Issue link: https://htpgraphics.uberflip.com/i/392125
Intellectual Property/Results Section 9 40 Remember that even if it is buried in the Research Contract, the licence is still a licence and so needs to be thought about carefully. You should discuss it with your IP commercialisation organisation. It is often difficult at the time you are entering into a Research Contract to know exactly what IP will come out of it. It is therefore even more difficult to try and envisage what the terms of any possible licence might be. You may therefore simply say in your contract that the other participants may negotiate with you for a licence at the time when they know what the Foreground IP is. If they are given such a right then their right to exercise that option to take a licence should be limited in time, otherwise you will be prevented from negotiating commercially with others. You might in a Research Contract agree up front that the others can have a non-exclusive licence of your Foreground IP but that will mean that you will not have the right to grant anyone else an exclusive licence, which may undermine your ability to commercialise that Foreground IP in the future. Any provision which gives the others an option to negotiate a licence with you in the future is an 'agreement to agree'. Under the law of England and Wales that is unenforceable. You will therefore often see provisions that require you to 'negotiate in good faith'. The Research Contract will sometimes set out the framework of the type of terms you would expect to see in any such licence. There may even be a right to refer any points on which you cannot agree to a third party to decide upon. None of these provisions works perfectly in all cases and people do accept that you are trying to frame the contract when you do not know exactly what the IP will be. The more blue skies the research is then the more relaxed people are likely to be about these provisions. It may be that any ownership of Foreground IP or licence to use Foreground IP is useless on its own because the Foreground IP needs some Background IP to be able to use it. In this case it is usual to grant a non-exclusive licence of the Background IP simply for the purposes of using and commercialising the Foreground IP. It will vary from case to case as to whether a royalty is payable for such a licence, but your institution will probably want some reward. It will very much depend upon the funding which has been given to your research institution for the Research Contract by the other participant.