advising on IP rights and revenue streams
the challenge:
Our university client required advice regarding a patent
application filed by a North American company for certain research
work carried out by the university. The work itself had largely
been completed but no formal agreement had been entered into
regarding the work or providing for the ownership or exploitation
of intellectual property rights (IPRs) arising from it. It was our
challenge to ensure that the university generated a revenue stream
from its research.
our approach:
We advised the university on the ownership of the invention and
on the options available, taking into account the good working
relationships between the university and the company and the
desirability of achieving an amicable resolution. We subsequently
prepared a proposal with the university, under which the IPRs would
be assigned to the company in return for a share of licensing
revenues. We then negotiated the key commercial terms on the
university’s behalf with in-house counsel and prepared and
negotiated an agreement (governed by English law).
the results:
Share of the licensing revenues secured as well as the right,
notwithstanding the IPR assignment, to initiate and conduct
licensing negotiations, allowing the university to take advantage
of its contacts and expertise in a particular area; whilst also
reconciling the contrasting general approaches of the university
and the company to issues of exclusions and limitation of
liability.