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|Original Message Added : 11 May 2012|
I'm hoping someone can help me with a contract issue.
It is a collabloration agreement with a Scotish university for a project to design a prototype for an inverntion I have.
The problem is, after being told they were working with me in a non-commercial capacity for months, I have now been presented with a Collaboration Agreement and it seems to clearly state that ALL IP that they create they will own and anything developed jointly will be owned by both parties.
"1.1 Each Party shall own the Resulting IPR generated by it under the Project and shall be responsible for securing ownership of such Resulting IPR from its employees, students and other agents.
1.2 Subject to clause 7.3, nothing contained in this Agreement or any licence agreement pertaining to this Project shall affect the absolute and unfettered rights of each Party in all inventions, discoveries and intellectual property contained in its Background IPR.
1.3 In the event that any of the Parties are jointly responsible for generating Resulting IPR such Resulting IPR shall be jointly owned by such Parties in accordance with the inventive contribution made by each Party to such Resulting IPR."
I'm told that the Treaty of Rome counters this, but I'm not sure and wondered if anyone can help me?
Obviously, I want to maintain complete ownership of all IP. The University state they wouldn't use any resulting IP commercially, but then say they could and have done so in the past and as far as I can see both this contract and the Treaty of Rome would be in their favour at all times.
|Reply : 29 May 2012|
The simple answer is that if it is your invention, your work plan and you are paying 100% FEC, you should own any resulting IPR. The reason is that in such a scenario they are only providing you with a service.
However, universities generally work under FEC rules, combined with the kind of work they will do. So assuming you have designed an invention, but you haven't put it into practise, i.e. no prototype; and the university will develop the prototype themselves for you, then they would expect a share of the IPR.
I will give you two scenarios:
James invented a mug but does not have the capacity or expertise to develop a prototype. He takes his ideas to University of Somewhere, and explains the invention. University of Somewhere brings in their scientist to use James' invention and develop a design for the prototype - eventually leading to a fully functional prototype. There are two background IPR's: First is the invention from James and second is the design of the prototype from the University of Somewhere.
When both the background IPR's are combined, only then a prototype will be developed, therefore the expectation that the resulting IPR will be jointly owned. In this scenario 100% FEC will be of little relevance.
James invented a mug and has also designed the drawings for a prototype. James knows what he wants and wants it exactly that way, without any input from University of Somewhere. James then pays 100% FEC and contracts University of Somewhere to develop the prototype according to his instructions. Whatever the resulting prototype will be, all IPR in it will be owned by James.
I hope this helps.
**Any information given here is not to be considered legal advice and should not be relied upon. WLC does not accept any liability to the recipient or any third party for any loss suffered as a result of reliance on the information provided herein.**