FITT Toolbox: Partnership Agreement IPR Guidelines


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Partnership agreement which sets up the conditions of collaboration and transfer of the results should be drafted with attention to objectives, interests and limits of each party. Agreement guidelines provide a framework which facilitates negotiations with industrial partners, dealing with essential element of every agreement: intellectual property rights. They detail the policy of public research organisations concerning different cases of patents and software ownership, improvement of background IP and publication of research results.

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FITT Toolbox: Partnership Agreement IPR Guidelines

  1. 1. Partnership Agreement IPR Guidelines FITT – Fostering Interregional Exchange in ICT Technology Transfer – Except where otherwise noted, this work is licensed under a Creative Commons Attribution 3.0 License.
  2. 2. Partnership Management Partnership management is essential to assure the best relationship and cooperation, business or research, between TTO’s and industrial partners. Relationship Management with partners and customers enables to: • Have more efficient exploitation of the research results • Create mutual trust, long-lasting and positive relationships • Pave the way for future transfer opportunities Successful partnership management brings mutual benefits: • Identify opportunities • Stay aligned to market needs/expectations • Identify & solve specific problems2 | January 2010 Partnership Agreement IPR Guidelines
  3. 3. Partnership Management This practice is supported by three main pillars: Partners and clients Satisfaction survey Partnership Impact Agreement Assessment Partnership Management 3 | January 2010 Partnership Agreement IPR Guidelines
  4. 4. The partnership agreement Legal document setting the conditions of collaboration and the transfer of results Mainly focused on research–industry partnerships, very often market-oriented pursuing transfer and exploitation opportunities While drafting the document it is important to be aware of:  The objectives of each party  The interests and limitations of each party Every organization needs a framework that facilitates negotiations with industrial partners, in order to obtain a satisfying agreement. Possible options:  Internal template of an agreement – flexible and detailed framework  Internal guidelines + experience from previous cases (+ sometimes external templates, e.g. DESCA model, Lambert Agreements; see “Suggested Reading”)  One of the most important and critical aspects are the intellectual property rights (IPR) of each partners: who owns what 4 | January 2010 Partnership Agreement IPR Guidelines
  5. 5. The partnership agreement & IP policyThe IPR guidelines must apply to the organization’s IP policy and address at least:  Specific conditions for patents and software  Improvements of the background IP  Disclosure of research results: publicationsRecommended solutions for four main cases in negotiations with industrial partners (INRIA practice): Improvement Co-owned Publication of Joint patents of the software ex- research ex-nihilo background IP nihilo results Source: “INRIA’s intellectual property policy: application to Software: Check for contractual matters”, M. Temporary co- Centralization of ownership. Each partner does absence of any Fitzgibbon, the rights in Exception if PRO* what it wants confidential information Transfer and Innovation favor of the contributes to the (“American co- standardization ownership”) Department, INRIA initial asset owner process Reduce the time span between patent decision and Patent: filing the application PRO assigns its The PRO can Co-ownership in assign its part, *PRO: Public research part according to keeping a license Publication can be organization proportion to the the agreement delayed for a intellectual for research terms purpose specific amount of contribution time 5 | January 2010 Partnership Agreement IPR Guidelines
  6. 6. Stakeholders  Technology Transfer officers  Have a framework guiding their transfer operations  PRO’s management Have common rules shared by everyone across the organization  Industrial partners  Make the negotiations easier by setting some of the negotiation principles6 | January 2010 Partnership Agreement IPR Guidelines
  7. 7. Pros & Cons PROs CONs  IPR guidelines facilitate the negotiation of  IPR guidelines provide solutions to agreements simplifying the transfer operations standard negotiation points analysis on a case-by-case basis is still required  Guidelines aligned with IP policy are useful for supported by the experience and organizations having multiple research units or negotiation skills of the TT officer for networks (like the LIEU network)  Guarantee organizational coherence on these aspects  Establish the rules and conditions in clients/partners relationships on IPR ownership and exploitation from day 1  improve transparency7 | January 2010 Partnership Agreement IPR Guidelines
  8. 8. Rationale Use the IPR guidelines if:  You need an operational tool to negotiate partnership agreements setting optimal conditions for future transfer  You are newcomer and need some reference documents on the organizations IP policy  You need to harmonize the IPR approach of several sites or network members8 | January 2010 Partnership Agreement IPR Guidelines
  9. 9. Outcomes  IPR guidelines are in use for INRIA TT officers negotiating partnership agreements, but it is too early to assess their influence on organizations performance in this domain Partnership management requires time to see tangible results: start the process, monitor it and above all… be patient9 | January 2010 Partnership Agreement IPR Guidelines
  10. 10. Suggested Readings Link to bibliography  “Responsible Partnering. Joining Forces in a World of Open Innovation. A Guide to Better Practices for Collaborative Research and Knowledge Transfer between Science and Industry” - Guidelines published by European University Association, European Association of Research and Technology Organizations, European Industrial Research Management Association, ProTon Europe  “University-Industry Research Relations in the United States” - by Bronwyn H. Hall Link to relevant websites   | January 2010 Partnership Agreement IPR Guidelines
  11. 11. Suggested Readings Link to code book  Partnership  Consortium Agreement  Intellectual Property Rights  Assignment  Background  Licensing  Exploitation  Negotiation11 | January 2010 Partnership Agreement IPR Guidelines