Relevant IP-related contracts, when they are needed, and key provisions

While license agreements are the instruments for the actual transfer of technology, several other types of agreements might be required before this at different stages of the R&D process, to create the necessary safeguards and conditions to pave the way for a smooth technology transfer process down the line.

 

Type of agreement When it is needed Key terms
 

MoU

 

Usually signed at an early stage of discussions, to set out a common understanding between parties for future collaboration, with detail to be agreed in subsequent agreements

 

 

Depends on the envisaged collaboration

Terms are often not binding, with the exception of confidentiality provisions

 

 

Funding/sponsored research agreements

 

 

When R&D funding is received from an outside party

 

 

How much money will be provided, when it will be paid, and what conditions must be met in exchange for the funding, including contract milestones and deliverables

 

 

Collaboration agreements/consortium agreements

 

 

Collaboration between two or more parties on an agreed project or programme

 

 

Roles and responsibilities, governance and decision-making (typically via a steering committee made up of representatives of the collaborating parties), IP ownership, management and benefit-sharing

 

Inter-institutional agreements

 

Management of jointly-owned IP

 

 

Roles and responsibilities in respect of IP protection actions and decisions, technology transfer, sharing benefits, dealing with litigation

 

 

Non-disclosure agreements (also called confidentiality or secrecy agreements)

 

 

To facilitate discussions with potential collaborators, investors or licensees

 

 

May involve unilateral or mutual exchange of information

Undertaking to maintain the confidentiality of information received from the other party and to use it only for the specified purpose

Standard exclusions for information in the public domain, information received legitimately from other sources and information which must be disclosed by law

 

 

MTAs

 

 

For the transfer of proprietary material (most commonly, biological material)

 

 

May involve incoming or outgoing material

Who may use the material, for what purpose, who owns modifications

 

 

Evaluation agreements

 

 

To allow a party with an interest in licensing a technology to access the technology for evaluation purposes

 

 

How the technology may be used, for how long, may involve the payment of a fee, may involve option terms

 

 

Option agreements

 

 

When a potential licensee has an interest in a particular technology and wants to secure rights in the technology concerned, but is not ready to take up the technology immediately (eg if they wish to evaluate the technology, obtain finance, do feasibility studies, etc)

 

 

A potential licensee is the given the right (but not the obligation) to take up a particular technology on specified terms up to an agreed date, usually in exchange for a fee or other consideration

License terms specified upfront, which become binding if the option is exercised

Fee, option period

 

 

Studentship deeds of recordal

 

 

When CSIR staff are sponsored by the CSIR for higher degrees via a studentship, in which they carry out their research towards their degree entirely or substantially at the CSIR, using CSIR facilities

 

 

Prior to registration, an agreement must be reached on IP which may be developed by the student in the course of his/her studies, with the university at which the student is registered

Background IP recorded, ownership of foreground IP developed by the student (typically owned by the CSIR – might be jointly-owned if the university supervisor is a co-inventor), responsibilities for protecting and managing the IP, certain rights reserved for the university

 

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