3.2 IP Management

Research consortiums can be a rich source of research support. The consortium may either enable research to be performed by a group of universities—or it may enable a group of companies to fund the research and have access to the results. A research funding consortium may consist of a group of companies that has a common interest in a particular area of technology and has come together to fund a specific area of academic research, or the corporate partner may be a trade association that funds the research out of dues paid by its entire membership.

3.2.1 General Principles, Structures, IP Ownership and Disposition

Consortium agreements generally encourage researchers to create IP, which then becomes the work product that the funders receive in return for their funding, in addition to reports on the results generated.

The funders will generally want the right to use the IP, and certainly will want a research license to use the IP in their own research programs, which is typically expected to be royalty-free. The license will be non-exclusive, so that all the members of the consortium can use it. A research license gives the Licensee the right to make and use, but not to sell, the licensed IP.

Depending on the research and its IP, the members of the consortium will probably want the right to sell products based on (or manufactured using) the IP. This may well be handled by including in the consortium agreement a non-exclusive option to a non-exclusive license to make, use and sell the IP. The license terms will probably be included in the option, which will also have a defined term by which the option can be exercised, say six months after delivery of the final report on the research. The terms should include some sort of upfront fee to ensure that only companies that intend to use the technology actually exercise the option.

Many consortium agreements specify that if no members of the consortium exercise their non-exclusive right to a license, a member can request and negotiate an exclusive license.

Finally, consortium agreements generally provide that if no member of the consortium requests a non-exclusive or an exclusive license to the IP, then the research performers may license it to third parties,

If there are multiple universities involved in the research, there needs to be a mechanism to represent the research performers in these negotiations. This could be a committee on which all the performers are represented, or they may agree to designate one institution—typically the one with the greatest involvement in the research—to negotiate on the consortium’s behalf.

3.2.2 Lambert Agreements

In Track II (Mid-level TTP), we discussed the Lambert Agreements. In the early 2000’s, the British Government asked Richard Lambert, a former editor of the Financial Times, to carry out a study of business-university collaboration in the UK.

Whereas at the time it was fashionable to bash universities for their unwillingness to interact with business on business’s terms, Lambert found that British industry lacked the capacity to absorb all the innovation coming out of British universities. The commission created a toolkit of guidelines and templates for contractual research relationships between universities and companies. It includes:

• A decision guide
• Seven forms suitable for one-on-one relationships
• Four forms for multi-party consortiums

The four consortium agreements and the types of relationships they cover are illustrated as follows:

Consortium Agreement	Terms
Agreement A	Each member of the consortium owns the IP in the results that it creates. They grant each other party a non-exclusive license to use those results for the purposes of the project and any other purpose.
Agreement B	The other parties assign their IP in the results to the lead exploitation party (or the lead exploitation party is granted an exclusive license).
Agreement C	Each party takes an assignment of IP in the results that are relevant to its core business and exploits those results.
Agreement D	Each member of the consortium owns the IP in the results that it creates. They grant each other party a non-exclusive license to use those results for the purposes of the project only. If any member of the consortium wishes to exploit another’s IP they must negotiate a license or assignment with the owner of that IP.

The toolkit has been so useful to British companies and universities that the British Government has kept updating and improving on it.