IP Toolkit for Collaboration s1

IP Toolkit for Collaboration

Submission no. 6: Ronnie Georghiou, Elaine Eggington, Rupert Osborn IP Pragmatics 22 May 2014

IP PRAGMATICS FEEDBACK TO PAPER QUESTIONS

The development of a toolkit is intended to facilitate collaboration between Australian business, universities and research organisations. Consultation, feedback and input from key stakeholders are critical to the development of a toolkit that meets the needs of research and industry. The following questions are intended to assist stakeholder input into this process.

1. What features do you think should be included in the Australian IP Toolkit for Collaboration?

It will be very important to provide an introduction and background similar to the Lambert Toolkit intro (http://www.ipo.gov.uk/whyuse/research/lambert/lambert-intro.htm ) to provide guidance to parties wishing to collaborate.

Context is also important and so an explanation of the process (i.e. Term Sheet negotiation followed by agreement) and key elements (i.e. ownership and rights, financial and other contributions and university’s use of results for academic purposes) of any collaboration should be outlined.

2. We are proposing to include a model term sheet in the Australian IP Toolkit for Collaboration (see the Attachment to this paper). Is the proposed model term sheet suitable?

a. If not, please explain why. Can you suggest any improvements to the model term sheet?

The proposed model term sheet is suitable and a good start. However, the “tick-box” approach may not be flexible enough to cover the complexity of collaborative research today, where both partners undertake research on different aspects of the program, and share ownership, expertise, risk and reward.

For example, rather than a single exclusive licence of all Foreground IP to the industry partner, it may be preferable to assign certain types of Foreground IP (eg enabling tools) to the PFRO, and others (eg specific materials and results) to the Industry Partner. Similar considerations would also apply to many other aspects of the collaboration, including use of Background IP after the collaboration is complete, the resources each party will bring, sources of funding, etc.

b. Do the definitions provided under the subject areas broadly meet expectations? Please provide detailed comment. They do broadly meet expectations. Another style to consider with respect to explaining the Terms and offering suggestions to resolve commonly recognised areas that can delay or derail projects is to develop an Australian version of UIDP’s Contract Accords (see section 4 below for further details). They can be downloaded from the UIDP’s Publications portal: http://sites.nationalacademies.org/PGA/uidp/PGA_055253

c. Are there additional subject areas which you would consider to be necessary for inclusion in the model term sheet? Please provide detailed comment.

The model term sheet should also consider including the following SUBJECTS:

Project – To define the scope of the research, and determine what resources (human and other) each party will provide, and the timelines involved.

Field Definition – Technology or Application to which this collaboration applies

Territory – global, regional or country-specific

Publications - The model term sheet considers publications in a section with Confidential Information. Agreement on publication rights is often a key point of negotiation, and should perhaps be a separate SUBJECT in its own right.

Project Management – eg Steering Committee membership and decision making process

Termination, Post-Termination Rights, Governing Law

In addition to ‘Student Activity’ the term sheet may also want to include other mechanisms of engagement SUBJECTS taken from the UDIP continuum paper:

Involvement with Researchers

Access to Resources

Economic Development

Multi-faceted relationship between University & Industry

3. We are proposing to include model agreements in the Australian IP Toolkit for Collaboration.

a. Can you suggest any improvements to the model agreements in the Lambert Toolkit (including suiting the Australian environment)?

The Model Consortium Agreements (rather than the Model Research Collaboration Agreements) may be a better starting point, as they are more suited to the more flexible collaborative style used today. There will be specific aspects which need to be adapted to Australian law and current practice. For example, it may be necessary to include terms relating to Anti-bribery and corruption, Freedom of Information, Import and Export controls, etc.

b. If you have had experience with the model agreements in the Lambert Toolkit, how did it work for your organisation?

IP Pragmatics Limited in the UK was commissioned by the UKIPO to evaluate the effectiveness of the Lambert Toolkit 8 years on. Here is the link to the published report: www.ipo.gov.uk/ipresearch-lambert.pdf . In essence IP Pragmatics surveyed 256 respondents, including in-depth discussions with nearly 50 organisations. The report identifies where the Toolkit has been most useful, the areas of greatest success, and some issues and suggestions for further improvement. Further details on this survey were also presented at the annual KCA2013 conference, Sydney Nov 2013. This presentation is attached with this response [in pdf only].

We would be happy to provide further insights from the results of our consultation to the Australian Government as the “IP Toolkit for Collaboration” project progresses.

4. Have you any experience with a similar Toolkit or resource?

a. How is it similar to the proposed Australian IP Toolkit for Collaboration? b. How did it work for your organisation? c. What elements of that toolkit (including existing or model clauses) would you suggest for inclusion in the Australian IP Toolkit for Collaboration? d. What do you think are the benefits of including your suggested elements?

The University Industry Demonstration Partnership (UIDP) in the US also publishes an explanation of the University-Industry Partnership Continuum http://sites.nationalacademies.org/PGA/uidp/PGA_055253) and so provides another dimension on how business, universities and research organisation s might engage in the short and longer-term.

Rather than model agreements, UDIP have drawn up “Contract Accords” which examine specific areas which need to be agreed within collaborative research with the aim of providing practical guidance and detailed reference material that helps both parties understand these issues, address them and thereby collaborate more effectively.

Each Accord has been developed by a working group with representation from both academia and industry. Each document gives a brief introduction to the specific issue and the purpose of the clauses, then considers the principles, and gives typical ways in which they can be handled or solutions for particular situations. They do not include specific legal clauses, but instead can be used to discuss the potential options for a particular topic which may then feed through into a Heads of Terms.

In addition to the links above for the UK’s Lambert Toolkit and US’ UIDP, there is also a decision guide developed by the EU: http://ec.europa.eu/invest-in- research/policy/crest_cross_en.htm.

5. Do you have any additional comments on the proposal?

If the proposed IP Toolkit is to be widely taken up and used, then it is vital that it gets “buy- in” from all sides from the outset. This has been one of the limitations encountered by the UK’s Lambert Toolkit, for a number of reasons, including lack of awareness (especially from SMEs), and a preference for alternative agreements (especially from large industry). Whilst certain industry segments and PFROs use the Toolkit routinely, other sectors do not, which limits its usefulness. We would recommend the close involvement of representatives from PFROs, SMEs and a wide range of industry sectors in drawing up and agreeing the components of the Toolkit.

It is also very important that the Toolkit is seen to be endorsed and used by Government, both by recommending its use in PFRO-Industry collaborations which are supported by Government funding, and also through its adoption by Government departments which sponsor external research to further their government mission.