Collaborations with Industry: general principles

Collaboration with industrial partners is important in today’s scientific landscape. In order to ensure that these relationships are mutually beneficial, it is important that all parties recognize the nature of the proposed relationship, so that strategically critical issues are agreed upon in advance. There are different kinds of collaborations with industry, including the following:

In research collaborations research expertise and scientific know-how are primarily provided by University staff. Companies mainly provide cash or resources (i.e. in kind) but sometimes also scientific input. These collaborations are likely to generate new ideas and it is important that control of such new results, their exploitation potential and publication mechanisms are agreed upon beforehand.

Research Collaboration Agreements

In research collaborations research expertise and scientific know-how are primarily provided by University staff. Companies mainly provide cash or resources (i.e. in kind) but sometimes also scientific input. These collaborations are likely to generate new ideas and it is important that control of such new results, their exploitation potential and publication mechanisms are agreed upon beforehand.

Consortium Agreements

A Consortium Agreement is a type of Research Collaboration Agreement. Consortium Agreements are required when several parties plan to collaborate in a research project. Examples are EU projects or other projects in which public/ private partners are jointly funding the research. In certain fields of strategic interest to companies, it is also possible to set up a consortium in which all the financial support is provided by industrial partners. The same issues have to be addressed as in a standard industrial research collaboration project; however special attention needs to be paid to the newly generated intellectual property. In general, the main principles are: i) ownership follows inventorship; ii) commercial user(s) pay a compensation fee to the owner (the companies usually has a priority right to commercial access), iii) costs are borne by the commercial users. Templates for Consortium Agreements have been developed over the years for use under different funding schemes, such as the EU Framework programmes or fully funded industrial initiatives, such as CTMM or various NGI funded consortia.

In Research Collaboration Agreements and Consortium Agreements Ownership, Exploitation Rights, Publication Rights and Financial aspects are generally structured along the following principles:

Intellectual Property (IP) Ownership in collaborative research projects
It is unusual to grant ownership of new Intellectual Property (IP) in return for receiving contributions to the research, even where full overhead is paid. This is different in Service Agreements.  

Publication rights
Since the reason for undertaking research is to be able to fulfill the university’s key mission to research and educate, the right to publish results is critical. The common approach is to share proposed publications among the partners. Each partner can then object on limited grounds to the publication. These are: the publication contains the objector’s results or confidential information, or the objector wants to file a patent or similar application. Such objections require detailed description of the objection and its grounds. The first ground may only require the publishing party to remove the objected-to text. The second one usually gives the objecting party the right to delay the publication for a few months. However, the common solution is to find an amicable way to remove any objections.

Service Agreements

Service Agreements (sometimes referred to by industry as "contract research") arise when the University provides access to existing equipment, materials, IP/Know-how to a company. For example, a company would like to use to have some of its materials analysed in return for payment for the services rendered.   Whether a scientist would want to do such work is up to the scientist, the head of the department and the institute: income from utilisation of underutilized equipment makes sense. But this type of relationship needs to be carefully managed such that a research laboratory does not become an outsourced service unit of the company.   The key differences between research and service agreements are the control over the results and their publication. Contrary to research agreements, in service agreements the company usually has full control. In compensation for this ownership, the budget the institute makes is based on a different costing model.

Exploitation rights
It is customary that ownership of IP rights and control of the research results passes to the company. The university will usually not receive any additional payments for this transfer.

Pre-existing knowledge
It is important to make sure that ownership of existing knowledge or rights is not transferred to the company, or that the company is entitled to use such knowledge without compensation. Additionally such rights may conflict with rights granted to others (e.g. in the course of research projects). Additionally, granting a company such rights may restrict the freedom to use them in other projects, both service and collaborative research. If pre-existing knowledge or rights of the University is also needed for the effective exploitation of the results, then a separate (royalty-bearing) licence to such pre-existing/existing knowledge or rights could be offered.

Publication rights 
Since the reason for undertaking this work is essentially provision of services, publication is not always possible. However, some results may be interesting for publication. A publication mechanism may be part of a service agreement, nevertheless the company usually has the final say.

Financial aspects
Since the aim of a service agreement is to utilise existing University resources (even if there is a scientific interest in the project), then full costs should be recovered from the company, in accordance with guidelines set out for setting budgets. The institute or faculty management is proficient in creating such a budget.

Material Transfer Agreements (MTAs)

Material Transfer Agreements (MTAs) may be appropriate if materials are to be exchanged between parties to facilitate research (by either party). But MTAs are only appropriate if there are restrictions on the use or further distribution of the materials.

Confidentiality Agreements (CDAs)

Confidentiality Agreements (CDAs) may be appropriate at the beginning of a discussion between parties to explore ideas to collaborate and get feedback on potential new technology.   The intention of a CDA is to create a cloak under which information can be shared. Such information is then to be kept secret unless it meets certain criteria, for example that it was already published. The fact that discussions are taking place and the proposed subject matter is in many cases a reason in itself for secrecy.  Confidentiality clauses are part of both research collaboration agreements and service agreements. It is important to ensure that confidentiality requirements do not unintentionally restrict publication rights.

Studentship Agreements

When a company supports the efforts and research of a postgraduate student, this should be considered as a traditional research collaboration. If the student is enrolled in Leiden, it may require and agreement with the student to ensure that he/she has the same obligations and rights an employee has. In the Netherlands a PhD student is an employee.

Endowed Chairs/Fellowships

Endowed Chairs/Fellowships are regarded as donations from a company and therefore, except for public acknowledgement in the title for example, there will be no automatic rights to any Intellectual Property Rights generated by the holders of such positions.   However, if the company donates ‘time’ of one of its employees for research and teaching as a university professor, additional arrangements have to be made. Because that person is an employee of the donator all rights in results or control thereof accrues to the employer. This may conflict with the university rights and obligations as well as those of the university’s employees.  

 
Last Modified: 28-06-2011