a view from industry - plg
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LAMBERTLAMBERTMODEL AGREEMENTSMODEL AGREEMENTS
A View from IndustryA View from Industry
Malcolm Malcolm SkingleSkingleDirector Academic Liaison, GSKDirector Academic Liaison, GSK
Talk Plan:
• The process undertaken to develop the Lambert Toolkit – “the rules of combat”
• The Players
• The Lambert ToolkitAgreements, Decision Tree & Guidance Notes
• How GSK are currently using the Boilerplates
• Roll out & plans for the future
The Lambert Toolkit
• Builds on previous ‘successes’– AURIL – CBI ‘LINK’ agreement– ‘Wellcome Trust’ charity Revenue Sharing
agreement.– ‘Russell Group’ Studentship agreement.
• All widely used; all save time and angst.
The process undertaken to develop the Lambert Toolkit
December 2003 Lambert Review (§3.27-3.37)
• Collaborative research one of the most effective forms of KT…
• Important to determine IP ownership and rights…• Negotiations … extremely lengthy and costly…• Problem could be addressed [with] a small set of
standard agreements…• Strong support for idea in HEIs and industry.
The Timetable & Getting started• Invitation from Richard Lambert to all key stakeholders to
discuss the project 4th May 2004
• Kick-off meeting 23rd & 24th June 2004
• Each of the Inner Group were asked to articulate in 6 or less slides what they wanted to achieve from the 2 day exercise
• Discussed, in detail, the principles and content of the boilerplate agreements
• Christine Reid drafted agreements for further consideration by Inner Core Working Group
Lambert Inner Core Working Group• Clifford Friend, Cranfield University• Jeff Skinner, UCL/ UNICO / Praxis• Catherine Quinn, Oxford University• Brian McCaul, Liverpool University / AURIL
• Neill Mackenzie, Avidex / BIA
• Nick Peacock, Rolls-Royce• Julie Grady, Hewlett-Packard• Malcolm Skingle, GSK• Jackie Wilbraham, AstraZeneca
• Christine Reid, Manches Solictors• Russell Brooks, GSK legal adviser
Iterative Process:• Inner working group agreed on the basic format for the
agreements• Disseminated output to the Outer Core Group (all other
stakeholder groups) & collate comments• Incorporated, these views, where appropriate• The Inner and Outer working groups met together on 3
occasions• Finally got endorsement from the Outer Core Group to
proceed with the boilerplate agreements (Lambert 1-5) on 6th December 2004
Nick Peacock – Rolls Royce
• 4 critical issues addressed:– Ownership of IP – cost and ability to protect– Use of IP – exclusive or non exclusive– Royalty / Success payments– Publication and confidentiality
• The conditions industry will accept on the above are a function of industry input to the collaboration (money & intellect) and the importance of the technology field to the business. These are usually related.
• Need to consider a holistic approach
Key Issues
Company Background
University Background
ForegroundProducts, production License, spin-out
Assumptions:- Both parties principally rely on own background for competitive advantage.- But neither wants to be blocked from using foreground IP (patented or otherwise)- So usually they only need to have/retain ‘freedom to use’ the foreground- If sponsor needs exclusivity, IP must be valuable, so reasonable that they pay royalty/fee.
Jeff Skinner, UCL
The Lambert Toolkit
The 5 Model Agreements•Main body the same – differ only in:
– IP rights – Publication rights in pure ‘contract research’.
•One size does not fit all • Different approaches/spectrum of solutions• Starting points/negotiation• Ease & speed up the process - not solve every
issue•Workable and reasonable compromise• Not a substitute for “thinking” & pragmatism
The Toolkit: Models, Other Documents, Links
• 5 Model Agreements– With links to Guidance Notes– Decision tree (“Fuzzy”) to guide user which agreement
to use
• Useful Resources – Other useful documents– Hypertext links to useful websites
Keys to Reaching Agreement:
– Understanding the issues (guidance notes/education)
– Communicating– Reaching real agreement on the principles
(outline)– Choosing the right model agreement (decision
guide)– Amending where necessary
Guidance Notes explains…..Models and approaches & rationale for some provisions
• Confidentiality of Background / Academic Use / Publication
– Importance of some provisions• Schedule 2 (Project Description)
– Legal issues• Warranties/Liability• Freedom of Information / Charitable Status• Intellectual Property • State Aids• VAT / R&D Tax Credits
Agreement Outline• The Project:
– Start and end?– Resources (human and other)?
– Project Description• who does what / provides what / when?• Checked with both sets of researchers
– Are there non-financial inputs to the project? Access to key equipment, biologicals, compounds
– Key people?
Agreement Outline
– Sponsor’s contribution• Fixed amount?• Time and materials?• Full Economic Cost or FEC plus profit?• Increases in salaries etc.?• Invoicing
– External Funding?• Are terms consistent ?
Agreement Outline
• Background:
– What does each party provide?– Do Group Companies need to use?– Confidentiality?– Academic Publication?
Agreement Outline
• Results:– Who owns?– Licence to in field/territory?– Exclusive licence terms agreed?– Assignment terms pre-agreed?– Patenting Strategy?– Costs of patenting?– University rights to use for academic purposes?
