“Negotiating Effective Inter-institutional Agreements – Living in Harmony”

“Negotiating Effective Inter-institutional Agreements – Living in Harmony” Federal Partners in Technology Transfer Conference and Awards Ceremony May 30, 2003 Beverley Sheridan President, Technology NOW 403-246-5939 info@technow.ca TechnologyNOW

Inter-Institutional Relationships TechnologyNOW

Circumstances that Create a Need for I-I Agreements • Academic/scientific collaborations • Academic moves to your organization from another or one of yours moves somewhere new • “Technology Bundling” • NCE’s and Other Federal Initiatives TechnologyNOW

Circumstances that Create a Need for I-I Agreements There is joint ownership of intellectual property … and the parties have decided to commercialize. Not just publish the results. TechnologyNOW

It Becomes a Numbers Game • 2 OTTs - or more • At least 2 inventors - often many • Minimum 2 Deans or Department Heads or Directors or VPs Research - or more • 2 universities or labs or multiples • 1 or more licenses or start-ups – usually a licensing situation If your partner is in the US … TechnologyNOW

Inter-Institutional Relationships It’s really about expectations • Are they realistic? • Are they different from each other? • How do we manage them? TechnologyNOW

Inter-Institutional Relationships We also want to create a guide for licensing our jointly owned technology • present a united front • ensure there is no confusion for potential licensees TechnologyNOW

Critical Issues That Need to be Addressed in Your I-I Agreement • Patent and IP Issues. • Who leads and who follows? • Who pays for what? • How to split the spoils? • Keeping in touch. • Records. • When problems arise. TechnologyNOW

Critical Issues That Need to be Addressed in Your I-I Agreement Get these issues discussed, resolved and in a signed agreement before you start any commercialization activities. TechnologyNOW

Patent & IP Issues • Do we have all the inventors and are they the real ones? • Who files and administers the patent? • Joint ownership on US verses CDN patents • Does the organization actually “own” the the rights to the patent? Assignment issues. TechnologyNOW

Patent & IP Issues What happens if one party owns part of the IP and does not want to patent or commercialize and the rest do? TechnologyNOW

Who Leads & Who Follows? TechnologyNOW

Who Leads & Who Follows? • size and experience of the offices involved and their work loads? • does one already have a relationship with a company? • splitting areas of responsibility? • creating a marketing plan – do it together • how much authority does the lead group have? TechnologyNOW

Who Pays the Expenses? TechnologyNOW

Who Pays the Expenses? And When? • Patent and legal costs • Marketing costs • When does cost sharing start? TechnologyNOW

Splitting the Spoils TechnologyNOW

Splitting the Spoils This is different fromsplitting the expenses • Should it be 50 – 50? • Who else gets paid? • Administration fee for lead group? TechnologyNOW

Keeping in Touch This is where most of the deals come apart. You will likely never meet the otherparties face-to-face. TechnologyNOW

Keeping in Touch • Insist on regular phone meetings 1-2X per month. E-mail between. • Forget about written reports – no one writes them. • Non-lead group should always be copied onevery form of correspondence that relates to the file. • Insist on timely execution of all documents especially patent related documents. TechnologyNOW

Records • who gets what? • where do original documents reside? • non-lead group should be copied on every type of correspondence related to thefile. • who administers after the deal is signed? You May Have to Take Over! TechnologyNOW

When Problems Arise You Need to be prepared for: TechnologyNOW

When Problems Arise • the lead group is making no progress. • one party is not paying it’s share of expenses. • they won’t return your calls - they ignore you. TechnologyNOW

When Problems Arise • potential licensee tries to divide and conquer • the scientists have a falling out • there are legal problems arising out of the license agreement after signing TechnologyNOW

When Problems Arise Keep the Dialogue Going Meet in Person if you Can Keep the Lawyers Out TechnologyNOW

Summary • I-I Agreements are guides for managing jointly owned IP. • Way to manage divergent expectations of the parties involved. • Examine inventorship carefully. • Decide who leads – how the parties will interact. • Keep the dialogue going. TechnologyNOW

“Negotiating Effective Inter-institutional Agreements – Living in Harmony”