KAM Guide: IP in agreements

Question 1

Introduction

Accepted Answer

Purpose

This guide provides guidance for university staff and partners on some of the main issues concerned with IP and wider knowledge assets that commonly arise in agreements. It sets out what to consider before you share, use or create IP, and describes contract terms that are often relevant, alongside typical institutional routes for support. It is designed to help readers identify key issues early, understand how these issues affect knowledge assets, and support informed discussions during drafting, review, and negotiation.

The chapter emphasises the importance of recognising when an agreement becomes legally binding and understanding the commitments being made on behalf of the institution. It covers such things as identifying who holds delegated authority to negotiate and sign. It also touches on managing the contracting process in accordance with institutional requirements.

The prompts provided are intended to support reflection and discussion about IP and wider knowledge assets during project planning. They should be adapted to the needs and circumstances of each project.

Research Environment

Universities are complex environments with diverse research and commercial activities. These activities rely on contractual arrangements that require clear agreements, active management, and appropriate governance. Contracts operate within the framework of the institution’s IP policy, governance procedures, and delegated authorities.

Everyone involved needs to understand the institutional processes for contracting and contract management. A contract is a legally binding agreement that creates enforceable rights and obligations. Poorly drafted or managed contracts can result in loss of control over assets, reputational harm, missed opportunities, or non‑compliance with legal obligations.

Contracts provide the framework for research, innovation, and knowledge exchange activities, defining how collaborating parties work together and manage their respective responsibilities.

For activities related to IP and wider knowledge assets, a contract formalises the working relationship between the parties. It sets out how collaboration will take place, the terms and obligations involved, and the mechanisms used to manage risk and limit liability. It defines the scope of the work and clarifies what is included and excluded. It also establishes processes for managing both the contractual arrangement and the ongoing project relationship.

A contract records the IP and wider knowledge assets each party brings to the collaboration (Background IP), including third‑party material. It sets out the governance and processes for managing the IP and wider knowledge assets created during the collaboration (Foreground IP). It describes the work to be undertaken, where and when it will take place, and the contributions and intended benefits for each party. Preparatory steps, such as IP due diligence (PDF, 221 KB), may be required before a contract is finalised.

Any agreement covering ownership of pre‑existing and newly created knowledge assets should be completed before work begins. It should set out access and use rights for all assets, including those owned by third parties. It should also describe the relationship between the parties and identify the funding source and any related IP obligations.

This chapter outlines the types of IP related agreements used in universities and highlights common IP considerations. Institutional policies and procedures explain how your organisation approaches contracting and identify who to contact for further guidance.

Question 2

IP due diligence and freedom to operate

Accepted Answer

IP due diligence helps identify and verify IP and wider knowledge assets associated with a project. It clarifies ownership and third-party rights and establishes a shared understanding of what assets exist, how they are used, and how they may be accessed. It provides a clear view of the IP landscape relevant to the activity and supports consistent management of knowledge assets across the project and the wider portfolio.

This guidance describes non-legal IP due diligence (PDF, 221 KB) activity.

Formal IP due diligence refers to an IP due diligence activity that is led or signed off by a qualified patent attorney or IP professional. This focuses on registrable IP rights, such as patents and designs, and issues such as freedom to operate, and is capable of supporting legal or transactional decisions.

For the purposes of this document, informal IP and wider knowledge asset due diligence is referred to as IP due diligence, unless otherwise stated.

A project scope should set out the purpose, contributions, and expectations of all parties. This helps identify opportunities, risks, and dependencies linked to IP, data, materials, infrastructure, or expertise. Recording this information at the outset supports structured management of knowledge assets and IP. Updating the scope throughout the project captures changes in assumptions and highlights emerging risks or opportunities.

IP due diligence activities can be tailored to the needs of the project. They consider background and foreground IP, the intended use of assets, and any access or licensing needs. They also reflect institutional governance processes, which set out how checks are undertaken, how risks are reported, and who is responsible for oversight. This can include checks on innovation and trusted research. IP due diligence checks should take place before entering into an agreement and continue throughout the project, where required.

