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May 15, 2017

What To Consider When Entering Into A Research Agreement

When it came to extending the product lifecycle of their novel battery packs, leading US manufacturer Tesla needed support from one of the world’s frontrunning researchers. In a bid to improve their already impressive data, Tesla teamed up with Jeff Dahn of Dalhousie University to create the NSERC/Tesla Canada Industrial Research. Through their joint venture, the two aim to lower the cost of lithium-ion batteries; increase their lifetime; and increase energy density.

Many businesses, such as Tesla, require the innovative ideas and knowledge of an established research partner to transform their idea into a market leading product. However, when the developed product becomes profitable or gains value, how do you establish who has the rights to this creation?

In cases such as this, a collaborative research agreement can help to address any ambiguity and clearly outline the entitlements of both organisations. A collaborative research agreement, which often involves joint efforts between an academic organisation and commercial entity, can take many forms depending on the complexity of the technology or innovation.

Before entering into a research agreement companies should take their own advice and do some research into the potential legal implications, or consult a legal advisor who can guide them through the process. For example, when partnering with an academic institution the publication of the research may be a necessity to maintain their charitable status. Most academic research is justified as a charitable activity and in doing so must be published for the benefit of the public sector. Companies collaborating with an academic institution should consider this before entering into an agreement, in case there are some elements that need to be kept confidential.

If you are particularly concerned about privacy, organisations can discuss a short delay to the publication of the findings to help protect any sensitive or lucrative information being inadvertently leaked, however, this delay can be up to six months.

Intellectual property (IP) is, of course, one of the most popular topics to be discussed when entering into this type of legal contract. Who has ownership over the resulting technology? Who can use and adapt it going forwards?

Model agreements can help to successfully negotiate the ownership and management of resulting intellectual property and allow both parties to maintain an effective working relationship going forward.

There may also be a need to clarify intellectual property and tacit knowledge or ‘know how’ that was pre-existing but contributed to the new product/service/findings.

Most importantly, both organisations need to establish what they have contributed, what its value is, and try to determine what impact that may have in the future and what is entitled to them in the future. 

This article was first published on Business Wales on the 15th May 2017. Read the article here>>>

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