proof-of-concept formulation on certain
substrates it had not seen in the initial
testing. Commercial launch is imminent,
and the marketing boys want to know
when (including yesterday) they can put
paint on the shelf. The fastest, most efficient, and most likely way to deliver the
requisite results is a large team effort by
highly skilled formulators and applicators at UniversityX, well-known for solving these very sorts of issues.
A no-cost agreement that licenses to
UniversityX the patent, patent applica-
elects to pay for all right and title to
inventions arising from exposure to the
University of its IP. And yet, it is a li-
cense with all the teeth in it that pro-
hibit disclosure of information. Just
like any other license. UniversityX is
happy. They get dollars in to support
their research organization. There is
no need to haggle with them about
IP ownership. And, PaintCo meets its
roll-out deadlines.
the signature block. All university agreements should contain tight requirements
for routine communications, and back-and-forth revisions to research directions.
I have found that very close relationships
between the PI on either side of the collaboration are key. Equally as important
are C-suite relationships between the VPs
of R&D. It helps if they all play golf together (you think I am kidding?).
Trust in Your Contracts,
Universities Do
Universities are corporations.
They generate and sign thou-
sands of contracts per year, to
which they are legally bound
and upon which they can be
sued if they breach. They sign
non-disclosure agreements,
non-competition agreements,
material transfer agreements,
license out and license in
agreements, research and de-
velopment agreements, joint de-
velopment agreements, . . . you
name it. Sometimes, they even
do these sorts of agreements
through a for-profit sister cor-
poration that is not shielded by
state immunity from prosecu-
tion doctrine. In some instanc-
es, you can pay “insurance”
in the form of an override on
your research and development
contract to assure that all tech-
nology developed by the univer-
sity will accrue to the benefit of
your company and be protected
accordingly. The point here is,
if you go into the collaboration
with your eyes wide open and
make yourself into a good re-
search partner, universities are
capable of and quite willing to
obligate themselves to iron-clad
agreements that will protect your IP.
Hire The Best and The
Brightest
One problem area that is perceived by
coatings companies is the student turnstile. But, think about it. The same in
and out of employees is true of commercial endeavors as well. As we have discussed in iPaint before, non-competition
agreements are tough to enforce even
against your own high-level employees.
So, plan to hire the brightest of the students that have worked on your projects.
They already have training critical to
your operation, they have good-standing
in the trade community, and it solidifies
the relationship between your company
and the Pi, the university, and the R&D
team generally.
tion, know-how, show-how and trade
secrets surrounding the novel coating
for the limited purpose of perfecting the
formulation on the problematic substrate is inked. The license requires all
improvements to be owned by PaintCo.
This is ancillary to the University’s own
standard R&D contracts, and PaintCo
Develop Close
Relationships with PIs, VPs
of Research
Like any close collaboration, the agreement that governs the relationship is only
as good as the two parties on either side of
Stay Intimately Involved
with the Research
The research product issuing from the
contract is yours. If you do not treat it
in high regard, why should anyone else?
So, stay intimately involved, By this, I
mean make sure you are so closely involved that you pick up the nuances, the
tricks, the mistakes not to be repeated
. . . i.e., the trade secrets, your trade
secrets. Be sure and identify them to
the teams, and then treat them as you
legally must in order to preserve their
status as trade secrets.
The take-home-lesson to all this is
– figure out where your program needs
the most help, identify academic researchers that are demonstrably the
best in the area of the problem, and
fearlessly join them with your team.
They are as fit to handle and co-develop
your confidential information as any
corporate entity. So long as you take the
proper approach from the beginning,
you should be just fine. CW
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