Issue link: https://htpgraphics.uberflip.com/i/246991
Intellectual Property Section 2 of any research collaboration agreements. Could the IP be tied up with other members of the collaboration? Is there any of the IP which may be jointly-owned? Check grant funding documents as they sometimes contain some unusual terms, where certain rights are claimed. Keep a file of all the documents which are discovered. Once identified, the company can then enter into agreements either to buy the IP (known as an assignment) or obtain permission to use the IP (known as a licence). Registered rights should be set out in schedules to such agreements. This way it is clear exactly what is being transferred. It is more difficult to identify unregistered IP and know-how, however, you should try to record in the schedule as much detail as possible. Make reference to particular laboratory notebooks with dates, result books, papers or any other materials which you think will be required by the company in the future. Confidentiality If the required know-how is likely to be patentable or designs registered in the future it will be important that no prior disclosure has taken place – this could include a journal publication or presentation at a conference. If disclosure has taken place the company may be prevented from obtaining registered protection. Check whether disclosure may have occurred and, if so, were any confidentiality agreements in place? Were the agreements complied with? Take copies of any agreements located. What exactly was disclosed under them? Future IP The company must retain the IP developed and created by the company in the future, sometimes called "downstream" IP. You will need to ensure that all company employees have adequate IP and confidentiality safeguards in their employment contracts. Consultants are not classed as employees. Therefore, generally, IP created by a consultant will not automatically be owned by the company. Ensure that individual consultancy agreements are put in place dealing with IP ownership. 12