UK: Intellectual Property Issues In Industry-Academia Collaborations

Last Updated: 7 June 2017
Article by Barbara Rigby and Philip Price

If you have identified an interesting opportunity for a research or development collaboration and are discussing a potential agreement, then Intellectual Property (IP) is one of the key factors that will need your consideration. This article provides clear, practical guidance on how to approach the key IP issues that can arise before, during and after such collaborations.

1. Know your assets

IP is a collective term for intangible assets, which include know-how, inventions, designs and trade marks. New IP is likely to be developed during any research project, but both parties may also bring pre-existing IP ("background IP") to the table. It is important to be aware of your background IP and ensure it is adequately protected through IP Rights, e.g. patents, before entering into collaboration negotiations.

You should identify your background IP in any R&D agreement and set out the terms under which your collaborator may use it. A typical scenario is to grant your collaborator freedom to operate via a license, possibly free of charge, for at least the duration of the R&D project.

It is important to appreciate from the outset that one party's background IP may be so fundamental to the project that the other collaborator may require a license to commercialise the product/service after the R&D project has been completed. Remuneration may be appropriate at that stage, e.g. through royalty or milestone payments.

2. Share and safeguard information

Effective collaboration cannot exist without open communication, so being secretive or treating collaborators with suspicion would clearly be counter-productive. To safeguard both sides, consider adequate protection for any important background IP before it is disclosed to the other party...

It is also a good idea to establish clear guidelines as to what information may be published, and when. On a practical level, this may mean that sufficient notice must be given to the other party before a publication is made, and each party may have the right to veto the inclusion of certain information in a publication. Of course, any public disclosures relating to a new invention or design must be delayed until after any desired patent or design application has been filed.

3. Agree on responsibility

The collaboration agreement should set out who is responsible for making decisions about whether protection for IP generated as part of the collaboration ("foreground IP") should be sought, when to do so, and in which jurisdictions. Also agree on who will make decisions during the examination of any patent applications that are filed, who will determine how to enforce the IP rights, and who will bear the costs.

4. Consider ownership of new IP

Successful R&D collaborations will generate new "foreground" IP, so it is important to think ahead about who will own any such IP.

IP ownership rules vary from country to country. Inventors typically have the initial ownership of their invention, but national laws and/or employment agreements may well determine that ownership rests with another party, usually the inventors' employer. Particularly in the case of universities, the source of any funding for the relevant research may also affect ownership.

The issue of ownership of foreground IP can be a stumbling block in collaboration negotiations. Joint ownership is a possibility, but this can have significant drawbacks, as explained in Box 1 below, so it is advisable to come to an alternative arrangement. Although ownership of IP can be advantageous, ensuring that both parties receive the broader benefits provided by the collaboration should be the overriding objective during negotiations.

BOX 1 – Pitfalls of joint IP ownership

Joint ownership of IP may seem like a fair and straightforward option, but there are good reasons why it should be avoided.

Divergent IP strategies

If the collaborators have different business aims, who should direct patent strategy? To give just one example, a company working in the field of cancer might accept a limitation of the patent claims to cancer, whereas that might be unacceptable to an academic co-owner wishing to grant licences in other fields of use. Any such decisions will also impact on costs, which can lead to disagreements between co-owners with often very different patent budgets.

Enforcement of a co-owned patent can also be problematic because in many countries, all co-owners must be involved in the litigation of a patent. If there is no common interest to enforce a co-owned patent against a third party, a co-owner may be unable to protect his interests.

Impact on patent exploitation

Co-owners are generally each permitted to commercialise the patented invention without the consent of the other co-owners. However, in most countries, one co-owner of a patent cannot grant a licence to a third party without consent from the other co-owner(s). This can put a non-manufacturing co-owner of a patented commercial product at a significant disadvantage.

It is therefore advisable to try to come to an agreement whereby the IP is owned by a single party. That said, most of the problems with co-ownership are not realised in the early stages of a patent's life. Therefore, it can be pragmatic to file a patent application in the name of co-owners, and then arrange for an assignment from one co-owner to the other.

5. Remain flexible

The most common scenario following industry-academia R&D collaborations is for the university to own the resulting IP and to grant the industry partner a non-exclusive licence to use the IP in a specified technical field and/or geographical area.

The collaboration agreement could, alternatively, grant the industry partner the right to negotiate for an exclusive licence to the IP, or to buy the IP outright from the university. The agreement may specify that the university has the right to use the IP and the technology for academic research and teaching.

It is important to develop a broad framework agreement and be flexible within it, so that each set of results does not cause fractious re-negotiation. The framework agreement can set out where non-exclusivity and exclusivity will exist, and when IP will be owned by the university or the industry partner.

The UK Intellectual Property Office has recently launched the "Lambert 2" toolkit for industry-academia IP negotiations. It includes 11 model agreements relating to a variety of commercial situations, as well as helpful guidance notes. They are easy to modify so that the wording can be tailored to your needs.

This article was recently published in IN-PART: IN-FOCUS Biotechnology Issue 5. Click here to view the publication.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.