Freedom to operate IP checks examine whether the planned activity could infringe others’ IP rights and whether it can proceed as intended. They help clarify the competitive and rights landscape around a technology or idea and may inform commercial or strategic considerations. For example, they can indicate whether licences of third-party IP rights or knowledge assets may be required to pursue a project. These checks are legal assessments and may incur additional cost. Not all projects require full freedom to operate searches, but such checks may be appropriate for activities such as spinouts, research collaborations, or licensing.

Broader due diligence assessments may be necessary that extend beyond IP and wider knowledge assets and may include reviewing:

existing agreements
organisational or individual checks
financial or legal considerations
research security requirements
reputational factors
territorial or environmental conditions
assessments of technology and market context

These elements help ensure that the project is workable, compliant, and aligned with institutional requirements.

International and regulatory considerations may also be relevant. These may include for example differences in:

IP systems
territorial protection
export controls
frameworks such as the NS&I Act

IP due diligence work therefore considers things such as where collaborators operate, how they will access assets, and what safeguards are required. Security related checks, including those set out in the NPSA’s supply chain due diligence guidance (PDF, 327KB), may also be appropriate.

Ongoing assessment and monitoring can ensure that IP and wider knowledge assets continue to be managed in line with agreements, institutional responsibilities, and any regulatory or territorial requirements. This can support informed and strategic decision making throughout research, development, career development, and commercialisation.

Question 3

Contracts

Accepted Answer

A contract is a legally binding and enforceable agreement between two or more parties. It sets out the terms under which an activity takes place. It provides clarity on purpose, responsibilities, and obligations.

Any agreement that a research institution undertakes should consider the identification, protection, and strategic management of IP rights and wider knowledge assets. What this means will be defined by the institutional policies and governance processes and the context of the agreement.

Although contracts are normally formal, written documents, they may also be formed verbally or through email correspondence. These informal exchanges can still create obligations, including those relating to IP and wider knowledge assets. It is therefore important to avoid inadvertently agreeing to terms that bind you or your institution in unintended ways.

Universities operate internationally through a wide variety of collaborations, partnerships, research projects, and teaching arrangements. Within these activities, control of IP rights and wider knowledge assets affects the institution’s ability to conduct, publish, and build on future research. Granting or transferring IP rights to external parties without careful consideration can restrict academic freedom. It can also enable third parties to limit how IP and wider knowledge assets are used.

Many IP related issues arise when parties do not identify, strategically assess, and discuss project‑specific requirements early in the process. Agreements that define who owns pre‑existing (background) and newly created (foreground) knowledge assets should be drafted and signed before work begins. These agreements should also set out access and use rights for all assets, including those owned by third parties. They should reflect the nature of the relationship between the parties, the source of funding, and any associated IP obligations. This helps ensure clarity of responsibilities and safeguards the institution’s freedom to conduct, publish, and develop future research.

Beyond establishing ownership and access rights, agreements should also ensure that universities retain the rights necessary to fulfil their academic mission and long-term research objectives. This may include preserving the ability to publish research outputs and to use IP for research, teaching, and future scholarly activities. To protect these core functions and support academic freedom, such rights should be carefully considered and appropriately reflected in commercialisation and collaboration agreements.

Understanding these obligations helps provide clarity regarding:

prevention of restrictions on academic use and publication
safeguarding the institution’s long-term research capabilities
ensuring that external partnerships remain aligned with the university’s public-benefit purpose

When operating internationally, it is important to consider differences in legal and regulatory frameworks. Legal and regulatory frameworks governing IP, data, research governance, and contractual enforceability vary significantly between countries. They can determine:

who owns knowledge assets
how they may be used
how disputes are resolved

Failing to take these differences into account can expose institutions to legal risk, weaken their ability to protect or exploit IP, and constrain future research and collaboration.

IP created within the terms of employment is usually owned by the employing institution. However, many university IP policies specify that some rights, such as copyright in scholarly works, remain with the creator. There are many different type of contracts, including those that govern students, visitors and collaborators both domestically and internationally.

Therefore, contracts should include provisions that clarify the basis of ownership, use and access to IP and wider assets. This includes any requirements for staff to assign IP rights to the university or to partners under specific projects or contractual arrangements.

