4.1 - Identifying & Protecting IP

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Being able to recognise the IP you have and protect your IP is a critical first step on a commercialisation journey.

Within the HERC IP Framework, two Accelerated track agreements are provided to help you protect your IP in interactions with your commercialisation partner:

  • Mutual Confidentiality Agreement – for protecting your ideas and unpublished IP in discussions with external parties. For example, to protect you in initial discussions with a potential collaborator on a research project. The agreement covers information disclosed to the external party as well as information received from that party
  • Material Transfer Agreement – to be used when transferring proprietary materials to an external party. For example, when an industry partner wishes to test your proprietary material before setting up a collaboration, or to evaluate it in their internal research before entering into a licence

Do I need a Mutual Confidentiality Agreement?

Key actions:

  • Before sharing any ideas or secrets with potential collaborators check if you need a Mutual Confidentiality Agreement (MCA) in place. An MCA is also referred to more generally as a Confidentiality Agreement (CDA) or a Non-disclosure Agreement (NDA)
  • Decide what you are prepared to disclose – you may decide that some information is so sensitive that you do not want to share it even under an MCA
  • Decide whether you need a one-way confidentiality agreement (covers only information you disclose but not the information you receive) or a two-way, Mutual Confidentiality Agreement (MCA), which covers both the information you disclose and the information you receive. In most circumstances both parties will be disclosing confidential information and the HERC IP Framework provides a template MCA
  • An MCA may take a few days to a few weeks to negotiate and sign, depending on the complexity of the proposed discussions and the information being exchanged
  • Ensure all parties sign and exchange copies of the agreement before you share your confidential information

Things to double-check:

  • Ensure you know what you are prepared to disclose under the MCA
  • Check that your MCA clearly defines the purposes for which the information may be used, for example to assess whether or not to collaborate
  • Consider your obligations under an MCA - you are unlikely to be able to use the ideas from your partner for your own research and development
  • If you already have an MCA in place, ensure that it is still in force, lasts for long enough, and covers all the relevant collaborators and the information to be shared
  • Remember that an MCA is not a substitute for a full research collaboration agreement

Why is this important?

  • Discussing your ideas and secrets with someone without an MCA in place, will usually mean that they are free to use this information in their business, or disclose it to someone else
  • It could prevent your new inventions from being protected by IP rights later on, so others will be free to use and exploit them without your permission

Do I need a Material Transfer Agreement?

Key actions:

  • Before sharing materials with potential collaborators, check whether the material is considered proprietary and/or confidential to your organisation and if so, you will need a Material Transfer Agreement (MTA)
  • Discuss and agree what the permitted use for the material is
  • Identify any confidential information associated with the material that will also be transferred under the agreement, for example unpublished data sheets or methods
  • Agree the delivery, handling and return instructions
  • An MTA may take a few days to a few weeks to negotiate and sign depending on the complexity of the proposed material exchange and its purpose
  • Ensure all parties sign and exchange copies of the agreement before you transfer the material

Things to double-check:

  • Ensure you own or otherwise have the right to transfer the material for the intended use
  • Check that the recipient understands what the material is and has the necessary legal permits to handle the material if there are restrictions on its storage and use. If the material is high risk and could pose significant environmental or health and safety risks, or is intended to be used in animal or human testing, a bespoke agreement will be required
  • Remember that an MTA is not a substitute for a full research collaboration agreement

Why is this important?

  • Proprietary materials are valuable, and it is important that their use by another organisation is limited to permitted research activities in the absence of a commercial licence or sale agreement
  • An MTA ensures that the other party understands their risks and liabilities with respect to their use of the Material

Key Considerations

A guide is provided on the individual template page to help the parties appreciate the key considerations that each party will have when completing either of the two templates. Additional plain English guidance on the meaning of key clauses is provided in a separate annotated version of each template.

Both of the templates are provided in the Accelerated track and it is expected that parties can use each template with minimal negotiation. Nevertheless, it is important to discuss and understand each party’s needs and concerns as this will help you reach an agreement more quickly.

For organisations, particularly SMEs, that have not previously been asked to enter this type of agreement, the tables will help you to understand what the key provisions are, how to complete the template, and what you need to think about before signing either of these agreements.

Resources

Sources of further information