Introduction
This Lambert Toolkit contains two sorts of agreement:
- five model Research Collaboration Agreements, each between one commercial sponsor and one academic institution; and
- four model Consortium Agreements designed to be used where more than two parties are carrying out a research project.
Maximising Innovation and Finding a Workable Compromise
The aim of the model agreements is to maximise innovation. The cornerstone of the five model Research Collaboration Agreements is that, at the least, a commercial Sponsor should have the right to use the Results on a non-exclusive basis so as to promote the use of the Results and therefore innovation.
Critical to model Consortium Agreements B and C is that there is an Exploitation Plan and that if a party tasked with exploiting the Results does not do so, the rights to exploit other parties' Results come to an end. Model Consortium Agreement A creates a level playing field under which all the parties have the right (but not the obligation) to exploit the Results.
The model agreements have not been developed with the aim of maximising the commercial return to the universities; the aim is to encourage university and industry collaboration and the sharing of knowledge. They do not represent an ideal position for any party; depending on the circumstances they are designed to represent a workable and reasonable compromise for both or all parties.
The Five Model Research Collaboration Agreements (One to One)
Each of the five model Lambert Research Collaboration Agreements, provides a variation on the theme of who owns, and has the right to exploit, the intellectual property (IP) in the results or outcome of the Project:
Lambert Model Research Collaboration Agreement 1 - the University owns the IP in the Results and grants a non-exclusive licence for the Sponsor and its Group Companies to use the Results in a specified business area (field) and/or a geographical area (territory).
Lambert Model Research Collaboration Agreement 2 - the University owns the IP in the Results and licenses the Sponsor and its
Group Companies to use the Results in a specified field and/or territory, and the Sponsor has a right to negotiate to acquire an exclusive licence in relation to certain Results;
Lambert Model Research Collaboration Agreement 3 - the University owns the IP in the Results and licenses the Sponsor and its Group Companies to use the Results in a specified field and/or territory and the Sponsor has a right to negotiate to take an assignment of the IP in certain Results;
Lambert Model Research Collaboration Agreement 4 - the Sponsor owns the IP in the Results, but rights are reserved to allow the University to use the Results for academic purposes (including academic publication) on certain conditions to protect the confidentiality of the Sponsor's information and so as not to jeopardise the possibility of the Sponsor obtaining a patent for the Results; and
Lambert Model Research Collaboration Agreement 5 - the Sponsor owns the IP in the Results, and the University has no right to publish the Results. (This sort of agreement is usually referred to as a Contract Research or Research Services Agreement, rather than a Research Collaboration Agreement.)
The Four Model Consortium Agreements (Multi-party)
The three model Lambert Consortium Agreements use the same terminology and have the same structure as the five Research Collaboration Agreements, but contain additional provisions to cover some of the complications that arise as a result of having more than two parties.
The Consortium Agreements cannot cover all the circumstances that might arise when a group of universities and industrial "partners" get together to carry out research, but they illustrate terms that might apply in three possible scenarios and provide a starting point to help shape the thinking of the Consortium members.
Lambert Model Consortium Agreement A – Each member of the Consortium owns the IP in the Results that it creates and grants each of the other parties a non-exclusive licence to use those Results for the Purposes of the Project and for any other purpose, so that any member of the Consortium may exploit the Results.
To maximize exploitation, there is an unfettered right to sub-license. (The scenario assumes that the parties do not have an agreed exploitation strategy.);
Lambert Model Consortium Agreement B - The members of the Consortium have agreed an exploitation strategy and have decided that one of their number (the Lead Exploitation Party) is best suited to carry out the exploitation of the Results. The other parties therefore assign their IP in the Results to the lead Exploitation Party who undertakes to exploit the Results. (Alternatively the Lead Exploitation Party is granted an exclusive licence.) In return the Lead Exploitation Party agrees to pay the other parties a share of revenues generated from that exploitation or a success payment.
Lambert Model Consortium Agreement C - The members of the Consortium have agreed an exploitation strategy and have decided that different parties are best placed to exploit different Results; they have different core businesses and are interested in different Results. Each takes an assignment of IP in the Results that
are germane to its core business and undertakes to exploit those Results so as to comply with the terms imposed by a funding body.
