The goal of protection of the intellectual property of the partners is handled through collaborative research and development agreements and/or separate intellectual property (IP) agreements. Such IP agreements define both background IP and IP anticipated to be developed through the project activities.
Parties to the agreement
Optional, and normally beginning with “Whereas” followed by the intentions of the parties, these clauses specify relationships and the intent to protect the intellectual property of the partners.
Intellectual property assets (IP assets) are: Those intangible assets that may be protected by formal legislation (e.g. patents, trade-marks, industrial designs, copyrights, integrated circuit topographies, plant breeders’ rights) or that are provided national and international value (e.g. know-how, trade-secrets). If appropriate to the project, specific types of IP may be identified, such as “software”, “industrial design” or others relevant to the specific nature of the expected IP resulting from the project activities.
Freedom to Operate
The official title of the project as it appears in other documents is specified. The project identifies the scope of the intellectual property agreement. Background to the project may be included, such as the nature of the project, its funder (if appropriate), principles under which it is conducted, and others.
Factors influencing exploitation rights
IP terms and conditions
- Disclosure of IP resulting from the project’s activities. How IP should be disclosed to the parties should be identified. A separate disclosure agreement or an invention disclosure form may be used.
- Evaluation of IP resulting from the project’s activities. It may be appropriate to identify another party that will evaluate the value of any IP resulting from the project.
- Ownership of IP resulting from the project’s activities. Colleges and institutes normally assign ownership to the industry partner, although there are examples of shared ownership.
- Assignment of IP. It should be clear as to how the IP will be assigned to the respective party. It may be part of the overall IP agreement, an Invention Disclosure agreement, or there may be a separate IP Assignment form if the IP cannot reasonably be anticipated in advance.
- IP not disclosed in the project deliverables. There may be situations when IP cannot reasonably be anticipated and may not be disclosed during the project. A clause that specifies what happens to that IP may be considered.
- The return to the College/Institute. When the College/Institute has an ownership stake in the IP and either assigns or licenses the IP to the industry partner, there should be a fair return to the College/Institute. This return may have various forms – at a minimum a non-exclusive right to use the research results for educational purposes. Revenue-sharing clauses may also be included.
- Re-assignment of IP/time limited license. The College/Institute may wish to include a clause that re-assigns rights to the College/Institute if the industry partner is not exploiting the IP. Another approach is to time limit the rights of the partner where the partner is to exploit the IP, allowing it exclusivity for a number of years, and at the end of that period, the College/Institute and the industry partner both having non-exclusive rights to exploit the IP.
- Subcontractors and students. Where any student or sub-contractor works on the project, the College/Institute or the party engaging the sub-contractor should ensure that it has acquired any rights in the IP that the student or sub-contractor acquires by virtue of his/her involvement in the project.
- See the following reference for additional details.
- Disclosure of project results. How the overall project results or deliverables are disclosed or used may impact on the protection and use of IP resulting from the project, and should be included in the IP agreement.
- Limits of liability/warranty and/or indemnification clause.
- Governing law, normally of the province/territory and of Canada.
- Other as mutually agreed upon.