Module 5 - Key IP questions when collaborating with specific partners

The second overall strategy for creating impact that we'll talk about is when you collaborate with specific partners to make your results available and useful for them. The typical ways of doing this are:

  • Research collaborations and contract research with specific partners
  • Educational programs/activities for specific partners
  • Consultancy assignments, advisory roles, etc. by individual researchers

In all of these scenarios, there are specific IP related questions that you need to be aware of and handle well to be able to create impact and continue to perform your research like you want. This is what we will look at now.

 

1. Research collaborations and contract research

A very large proportion of the research at KTH is being done in collaboration with other parties, academic, industrial, and public partners, and this is just increasing.

There are a couple of main IP related topics to keep a special eye on when you do research in collaboration with other parties:

  • Type of research collaboration
  • Setting the right expectations on rights to results and IP from the beginning
  • Proper project agreements
  • The KTH researcher agreement
  • Background IP and foreground IP
  • Confidentiality issues
  • Identify commercially interesting results while you are doing the research
  • Licensing and technology transfer to research partners

Let's take a closer look at each one of them.

 

1.1 Type of research collaboration

There are two types of research collaborations: collaborative research and commissioned research. What type of research collaboration it is determines what rights the external parties can have to the IP and results that you create in the research project.

Here's a summary of the key distinctions:

 

Collaborative research Commissioned research
Collaborative research is when you do research together with one or more external partners and all the partners share the cost of the project, often together with funding from an external funding agency. The projects are typically defined in discussion between the partners and KTH performs parts of, or most of, the research work. In collaborative research projects the partners should have the same rights to results and IP which should be clearly defined in the research collaboration agreement. Commissioned research is when an external partner commission KTH to perform a specific research task and cover all costs for the research project, e.g. VAT, overhead, machine and cost of facilities, etc. In commissioned research projects the external partner can have more extensive rights to results and IP since they are covering all the costs. However, you as a researcher must still be able to publish the research, commissioned research also has to be qualified research, it’s not a consultancy assignment.

 

And if we want to make an even clearer comparison of key IP management related issues we can look at the following table.

 

Collaborative Research Commissioned research
Type of project The research subject is formulated by the parties jointly. The commissioning party “owns” the research subject.
Financing All parties involved are to contribute. Payments can be made to the university, but in which case, as financial contributions. The commissioning party is responsible for the full project costs according to the principle of full costs coverage.
Publication The university reserves the right to publish any results that university personnel have been involved in producing The university reserves the right to publish the results.
Rights Ownership of results generated by the university reside with the researcher. Any transfer or licensing from the researcher is subject to remuneration based on market value. The agreement can grant the commissioning party ownership of or far-reaching users’ rights to the results. The university reserves the right to use the results as part of its own continuing academic activities (research and education)
Confidentiality Confidentiality in accordance with the Public Access to Information and Secrecy Act 24 chap. 5 § Confidentiality in accordance with the Public Access to Information and Secrecy Act 31 chap. 12 §

 

Important to know is that collaborative research is more common than commissioned research at KTH.  

 

1.2 Setting the right expectations from the beginning

Whenever you are trying to put together a research project with other partners, in particular with industrial partners, you will eventually start talking about ownership and rights to the results and IP created in the project. To make those discussions easier, it's a good idea to be clear about the policies and guidelines at KTH around this from the beginning.  

Let's hear Malin Koch from the Civil Law and Contracts unit explain this further. 

 

There's a good summary of the key policies and principles at KTH when you collaborate with external partners (in Swedish here, in English here) so check that out and make sure to keep it in mind when you set up research projects together with external parties.

 

1.3 Proper project agreements

As you probably have understood by now, one of the key messages in this course is that it is important from an IP management point of view that you have clear agreements in place related to your research. One agreement of particular importance in collaborative research is the project agreement that you sign with your partners in the project.

Here's Malin Koch again to elaborate on this.

 

If you need to revisit this information, you can look at the pages on the KTH website about contract management (in Swedish here, in English here). Perhaps a page worthy of a bookmark in your browser?

Here we have also included some examples of good and bad agreements, with comments on what's good and bad and the potential practical consequences for you as a researcher. (examples will come in the final version)

Finally, we have also included a simple checklist of typical points in a good project plan. (checklist will come in the final version)

 

1.4 The KTH researcher agreement

Related to the project agreements that we talk about above is the KTH researcher agreement that you have to sign in some projects. This is one contract that we get a lot of questions about so we've tried to summarize the most important points that you need to know about the researcher agreement and what it means to you in the video below.

 

There are two versions of the researcher agreement, one for the researcher responsible for the project (in Download Swedish

and Download English) and one for researchers participating in the project (in Download Swedish and Download English).

