How IP can help make your collaboration a success
Intellectual property, or IP, refers to a range of different, legally enforceable rights that arise from the new ideas you create. It can be an invention, logo, design, brand, or the application of your idea. See What is IP and how do I use it for more information on IP.
On this page:
- Why IP management is important for a successful collaboration
- How IP can help you to find a business partner
- Potentially contentious issues
Collaborations can involve complexity in managing the interrelationships between confidentiality, use of existing IP, publication of information, commercialisation and decision making around IP rights. These complexities mean that it is important to consider IP management at the outset. Collaborations can result in the creation of new IP in inventions, documents, products, services, processes, software and other material. Consideration and management of potential IP issues can help to prevent delays and avoid disputes as the project progresses.
The IP Management Scenarios demonstrate some of the different ways that IP can be managed in a collaboration.
The following tools can assist
The Collaboration Checklist will help you identify some of the key issues you may need to consider such as:
- Identifying whether any background or third party IP is required, so that negotiations for the use of that IP can commence.
- Settling how background and project IP will be treated, including ownership and licensing rights.
The Model Term Sheet covers all of the main elements of a project and focuses your attention on the issues that need to be considered and agreed upon. The details you enter into the Term Sheet can feed into the drafting of a final contract and you can use the Model Contract or Mini Contract for this purpose.
The Model Confidentiality Agreement can be used to ensure any disclosure of sensitive information during your discussions remains confidential. This is important because publishing your idea in any form prior to seeking IP protection may jeopardise your ability to claim a patent, design or plant breeder’s right down the track
Most research organisations have established dedicated units to facilitate the commercialisation of technology. These units take a variety of forms and have differing responsibilities, including obtaining patent protection, negotiating licences and agreements and, in some cases, establishing spin off companies. They are also referred to by a range of titles, including ‘business liaison offices’, ‘technology transfer units’ or ‘commercialisation arms’.
The overall functions of these offices include:
- identifying technology developed within the organisation that may have a commercial application
- managing IP issues, including facilitating patent applications, licensing IP innovations to the commercial sector and advising on the terms of research agreements
- coordinating industry access to research projects within the organisation that require financial investment to develop the commercial potential of innovative technologies and products
- offering assistance with gaining government support for research and development, including tax incentives and grant and loan schemes.
Easy Access IP
A number of Australian and international universities are using the Easy Access IP scheme to offer free access to potentially valuable IP. Under this scheme, the IP is licensed to a commercialisation partner through a simple, one-page agreement for no cost. The purpose of this scheme is to increase the uptake of university IP by business, accelerate the translation of IP into commercial outcomes and encourage new opportunities for collaboration between universities and business.
Source IP is an online tool developed by IP Australia to connect businesses with Australian public sector research organisations who have patented technology available to license.
Source IP helps businesses to find:
- public sector inventions and technologies that can be licensed
- potential research partners.
Research organisations can use Source IP to promote their inventions and technologies to potential business partners and indicate how their patents can be licensed.
With Source IP, you can search through the research that’s already been started by Australia’s public sector research organisations, and get in touch with the researchers you’re interested in working with.
An example of a successful collaboration through Source IP is Forcite Helmets.
IP NOVA is a visual search engine that helps users discover registered patents, trade marks, and plant breeder's rights from IP Australia's database. IP NOVA is a free, open web app that can be used to search by industry, technology or location.
IP NOVA can be used to easily find out which research organisations are actively protecting IP in specific fields, industries or locations and this can help you identify potential partners in a relevant sector. It can also be used to:
- search for invention and development ideas
- avoid duplicating research and development effort
- identify key trends in technology development
- improve business decision making, for example through gathering information on future direction of competitors, potential technology partnerships and licensing
- obtain rich IP datasets to perform further research and analysis.
Data61’s ExpertConnect has been created to help identify and unlock the knowledge contained within Australia’s research institutions. It is searchable by field of knowledge, research institution or name to identify experts, with results ranked based on the expert’s government grants, media articles, patents or academic publications.
There are some IP issues that may arise in a collaborative project that are more likely to cause disagreements or require legal advice.
Joint ownership of IP
When negotiating a contract, both parties will need to agree on who is best placed to own, protect and commercialise the project IP. While joint ownership of IP is possible, it is not always necessary and is generally not a preferred option. An appropriate licensing arrangement can protect both parties’ interests and provide the rights needed to commercialise the IP.