These IP provisions form part of broader institutional governance mechanisms. Universities typically maintain clear processes for contract approval, including designated signatories with authority to enter into specific types of agreements. Understanding these processes and knowing who is authorised to sign on behalf of the institution, is essential when entering contracts that involve IP or wider knowledge assets.

Question 4

Common IP terms in contracts

Accepted Answer

Overview

Provisions relating to IP and wider knowledge assets can appear throughout a contract, not only in clauses labelled “intellectual property rights,” “background IP,” or “foreground IP”.

How a contract frames these assets influences how they are:

identified
used
accessed
shared
protected
managed

The following considerations highlight key themes that may be relevant when planning or negotiating agreements involving IP and wider knowledge assets. Additional factors may apply depending on context.

Purpose and Parties

A contract should reflect the purpose of the collaboration and clearly identify the parties involved. This clarity supports the accurate allocation of rights, responsibilities, and expectations relating to IP and wider knowledge assets. It ensures the terms align with the structure of the working relationship, including any subcontractors or affiliates.

Reputation

Contracting can affect institutional reputation. Agreements involving IP and wider knowledge assets should consider how the relationship, outputs, and public perception may reflect on the institution and its research activities.

Background and foreground IP

A contract should define what background IP each party brings and who owns any foreground IP created during the project. Clear definition helps protect pre-existing rights, avoids unintended transfer, and enables appropriate planning for use, access, and management of new IP. Background IP should be described precisely, including any third-party rights, permitted uses, and post-project access where relevant.

Foreground IP arrangements should outline:

ownership
decision making
protection
maintenance
the scope
the duration of any access rights or licences

Projects may also generate developments that build on existing IP and wider knowledge assets, making it important to consider how improvements will be managed.

IP improvements

Improvements to existing IP may arise during a project. Contracts should recognise how these improvements will be owned, how they may be used, and how they relate to background and foreground IP. Clear terms help avoid later uncertainty and support consistent management of enhanced assets.

Once ownership of existing and improved assets has been established, consideration should also be given to who can access and use them.

Rights of access, use, and exploitation

Contracts should set out who can access or use IP and wider knowledge assets, for what purposes, and under what conditions. This may include:

publication
teaching
internal research
commercialisation
onward licensing

Clarity helps ensure that rights are aligned with institutional needs and project objectives. In some collaborations, these rights may arise through joint ownership arrangements, which require additional consideration.

Joint ownership of IP and wider knowledge assets

Joint ownership can support collaboration but introduces complexity, particularly in international projects. Contracts should define roles, decision-making processes, and any limits on independent actions by each owner.

Requirements may vary across jurisdictions. For example, rules governing consent for licensing or assigning jointly owned IP differ between countries and should be addressed clearly to support effective long-term management.

Assignment of Rights

Assignment transfers ownership of IP rights. It is different from a licence, which allows use without changing ownership.

If a project involves reports, software, data, designs, or other outputs created by a third party, the agreement should say who will own the resulting IP. It should also state whether any rights need to be assigned.

Examples include:

reports
datasets
software
designs
research outputs
other knowledge assets

Things to consider:

what IP is being assigned
which rights are being transferred
who the rights are transferred from and to
when the transfer takes effect
whether the transfer is permanent
whether any rights are retained for research, teaching, publication, or future collaboration

Assignments should be checked against existing agreements, funder requirements, institutional policies, and future research needs. Once IP rights are assigned, the original owner may not be able to use them unless the contract preserves that right.

For UK-registered IP rights, parties may also need to update the relevant public register. This helps maintain accurate ownership records and can support enforcement.

Confidentiality

Confidentiality terms protect information that should not be shared more widely. This may include unpublished research, trade secrets, technical know-how, commercial information, or material that could support a future IP application.

The agreement should say what information is confidential, who may receive it, how it may be used and how long the duty of confidentiality lasts. Where information may support a patent or other registered right, disclosure should be managed carefully before it is shared.

