Industry focus: Strategies for maximising IP returns from R&D collaborations in energy and resources – Part 5

16 July 2020

In the previous parts of this series, we discussed grant funding requirements, active management of confidential information flows, structuring rights to results and managing academic publications in R&D collaborations in the energy and resources space. In this final part, 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.

Take the steering wheel

Where you are entrusting your R&D project to the leadership of a research institution, one of the most important strategies for ensuring useful outcomes is to actively manage and monitor the conduct of the project.

As mentioned previously, academics have different drivers to industry partners, as do government agencies. In a large collaboration involving multiple industry contributors, whether competitors or suppliers/customers, each of those entities will also have their own priorities. Combined with the fact that most projects are ill-defined in the early stages, it is easy to find yourself with a project that has evolved into something almost unrecognisable from the original intent, and outputs that do not meet your needs.

Whether your aim is improvement to equipment, safety models or exploration techniques, testing and validation of new systems, or scaling of new processes, clear output expectations should be specified clearly up front and updated throughout the project. Insist on the creation of an IP register recording precisely what and when IP has been contributed by each party, what each party has done in respect of each step of the project and any third party rights. Stay on top of the IP register and ensure that it is accurate and kept as up to date as possible during the course of the project.

Large collaborations often vest steering committees with significant power to approve changes in research programs and even decide on disputes around management of IP. Ensure that the constitution, scope and procedures for committees are well-defined and that you have an executive with subject matter knowledge in a voting seat holding material influence.

Technical experts should be given enough time release from their usual jobs to allow them to take active part in day-to-day project activities. Contributions of this kind can often be counted as an ‘in-kind’ contribution to a funded project, counted by reference to the value of that person’s salary for the FTE proportion they are assigned to the project. Even for bilateral projects, constant oversight and monitoring is imperative.

This is the end of our series on strategies for maximising IP returns from energy and resources R&D collaborations. If you missed the earlier parts of this series, you can find Part 1 here, Part 2 here, Part 3 here and Part 4 here. We have also prepared a white paper containing all five parts of our series. To view the white paper click 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.

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