Your source for expert commentary on IP management issues.
Go to the blog
Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
Contracts and agreements constitute one of the primary tools of research collaboration and intellectual
property management. In many cases a scientist or member of the faculty does not have the authority to
sign on behalf of their research institution. It may be important to consult with your administration,
technology transfer office, or outside legal counsel regarding specific contracts and agreements.
Key Implications and Best Practices: Section 7
Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.
- A public sector institution can use a variety of agreements to both manage and protect intellectual property, regardless of whether that intellectual property is owned by the public sector institution or by licensing partners in the private sector. The key issue is to allow for maximum flexibility whereby institutions can set, or negotiate, the terms that best fit the mission and goals of the institution and the purpose of the partnership.
- Confidentiality agreements are meant to protect sensitive data that one party transfers to another. They do not run counter to public sector missions or to publishing important research findings. Many organizations, including public sector institutions, often have information that is legitimately kept confidential. Such information can include business plans, research proposals, and databases containing business contacts.
- Confidentiality agreements rely on a culture of trust, not a culture of secrecy.
- No agreement will ever be perfect. Technology transfer officers who negotiate agreements that are in keeping with an institution’s policy are making their best effort at getting deals that respect and strengthen the institution’s mission. Your role, however, is to share with those who negotiate agreements all of the relevant information and your insights. In some cases, especially with collaborative research agreements, you may be an integral member of a team that will address issues such as research plans and purpose.
- In most cases, you will not be authorized to sign certain types of agreements without review by counsel or by your technology transfer office. Make sure you know whether or not you are authorized to sign certain agreements.
- Everyone in your group or laboratory should know—and understand—the obligations entered into through certain agreements that affect information, data, and materials used in your laboratory and research program. This is especially important for material transfer agreements and confidentiality agreements.
- You will need to keep track of data and information related to confidentiality agreements. Understand what can and cannot be disclosed and to whom information can be disclosed. If you have questions, do not hesitate to contact your technology transfer office for guidance.
- An MTA should not be viewed as a barrier to materials access. In fact, MTAs are tools for gaining greater access to materials from a wider range of sources (scientists from the public and private sectors, both in your own country and abroad). However, not all clauses in an MTA may be appropriate. Which clauses are appropriate will depend on the circumstances, the purposes of the transfer, and the institution from which the material is being received.
Agreements: A Review of Essential Tools of IP Management
by Richard T. Mahoney, Anatole Krattiger
Confidentiality Agreements: A Basis for Partnerships
by Stanley P. Kowalski, Anatole Krattiger
How to Draft a Collaborative Research Agreement
by Martha Bair Steinbock
Specific Issues with Material Transfer Agreements
by Alan B. Bennett, Wendy D. Streitz, Rafael A. Gacel