Research collaborations are becoming more and more important. Due to the increasing complexity of the development of modern, especially pharmaceutical, products, even large pharmaceutical companies rely more and more on research collaborations to develop innovative products.
However, to avoid quarrels between the cooperation partners about inventions made in the course of their cooperation, which may result in lengthy and costly litigation, a few things should be kept in mind. The following list serves as a suggestion as to which aspects should be considered before entering into a collaboration:
- Establish regulations as early as possible, in particular:
- Who makes the arrangements: the researchers themselves or the institutes/departments where they are employed?
- Is there a functioning employee-inventor reporting system and is it adhered to in practice?
- Document as precisely as possible throughout the cooperation what was contributed (also "off the record"), especially by collecting and archiving:
- All email/chat correspondence;
- Meeting agendas;
- Meeting notes and presented papers/slides and attendance lists.
- Document what was already known, or what was already state of the art but still unknown to the cooperation partner;
- Document what had been previously developed internally in the research area.
- If possible, make a choice of law to define which law should apply to the inventor community with respect to inventions made in the course of their cooperation (not only to the collaboration agreement), and a matching agreement on the place of jurisdiction.
- Consider an arbitration clause to resolve disputes in camera, as company secrets may be involved.
- Agree on arrangements regarding the shares in the inventions made in the course of the cooperation (pro rata, if applicable, determination according to milestones, etc.).
- Agree on use rights:
- Note that a cooperation partner may only be able to exploit the invention made in the course of the cooperation by licensing;
- National provisions differ considerably as to whether, in the case of a joint inventorship, the individual co-inventors may license to third parties on their own authority, i.e. without the consent of the other partner(s), or sell their share without the consent of the other partner(s). A worldwide uniform regulation requires a contractual basis.
- Agree on regulations regarding inventor rights and, if applicable, on arrangements for the transfer of priority rights.
- Agree on arrangements on the statute of limitations.
- Consider penalty clauses if cooperation partners file parallel applications for property rights by bypassing the other cooperation partner.
- Clarify publication rights, e.g. prohibit publishing or speaking publicly about the content of the joint research prior to a joint patent application, if applicable.
- Ensure compliance with antitrust regulations (especially block exemption regulations, where applicable).
"What you have in black and white / you can carry home with confidence", Goethe had the student say in his tragedy "Faust." This insight is still valid today.