Many collaborations with academia or spinouts are based on IP. Most experience some friction around IP. A few fail because of IP. Avoid disappointment via a long view, realistic expectations and some flexibility.
DO – be realistic. It is unlikely that a University-originating IP portfolio will be in as good shape as one developed in-house with the luxury of resources and a clear commercial focus. Before you came on board, hard decisions may already have been taken about costs, territorial coverage and maintenance, or to accommodate a need to publish. It may be that not everything patentable has been filed on or that patents have been granted with claims not ideal for you. You will have to live with the legacy of these choices so make sure you understand what you are taking on.
DON'T – take too much at face value. Universities and their scientists will be honest with you but the tech transfer office may not have all the facts and the scientists may have a higher opinion of their science than Patent Offices have of their inventions. Your priorities and theirs may not be the same. Understand their viewpoints form your own too.
DO – your homework. Check how rights to out-licence flowed from the scientists to the University or its spinout and that there are no missing inventors from other institutions that may co-own the IP or existing agreements that conflict with yours. Loose ends are not uncommon but the earlier ownership is established, the easier it is to access any rights that may lie elsewhere.
DON'T – think it is always all about patents. Sometimes the opportunity to build relationships and tap into knowhow and future developments matters more in the end.
DO – look to the future. New inventions may well arise in the University lab you are dealing with. Do you have an automatic option on those or do you need to agree access to them separately? Make an agreement about the handling any future joint inventions between your personnel and the University's too.
DON'T – ignore third party IP threats. The University or spinout may have mapped these to an extent but probably not fully, as freedom to operate analysis is costly and their goal is to get the project moving on a tight pre-commercial budget. But you will bear the greater risk so do your own FTO too.
DO – remember why you came here in the first place. It's not a perfect world but this is a small price to pay for access to the best minds and most disruptive technologies!
J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website to find out more.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
