AusBiotech comments on draft IP Toolkit for research collaboration

AusBiotech has made a submission to IP Australia on the draft IP Toolkit for research collaborations between research institutes and companies, where it said the draft IP Toolkit could offer useful guidance to SMEs who wish to engage in collaborations.

The submission noted that in order for the IP Toolkit to provide valuable assistance to a company intending to collaborate with a research institution, it requires further revision.

It would be useful for the IP Toolkit to include: issues in IP ownership structures, such as joint ownership; information on IP licensing; information about how research institutions deal with various structural arrangements, such as describing the roles of university technology transfer offices, offices of research and their legal departments in these arrangements; and information in relation to grants and how they may impact on a collaboration agreement.

AusBiotech said that the inclusion of a template research agreement in the IP Toolkit would be of little use to industry. Patents are, by definition, unique from one another and each operates in its own technology and market context; therefore, a negotiation process of approximately nine months is normal. A template agreement is also unlikely to be adopted by research institutions that have spent years developing their own template documents.

AusBiotech has previously noted (in it submission to the ‘Boosting Commercial Return from Research’ review) that a number of jurisdictions have attempted such agreements, only to find that in many cases it (a) it did not speed up the process; and (b) did not sufficiently assist the process.

In a ‘successful’ example of a jurisdiction developing a template agreement (the UK’s Lambert toolkit), poor uptake has been reported. While there is some evidence that the Lambert toolkit has been successful in achieving its aims of making negotiations faster, cheaper and easier, and in providing useful information, precedents and support to facilitate these negotiations, this positive impact has been limited and negated by both low level of usage and the manner of that use, said AusBiotech. The Sagara Review found clear evidence that, four years after the publication of the Lambert Review, there was still only limited use of the Lambert model agreements.

Read the full submission here