R & D Collaborations And Technology Transfer
Technology is dominated by two types of people: those who understand what they do not manage, and those who manage what they do not understand. Putt's Law (www.quotationspage.com)
The skills and resources to innovate, develop and exploit new technologies are not always available within an individual company. Working together with an external company, either a competitor or a company in a different line of business, can produce new ideas and ultimately new products that would not have been possible "in-house".
Collaborations between two or more parties in the field of research & development can take a number of forms. At its simplest, a collaboration may involve buying in research services in the same way as any other service is purchased. The more typical notion of a joint venture, however, involves each party carrying out a part of the research and agreeing to share the results. Alternatively, the parties may decide to set up a new company to carry out research and exploit the results. The collaborators may contribute financing and/or staff to the joint venture company. Each will then want a say in how the company is managed and run.
It is where both parties contribute IP and other resources to a research project that the most interesting issues arise and so the focus here is principally on such joint collaborations. The various stages in a technology development collaboration - from the very first steps towards a research partnership through to the commercial exploitation of the results - are discussed below. At each stage it is particularly important to agree who owns and who has the right to use the "background" and "foreground" intellectual property rights contributed to and created during the collaboration. These intellectual property rights may have enormous value but if the issues of ownership, licenses and protection are not considered, the worth of those rights may remain unrealised or be lost altogether.
Finding a Collaborator and Looking for Funding
Once a lack in resources has been identified, or it has been decided that external collaboration is "a good thing", a collaborating partner needs to be found. In many instances, the choice of collaborator will be obvious. In other cases, some investigation will be needed to identify the best partner. Many companies use their contacts in the industry or with customers, suppliers or advisers in order to find a collaborator. Others may make use of on-line technology exchanges such as those hosted by OSEC Business Network Switzerland (www.osec.ch) or The Technology Exchange (Once a lack in resources has been identified, or it has been decided that external collaboration is "a good thing", a collaborating partner needs to be found. In many instances, the choice of collaborator will be obvious. In other cases, some investigation will be needed to identify the best partner. Many companies use their contacts in the industry or with customers, suppliers or advisers in order to find a collaborator. Others may make use of on-line technology exchanges such as those hosted by OSEC Business Network Switzerland (www.osec.ch) or The Technology Exchange (www.uktech.net) to advertise their willingness to collaborate and to publicise the technology that they can bring to a research project. Of course, the possible ways to identify and approach a potential joint venture partner are limitless.
One of the parties may be involved for the sole purpose of providing funding. Even so, the funding party will almost certainly want to get involved in the contract negotiations and, unless their sole business is providing finance, they may want some right to the IP generated either by way of ownership or access licenses.
One of the most important steps that should be taken before discussions on any collaboration begin is the signing of a confidentiality agreement, often called a non-disclosure agreement (or NDA).
Some information can only be protected by confidentiality obligations, either because it does not meet the criteria for patenting or because its value would be lost if it were to be published. For this type of information, a confidentiality agreement is crucial. However, it is advisable to enter into a confidentiality agreement in any situation where sensitive information will be or is likely to be discussed. For example, if information is to be disclosed about inventions for which no patent application has been filed, a confidentiality agreement can be crucial. If there is no agreement in place, any information that is disclosed may be considered public information. Once sufficient information about an invention is public, the invention is no longer novel. As novelty is an essential precondition for obtaining a patent, once information about the invention has been disclosed the invention may no longer be patentable, at least in the vast majority of countries. One major exception to this rule is the USA, where inventors have one year from first disclosure or publication of their invention within which to file a patent application with the US Patent Office. But filing in the USA will not cure the lack of novelty in the eyes of other national patent registries.
Obligations of confidentiality may arise automatically in certain situations, without the need for a written confidentiality agreement. For example, under Swiss law an employee owes a duty of confidentiality to his employer in respect of sensitive information that he receives in the course of his employment. However...
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