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“Negotiating Effective Inter-institutional Agreements – Living in

Harmony”

Federal Partners in Technology Transfer

Conference and Awards Ceremony May 30, 2003

Beverley SheridanPresident, Technology NOW

403-246-5939info@technow.ca

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Inter-Institutional Relationships

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Circumstances that Create a Need for I-I Agreements

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

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Circumstances that Create a Need for I-I Agreements

Circumstances that Create a Need for I-I Agreements

… and the parties have decided to commercialize.

Not just publish the results.

There is joint ownership of intellectual property

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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 situationIf your partner is in the US …

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Inter-Institutional RelationshipsInter-Institutional Relationships

It’s really about expectations

• Are they realistic?• Are they different from each other?• How do we manage them?

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Inter-Institutional RelationshipsInter-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

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Critical Issues That Need to be Addressed in Your I-I AgreementCritical Issues That Need to be

Addressed in Your I-I Agreement

1. Patent and IP Issues.2. Who leads and who follows?3. Who pays for what?4. How to split the spoils?5. Keeping in touch.6. Records.7. When problems arise.

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Critical Issues That Need to be Addressed in Your I-I AgreementCritical 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.

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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.

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Patent & IP IssuesPatent & IP Issues

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

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Who Leads & Who Follows?Who Leads & Who Follows?

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Who Leads & Who Follows?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?

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Who Pays the Expenses?Who Pays the Expenses?

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Who Pays the Expenses? And When?

Who Pays the Expenses? And When?

• Patent and legal costs

• Marketing costs

• When does cost sharing start?

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Splitting the SpoilsSplitting the Spoils

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Splitting the SpoilsSplitting the Spoils

• Should it be 50 – 50?• Who else gets paid?• Administration fee for lead group?

This is different fromsplitting the expenses

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Keeping in TouchKeeping in Touch

This is where most of the deals come apart.

You will likely never meet the otherparties face-to-face.

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Keeping in TouchKeeping 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 on every form of correspondence that relates to the file.• Insist on timely execution of all documents especially patent related documents.

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RecordsRecords

• who gets what?• where do original documents reside?• non-lead group should be copied on every type of correspondence related to the file.• who administers after the deal is signed?

You May Have to Take Over!

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When Problems AriseWhen Problems Arise

You Need to be prepared for:

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When Problems AriseWhen 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.

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When Problems AriseWhen 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

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When Problems AriseWhen Problems Arise

Keep the Dialogue Going

Meet in Person if you Can

Keep the Lawyers Out

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SummarySummary

1. I-I Agreements are guides for managing jointly owned IP.

2. Way to manage divergent expectations of the parties involved.

3. Examine inventorship carefully.4. Decide who leads – how the parties

will interact.5. Keep the dialogue going.