Examples include:

trade secrets
unpublished research
potentially patentable inventions
future IP rights
commercial information
technical know-how
personal or restricted data
information received from third parties

Contracts should clearly set out:

what information is confidential
who can receive it
how it can be used
when it can be disclosed
how long the confidentiality duty lasts
what happens to confidential information when the project ends

Confidentiality duties may continue after the contract ends. This should be clear in the agreement.

Where the project involves research outputs, publication or patent protection, confidentiality terms should be reviewed before information is shared. Early disclosure can affect whether some IP can be protected.

Warranties, indemnities, and liabilities

Contracts may include warranties relating to the origin, fitness, or non-infringing status of IP and wider knowledge assets. Any limitations should be clearly defined so that obligations remain proportionate and manageable.

Contracts may also include indemnity provisions covering compensation for legal costs or damages arising from third-party infringement claims. Knowledge assets often involve uncertainty, and this should be reflected when drafting warranties and indemnities.

Record keeping

Accurate records of contributions, ownership, authorship, creation dates, protection activities, and commercialisation activities support effective management of IP and wider knowledge assets. Clear documentation helps reduce disputes and supports due diligence throughout the project lifecycle.

Terms and conditions

Terms and conditions (T&Cs) can govern how IP and wider knowledge assets are accessed and used. Contracts may also arise through email exchanges or verbal discussions where the essential elements of a contract are present.

Any exchange involving IP, data, know-how, or other knowledge assets should therefore be approached carefully and documented where appropriate. It is important to review the standard T&Cs of prospective partners and understand whether they will form part of the agreement.

Because these assets may be sensitive and valuable, it is important to be clear about:

what is being shared
what is being agreed
what permissions are being granted

Obligations, schedules, and authority

Contracts should clearly define the activities, responsibilities, timescales, and deliverables required under the agreement. Where IP and knowledge assets are involved, the contract should also set out how they will be managed and by whom.

IP-related obligations, including confidentiality, IP protection, infringement reporting and the return of materials, should be assigned to a clearly identified legal entity. Contracts should be approved and signed by individuals with the appropriate delegated authority to ensure that commitments relating to IP and knowledge assets are valid and enforceable.

Responsibilities, accountabilities, and signatories

Institutions should have clear governance arrangements that identify who is authorised to make decisions about IP and wider knowledge assets. This should also clarify who may sign contracts on the institution’s behalf.

Signing authority is the legal power granted to an individual to bind an organisation. Institutional IP policies and procedures should define levels of authority and any limitations that apply.

IP-related obligations, such as maintaining confidentiality, protecting IP, reporting infringement, or returning materials, must be assigned to clearly identified legal entities. Contracts should be signed by individuals with appropriate delegated authority to ensure that commitments relating to IP and wider knowledge assets are valid and enforceable.

Sharing returns

Contracts that involve commercialisation of IP may include provisions for sharing financial or non‑financial returns. These terms should align with institutional policies on revenue sharing, comply with relevant legal obligations, and reflect the contributions and responsibilities of those involved.

Termination

Contracts should explain how IP and wider knowledge assets will be handled at termination, including return of materials, continuation of licences, or cessation of access. Termination provisions may also address insolvency, failure to exploit licensed IP, or missed performance milestones.

Jurisdiction and international working

International collaborations may involve different IP laws, contractual interpretation, and enforcement mechanisms. A contract should say which law applies and which courts or dispute process will be used if problems arise.

Working across borders may also involve:

translation of contract terms
territorial IP protection
national security requirements
export control rules
data protection requirements
different approaches to ownership, inventorship, licensing, and assignment

These issues should be considered before work starts. Clear terms help the parties understand how IP and knowledge assets will be owned, used, transferred, protected, and enforced during the project and after it ends.

Potential disputes

Contracts should explain how the parties will deal with disagreements. This is especially important where the agreement involves IP, knowledge assets, confidential information, or rights to use research outputs.

The contract may include processes for:

raising concerns early
escalating issues to named contacts or senior representatives
mediation
arbitration
court proceedings
handling infringement claims
responding to unauthorised disclosure of trade secrets or confidential information

The contract should also state:

the governing law
the jurisdiction or dispute forum
how disputes will be handled where parties are based in different countries

Clear dispute terms help reduce uncertainty if there is disagreement about ownership, access, use, licensing, disclosure or enforcement of IP and knowledge assets.

