“Ding, dong, ding dong” Daniella’s phone, set to sound like a doorbell, went off.  She scrambled through her purse trying to get to the phone with her left hand, while grabbing her newly made soy latte from the barista’s counter at Peet’s coffee. Although nearly spilling the hot drink, she managed to get to the phone and dump her stuff on a nearby table before the caller hung up.

“Yup” she said while steadying the coffee and taking a surreptitious sip.  “Daniella?” asked the male voice, “it’s Vijay.”   Daniella sat and asked him what was going on. “I thought we were meeting later this week? Has something changed?”

“No, that’s still the plan” Vijay replied, “but I just wanted to let you know that Dr. Reins and I have been speaking and I think we have a plan for our joint research.”

“Hang on there,” Daniella interjected. “I thought we were going to speak about this before you went forward with the university.”

Vijay hemmed and hawed a bit before explaining that he and Jim Reins had met to play squash.  Following the game, they had gotten to chatting about the potential collaboration.  “We are just so enthusiastic.” Vijay explained.  “It seems like the BXC target interacts with the NRF2 transcription pathway. We have a number of joint experiments we want to do to look at the interactions and test some of the newer drug candidates we have in his assays. He also has some expression vectors that would be good to try in our assays.  I was even thinking that we could take some of the data Jim has and have Alex integrate it into the algorithms he is working on for new targets.”

Daniella listened to Vijay’s enthusiasm.  She could hear the excitement and the importance Vijay placed on having the collaboration move forward quickly. She asked if she could stop by the lab briefly later in the afternoon to put a few things in place before Vijay and Jim had their next meeting.  They agreed to meet at the lab at 3 pm.  Daniella hung up and drank her now cool latte before putting together a few notes or their afternoon meeting.  She then set off for her office, walking briskly down the city streets and thinking though matters of the day for her various clients.

When 3 pm rolled around, Vijay was just finishing his review of a set of experiments Jan and Elle had summarized.  Things were going well and if they continued down this path, it might be worthwhile to take on one or two new researchers and maybe a summer intern as well.  He heard a light tap on the glass partition and looked up to see Daniella. He offered her the chair across from him at the table.

“Okay,” she started, “Let’s talk about the arrangement with Jim Reins.  What are you wanting to do?”

Vijay explained the plan in more depth from their earlier morning conversation, detailing the signaling involved, how the BXC protein and NRF2 transcription pathway might work together.  He explained the series of experiments that he and Jim had loosely discussed after their squash game.  Daniella quizzed him more closely on what exactly had been discussed so far, and what he and Jim had each contributed to the discussion.

“Did you make a written record of that conversation?” She asked.  Vijay chuckled. “Not my usual practice to carry my notebook onto the squash courts. But anyways,” he added, “Jim is a good guy.  We’re not going to argue over who did what. He’s a good colleague and fair.”

“I’m not questioning his character” Daniella said, “but there are other actors at play here.  Dr. Reins’ work is owned by the university and the technology transfer office is going to be involved, if they are not already, in any collaboration arrangement.  They might see things differently, even if your colleague isn’t the arguing type.”

Daniella then set out a series of steps to go forward.  She and Vijay then moved on to constructing an outline of the joint collaboration arrangement.

“From an IP point of view, one of the issues we want to resolve is who will own the research and any resulting IP that comes out of it” Daniella began.

“Why not just making everything joint ownership? Wouldn’t that be simplest?” Vijay asked.

“Joint ownership can often create problems or at best, be messy for a company.”  Daniella went on to explain how joint ownership works.  In the US, she told Vijay, joint owners can independently license the technology to others.  This would allow the university to license it to CompanieBee’s competitors without CompanieBee having a right of veto.  CompanieBee also would not be entitled to any royalties or payments the university received for such an arrangement.  On the flip side, should CompanieBee want to sue an infringer, the university would need to join the lawsuit.  There would be issues to be worked out on how decisions would be made, as well as the burden of costs and fees.  With joint ownership, they would also need to work out an arrangement with the university for filing patents and for controlling and paying for patent prosecution.

“How do we go forward?” Vijay asked.  Daniella pointed to the list Vijay had typed on his laptop of actions. “Let’s add one more thing”, she replied.  Vijay looked over the list that Daniella had created in their discussion.  When he thought about the items, they were reasonable and not hard to put into practice.

Vijay’s list

  • Document CompanieBee’s current research on the BXC gene
  • Document CompanieBee’s ideas for using the BXC gene in combination with the NRF2 transcription pathway including experiments and anticipated results
  • Implement a confidentiality agreement between CompanieBee and the Reins lab
  • Keep a written summary of the conversations and meetings with Dr. Reins and his lab (dates, attendees, subject matter provided by each party and what was discussed)
  • Use material transfer agreements to exchange materials between CompanieBee and Dr. Reins
  • Keep a log of any materials received by CompanieBee and how they were used; have the Reins’ lab do the same
  • Prior to any collaborative work or materials and information exchange, negotiate a collaboration agreement with the university and Dr. Reins, with provisions to address inventorship, assignment and ownership of any intellectual property (e.g., inventions) coming from the collaboration.

“Thanks” said Daniella, “from this list, I’ll take the lead on the agreements for confidentiality, materials transfer and collaboration arrangements.  I’ll certainly need your input and we can discuss some aspects with Dr. Reins as well.  Vijay, you concentrate on the first two items and we’ll take it from there.”

Some issues to think about when working in a collaboration*

  • Are the parties using each other’s IP in the collaborative work?
    • Are there provisions in the agreement for each party to retain ownership and control of its existing IP?
  • How will confidential information be protected during the collaboration?
  • Are materials being exchanged and if yes, are there limits on how each party can use the materials?
  • Who has rights to publish and does either party have rights to control what is published and when?
  • Who owns the joint work and IP rights developed in the collaboration?
  • Who is responsible for filing for and pursuing IP protection of the joint work and who will pay for these activities?
  • Are there provisions for returning or destroying materials at the termination of the collaboration?

Interested in more adventures of the fictitious CompanieBee and lessons learned in its IP Strategy?  More episodes here.

 

* This blog and these considerations are not legal advice and should not be construed to be legal advice.  Issues of collaboration, materials transfer, confidentiality and ownership are circumstance and fact-specific.  You should consult an attorney in your jurisdiction for guidance on your particular situation.