IP management for collaborations

Collaborations involve using different types of intellectual property (IP) to create something new. By carefully managing IP ownership, you can avoid disputes that might otherwise arise. Here are some things to consider.

What type of IP is involved?

Three types of IP can be used in collaborations:

  1. Background IP – work created before or outside the collaboration by one of the parties involved
  2. Project IP – the new IP being created during the collaboration
  3. Third party IP – existing IP owned by someone not involved in the collaboration.

You should have a clear understanding about:

  • Whether you'll be using any background or third party IP
  • Who will own and manage any project IP your collaboration creates.

What to consider

Here are some common collaboration scenarios with tips for managing IP ownership.

How to manage background IP

When you own the background IP

You’ll need to consider whether your business partner will have access to, or rights in, your existing IP.

For example, your business partner can have a non-exclusive licence to use your IP.

When the background IP is owned by you and your business partner

You need to decide how to share or use your respective background IP. This is a complex situation where legal advice should be considered.

You should:

  • Identify and list all relevant background IP each partner is contributing
  • Consider how you’ll protect the background IP and any conditions around its use
  • Include the exchange of background IP licences in your contract.

Normally, responsibility to maintain the IP register sits with the research partner, but a different arrangement can be made and specified in the contract.

How to manage project IP

When you expect to create project IP

You'll need to decide who’s best placed to own, protect and commercialise it.

If both of you will own the project IP, seek legal advice to determine how much each of you will earn from it.

A design right or patent may protect the new technology you develop. You may need extra IP if your collaboration generates other material.

You should discuss what you'll do in this situation and clearly specify who will own and use the other material.

When you don't expect to create project IP

It’s difficult to be certain about this at the beginning of a project.

To save time and reduce the risk of disputes, it's helpful to agree on how you'll handle any project IP if it does arise.

How to manage third party IP

If you’ll be using third party IP for your collaboration, the owner of that IP needs to agree to its use.

Your licensing agreement should outline the circumstances, timeframes and any proposed sub-licensing.

Resources

The following resources can help you identify the aspects of IP ownership that will be important for your collaboration. 
 

How to manage background IP

When you own the background IP

You’ll need to consider whether your research partner will have access to, or rights in, your existing IP.

For example, your research partner is given a non-exclusive licence to use your existing IP.

When the background IP is owned by you and your research partner

You’ll need to decide how you’ll share and use your respective background IP. This is a potentially complex situation in which legal advice should be considered.

You should:

  • Identify and list all relevant background IP each partner is contributing
  • Consider how you’ll protect the background IP and any conditions around its use
  • Include the exchange of background IP licences in your contract.

Typically, the responsibility to maintain the IP Register sits with the research partner, but a different arrangement can be made and specified in the contract.

How to manage project IP

When you expect to create project IP

You, your research partner or both, can own the project IP. You'll need to decide who’s best placed to own, protect, and commercialise it.

If both of you will own the project IP, seek legal advice to determine how much each of you will earn from it.

A design right or patent may protect the new technology you develop. You may need extra IP if your collaboration generates other material.

You should discuss what you'll do in this situation and clearly specify who will own and use the other material.

When you don't expect to create project IP

It’s difficult to be certain about this at the beginning of a project.

To save time and reduce the risk of disputes, it's helpful to agree on how you'll handle any project IP if it does arise.

How to manage third party IP

If you’ll be using third party IP for your collaboration, the owner of that IP will need to agree to its use.

Your licensing agreement should outline the circumstances, timeframes and any proposed sub-licensing.

Resources

The following resources can help you identify the aspects of IP ownership that will be important for your collaboration. 

How can I avoid disputes?

Disagreements can arise around IP ownership and disclosure. Here are some quick tips for avoiding them.

  1. Have an agreed contract before work starts
  2. Make sure IP ownership is dealt with before starting any collaboration. Even the earliest stages of work can create important IP rights.

    The contract should include:

    • Confidentiality clauses or agreements
    • Non-compete clauses in employee contracts (today's employees may become competitors tomorrow).
  3. Have a written agreement for IP ownership
  4. A written agreement that clearly states who owns the IP rights to any material created by an employee or contractor will reduce unnecessary confusion.

    The agreement should include:

    • Whether and when transfer of ownership will take place
    • Who has the right to exploit it
    • Who'll pay for it
    • Whether improvements or modifications are allowed.
  5. Be careful when outsourcing research and development
  6. Research and development (R&D) is sometimes outsourced or undertaken by people other than employees. To prevent misunderstandings, make sure everyone involved signs an agreement regarding rights to the results of their works.

    The agreement should include:

    • Transfers of any and all rights of project results from the R&D team, including the right to retransfer IP ownership
    • Rights to alter the works if the project produces works or other materials eligible for protection
    • Provisions on the rights to know-how, copyright for the research reports and results and rights over the physical material involved in research activities, such as micro-organisms or other biological material, as well as IP rights over any background information not in the public domain
    • A confidentially clause.
  7. Create a policy for employees
  8. Policies and regulations on IP for employees should contain provisions on:

    • Categories of inventions that are considered part of the employer’s business
    • Employee obligations to notify the employer about inventions
    • Employer procedures for handling such notifications
    • Confidentiality requirements and patent prosecution
    • Remuneration for the inventor.

We've provided some general advice. It's essential to get the right advice before entering into any agreement with employees or contractors. We recommend engaging an IP professional to help you.

Engage an IP professional

When should I seek legal advice?

You should seek legal advice when:

  • You're thinking of entering into a collaboration
  • You want to pursue joint ownership of the project IP
  • One of you has been asked to warrant or indemnify another party
  • You're considering granting an exclusive licence or one that's very broad in scope
  • There's been a potential public disclosure of your invention
  • You've received an infringement claim or need to make one
  • You have significant disagreements about your collaboration.
Need help with your collaboration?
The Australian Government offers a range of support for researcher and business collaborations. This includes:
    •    Information and advice
    •    Where to apply for grants and financial help
    •    Links to different advisory services.