1 Yours? Mine? Ours? Research Collaborations and

Transcript:1 Yours? Mine? Ours? Research Collaborations and:
1 Yours? Mine? Ours? Research Collaborations and Drafting Effective Intellectual Property Sharing Agreements NACUA Sponsored Research and Technology Transfer Workshop BethLynn Maxwell The University of Texas System Office of General Counsel Austin, Texas Washington, D.C ~ Nov 15-17, 2006 2 Effective Intellectual Property Sharing Agreements Inter-Institutional Agreements and Material Transfer Agreements 3 Inter-Institutional Agreement 4 What is an Inter-Institutional Agreement? a.k.a. “IIA”, “Royalty Sharing Agreement” More than intra-agency or inter-agency agreement Contract between 2 or more parties (e.g., institutions) Outlines patenting & commercialization processes Each party has an ownership interest in common technology (joint ownership) 5 Pros for Negotiating IIAs Saves time, money and resources Only one co-owner negotiates on behalf of all co-owners Only lead party signs license agreement Co-owners negotiate pesky deal terms before commercialization begins Aligns/ organizes the co-owners 6 Cons for Negotiating IIAs Should save time, resources and money Time lost because co-owners get bogged down negotiating their deal terms If co-owners can’t (won’t) agree, then relationship starts off on wrong foot 7 What’s in an IIA? Parties = co-owners How is common ownership created? Names ‘Lead Party’ How does non-lead give authority to Lead Party? Non-lead licenses right to Lead Party Non-lead gives Lead Party right to negotiate on its behalf How are proceeds split? How is split determined? How are solely owned and jointly owned technologies handled? What about equity? Who pays patenting costs and expenses? Who deals with assignments, warranties and representations? Mechanism for enforcing against potential infringers in IIA Who handles and pays for litigation? Termination Rights Protecting co-owners confidential information 8 Factors to Consider When Choosing Lead Party Number of contacts in area of invention Who can market the technology better? What do you do to market technology? Percent contribution by institution Experience of staff in technology transfer office Are you licensing similar technology? One of the co-owners just doesn’t want to take lead 9 Who Handles the Following? Lead or Non-Lead? Patent Prosecution Out-licensing Accounting Infringement Defense 10 Sticking Points When Negotiating How is revenue shared? Management fee Payment of patent costs Signatures on license agreement Approval rights for Non-Lead Party? Include certain license requirements in IIA When can IIA be terminated? 11 Sticking Point: How is Revenue Shared? Split follows amount each co-owner contributed to invention Revenue split in proportion to % each co-owner contributed to invention Inventor’s help co-owners to decide How is equity handled? 12 Sticking Point: