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. Consideration and management of potential IP issues can help to prevent delays and avoid disputes as the project progresses.
Universities have specific frameworks to manage IP ownership for employees and students. If you are an employee or a student at a research organisation, you should make contact with your technology transfer or commercialisation office in the first instance if considering a collaborative project.
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.
Many research organisations have dedicated offices to help identify and commercialise IP. If you are an employee or a student at a research organisation, you should make contact with your technology transfer or commercialisation office in the first instance. They will be able to assist you in finding an appropriate partner and also ensure your project is consistent with the procedures and requirements of your organisation in relation to commercialisation and collaboration activities.
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.
Research organisations can use Source IP to promote their inventions and technologies to potential business partners and indicate how their patents can be licensed. It provides an easy mechanism for businesses to find technology to commercialise and research partners to collaborate with and to facilitate contact between the parties.
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 IP data by industry, technology and location.
IP NOVA can be used to easily find out which companies are actively protecting IP in specific fields, industries or locations and this can help you identify potential collaboration partners. 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.
IP Australia’s Patent Analytics Hub aims to help Australian researchers by providing analysis, visualisation and interpretation of the data that is available in patent documents.
The Hub translates patent literature from around the world into useable information to help government agencies and publicly funded research organisations such as universities, medical research institutes and cooperative research centres make informed research, development, collaboration and commercialisation decisions.
This information can be used to help identify active areas of research, top applicants working in a field, trends in patent filings and developments over time. This may include identifying target markets or networks between organisations.
More information on IP Australia’s Patent Analytics Hub and its research is available at https://www.ipaustralia.gov.au/tools-resources/patent-analytics-hub.
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 researcher, you may be seeking to publish or disseminate results from the collaborative project. However, 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 business 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 and Contracts 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.