The background-IP inventory: one copy per party, filled in before the term sheet

Most research agreements define background IP carefully and then never list it. The Lambert model agreements define it as whatever one party "provides" to the other for the project. The DESCA consortium model agreement asks each partner to list it in an annex. The Australian IP Toolkit's term sheet asks for it before drafting starts. In our experience, U.S. sponsored research agreements usually assume everyone knows what they brought. Then the first result appears, and the argument begins about whether it was invented in the project or merely applied from something a party already had.

This template is the list. A two-page form per party that grows as you add items or write more, with six columns, filled in before the term sheet and attached to the agreement as the background schedule once the terms are agreed. It's free, it's a Word document you can edit and a PDF you can print, and the full contents are below so you can see what you're downloading. In Word, every field is a box to type in, a list to pick from, a date picker, or a check box.

What's in it

Part 1, the agreement profile. Fourteen fields: who the inventory is from, their role, the other parties, the project title, the agreement type (sponsored research, collaborative research, a project under a master agreement, consortium, SBIR or STTR subaward, materials transfer or testing, other, or not yet known), the template the agreement starts from, whether any U.S. federal funding is involved in the project and which awards, whether students will work on the project, the NDA it's disclosed under, a revision number, the status of the copy, the date, and whether any item is export controlled. The U.S. federal question matters because an invention of the organization that holds the award, conceived or first actually reduced to practice in the performance of work under the award, is a subject invention under 37 CFR 401.14 whatever the agreement calls it, with a license to the government, and the inventory flags it.

Part 2, the inventory. One row per item, six columns:

Column	What goes in it
Item	The patent number and title, the software name and version, the dataset, the material, or the piece of know-how, described so a stranger could tell whether a result came from it, without giving away anything confidential
Type and status	Granted patent, patent application, software, other copyright, data, material, prototype, know-how, trade secret, or other. Confidential, not confidential, published or public, or not yet decided
Owner and encumbrances	Who owns it, and who else has rights: a licensor, a prior sponsor, a federal agency, a co-author's institution, an open-source license, or the MTA it came under
Use during the project	Project use only, use and modify, test and evaluate only, no access, or not yet decided, with any conditions in words
What survives	Whether it's needed to use the results, then what the other party gets after the project: nothing (return or destroy), a research-use license, a license limited to using the results, a broad commercial license, or not yet decided. Improvements go in Part 4
Notes	Where it's kept, who to ask, and the NDA, MTA, or data use agreement it was disclosed under

There are nine rows, and copying a row adds another with its fields. A check box above the table lets you say you aren't bringing any background, so an empty table is a statement rather than a gap.

Part 3, exclusions. Anything a party is holding back on purpose, listed so the other side doesn't assume it's available. Parallel internal programs go here. Three rows, and a box to tick if nothing is held back.

Part 4, improvements and sideground. Tick boxes for each: whether improvements to a party's background made in the project are results, results with a license or option to that party, or owned by that party (or no position yet), with room for a limit, and whether the party has parallel work in the field that stays outside the project. In our experience, these are the two places where a sponsor's assumptions most often don't match the default. Both Lambert and the Australian contract treat an improvement made in the project as a result unless the agreement says otherwise. Work done outside the project is background under the Australian definition, background under Lambert's only if it's provided for the project, and not background under DESCA's.

Part 5, sign-off. The name, role, organization, and date of the person for the party who confirms the list is complete, the date the inventories were exchanged and with whom, the schedule it's attached to, and a line to sign. The exchange date is the one your counsel will ask for.

A schedule that stands on its own. Parts 1 to 5 carry their own page numbers (Page 1 of 2 in the blank form) and end with a line that says so, and every page carries a confidentiality marking you set before sending, so the copy you attach to the agreement doesn't point to pages it leaves out.

The guide. After Part 5 comes a guide you keep, which isn't part of what you exchange. It says what to write in each column, with composite examples, and what to do in ten situations: a company and one university, a university with two or more companies, U.S. federal funding in the project, an SBIR or STTR subaward, a consortium, a researcher bringing software, data, or materials, a company sending a prototype or material for testing, export-controlled items under the EAR or the ITAR, student researchers, and checking another party's inventory before signing. A table sets out what Lambert Model Collaboration Agreement 1, DESCA 2.1, and the IP Australia model contract do by default with background, results, improvements, and sideground. It tells you to give know-how its own row, because Hertzfeld, Link, and Vonortas found that the US companies they studied protect know-how with mechanisms other than patents, especially in the early, forming stages of a partnership (Research Policy, 2006).

How to use it

Each party fills in its own copy. Do it under the NDA, before the term sheet, and bring every party's copy to the first drafting meeting. A university will usually list the lab's relevant patents, software, and materials, and limit its confidential know-how to project use. A company will list the compounds, the data, the specifications, and the process know-how it's disclosing, mark most of it confidential, and use Part 4 to say what it wants in improvements. Once the terms are agreed, each party updates its copy to match, marks it Agreed, and attaches it to the agreement as the background schedule. The IP clause becomes drafting rather than discovery.

The inventory doesn't decide who owns the foreground. That's the agreement's job, and the sponsor's guide explains the four common pathways. It decides what the foreground is being measured against.

Download

The inventory is free. Enter your name and email and the download starts here: the inventory as a Word document and a PDF. We'll send one email to confirm your address, and you can unsubscribe at any time. In Word, its fields fill in and its boxes tick on screen, and the PDF prints for a paper copy.

It's free to use and adapt within any organization, and to share with the other parties to your research collaboration. Please keep the attribution line: Background-IP Inventory, Helikon Labs, helikonlabs.com. It may not be resold.

The positions in it were checked against the sources below on 22 October 2026. Model agreements and regulations change, so read the agreement you'll sign. The signed agreement governs, and nothing in the inventory waives, grants, or limits any right until it's attached to one. Helikon Labs isn't a law firm, and this isn't legal advice, so take the completed inventories and the draft agreement to your counsel and the research office.