IACCM Contract Management Forum

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2015-02-16 13:16:05

IP issues in Research & Development Contract

Please, can someone tell me what the key issues a contract professional should look and take care of in a Research & Development Contract
 •  New Zealand Defence Industry Association (NZDIA)  •   2015-02-16 17:50:42
See my answer to other post on IP clauses.
 •   2015-02-17 07:26:04
In addition to the issues listed above, be sure to consider any proprietary background IP, methods, know-how, or expertise you are contributing to the results. You want to give the client the ability to use the project results while still protecting anything you want to be able to use again on future projects for other clients. For example, you may give the client a license but not ownership of the IP, or limit their use of the IP to a specific field or geographical area so you do not unduly limit your future business opportunities.
 •  Innovation Fixer  •   2015-02-24 03:13:59
Key questions:

1. BACKGROUND IP - what are you bringing to the table? What is the other party bringing? Does the commercial outcome need cross-licensing? You should ensure this licensing does not restrict your continued use in other applications in any way, unless that is part of the trade/partnership. You may wish to define the field of use quite specifically, and limit use and licensing to this area. Will your ability to sub-license the IP to other parties be limited? Again, this is a concession that's worth something.

2. ARISING IP - who will own any IP generated in the collaboration? Try to avoid joint ownership; instead one party should own and the other have licensing rights. One option is for one party to own, and the other to have exclusive rights to a field of use. Will use be limited to the parties, a so-called semi-exclusive? Will one or both parties have the right to sub-license?

The owners of any IP in a collaboration should be obliged to maintain the IP and defend it against challenge. If they decide to let e.g. a patent lapse, there should be a reversion clause which allows the licensee to take over ownership of the IP.

This is just a start.....!
 •  T. Mackey Enterprises, LLC  •   2015-02-24 12:49:48
To Whom It May Concern:
I think that there are several things to be concerned about in a R&D Contract. Whether you are contracting with a Government or another business entity, here is a list of terms, (in order of importance), that I think should be clearly described:

1) Statement of Work: Clearly describe what will be researched/develop.
2) Period of time that the research will be conducted.
3) Who, (key personnel/researchers), in your company will conduct the research.
4) The contract value of the research in the monetary unit applicable to your country.
5) The frequency of research progress reports that will be submitted to the Buyer, (Schedule of Deliverables), the format that the progress reports will be in, and the monetary value of each Progress Report in relation to the Total Contract Value/Price so that your company can submit invoices for incremental payments until the Period of Performance/R&D Contract is completed. Usually progress reports are delivered on a quarterly schedule.
6) Ownership of any Inventions or patents during the research by your company's researchers.
7) Use Rights for any Technical Data, S/W, or any Intellectual Property OTHER THAN INVENTIONS OR PATENTS, which is created during the performance of the contract retained by your company.
8. The ability to terminate the contract if it's apparent to both parties that the research is futile.
9. The type of contract: Fixed Price, Cost Reimbursement, Time & Material, etc.
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