Your source for expert commentary on IP management issues.
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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. It is important that your office, under legal counsel, have deep familiarity and clear
policies regarding who has the authority to sign on behalf of your institution.
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.
- Recognizing that no agreement will ever be perfect, you will need to work with senior management to obtain their full support and backing, especially when deals are likely to be criticized from the outside.
- Certain terms should be “negotiated” internally prior to negotiating with third parties. Senior management can be instrumental by signing off on certain template clauses that can be used as the basis for negotiating deals.
- A template agreement should be used only as a starting point for discussions.
- Contracts should be tailored to fit local customs and business practices. Be sensitive to cultural and linguistic differences among parties to a contract.
- Your office ought to be the official repository of all agreements dealing with incoming and outgoing biological materials.
- Legal jargon in agreements should be avoided. Instead, use short, clear sentences that are free of vague adjectives and are written in the active voice. The vocabulary should be accessible both to business people (who have extensive technical knowledge but limited legal knowledge) and judges (who have limited technical knowledge but extensive legal knowledge).
- Confidentiality agreements rely on a culture of trust, not a culture of secrecy. Make sure that confidentiality agreements contain the necessary exceptions appropriate for the mandate of your institution. A tricky question is how broadly the term confidential information should be defined. Too narrow a definition may leave out important information; too broad of a definition may prevent the parties from getting on with their work.
- MTAs call for extra caution with respect to clauses that deal with reach through and the ownership of derivatives. These clauses need not be negative. In fact, you may wish to impose certain reach through clauses yourself. These decisions will depend on the circumstances.
- When negotiating collaborative research agreements, you should involve the scientists to the maximum extent possible. Also, pay particular attention to a clear and detailed work plan, how communication is to happen among the parties, how modifications to the work plan are to be agreed upon, and how disputes are to be resolved.
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
Drafting Effective Collaborative Research Agreements and Related Contracts
by E. Richard Gold, Tania Bubela
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
The Use of Nonassertion Covenants: A Tool to Facilitate Humanitarian Licensing, Manage Liability, and Foster Global Access
by Anatole Krattiger