Collaborative research agreement

A collaborative research agreement is the contract for a project that both parties work on, each contributing people, facilities, materials, or money, with results that may be invented jointly. It differs from a sponsored research agreement, where one party funds the work and the other performs it, and the difference shows up in the IP clause.

How it works in a university-industry collaboration

In a sponsored project the inventions come from the university's lab, so the agreement only has to say what the sponsor gets. In a collaborative project a company engineer and a university researcher may be named on the same patent, and US law then makes them, or their employers, joint owners. Under 35 U.S.C. 262 each joint owner may make, use, sell, and license the invention without the consent of the others and without accounting to them. For a company that means its university partner could license the joint invention to a competitor. For a university it means a company could commercialize without paying royalties. Neither side wants the default, which is why a collaborative agreement spends most of its length deciding, in advance, who owns what the project produces and what each party may do with the rest.

The model agreements show the range of answers. The UK's Lambert Toolkit publishes seven collaboration agreements that differ mainly in who owns the results: the university owning with a non-exclusive license to the company, the university owning with an option to an exclusive license, the company owning with the university keeping research and teaching rights, and so on, with a decision guide for choosing among them. The European DESCA consortium agreement handles the multi-party case, with each partner listing its background in an annex and joint results owned jointly under a written joint-ownership agreement. Australia's IP Toolkit model contract puts the ownership choice in a term sheet filled in before drafting starts. US universities have no national equivalent, so most start from their own template or from the UIDP Contract Accords, which cover sponsored and collaborative projects alike.

Three things to settle before the draft. The background each party brings and what the other may do with it. Who owns results invented by one party alone, by both, and by one party improving the other's background. And the publication review window, which in a collaborative project has to cover the company's own confidential contribution as well as the university's results. Companies that patent jointly with other companies manage the same problem with the same tools, which is what Hagedoorn found in his study of joint patenting (Industrial and Corporate Change, 2003).

Translation Box: collaborative research agreement

On the academic side: a project the lab does with a company rather than for it. The researcher expects to be an author and often a co-inventor, and the agreement has to protect the right to publish the joint work.

On the industry side: shared effort and shared results, which sounds efficient until counsel reads 35 U.S.C. 262. The company's goal is a clear allocation of the joint inventions, usually by field of use, so joint ownership never has to be exercised.

What Helikon does with it

A Helikon project records the collaboration or agreement type, with collaborative research as one of the types, and holds the signed agreement with its dates and the parties' background schedules, so the team doing the joint work can see who owns what before the first result appears.