09 Feb IP Considerations for Collaborative Innovation

Magnus Johnston, a Partner at major European intellectual property firm, Haseltine Lake, discusses some of the key intellectual property issues that need to be considered by collaborative parties engaged in innovative research.

One of the key priorities of the Life Science Strategy for Scotland is to drive growth through collaboration to commercialise the output of innovation.  For a variety of good reasons, a collaborative approach to innovation can be desirable.  Commercialising the fruits of innovation will more likely than not involve protecting it through the generation or acquisition of intellectual property (IP) rights, such as patents.

But who owns the IP? Who can exploit it? Who benefits from that exploitation?  And what happens at the end of an agreement?

These are often complex questions to answer and are sometimes overlooked or at least not dealt with properly until it is too late.  Take, for example, the recent revocation of one of the earliest CRISPR patents by the European Patent Office which seems to have stemmed from a disagreement over ownership between initially collaborative parties which arose after the research had been undertaken and patents filed in respect of the results of that research.

Ownership normally flows from inventorship, but in a collaborative research program there may be multiple inventors, employed or contracted by different parties, maybe even in different countries, where different rules can apply.  Thus, at least the following issues should be addressed in any agreement between collobartive parties engaging in innovative research:

• The governing law underpinning the agreement. Because provisions, such as who owns an invention, may vary from country to country.  And nobody wants any surprises!
• Who is conducting the research? Ownership flows from inventorship so there is a need for each party to keep track of who is doing what, and documenting what has been done.
• Who will own the results of the research? Each party will normally wish to avoid a situation arising in which they cannot use the results of their research, for example, in further research which may or may not be related to the collaborative agreement.
• Who has the right to file for and prosecute IP? Sometimes even collaborative parties may disagree on what is protectable or what should be protected.  Costs and control of any jointly owned IP should also be addressed in the agreement.
• Which party has the right to exploit any IP, e.g., through licensing of the technology? Because if the IP rights are jointly owned then, absent any agreement to contrary, none of the joint owners may be able to grant, licence, assign or mortgage their share of the rights without the consent of all of the other joint owners.
• And what happens to all of the above at the end or termination of the agreement? For example, how and, if at all, on what basis are IP rights to be shared between the parties; does any party require a licence from the other party to be able to continue to carry out research?  Who will be responsible for the maintenance and renewal of IP rights after conclusion of the collaboration?

For the parties, particularly a junior party operating with limited resource, the effort involved in addressing these kinds of issues along with everything else can seem unwieldly.  But experience tells us a prophylactic approach is better than having to take some pretty nasty medicine further down the line.  The good news is that many of the best collaborators will have well thought through off-the-shelf agreements available which can be tailored to suit a specific purpose.