Collaborating with Universities and CRIs

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Collaborating with Universities and CRIs

• Jonas Holland

Associate
jonas.holland_at_ajpark.com
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Overview

• Context/scope
• Need for an agreement
• IP ownership structures
• joint ownership
• joint ventures
• licenses
• options and rights of first refusal
• Summary

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Context

• No tax credits
• No fast forward fund
• Waiting for budget
• But Unis and CRIs encouraged to collaborate
• Value to NZ
• Path to market

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Scope of presentation

• Not fee for service work
• Joint contributions (cash/in kind)
• Leveraging Uni/CRI funds and expertise

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Agreement

• Services/deliverables
• Liability
• Intellectual property
• Staff and students
• Publications
• Termination consequences
• Dispute resolution

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IP rights and obligations

• Right to patent
• Right to commercialise
• Right to benefits
• Obligation for costs
• Obligation for liabilities
• Right to make/influence decisions

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Structures

• Joint ownership
• Joint ventures
• Licensing
• Options and rights of first refusal

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Joint Ownership

• Rights depend on the type of IP and country
• Agree everything upfront
• Restrain one or both parties from doing anything
  without consent

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Joint Ventures

• Incorporated and unincorporated
• Useful sometimes
• funding may encourage
• define relative interests
• provides decision making forum
• distributions
• new investment
• Costs
• Tax

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Licensing

• Scope
• Royalties
• Performance obligations
• Liabilities
• Patent costs

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Options and Rights of First Refusal

• Decision dependant on future events
• Option triggers (largely) predetermined outcome
• Rights of first refusal provides party a
  preferential negotiation position
• Could apply to assignment, licensing or entering
  joint venture
• Is this enough?

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Summary

• Opportunity to leverage
• Need an agreement
• obligations, costs, liabilities
• benefits
• decision making
• Different ways to deal with IP
• If a decision needs to be made in the future,
  what position will you be in when it is negotiated

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