IP management scenarios - Scenario four
The parties will need to consider whether the business partner will be given access to, or rights in, the research partner’s background IP.
There are a number of different ways that this can be arranged, with varying degrees of complexity. The IP Toolkit Model Contract allows background IP to be used on agreed terms without affecting the ownership of the IP (clause 13, part 1).
In the above scenario, the research partner retains ownership of the background IP and the business partner would be given a non-exclusive licence to use that IP for the purposes of carrying out the collaboration and any other purposes that the parties agree to (clause 13, part 3). The Mini IP Toolkit Model Contract takes a similar approach (see clause 14 of part 2).
While it may not be expected that the project will generate any new IP, it is difficult to be certain about this at the beginning of a project.
In order to reduce the risk of disputes or wasting time later, it can be helpful to agree on how any Project IP would be handled if it does arise.
Project IP is not always a registrable right, such as a design or patent – there may be additional IP generated such as plans, reports, photos, software, test results, websites and databases. The IP Toolkit Model Term Sheet encourages parties to identify these and specify who will own them and how each party may need to use them (pages 6 to 7).