can be protected or not by IP Rights, in order to maximize their commercial value and potential of transfer to market. Hence, many researchers are reluctant to negotiate these clauses at the beginning and ask to simplify, since this negotiation can at times be the most challenging. However, more often than you could imagine, Companies request this definition at an early stage because it gives companies confidence, objectivity and reliability. Also, more often than not, valuable results are obtained from these partnerships, and as soon as money is involved, a good partnership may transform itself in a very hard endeavour. When deciding on these matters since the beginning, partners are aware and informed of each other’s expectations regarding IP, as well as of institutional rules, and the risk of an unsuccessful partnership is minimized.
● Including IP ownership clauses in a collaboration or consortium agreement is highly related with the IP exploitation Plan that you have developed with your Partners. Example: your Exploitation Plan may state that a company within your consortium will commercialize Results that were produced by other project partners. For that, the company will need a license agreement to have the right to use and commercialize results and be obliged to give fair and reasonable compensation to the IP Rights’ owners.
● When IP Rights have already been applied for or are in force and are used during the implementation of the project by an institution, the ownership, and limitations of use during and after the project of such IP Rights must be regulated. These IP Rights will be considered Background IP and, in many projects, its application and maintenance fees are considered eligible expenses by the Funding Agency.
Rule of Thumb for IP Ownership Clauses:
● The IP ownership rights on Results obtained in your research belong to your Employer. Hence, you cannot waive your Institution’s IP ownership rights on Results obtained during your research. It is up to the legal representative of your Institution, advised by the appropriate services, to decide whether to own and exploit the IP generated in the project. Communicate your valuable Results to your Institution as soon as you confirm them.
● Results are owned by the partner(s) that generate them, that should agree in a bilateral agreement the terms and conditions for filling, maintaining, defending and exploiting such Results, complementing the general rules already defined in the Consortium/Collaboration agreement.
● Access Rights to Background and Results are granted to a partner in case they are Needed for the requesting partner to perform its activities in the project or to exploit its own Results.
● Access Rights to Background and Results are provided royalty-free during the implementation of the project.
● Access Rights to Background and Results are granted under fair and reasonable conditions, negotiated under a Licensing Agreement, and the requesting partner should abstain from commercializing results before such agreement is in place.