In the previous parts of this series, we discussed grant funding requirements, active management of confidential information flows and structuring rights to results in R&D collaborations in the energy and resources space. In this part, we explain the imperative on academics to publish results, and how to manage the implications for the value of IP in a collaborative project.
Review proposed publications
Academic publications are a specific issue for R&D projects involving research institutions. Most academics are driven by the principle of ‘publish or perish’ – peer reviewed publications in quality journals drive promotions, grants and future opportunities. They will demand the rights to publish results but this can pose risks to confidential information and unregistered IP.
Industry partners may have a different assessment of what is valuable and what needs to be kept as proprietary than academic collaborators. Results from a project can also become entangled with pre-existing information or IP, and the results an academic may want to include in a publication may inadvertently disclose your confidential information or IP.
Further, PhD students are commonly included on research projects. Students cannot graduate without satisfying requirements to publish either a final thesis or a series of articles over the course of their doctoral program. Universities will strongly defend the right of their students to complete their degrees.
Publications are typically subject to standard contractual regimes requiring proposed articles to be circulated prior to publications, and allowing partners to require academics to remove confidential information or to delay publication until patent applications can be lodged. These regimes usually put deadlines on the right to object to a publication, so any publications need to be reviewed promptly.
If it is determined that developed IP should be patented, there are likely to be further processes involved in managing the preparation and application process amongst the parties. Clear records of what pre-existing IP has been contributed by various parties, and the contributions of each party to the creation of the developed IP are critical at this stage, so that the party with the right and/or responsibility to lead any patent application and prosecution process can be determined without dispute. You may also need to be prepared to cover patent costs associated with urgent applications.
A potential difficulty arises where results are not patentable or otherwise unsuitable for formal protection, but may be valuable if kept as a trade secret. Publication provisions will generally not protect such results from disclosure, unless they happen to also disclose confidential information of one of the partners to the collaboration. If you are collaborating with a university or other academic institution, this is a risk you should consider and weigh ahead of investing in the project.
In the next part of this series, we encourage investors in R&D collaborations to take an active role in directing the project to ensure that your business realises the anticipated results. If you missed the earlier parts of this series, you can find them here.
HWL Ebsworth’s intellectual property team has extensive experience assisting clients to maximise the value of their R&D investments. Please contact us to learn more.
This article was written by Luke Dale, Partner and Nikki Macor Heath, Senior Associate.