If both parties wish to pursue joint ownership of the project IP, it is recommended to seek legal advice.
As a business, you are likely to be seeking to establish and maintain a competitive advantage. So it is important to remember that any publication or disclosure of project material may adversely affect the validity of a subsequent patent or design application or the commercial viability of the technology.
The term sheet and the contract encourage both parties to consider whether material might be subject to patent or design applications. If so, they provide the option to agree to delay any publication until after any IP rights have been applied for, or a reasonable timeframe after the end of the project term.
If a higher degree student at a research organisation is involved in the collaboration, it is important to negotiate contract terms that do not restrict publication of a thesis in accordance with university requirements, while still providing the business partner with an opportunity to secure formal IP protection.
IP is not just about registered rights such as patents, designs and trade marks but also includes unregistered rights such as copyright, trade secrets and know-how. It is important to manage the ownership and use of all types of IP up front in the collaboration, particularly around the areas discussed below.
Collaboration can be simplified if background and third party IP is restricted to the minimum required for the project, particularly as clearances and negotiations for use of this IP can be lengthy.
It is important to have a clear understanding about whether any background IP or third party IP will need to be used. The collaborating parties should identify all the relevant IP for use in the project and specify any conditions relating to its use to minimise any disputes. The Model Term Sheet provides a useful template for listing these and other details about background and third party IP.
To avoid disputes over IP ownership, it is recommended that authors and potential inventors of IP (including planned material for patent applications) be accurately recorded for the entire period of collaboration. This can ensure that the source (and potentially ownership) of collaboration outputs can be proven. Often this is managed using a register of authors (e.g. including all software developers) and/or potential inventors.
Clear evidence of the origin of project IP assists in its commercialisation and in any potential litigation. For example, in cases of very valuable potential project IP that may arise from a project, researchers’ notebooks may be registered and secured in safes (including nightly deposit of notebooks).
Where a patentable invention may result from a collaboration, all publications and communications (including preliminary findings emailed by researchers to others and conference presentations) could be monitored through internal processes to ensure that a potential invention remains patentable and is not prevented by prior disclosure.
In collaborations likely to generate sufficiently valuable IP, an IP register that lists potentially valuable material for IP may be useful. Registers can be required by the collaboration contract or be used as an IP management tool. A nominated party may be required to update the register regularly (e.g. fortnightly). A Template IP Register is attached to both model contracts in the IP Toolkit.
- more complex licensing agreements, such as:
- a potential collaborating party has been asked to warrant or indemnify another party
- when considering granting a licence that is very broad in scope
- when granting an exclusive licence in relation to IP, legal advice could be valuable in ensuring that the licence is in fact ‘exclusive’ in accordance with the relevant legislation
- if there has been a potential public disclosure of inventions for patents or materials for designs or plant breeder’s rights
- there are significant differences of views between parties about the project or IP strategy or ownership (including publication)
- a party is considering how to address infringement of their IP, the collaboration is planning legal action or a collaborating party has been sent correspondence claiming infringement of another’s IP connected with the collaboration
- if there is disagreement between parties about freedom to operate or the use of third party IP.
Dispute avoidance and resolution
The tools provided in this toolkit can help to identify areas where disputes may arise, assist with planning to avoid disputes later on and establish effective mechanisms for resolving any such disputes.
In seeking and entering into discussions with a potential research partner, it is important to consider whether any information needs to be kept confidential. A confidentiality agreement should be signed prior to disclosing any confidential information to the other party. The Model Confidentiality Agreement in this toolkit can be used for this purpose.
The Model Term Sheet can be a good starting point for negotiating your collaboration agreement as it sets out the main elements of the project in a relatively brief and clear document. This can then form the basis of more detailed contract negotiations.
The Model Term Sheet and the Model Contract include reference to the mechanisms for resolving any disputes that arise during the project. This allows the parties to consider and agree on the process that will be used to handle disputes before any dispute has arisen. If a dispute does arise, the parties can then focus on the dispute itself, rather than the process that will be used to resolve it. The Model Term Sheet and Contracts all provide for alternative dispute resolution options, such as mediation and arbitration, which are cheaper and quicker than costly legal actions. IP Australia’s website has more information about IP dispute resolution.