Definitions

Academic Publication

As a charity, the University's objectives will include the dissemination of learning or knowledge for public benefit. In addition, it's important to the career prospects of many academic researchers that they publish articles and participate at conferences. Therefore, the University and its academics will nearly always wish to publish information about the Project. All of the five Research Collaboration Agreements apart from Agreement 5 (Contract Research) allow for this.

This Agreement

It is important that changes to the Agreement are properly recorded in writing and signed on behalf of each party in order to avoid any misunderstandings about each party's commitments. A copy of the document recording the change should be kept with the original signed copy of the Agreement.

Background

It is likely that each party will make available for use in the Project, information, software or materials that already exist or that are developed independently of the Project. Each of the parties allows its Background to be used for the purposes of the Project but not for any other purpose (clause 4.2 in the Research Collaboration Agreements), although negotiations may result in Background being used, where necessary, to exploit the Results.

Specific Background

Although it may not be necessary or possible to identify all of the Background at the start of the Project, if the success of the Project depends on one or both of the parties making certain Background available, this needs to be identified and described in Schedule 2.

Note that unless identified Background is included in Schedule 2, as one of the items that a party is obliged to provide under clause 2.2 that party is not obliged to provide any Background. That will not prevent it providing Background if it wishes to do so.

Sensitive Background

If any of the Background is sensitive or for some other reason should not be disclosed beyond the researchers working on the Project, this should be identified either before, or at the time, the Background is made available. While academic researchers may want to publish Background as part of their academic publication of the Results, it may be important that the Background of another party remains confidential. It is important that this issue is resolved at the outset. Please refer to the notes on Confidential Information and Academic Publication.

Business Day

If either party is not in England, consider whether to change England in this definition. For instance, public holidays in Scotland are different.

Confidential Information

Some parties may take the view that all of their Background is commercially sensitive and must be kept confidential. If that is the case, the words in square brackets should be deleted. Alternatively, if the intention is that only Background that is identified as being confidential is to be treated as such, the words in square brackets should be included. Whether or not those words are included, any information or material that is to be kept confidential should be marked "Confidential". An example of a Confidentiality Notice may be found in the Useful resources section.

Freedom of Information

Simply stating in the Agreement that Background is to be kept confidential and/or marking it as confidential will not guarantee that will be kept confidential. As from 1 January 2005, members of the public have had the "right to know" under the Freedom of Information Act 2000 (the FOIA). This means that Universities will be obliged to disclose information on request unless:

• the information was provided by another person to the University in confidence and its disclosure would mean that the University would be in breach of confidence and could be sued by the person whose information id disclosed (that is that the disclosure would be an actionable breach of confidence on the part of the University); or
• the information is a trade secret; or
• the disclosure would harm the commercial interests of the University or another person.

Even if information is a trade secret or commercially sensitive when it was disclosed to the University, this may have changed in the interim and, whenever a request is made under the FOIA, Universities have to decide whether the information falls within one of the exemptions under the Act at the time the request is made. In practice that will often mean that the Universities will need to consult the person who made the information available before deciding whether or not they have to comply with the request.

More information on the FOIA can be found on the Information Commissioner's website.

External Funding

If any funding is provided from the public purse, e.g. any government department, the Ministry of Defence, a Research Council, a Higher Education Funding Council, JISC, a Regional Development Agency, or the European Commission, there will be conditions attached to that funding and there may be State aid issues that affect the ownership and exploitation of IP.

State Aids

Any aid granted by a Member State of the European Union or through state resources in any form, and which distorts or threatens to distort competition by favouring certain undertakings or the production of certain goods, in so far as it affects trade between member states of the European Union, is incompatible with the Common Market. As a result of this, public organisations that fund R&D may impose terms designed to ensure that there is no distortion of competition. It is important to look at the State aid implications, especially if services are being provided or IP is being licensed at less than market price; the recipient of unlawful State Aid may have to repay it.

Funding Conditions

Equally, where funding is provided by any third party, such as a charity, there are likely to be conditions attached to that funding.

It is important that the terms of the Agreement do not conflict with any terms imposed by the provider of the funding. The party receiving the funding (often, but not always, a University) should check that the terms of the funding and the terms of the Agreement are consistent. The Agreements may not be suitable for your purposes if the funding agreement or conditions impose conflicting terms.

Some (but not all) Funding Bodies will insist that the party receiving the funding ensures that its collaborators comply with those terms.

The Field and the Territory (Research Collaboration Agreements 1, 2 and 3 only)

Where the University owns the IP in any Result and grants a non-exclusive licence to the Sponsor under clause 4.5, the Sponsor's use and exploitation of that IP may be limited to a specific business or technological area or field, and/or to a specific geographical area or territory.

By granting a non-exclusive licence in a field, the University is precluded from granting exclusive rights to any third party in the same field and in the same territory, but it may grant non- exclusive licences, and may itself exploit the technology, in that field and territory.

If the Sponsor's key business area is pharmaceuticals, or its activities are limited to Europe, the Sponsor may have no need for a licence in other fields or territories, so leaving the way clear for the University, or other licensees of the University, to exploit the IP in other fields/territories.

If the Sponsor's use of the IP is not limited to a specific territory, you should insert "worldwide" in the definition of the Territory.

Good Data Management Practices

It is important that people can rely on the integrity of the research data and that adequate records are kept, not only for the purposes of filing patents but also to be able to demonstrate who created the Results for the purposes of establishing the ownership of other Intellectual Property.

Group Company

The Sponsor may be part of a group of companies and its R&D may be carried out across various companies in the group. Therefore the University allows the group to use the University's Background (clause 4.2) and to use the Results in clause 4.5 of Research Collaboration Agreements 1, 2 and 3.

Intellectual Property

The ownership and exploitation of Intellectual Property is one of the most difficult issues and the parties should try to resolve it early when negotiating the terms of the Agreements. An explanation of the different types of IP is available.

Key Personnel

Schedule 2 should contain the names of any people whose involvement is important to the success of the Project. Where most of the work is being done by one party, for example, a University, the Key Personnel may all be University researchers, but where the Sponsor is making a substantial "human" contribution to the research activities, some Key Personnel may be provided by the Sponsor. The significance of the Key Personnel is that if one of them leaves and is not replaced, the Agreement may be terminated under clause 9.2 of the Research Collaboration Agreements (clause 8.2 of Research Collaboration Agreement 5).

The Project

One of the most important parts of the Agreement is the description of the Project in Schedule 2. That Schedule and clause 2.2 determine what is to be done and the resources that are to be provided; the nature of the IP created will flow from the description of the Project and its outputs or results. It is the cornerstone of the Agreement and it is important that the researchers give serious thought to the contents of Schedule 2 so that it is complete and accurate.

R&D Tax Credits

The definition of the Project will also be important in determining what work constitutes research and development for the purposes of the Sponsor claiming R&D tax credits. Sponsors should consult their accountants about the possibility of claiming R&D tax credits.

The Sponsor's Supervisor

Where the Sponsor is making a significant contribution to the research work, the person leading the Sponsor's team should be named.