How to mitigate the risk of intellectual property collaboration

The Covid-19 pandemic has rallied a concerted and collegiate global effort to develop a cure. Teams of researchers from different enterprises are collaborating to seek solutions through computer simulations, the repurposing of existing drugs, and the development of new vaccines.

Many pharmaceutical companies have partnered with academics, using their expertise to accelerate the search for a potential cure. In light of this, it is expected that there will be a surge in co-owned patent filings; however, jointly owned patents carry particular risks and it is important to mitigate these risks where possible. Some practical advice on the different aspects of Intellectual Property for a successful collaboration are:

Confidentiality

Ideally, rights to an invention are secured by filing a patent application prior to disclosing any details to a third party. This is not always possible however, leaving inventors feeling unsure as to how much detail to disclose to a third party to initiate collaboration. To avoid saying too much (which may harm patentability), it is advisable to keep discussions broad and generic during the early scoping phase.

Once a potential collaborator is found, a non-disclosure agreement (NDA) should be signed by both parties prior to entering into a detailed discussion on the invention. An NDA can help to mitigate against breach of confidence and can help protect the potential patentability of your invention.

The Good, The Bad, and The Ugly of Co-owning IP

Co-ownership is a matter of national law; therefore, the rights provided to co-owners differ by country.

In the UK, the benefit of co-ownership is that by default co-owners enjoy an equal and undivided share in the patent and have mutual exclusivity in using the patent. The default may be changed by agreement, either before or after a patent application is filed.

As a co-applicant, one party cannot amend the specification, grant a licence under the patent, or assign or mortgage the patent, unless agreed by all parties. Furthermore, while each owner can sue for infringement without the permission of the others, the others automatically become a party to the proceedings. The others are however only liable for costs if they take an active part in the proceedings.

Maintaining a Positive Collaboration

A joint agreement between two or more parties can assist in maintaining a positive collaboration where all parties are recipients of mutual benefit.

Thus, prior to the onset of any collaborative work, each party should consider including clauses in the agreement that assign responsibilities relating to:

1. The cost of patent prosecution,
2. The decision making process during patent prosecution,
3. Licensing, assignments or mortgaging the patent,
4. Maintaining the resulting patent(s),
5. Which party will enforce any IP rights generated, and;
6. Dispute management and the forum in which any disputes should be heard.

For fruitful collaborations, always ensure an agreement is drafted (and executed) prior to commencing any collaborative work, clearly stipulating the roles and responsibilities of each party. If not agreed in advance, at least formalise in a follow up email what was discussed.