 

1.5 Background IP and foreground IP

When we talk about ownership and rights to use IP from research projects, there's a bit of terminology that is critical to understand. One of the most important distinctions is "Background IP" and "Foreground IP" which is commonly used in research project agreements.

  • Background IP means all the IP that the project partners have developed before the project starts and that will be used in the project.
  • Foreground IP means all the IP that is developed within the project.
  • Sometimes you also talk about Sideground IP, which is IP that is developed by a partner in separate research activities outside of the actual project but that could be relevant for the project.

 

Background, foreground, sideground

 

This distinction has very big practical implications since ownership and rights to use are different depending on whether it's foreground, background or sideground IP.

The typical situation in most collaborative research projects is:

  • Foreground and background IP is owned by the party that generated them
  • The partners in the consortium have free access to both foreground and background within the project to be able to carry out the project work
  • The partners in the consortium can get the right to use other parties' foreground and background IP outside the project or after the project has finished on specific terms that have to be negotiated
  • The ownership to foreground IP can be transferred to other partners on specific terms that have to be negotiated

In commissioned research projects (see distinction between commissioned research and collaborative research above), the commissioning partner can also get ownership to the foreground IP that is generated by the KTH researchers since they are paying for the full cost. KTH must still have the right to publish and use the results in further research, though.

Background deserves a special mention here...

When you enter into a collaboration together with other parties, it is of central importance that you are aware of which background you bring to the project. Especially if there is background that you don’t want to share with the other project members or if you have background which is restrained by earlier agreement on how, and to whom, you may share it. An example of where this could become complicated is when research results have been produced in a research center together with other parties.

To be able to define what counts as backgrund, foregrund, and sideground IP, you need to have a project plan that describes the project clearly. We have mentioned the importance of a clear project plan before, and this is one of the main reasons why it is so important from an IP management point of view.

 

1.6 Confidentiality issues

We talked about confidentiality issues in the previous module about publishing in scientific journals. As we mentioned there, potential problems with confidential information typically arises when you have research collaborations, so in practice this is very tightly connected to research collaborations and contract research.

If you didn't watch the video in the previous module, or if you want a reminder, we've included it here again. 

 

1.6.1 From theory to practice - Examples of IP management in practice at KTH - Confidentiality Issues

In theory the confidentiality obligations are easy to understand, but in an open environment like KTH where an important part of your work is to publish papers and interact with other researchers and organisations, you have to have some pragmatic strategies to be able to combine the confidentiality obligations with your research work. 

Here are some thoughts from professor Amelie Eriksson Karlström on how she manages this issue when interacting with external research partners.

 

 

1.7 Identify interesting results while doing the research

When it comes to IP management in practice, especially in research collaborations with industrial partners, it's usually the results and IP that could be of commercial value for you or your collaboration partners that's the main focus. These are the results that could be worth protecting and developing further towards the market by you or your collaboration partners and for that reason you should ideally have time to evaluate their potential, communicate with your partners, and protect the results worth protecting before you publish the results.

The typical problem here is that you realise that you have some interesting result too late, when you are just about to publish or when you already have published it, and then it may be too late to protect it. 

In formalized externally funded projects together with other partners, there's often a requirement to describe some sort of IP management process in the project plan to deal with this situation. This IP management plan would typically describe how you will identify interesting results and what you will do to evaluate and protect them. But even if you do research where this is not mandatory, it is a very good idea to at least think through what checkpoints you can have in your day-to-day research work to make sure that interesting results pop up on your radar.

Simple things like including questions in group meetings or seminars on the value and potential impact of the research, organising workshops at certain intervals where you focus on this topic, or setting some sort of reminder to yourself about checking this when you start planning a future publication, etc. can go a long way. It's all about keeping it top of mind during your research work! 

Here are some tips and examples of things you can do! (list will come in the final version)

At KTH Innovation we have a lot of experience of designing IP management plans, so if you want support with this, don't hesitate to contact KTH Innovation.

One specific reason for why it's important to identify results worth protecting early is that it gives you the chance to do further experiments that could strengthen a patent application or prove your concept in some particularly interesting use case while you’re up and running. We've had several cases where you realise after the actual research work is finished that it would be valuable to do additional experiments or studies, but it's not possible to do because you have “dismantled” the experimental setups...

Let's pause briefly and reflect on what you do actively to identify interesting results. (link to short question/assignment will come)

 

1.8 Licensing and technology transfer to research partners

Sometimes you come up with results in a project that a partner wants to license or take over. This will then be done through a separate license or IP sales agreement. Such an agreement can be complex and contain a number of terms that you have to negotiate, both related to the IP/IPR that is licensed and the economical terms for the license.

If this situation arises, contact KTH Innovation to get support in the negotiations!

