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Collaborative Research Agreements cover a range of standard points. The following remarks suggest possible formulations, and are intended to guide discussion and should not be treated as binding.
1. Definitions, Identification of Parties, Objectives and Partner Selection
An early section in the Agreement defines terms, identifies the objectives of the collaboration and sets out the main considerations used for selecting partners. Definitions include the concepts of Affiliates, Technology, Background and Foreground Intellectual Property, Confidential Information, etc. Ensure that these definitions will be workable.
Generally, companies will wish to extend the benefits of the collaboration to their Affiliates. The definition of these Affiliates should be made clear, and the performance expected of these non-signatories warranted by the relevant signatory.
2. Confidential Information
Universities are not organized to keep trade secrets, so some consideration needs to be given to avoiding the accidental disclosure of information that has actual or potential proprietary value. This might be achieved, for example, by defining confidential Information as written documents that are clearly marked as confidential and identifying the channels for exchanging confidential information (and then taking adequate measures to avoid disclosing information that is not needed for the collaboration).
3. Scope
This sets out the framework of the collaboration in terms of field, technology, markets or objectives. Usually, the detailed project description will be attached as an appendix, or (in case the agreement can cover several projects) in riders that are executed separately and incorporated by extension as part of the framework agreement.
4. Resources
Attachments or riders to the agreement detail any special needs, for example in terms of personnel, equipment and materials.
5. Funding and Pricing
This part of the agreement sets out the principles for compensating the research performed by the PRO, for calculating financial contributions, determining payment terms and making price revisions. The overhead that is paid on top of direct project costs will depend on the nature of the collaboration, the use that both partners expect to make of the results, and the rights and benefits that each retains. The determination of acceptable overheads should include a reasonable contribution to supervisory and infrastructure costs of facilities made available to the project by the PRO. Riders to the agreement detail the agreed budgets.
6. Governance and coordination
This sets out the role and responsibility of the project leaders (often known as Principal Investigators). The section will define and explain the role of bodies such as coordinating committees (if these are warranted by the size and complexity of the projects) and administrative functions. The development of an adequate coordination plan is now an integral requirement within parts of the Framework Programme. Although everyone will hope that the project is successful, it is important to set out how failures will be handled, for example through early termination and in situations that require arbitration.
7. Reporting
This should set out the expected content and schedule for the intermediate and final reports, to be detailed in the project riders.
8. Publications and Confidentiality
The ability to publish results that are of scientific interest is an essential consideration for universities and some other PROs. Publication should not be delayed unnecessarily (6 months is a good target, but this may not be possible in some countries and cases) in order to permit filing for patent protection. Inclusion of confidential information belonging to the other parties will require prior written approval, but there should also be a general expectation that this will not be withheld without good justification.
9. Access rights to Background Information
The availability of background information and knowledge is a key consideration in selecting the partners. Consequently, it is important to agree what access rights will exist, and ensure that these are sufficient to allow the project to proceed satisfactorily and to permit results to be put to the intended use. Restrictions must be defined prior to entering the agreement, if known after reasonable enquiry. Conditions, access fees and royalties should be determined before each project. Each party should know the circumstances in which its own technologies were developed or acquired, the history of its own patents and the fields of its own technologies, so that it can warrant that it is entitled to grant a licence on the contemplated use and that it is not aware of potential infringement of third party rights other than disclosed.
10. Ownership of Foreground
It is particularly important to address questions of ownership and use. Often, being clear about ownership while giving well-defined, efficient (sometimes exclusive) rights of use and ways of defending these rights is more important than obtaining strict legal ownership. A general starting point is that each party owns the inventions that it (or its employees) generates itself. Depending on how the work is executed, this may be established (for example) by defining its premises or in terms of inventive steps.
Careful consideration should be given to the ownership of inventions created jointly. While joint ownership may be a possibility, this can lead to unintended problems, whereas allocating ownership arbitrarily is inequitable. Considerations include the possibility to gain future reward, controls over new applications, the ability to manage matters efficiently, and the legal implications of joint ownership.
11. Patents and other IP
The usual situation is that each party takes steps to protect its own inventions. The handling of joint inventions should be discussed: for example whether the PRO shall file for protection or assist the company in filing; the terms on which license options are granted; whether the commercial partner shall bear the costs of the PROs activities; etc. The parties should also consider who will be responsible for defending patents and pursuing infringements. It is generally better that the parties do not plan to act jointly in these matters: this approach risks creating additional disputes and delays.
12. Licence for use
Each party will expect fair compensation for the commercial use of the inventions that it helped generate. Deciding what is fair will depend on the nature of the collaboration, as well as a sense of realism. One of the considerations of Responsible Partnering is to ensure maximum beneficial use of knowledge that has been generated partly through public funding. This can be achieved by establishing non-exclusive licences to several licensees or by granting exclusive licences to the partner on those uses that he is committed to develop diligently.
Compensation can take many forms, for example licence fees, milestones, running royalties or by sharing profits and can be subject to exercising a license option on defined terms. Assignment of IP is possible as an alternative to exclusive licences, subject to grant-back of non-exclusive licenses in the non-exclusive field. The agreement should generally avoid restricting the use of results for research purposes by PROs. Use for teaching purposes may also need to be considered.
Unless agreed otherwise, each joint owner should have a non-exclusive license on joint inventions, provided that, in case of successful exploitation of the joint property by one of the joint owners, the other joint owners receive a fair compensation.
Except in special instances, sublicensing should be permitted to facilitate maximum use.
13. Diligence
When the agreement grants exclusive rights, this generally involves some expectations of diligence, whereby, if conditions are not met, the licence can be terminated and ownership rights revert to the PRO.
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