Intellectual Property Concerns: Lessons Learned from the Researcher Guidebook
July 16, 2024
—Few challenges in cross-sector research partnerships are more difficult to navigate than intellectual property (IP) concerns. Whether the IP involved is foreground or background, ensuring that it is protected (while also ready for development to usable products and services) is vital to the success of both the project and the partners’ relationship. Careful communication and well-defined, well-written IP terms/agreements will pave the way for successful partnerships and research outcomes.
IP types
The two main types of IP in university-industry collaborations are background intellectual property and foreground intellectual property. Background IP is any existing IP or IP created independently of the research project brought into the project by either party. In universities, tech transfer offices negotiate licenses and agreements that allow background IP to be used in research collaborations. Legal departments typically handle IP management in corporate environments, although some organizations do have dedicated IP teams.
IP developed from the research project is referred to as foreground IP and requires documentation and protection. Safeguarding and licensing foreground IP (and the costs associated with doing so) depend on the type of collaboration and the research agreement in place. The agreement must identify the responsible party and enable all collaborators to work together to protect foreground IP. Georgia Tech’s Contract Continuum explores some of the various research agreement types, their purpose and usage, as well as the IP terms involved in the agreements. The same website also lists sample agreements that clearly illustrate IP terms under the contract continuum. For more information on IP, see Contract Accord 5: Background Intellectual Property or Contract Accord 6: Foreground Intellectual Property. UIDP members can also access the Intellectual Property Quick Guide.
Licensing and IP options
The research agreement governing a collaboration must establish a clear framework for handling background and foreground IP throughout the research project. Typical IP issues include who has access to the foreground IP, who files with patent offices and obtains protections for IP, who pays for patent prosecution, and what rights each party will obtain. Many agreements grant companies the option to negotiate license agreements. In these cases, the agreement should clearly define the terms of the option, including the length of time, the method for exercising the option, and any associated fees. It’s also typical to agree to grant the sponsor a non-exclusive IP license for its use in internal research. To proactively address any conflicts that may arise, it’s critical to inform all necessary parties, including partners and organizations’ internal offices, about any intended use of research results.
In a traditional research agreement, parties execute the agreement, conduct the research, and negotiate a license when foreground IP is created. Increasingly, some academic institutions offer upfront IP options, in which the organizations set the financial terms on foreground IP created in sponsored research projects before the work begins. This approach benefits both the university and the company; the university is guaranteed to financially benefit regardless of research outcomes, while the company is guaranteed access to the resulting IP without needing to negotiate or budget after the project is completed. For more on upfront IP approaches, UIDP members can access the Upfront IP Quick Guide.
Some non-U.S. approaches to intellectual property include the concept of professor’s privilege, in which university researchers retain ownership of the IP they generate. Many European countries have switched to a model of university ownership, though some still maintain the system of professor’s privilege, including much of Sweden and the University of Waterloo in Canada. For more on international approaches to IP, see this previous 3-Minute Read.
Why it matters
IP ownership and rights are valuable to both partners in university-industry collaborations and can slow contract negotiations or become a stumbling block to a successful relationship if not managed well. Understanding the types of IP, how they’re governed, and the various approaches for navigating IP issues can help reduce potential conflicts and ensure smoother collaborations. For more information on intellectual property and other contracting basics, register for the UIDP Contracting Essentials webinar series, which will explore IP, budgeting, compliance, and more.
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The 3-Minute Read is a UIDP member information piece and does not represent the opinions of our members or representatives. We welcome your comments on our LinkedIn profile.
This 3-Minute Read is part of a series based on the Researcher Guidebook, a public resource published by UIDP. Our members have access to a sequential learning path and Quick Guide developed to help researchers tap into our collective knowledge and clearly understand their pivotal role in cross-sector research partnerships.