Agreement Outline
• Confidentiality and Academic Publication:
– Indefinite or fixed period?– Academic Use/publication of:
• Results• Sponsor’s Background
Agreement Outline
• Liability:– Warranty:
• Quality of contribution?• Infringement of IP?
– Sponsor’s Indemnity?– Financial Cap?– Loss of profits etc.?– Warranty of full title guarantee?
Agreement Outline
• Termination:
– Key personnel leave without satisfactory replacement?
– Sponsor to pay reasonable employment costs?
How does a novice decide which agreement they require ?
• Catherine Quinn took the lead on developing the decision tree with major input from the rest of the team
• Through a series of simple web-based questions, a user (with limited experience) is able to very quickly identify the type of agreement that they require.
Decision Guide
• Series of Questions:– Identify which Model provides most appropriate starting
point
• Key Elements/Criteria:– Ownership and rights to use Results – Sponsor’s financial and other contributions– University's use of Results for academic purposes
Decision Guide•Assumptions:
•Wish to collaborate•Can agree project description•Can agree budget & Sponsor's financial &
non-fianancial contribution to project•Sponsor is willing to pay FEC
Decision Guide
•Not tablets of stone•Over simplification / usefulness•May not produce definitive answer•Help develop a “feel”•Drafted from a university perspective
Decision Guide• Did Sponsor commission Project?• Is it critical to Sponsor's technology strategy?• Does Project rely on Sponsor's Background?• Would Project be difficult/impossible without access to
Sponsor's Background?• Is focus research based on Sponsor's Background?• Did Sponsor take lead in designing workplan?• Is Sponsor setting deliverables?• Can Project be ring-fenced from University’s other
research activities?
Useful Resources
•Documents:– Not “endorsed”, but considered – Ideas/starting points– Terms “reflect” Model Agreements
• NDA• Boiler Plates
– Avoid “battle of forms”
Useful Resources• Hypertext Links:
– Information Commissioner - FOI– Patent Office - IP– HM Treasury – DTI– OST (FEC)– AURIL/UNICO– Praxis– Businesslink
Lambert Model 1
• University owns IP in Results (i.e. Foreground)
– University grants non-exclusive licence to Sponsor to use for any purpose in the field/territory
Lambert Model 2
• University owns IP in Results
– University grants non-exclusive licence to Sponsor to use for any purpose in the field/territory
– Sponsor has right to negotiate exclusive licence
Lambert Model 3
• University owns IP in Results
– University grants non-exclusive licence to Sponsor to use for any purpose in the field/territory
– Sponsor has right to negotiate assignment
Lambert Model 4
• Sponsor owns IP in Results
– Assignment of IP– University may use for academic
purposes(teaching and research)– Academic Publication
Lambert Model 5
• Sponsor Owns IP in Results (Contract Research)
– Assignment of IP– University may NOT use for academic teaching
and academic research– University has NO right to publish
Proposed Agreement types:
SponsorContract research: no publication without permission
5
SponsorSponsor owns, university has right to use for non-commercial purposes
4
UniversityAssignment3
UniversityRight to an exclusive licence to some or all IPR
2
UniversitySponsor has non-exclusive rights to use in specified field; no sublicences
1
IPRTermsLambert
Will also have draft MTAs, Consultancy agreements
Issues in all Model Agreements• Project Description/Management• Sponsor’s Financial Contribution• External Funding i.e Charity, Research
Council• Use of Background• Confidentiality -vs Academic Publication/FOI• Warranties/Liability• Boiler Plate/General
How GlaxoSmithKline are currently using the agreements
Collate information & fill in the Blanks• Legal Addresses of Parties• Name of Principle Investigator• Name of Sponsor’s Supervisor• Start & End dates• Field (Business Area)• Funding Schedule• Recipient’s bank details• Programme of Research
Microsoft Word Document
Contact information stored in a relational database
Drop down list of agreement types
Automating the ProcessAccess Relational Database
Contact informationUniversity bank details
Start / End date
Merge DocumentsIn Microsoft Word
Run a Word Macro to populate Lambert agreement
Store uniquely numbered agreement in a defined file directory
First Lambert agreement executed by GSK & University of Manchester on 24th March 2005
Richard Livings / Tamsin Sayer
Roll out & plans for the future
Lord Sainsbury launched the Boilerplate
agreements at an Innovation Event in
Manchester on
21st February 2005
Launch of the Boilerplate agreements
in Manchester on
21st February 2005
Launch for RDA’s & PRSE’s at DTI on 6th April 2005
Next Steps:• Need to promulgate, champion & start using:
– Universities - through UNICO, AURIL, PRAXIS.– Industry groups, Trade Associations, supply
chains– RDA’s and PRSE’s.
• Bound to be some slow uptake in some sectors • Incorporate other standard contracts where
appropriate (e.g. MTA, consultancy, CDA).
Acknowledgements:•Richard Lambert•The whole of the Inner Working Group•DTI •Larry Cullen & Richard Howe (Patents office) •Christine Reid (Manches)
The lady who did most of the work……
Christine.Reid@manches.com
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