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R&D collaboration agreements: how to deal with IP

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In this webinar, Selina Hinchcliffe and Nick Smee introduced some of the key questions to ask when first considering collaboration, plus the various IP ownership and licensing options that you need to contemplate.

Visit our webpage for more information and resources - https://www.brownejacobson.com/sectors-and-services/services/intellectual-property

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R&D collaboration agreements: how to deal with IP

  1. 1. Join the conversation @brownejacobsonJoin the conversation @brownejacobson R&D Collaboration agreements: how to deal with IP
  2. 2. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Connect with Nick Smee and Selina Hinchliffe nick.smee@brownejacobson.com +44 (0)330 045 2122 R&D Collaboration agreements: how to deal with IP selina.hinchliffe@brownejacobson.com +44 (0)330 045 2199
  3. 3. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Technology continues to expand into new areas as manufacturing processes are re-imagined and everyday items become connected. Consequently businesses in all sectors are increasingly looking to collaborate with other parties in order to develop next generation products and services. E.g. Autonomous Vehicles Setting the scene
  4. 4. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Initial considerations: • What are you trying to achieve? • How are you going to work together? • Commercial model • Where? • Equipment • Who brings what / does what • Grant Fund vs straight collaborations Setting the scene
  5. 5. Join the conversation @brownejacobsonJoin the conversation @brownejacobson 1. Shortening time to innovate by combining existing IPR 2. Sharing risk - development / supply / exploitation 3. Reducing costs - dependent on ownership cost various aspects of IP split e.g. development / filing / enforcement 4. Traditional advantages 5. Incentives - innovation creates an environment for collaboration Benefits
  6. 6. Join the conversation @brownejacobsonJoin the conversation @brownejacobson The issue of ownership will almost always be dictated by: • the parties respective businesses • the parties respective initiatives • the nature of the project (funding) • the parties bargaining power Ownership – how to decide?
  7. 7. Join the conversation @brownejacobsonJoin the conversation @brownejacobson The various ownership routes you can take: • Joint ownership – difficulties in practice • Single party ownership • Each party owns what they create (WARNING: CONTAMINATION) Ownership
  8. 8. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Other parties to assist in a)obtaining patents and b)prosecuting or defending infringement proceedings Assignor may keep rights to file patents applications, commence enforcement proceedings, grant back of licence to use/exploit the rights Must assign rights to it on a prospective basis as they arise Notification of inventions, know how or works arising from the research IP vesting in one party
  9. 9. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Joint Ownership: • Responsibility for enforcement / costs • Filing, costs • Usage rights, what can and can’t do, agree in advance • Fields / territorial? • What share of ownership? creatorship / funding Ownership
  10. 10. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Own what you create: • What defines this? • Risk if built on Background IP • Contamination • Interdependence of technologies • Assignments may be required • Fields / territorial Ownership
  11. 11. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Licence during the project: • To the extent needed to perform the project. • Which IP? • Define relevant Background IP (in a schedule); or • Limit disclosure Licence provisions
  12. 12. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Licence after the project: • To publish • For internal R&D purposes • To make/distribute/market/sell Products • In particular territory/field • Non-compete provisions https://www.brownejacobson.com/tra ining-and-resources/training/training- videos/2018/05/competition-law-and- ip-agreements Licence provisions
  13. 13. Join the conversation @brownejacobsonJoin the conversation @brownejacobson • Use an IP Matrix? • Beware drafting pitfalls. https://www.brownejacobson.com/tra ining-and-resources/training/training- videos/2018/02/ip-licensing-how-to- avoid-the-common-pitfalls Licence provisions
  14. 14. Join the conversation @brownejacobsonJoin the conversation @brownejacobson • Gatekeepers for initial baseline of IP and inputs • Decisions on new IP shared with project – background/ sideground • Technology board for just IP? • Steering committee • Funding control • Unanimous/ majority? • Disputes/ governing laws Governance
  15. 15. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Warranties: • IP provided ‘as is’? • Non-infringement warranty? Indemnities: • ‘To the extent that’ vs ‘related to’ • Consider exclusions and liability caps Warranties & indemnities
  16. 16. Join the conversation @brownejacobsonJoin the conversation @brownejacobson R and D Agreement Protection -who registers -who bears the cost -who manages Who will own or have right to use the IPRs in technology it brings to the collaboration Agreement must protect each party from claims that technology contributed by the other infringes third party rights Enforcement -who can enforce rights -who bears cost Address ownership of new IPRs arising out of collaboration Rights of each party to exploit the IPRs arising out of collaboration? Confidentiality – Preserve pre existing technology and results
  17. 17. Join the conversation @brownejacobsonJoin the conversation @brownejacobson Connect with Nick Smee and Selina Hinchliffe nick.smee@brownejacobson.com +44 (0)330 045 2122 R&D Collaboration agreements: how to deal with IP selina.hinchliffe@brownejacobson.com +44 (0)330 045 2199

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