Glossary

Agreement: a negotiated and legally binding arrangement between parties as to a course of action.

Assignment: a contract transferring ownership of rights in IP to a third party, including start-ups or other entities.

Background IP: see Pre-existing IP.

Chief Investigator: the senior academic within a university who takes responsibility for delivery of a specific research project or technical (consulting) service.

Collaboration: co-ordinated activity across different parties to address a jointly defined problem, with all partners contributing. Collaboration requires the explicit definition of common objectives, and may include agreement over the distribution of inputs, risks, and potential benefits. Collaboration can create new knowledge, but it does not need to result in innovation.

Collaborative research: a research project undertaken between two or more parties. The project may be fully funded by a company, or funded partly by government, and partly in cash and/or in-kind, including a company participating in the research itself. As a research project, there would be an expectation of academic publication. The work would be covered by a collaborative research agreement.

Confidentiality agreement (CDA): a contract governing the disclosure of confidential information from one party to another – the disclosure may be mutual (i.e., both/all parties disclosing confidential information) (referred to as a Mutual Confidentiality Agreement or MCA), or there may be just disclosure by one party to the other(s).

Contract: a written or spoken agreement that is intended to be enforceable by law.

Contract research: an arrangement under which an external organisation can formally access the knowledge and expertise of university academics to improve or create strategies, organisational processes, products and services. The work will generally result in a report that will be owned by the contracting organisation. Scholarly publication from the work is usually only permitted if the contracting organisation agrees.

Derivative: see Improvement

DESE: Department of Education, Skills and Employment

Foreground IP: see Project IP

HERC IP Framework: Higher Education Research Commercialisation IP Framework

Improvement: any improvement in, variation of, modification to or adaptation of existing IPR

Indemnity: generally, provides that the assignor of IPRs being licensed or assigned will indemnify the assignee if the IP infringes a third party’s IPRs.

Innovation: a new or improved product or process (or a combination thereof) that differs significantly from previous products or processes and that has been made available to potential users (a product or service) or brought into use by the unit (process).

Intellectual property (IP): refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP is protected in law by patents, trade marks, designs, plant breeder’s rights and copyright (including the copyright in software in any code), which enables people to earn recognition or financial benefit from what they invent or create. Although not protected by formal IP rights, other forms of IP include business ideas, database rights, know-how, trade secrets and other confidential information, and goodwill.

IPRs: IP rights

Joint venture (JV): a commercial agreement between two or more parties that otherwise retain their distinct identities, to achieve specific outcomes from a commercialisation collaboration.

Licence: a contract under which the use of IPRs is transferred from one party to another for the purpose of commercialisation.

Material transfer agreement (MTA): a contract governing the transfer of materials between researchers. The researchers might be employed by universities, research institutions or commercial companies or be private individuals. The supplier/provider of the materials is usually the organisation owning the materials but may sometimes be an authorised licensee.

Multi-party collaboration: a collaboration in which one or more industry parties and one or more universities are parties in a program. It is funded partly by government and partly in cash and/or in kind, including participation in the research itself, by the industry partners.

Mutual Confidentiality Agreement (MCA): an agreement to cover the exchange of confidential information between parties where both/all parties are disclosing and receiving confidential information.

Option: an agreement that permits a company to reserve a right to acquire technology later, without committing itself to do so, for a period during which the company can further evaluate its potential, or raise funding for product development, without committing itself or a university to the obligations of a licence agreement. Options are usually six months to one year in duration and typically require both an upfront fee and patent prosecution reimbursement during the option term.

Party: an organisation that is entering into an agreement with another organisation. Together these are known as the Parties.

Pre-existing IPR: any IP, including in any material, that is owned or controlled by either party and which is brought into a project by that party for use during the project.

Project IP: all IP, including in any material, created or developed in the course of and as a result of carrying out a project.

Royalties: legally binding payments made by a licensee to a licensor in exchange for the use of the licensor's IP. They are usually a percentage of the net or gross revenue made by the IP, paid on a regular basis (often monthly, quarterly, or annually).

Results: see Project IP.

SME: a small to medium enterprise.

Spin-out company: a new incorporated business based primarily on knowledge and/or IP originating from the university, in which the university holds equity and/or has a licence to the IP.

Start-up company: a company formed by staff or students from a university not based on knowledge or IP generated by the university and where there is no formal IP licence or equity share with the university.

Technology readiness level (TRL): TRLs measure the maturity level of a technology throughout its research, development and implementation phase progression. TRLs are based on a scale from 1 to 9, with 9 being the most mature technology.

Term sheet: a document where parties in negotiations agree certain key terms of their proposed agreement before they engage in detailed negotiations over the wording of the final contract. These key terms are recorded in a document that is given a variety of names, including: heads of agreement; heads of terms; term sheet; memorandum of understanding; letter of intent.

Warranty: an IP warranty generally provides that the IPRs being licensed or assigned constitute all IPRs owned or controlled by a party prior to the effective date of the transaction. A warranty may also go on to say such IP does not infringe third-party IPRs.

WIPO: World Intellectual Property Organisation.