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About
Editor-in-Chief, Anatole Krattiger
Editorial Board
Concept Foundation
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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Why This Topic Is Important
Contracts and agreements constitute one of the primary tools of research collaboration and intellectual
property management. It is important that your institution, under legal counsel, have clear policies
regarding the execution of all such agreements, including those who are officially empowered to sign
such agreements and enter the institution into such legal 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.
- It is important to encourage partnerships that accelerate the development and use of new technologies, whether they are domestic or foreign, and to provide support and encouragement during negotiation in the form of tangible commitments to capacity-building, as well as to broader IP management training in patenting, licensing, and technology transfer, for example.
- 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, ought to be given full support by senior management, especially when deals are criticized from outside of the organization.
- Senior management can be instrumental by signing off on certain template agreements that can be used as a basis for negotiating deals. But a template agreement should be used only as a starting point for discussion.
- Any institution should have clear guidelines stating who is authorized to sign agreements.
 Abstract
Agreements: A Review of Essential Tools of IP Management
by Richard T. Mahoney, Anatole Krattiger
Abstract:
Public-sector research institutions can use a variety of agreements to protect and manage intellectual property. These agreements are powerful tools to foster competition in the private sector and reduce prices for consumers in developing countries. This chapter provides an overview of the following types of major agreements—confidentiality, material transfer, development (in which the licensee is responsible for further development), co-development (in which two parties collaborate on continued development), and distribution—explains the functions of those agreements, and suggests strategies for their effective use. The chapter also discusses the meaning and usefulness of the standard elements and formulas found in such agreements. It explains the meaning and significance of the terms and language used and discusses such key issues as product liability, fees and royalties, and arbitration. The chapter emphasizes the importance of establishing and maintaining trust when negotiating and implementing agreements.
Abstract
The Use of Nonassertion Covenants: A Tool to Facilitate Humanitarian Licensing, Manage Liability, and Foster Global Access
by Anatole Krattiger
Abstract:
Nonassertion covenants (nonasserts for short) grant permission to third parties to practice a patent they would otherwise infringe. Legally, nonasserts are patent-infringement settlement agreements that are designed and drafted with the purpose of preemptively resolving future infringement disputes. Nonasserts can take three forms: (1) an agreement between two parties, (2) an agreement among several parties, or (3) a public statement. A non-assert can specify the release of only certain patent rights or fields of use, or it can be broad and specify release for entire patent families, including future inventions in a certain area. Public statements effectively place rights to patents, or elements thereof, into the public domain. Nonasserts nevertheless need to specify, precisely, which rights are granted in order to avoid ambiguity that could lead to equitable estoppel.
Nonasserts can have wide-ranging implications in terms of enhancing public sector R&D. One application could be with patent rights covering research tools that are critical for accelerating the development of essential biotechnological applications. Specifically targeted non-asserts can also be effective instruments for industry to permit the use of patented inventions anywhere in the world, provided such use is for the express purposes of addressing specific humanitarian needs in developing countries. This could have broad-ranging and significant positive impact, as this approach reduces transaction costs, encourages innovation to help the poor, and accomplishes this without any loss of commercial opportunities.
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