KTH Innovation can give ample support in this process, but you as a researcher have to be able to define what IP/IPR it is exactly that should be included in the agreement and have an idea of how this IP/IPR will be used in your continued research.

 

1.9 Get in touch with the KTH Research Support Office early

Research Support Office (RSO) is your main support when setting up a research collaboration and they can help you with all the things you need to consider as a researcher at KTH when writing an application for research projects, including IP management issues.

Contact RSO early in the process, then it is easier to get things right from the beginning and save a lot of time and headaches later. Remember that it can take a long time to set up an externally funded research project and negotiate a contract with multiple parties involved!

Learn more at the Research Support Office page

 

1.10 Quick recap

Phew! Many things to keep in mind when you do collaborative research!

  • Type of research collaboration
  • Setting the right expectations on rights to results and IP from the beginning
  • Proper project agreements
  • The KTH researcher agreement
  • Background IP and foreground IP
  • Confidentiality issues
  • Identify commercially interesting results while you are doing the research
  • Licensing and technology transfer to research partners

The reason why we have included so many points in this list is that collaborative research is the most common situation where IP management becomes a topic for discussion. All of the points above cover typical questions that we at the Research Support Office and KTH Innovation get from researchers almost every day!

 

 

2. Educational programs or education activities for specific partners

In the first Impact strategy we talked about, "Sharing knowledge and spreading information to the public domain", we talked about IP issues when you make contributions in education. In that context this primarily concerns when you create material for courses at KTH and other parts of the public education system.

When we talk about "Educational programs or activities for specific partners", we typically talk about different forms of contract education through KTH or commercial education/training outside of the public education system. However, the two key IP related questions from the previous module are just as important to keep in mind here: 

  • Ownership and right to use the educational material that you produce
  • Keep track of the copyright in the material

Here's the presentation from the previous module again if you want to refresh your memory.

 

 

One thing that is worth highlighting when we talk about education for specific partners is that since there's often a commercial element in this type of education - someone is typically paying for the education - you have to be extra conscious about potential agreements that could transfer IP ownership or give exclusive rights to the customer/partner that limits how the material can be used by you in other situations and in your activities at KTH.

In addition to the two points above, there's a third important thing to keep in mind when you're engaging in educational activities for specific partners:

 

2.1 Think about who you represent and watch your reputation

It has to be clear who you represent and who you are allowed to mention in your contract education, in particular when it comes to using trademarks and brands. Even though you work at KTH, for example, you still need permission to use KTH’s logo and brand if you produce and use the material outside of your work at KTH, and typically KTH does not allow this. It is OK to state that you are working at KTH.

The final comment here is maybe not really IP management, but still very important... Remember to safeguard your own reputation! Think carefully about who you want to be providing education to, and who you want to work with, before doing any work for external partners.

 

 

3. Consultancy assignments, advisory roles, etc.

The third type of collaboration with specific partners that we want to highlight is when you as a researcher engage in consultancy assignments, advisory roles, etc. for external organisations. Having this kind of engagements is not uncommon for researchers at KTH since you build up a lot of expertise and prestige in your research field that can be highly valuable for external organisations to tap into.  

There are, however, some things to keep in mind from an IP point of view to make sure that your engagements with other parties do not negatively influence your research.

Here's our legal counsel Therese Viksten to walk you through some of the most important things to remember.

 

 

 

Module 5 - Key take-aways

Good collaborations are built on alignment of interests, clear expectations, and trust between the parties. This is something that you can establish from the very beginning when you start discussing potential collaborations with external parties, be it for research collaborations, contract education, or consultancy/advisory assignments. The contracts and agreements are meant to reinforce and formalize this mutual understanding, not introduce obstacles in the startup of a collaboration.

We want to stress that time spent on discussing questions related to IP management early on is time well invested, since it can make the actual contract negotiations much smoother and faster. We know that this step often is a bottleneck and source of friction internally at KTH, so everything we collectively can do to facilitate this process is very valuable for everyone involved!

The underlying theme throughout this is module is the balance of providing value to your collaboration partners, which typically means that they want to get access to the results and IP that you create, and not unreasonably restricting your freedom to do further research and create impact from your results.

The guidelines we give here (the KTH IP Guidelines (in English Download English, in Swedish Download Swedish)) should provide a reasonable balance based on all the different interests, rules, and regulations that typically influence the different ways of creating impact through collaboration with external parties. 

You are typically the person discussing potential collaborations directly with your partners, so when you know these guidelines, it'll be much easier for you to approach the topic of IP management in those discussions with confidence.

And of course you can always turn to Research Support Office or KTH Innovation for support!

 

Finally, before we move on to the next module, let's reflect on what you've learnt in this section about Key IP questions when collaborating with specific partners with two short questions.