Research Related Agreements
These agreements are reproduced only for information purposes. You will need to contact us if you have a requirement to use them so that we can ensure that the agreement used fits commercial and legal requirements. In all likelihood significant amendments will be required so that, using these agreements as the basis, terms can be tailor made to the University’s and collaborator’s needs in this particular circumstance.
Please note also that we are currently preparing a set of model agreements and these agreements should be seen as a work in progress.
Confidentiality Agreements
As observed in the section entitled Intellectual Property - What is it? unpatented information may have only very limited, if any, IP rights. Copyright may prevent a person from copying a work but not from using the underlying information. So in order to protect proprietary information (i.e. information you own and that you consider to be valuable and that you don’t want others to be able to use freely) that you wish to disclose it is common to impose contractual obligations on the recipient; to grant him access and permit him to use proprietary information only on specified terms and for specified purposes. We routinely use agreements of this type to facilitate discussions with potential collaborators on research projects, with potential licensees and investors and where we appoint consultants (e.g. to carry out analysis of IP with a view to its commercialisation).
Confidentiality Agreements may be one way (only one party wants to disclose and protect its proprietary information) or two way (both parties wish to do so).
Research Collaborations
An agreement is required whenever the University conducts research with or for another person or persons. If an industrial sponsor and the University are collaborating in respect of research funded by the sponsor terms in relation to the scope of the project, payment, particular equipment that needs to be purchased (including who is to own it), IP rights in and future access to the results of the project (usually known as Foreground IP), access to Background IP, (i.e. IP that belongs to a party that was not developed under the project in question) publication, commercialisation and royalties all need to be agreed.
Where the University is collaborating with another research institute funding is likely to be coming from a non commercial entity – the Funding Councils or a charity (who may or may not be a party to the agreement although the University will be subject to obligations to such funder) but the way the finance is divided needs to be set out as do the scope of the project and other terms, as above. As regards IP it is usual that each academic collaborator owns what it devises and is at liberty to exploit it without restriction. But there may be circumstances where a revenue share to all parties might be appropriate in respect of the exploitation of Foreground IP developed under the Project, or for there to be access rights to each party’s Background IP for such a purpose and to each parties Foreground (and sometimes Background IP) for the purpose of future research collaborations.
We are now seeing more and more multi party collaborations involving a number of academic and industrial partners. The Government is keen to promote this academic and industrial interface. Industrial collaborators may have commercial interests (and be contributing Background IP and expertise) in particular commercial fields and so agreements may have to be drafted to accommodate these interests. The University will want to protect its publication and future research rights at all costs. The University will also want to benefit from commercialisation rights outside of the industrial collaborator’s field and to ensure that the collaborator will exploit.
Royalty rights if the industrial collaborator derives a significant commercial benefit from the IP rights may also be reasonable.
The Lambert Agreement and Tool Kit may be appropriate where industrial parties are involved. They do assume that FEC is being paid by the Industrial Collaborators. In some circumstances other collaboration agreements drafted by the University may be more mutually beneficial.
Studentship Agreements
These are agreements whereby a Company is involved in the PhD studies of a student of the University since it agrees wholly or partially to sponsor the student, by providing a contribution to fees, stipend, materials and travel and sometimes co-supervision of the student and access by the student (and his supervisor) to Background Intellectual Property and skills or the Company and experience of the industrial environment.
It is important to emphasise that in such Agreements the Company is invariably given access not only to the student but also to the supervisor and a wide intellectual base of the University.
The same issues arise as those relevant in Research Collaborations generally. However, with Studentships there are further requirements – we must ensure in particular that the student can be examined and present a thesis in respect of his work as well as produce papers for academic publication. A Company will often want to limit these publication rights and we need to ensure that any restriction is reasonable and proportionate. The continued rights of access by the University to Foreground IP developed under the project may also be important if the line of study is one which may merit further enquiry. Overall these academic interests must be balanced with the need for the commercial participator to see a return on its investment.
Terms will vary depending upon various matters the financial contribution and where is derives from, the amount of time the student will spend with the Company and/or working with its proprietary information and the scope of the project.
Example of Studentship (to be added)
Material Transfer Agreements
These are agreements by which a party (usually a research organisation) (“Provider”) provides to another (also a research organisation) (“Recipient”) materials which may be used in the Recipient’s research activities. The nature of the materials is various – they could be software, a compound or biological material. The terms provide that the Provider remains the owner of the materials but (as it is permitting the Recipient to use them) that the Recipient may use for specified purposes and subject to various terms. The terms will include provisions that the materials are used entirely at the Recipient’s risk; must be kept confidential; require results to be shared with the Provider; may require prior approval by or at least acknowledgement of the Provider in any publications. In respect of IP in the results arising from the Recipient’s use the Provider will sometimes seek to reach ‘through’ so that it owns all these results. The Wellcome Trust model agreement provides that ownership of IP in the results (generated in consequence of the use of the materials) may be reasonable where the IP is a modification or improvement to the materials, but that a broader reach though is not reasonable. This is our general approach. The Provider generally dictates the terms of the supply of materials.
The terms we normally use are set in this MTA example.
Occasionally, Industrial parties will wish to supply or receive materials under these arrangements. Here particular care is needed that any ‘reach through’ in respect of University IP is reasonable. If we are supplying materials to an industrial partner it may be worth considering whether an Evaluation Agreement (whereby the user pays a fee to examine materials) or a Confidentiality Agreement may be more appropriate.