Universities and intellectual property

Universities are centres of research and education. However, changes to government funding attitudes has meant that they must also encourage a culture of commercialisation. As a result, universities must now juggle their commitments to students and staff as well as their duties to commercial partners. University collaborations are business deals and amongst other things, any successful business requires certainty on issues of intellectual property ownership. A recent UK decision demonstrates some of the problems that can arise when parties in a university collaboration fail to ensure that the deal is properly reflected in an agreement. In Cyprotex Discovery Ltd v The University of Sheffield [2004] EWCA Civ 380 the University of Sheffield (Sheffield) was in the process of developing a computer program designed to simulate the effect of a combination of particular drugs in the body (the Simcyp project). In summary, the university in this case was lucky. The court held that it owned the IP in work undertaken by a company even though on the face of the agreement the university appeared to not have ownership. Particular issues parties should address include: • who, under the law, will own the IP generated from the collaboration and who wants to own or use it. Cyprotex provides good examples of alternative ownership and licensing solutions but illustrates why these should have been better defined in the agreement • why a party wants to own or use the IP. The agreement can then be checked to certify that these needs are reflected in the final allocation of IP rights • how the university will ensure that the university is true to its primary role as an educational institution. Poor drafting of a collaboration agreement means that the right to disseminate knowledge gained through research and to continue research in an area of specialisation could be at risk. The Cyprotex decision reinforces the fact that research collaborations are first and foremost business deals, and so business, and not legal, principles should govern the approach taken by the parties. Hannah Wright, articled clerk For more information call 9211 7777 Freehills