Lambert Model Consortium Agreement D - Each member of the Consortium owns the IP in the Results that it creates and grants each of the other parties a non-exclusive licence to use those Results for the purposes of the Project only. The members of the Consortium do not have an agreed strategy for the exploitation of the Results. If any member of the Consortium wishes to exploit the IP in the Results or the IP in the Background of another member of the Consortium, it will have to negotiate a licence to allow it to exploit that IP or to take an assignment of that IP. If an approach is made on that basis, the owner of the IP undertakes to negotiate with the member wishing to take a licence or assignment. (This form of agreement is not likely to be used for research funded by the Technology Strategy Board Collaborative R&D Programme where the parties should have an agreed exploitation strategy).
Because there are more parties to the Consortium Agreements, they have provisions that do not appear in the Research Collaboration Agreements:
- Project Management (clause 3);
- Financial Management and External Funding (clause 4); and
- Expulsion and the addition of new parties (clause 10).
Consortium Agreements B and C have been drafted for use with the Technology Strategy Board's Collaborative R&D Programme but, with a few changes, may be adapted for other circumstances.
How to Decide
To help you decide which of the five Research Collaboration Agreements most closely reflects the circumstances of your project, you will find a Decision Guide. This will guide you through some of the principles and criteria that you may wish to take into account when deciding who should own and have rights to exploit the Results. You may find it helpful to consult this before using any of the Agreements.
In reality, Research Collaboration Agreements 2 and 3 may be combined so that the Sponsor has the right to negotiate an exclusive licence and/or an assignment. The outcome of negotiations could be, for instance, that the Sponsor takes an exclusive licence in one territory and an assignment of IP in a different territory.
There is no Decision Guide to help you to decide which of the three Consortium Agreements to use because there are too many possible permutations for multi-party research. You should use the Consortium Agreement that most closely fits the circumstances of your research project, bearing in mind that you may need to adapt it to meet the actual circumstances of your project.
Joint Ownership
None of the five Research Collaboration Agreements deals with the joint ownership of IP because this occurs more rarely than people think and it is more difficult for both the Sponsor and the University to manage. The Research Collaboration Agreements adopt the simpler approach that one or other of the parties will own the IP, but the result of negotiations may be that the University owns the IP in Result "A" and the Sponsor owns the IP in Result "B".
Consortium Agreement A contains an example of a joint ownership provision in clause 5.4.
The members of the Lambert Working Group recommend that you avoid joint ownership where possible. If it is important that more than one party owns some IP, a better way forward may be to consider whether some of the IP should be owned by one party, other IP by another party and so on, rather than having several or all of the organisations participating in the project having a joint interest in the ownership of the IP.
If you do decide to have joint ownership it is important that the Agreement sets out what rights each joint owner has to exploit the IP. For an example of this please see clause 5.7 in Consortium Agreement A.
Underlying Principle
The underlying principle of the five Research Collaboration Agreements is that, unless there are exceptional circumstances, the industrial Sponsor will, as a minimum, pay the University on a full economic cost basis and in return will receive a royalty free non-exclusive licence to use the Results of the Research (Agreement 1). The more the Sponsor pays, the more rights it receives so that, where the Sponsor owns the IP in the Results and the University retains no rights (as in Agreement 5), the Sponsor's contribution will be at full market rates. This principle is not cast in tablets of stone, but was what the Lambert Inner Working Group had in mind when negotiating the terms of the Research Collaboration Agreements.
That approach is too simplistic for use in the model Consortium Agreements where there are more than two parties, but when determining the Payment Plan and the return to each of the parties from the exploitation of the Results of the research, the contribution that each party has made (financially and other wise) to the Project should be taken into account.
Jurisdiction
These Guidance Notes and the model agreements are designed to be used only when the agreements are governed by English law. If you want to enter into a contract under a different legal system, you can adapt the model agreements, but you will need to take legal advice from a lawyer qualified to advise on that country's law and who can help you adapt the model agreements where necessary to comply with local laws.
Application of these Notes
For ease of reference, the following notes have been divided into those that apply to the five forms of model Research Collaboration Agreement and those that apply to the four forms of model Consortium Agreement.
Guidance Notes for the Research Collaboration Agreements
Guidance Notes for the Consortium Agreements
