This document provides guidelines for partnership agreements regarding intellectual property rights (IPR). It discusses the importance of partnership management for cooperation between technology transfer offices and industry partners. The guidelines aim to facilitate negotiations by addressing IPR issues like ownership of patents, improvements to background IP, and publication of research results. While case-by-case analysis is still needed, having principles around IPR established in the guidelines can simplify the partnership agreement process.

1. Partnership Agreement IPR Guidelines
FITT
– Fostering Interregional Exchange in ICT Technology Transfer –
www.FITT-for-Innovation.eu
Except where otherwise noted, this work is licensed under a Creative Commons Attribution 3.0 License.

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 problems
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3. Partnership Management
 This practice is supported by three main pillars:
Partners
and clients
Satisfaction
survey
Partnership Impact
Agreement Assessment
Partnership
Management
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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
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5. The partnership agreement & IP policy
The 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: publications
Recommended 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
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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
principles
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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
transparency
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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 organization's
IP policy
 You need to harmonize the IPR approach of several sites or network members
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9. Outcomes
 IPR guidelines are in use for INRIA TT officers negotiating partnership agreements, but
it is too early to assess their influence on organization's performance in this domain
Partnership management requires time to see tangible results:
start the process, monitor it and above all… be patient
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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
 http://www.innovation.gov.uk/lambertagreements/
 http://www.industrie.gouv.fr/guidepropintel/outils_contractuels/contrat_de_consortium.htm
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11. Suggested Readings
 Link to code book
 Partnership
 Consortium Agreement
 Intellectual Property Rights
 Assignment
 Background
 Licensing
 Exploitation
 Negotiation
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