Inside track on university-industry research collaboration
The concept of research collaborations between industry and universities has much going for it, writes Quentin Golder, Partner at Birketts LLP.
Universities are centres of intellectual expertise with research as a key part of their continued academic existence.
For industry, the access to that expertise, and research capability, potentially holds great value, and many businesses would be happy to invest in the fruits of that research.
However while many such collaborations exist, both here in the UK and around the world, the perception in the UK to date has been that such collaborations have not been as common as one might have hoped.
It was as a result of such concerns that the so-called Lambert Toolkit, a collection of precedent documents for use for university-industry collaborations, was developed in 2004, arising out of a Review of Business University Collaborations carried out in 2003 by Sir Richard Lambert.
While the original toolkit was generally well received, a further review in 2013 indicated further improvements to it would be warranted. As a result the Lambert Toolkit was revised and re-launched in October 2016.
It provides a suite of seven one-to-one documents, four multi-party consortium agreements, plus various guidance notes, variation agreements and a fast track model agreement.
The Lambert Toolkit provides a very useful starting point for university/industry collaborations, but rarely do they constitute a complete solution. They present a balanced, fairly even-handed approach but the specifics of each collaboration need to be given careful consideration, and the agreements are invariably amended to fit the particulars of the project concerned.
The single biggest area of contention that tends to arise in relation to any such collaboration concerns IP; who gets to own the results of the collaboration, how those results are commercially exploited, and the rights of University staff and students to publish and disclose such findings in the classroom.
While the various Lambert Toolkit agreements contain a mix of solutions to those issues, frequently problems can arise due to the parties being unable to agree those issues in the first place, or having not adequately thought through the IP issues when entering into the collaboration, finding themselves with an agreement ill-suited to their respective needs, leading to potential dissatisfaction and conflict.
In the case of the latter, while it is very uncommon for any such disputes to ever end up in court, it can make businesses much more wary before repeating the experience in the future.
Key issues that need careful thought are:-
- Who is to ultimately own any IP generated?
- Who is to have responsibility to protect such IP?
- What rights do each party have (despite the question of ownership) to commercially exploit the IP?
- What royalties are payable amongst the parties (if any) in relation to commercialisation of IP generated?
- To what extent can the university and any of its staff or students involved in the collaboration disclose details of the IP, or any of the collaborators confidential information, in further research or the publication of results arising from the collaboration?
From a business perspective, the ideal solution would be for the business concerned to own any results from the collaboration and the university to only use the results (for academic research purposes) with the collaborators’ consent.
That would put the university in the position of simply providing contract research (of which one of the Lambert Toolkit agreements provides for). Not unsurprisingly, many universities do not look upon such a proposition quite so fondly.
They are not by nature in the business of providing research for hire, and would generally expect (a) some sort of potential upside if the research turns out to be successful, and (b) the ability to publicise their research at some reasonably opportune time.
That then leads to the complexities of dealing with joint exploitation rights, and how and when the results of the research may be publicised.
Publication of research
Publication of research results potentially impacts the parties both in terms of the timing of any registration process with respect to IP that has been developed, and what ultimately may be disclosed.
The relevant Lambert Toolkit documents provide for a period of time to be inserted in the agreement during which no publication will be made, in order to allow time for registration of IP.
Six months is not an uncommon period used. The difficulty with any timeframe is that it may actually be beneficial to hold off the registration process (in the case of say patents) while the invention is developed further, but doing so risks loss of such opportunity upon publication.
Such timeframes can also be problematic where the real value of the research lies in the know-how that has been generated. In such cases the collaborator may well prefer such know-how to be kept well out of the public domain, whereas university staff/students involved tend to want to publish results sooner rather than later.
While the toolkit documents make provision for various procedures for withholding from publication confidential information, or the taking of precautions for protecting such information if contained in say a thesis, there is still ample room for debate as to what actually amounts to confidential information and what, if anything, realistically needs to be withheld.
No such issues are insoluble. It’s just that care and thought needs to given to the practical realities that are likely to arise as a result of the relevant collaboration, so that each party’s expectations are known, and realistic, before they commit to the project concerned.
• For further advice, call Quentin on 01223 326586 or drop him an email at: quentin-golder [at] birketts.co.uk