Open source data is a specific example of how access, use, licensing, confidentiality, and compliance considerations can interact within agreements involving IP and wider knowledge assets.

Open data and open licences

Open data can normally be reused by others under the terms of the licence that applies. Those terms may require attribution or place conditions on how the data is reused, adapted, or shared.

Open data can still be subject to IP rights, including copyright and database rights. It must also be handled in line with other legal requirements. For example, personal data, confidential information, and proprietary material should not be treated as open data unless there is a lawful basis and permission to do so.

The UK implements database rights through the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032).

Question 5

Agreements involving individuals

Accepted Answer

The following agreements are examples of those involving individuals:

employment contracts
students
visitor agreements

Employment contracts

Employment contracts often include clauses that explain how IP created by an employee will be handled. These reflect the UK position that IP generated during an employee’s duties will generally belong to the employer. It can be helpful for contracts to clarify how different categories of IP, including copyright, are treated and whether any assignment requirements apply for specific projects or collaborations.

Contracts may also outline expectations for employees to support the protection of IP they generate. Some of which may extend these expectations to work created outside normal duties or hours. They may additionally set out what information employees are permitted or not permitted to use once they leave the institution.

Students

Students often create valuable IP and wider knowledge assets through their research, projects, data, software, and creative work. Contracts help clarify who owns these assets and how they can be used.

Ownership of student-created IP may vary depending on university policy, funding arrangements, and project agreements. Students should check how any collaboration, sponsorship or placement agreement affects their rights and responsibilities.

Students may need to check the terms of agreements before taking part in collaborations, sponsored projects, or arrangements for using university resources. This helps clarify rights and responsibilities for student work, while meeting institutional and partner requirements.

Visitor agreements

Visiting academics, guest lecturers, honorary staff and secondees who are not employed by the university may own the IP they create, or it may belong to their employer. University’s IP policy may lay out an initial position on the ownership of knowledge assets generated by visitors.

It is useful for both parties to check whether any third-party agreements apply, so they understand any IP rights or obligations. UK academics visiting other countries should also check with their institution before signing anything that covers IP. This includes in the materials they take with them or any IP created during the visit.

Question 6

Commercial and collaborative agreements

Accepted Answer

The following agreements are examples of those used in commercialisation and collaborative activities:

memorandum of understanding (MoU)
research collaboration agreements
consultancy agreements
knowledge transfer partnerships (KTPs)
material transfer agreements (MTAs)
licence agreements

Memorandum of understanding (MoU)

A Memorandum of Understanding (MoU) is generally intended to be a non-binding arrangement between parties. To maintain this status, careful attention should be given to the language used, ensuring that no terms unintentionally create legally binding obligations.

An MoU often precedes more formal agreements; therefore, any discussion or disclosure of IP and wider knowledge assets should be handled with particular caution. For example, clear consideration will need to be given regarding what information can be shared and how it may be used. It is also important to consider whether any access could imply rights or obligations that are not intended to be granted at this stage.

Research collaboration agreements

Research collaboration agreements provide the overarching framework for how partners work together and manage the IP and wider knowledge assets involved. They typically outline things such as:

roles
responsibilities and obligations
funding arrangements
confidentiality
publication expectations
the processes for resolving disputes or ending the collaboration

From an IP perspective, they set out how background and foreground IP will be identified, owned, accessed, and used over time. This includes how any new IP or data generated during the project may be licensed or commercialised.

Contracts may also detail the handling of sensitive information, trade secrets, and data, as well as how third-party rights, prior agreements are managed. They should also cover termination scenarios, such as insolvency or failure to exploit IP, and any other provisions that may affect the collaboration. Establishing the agreement at the outset helps provide clarity on how IP and wider knowledge assets will be managed throughout the project.

To support you in the development of consistent good practice, the following model agreements exist.

The Lambert Toolkit provides model documents and supporting guidance for university-business research collaborations. These materials can help parties discuss ownership, access and use of IP created through collaborative research. They are starting points for negotiation and may need to be adapted for the project.

The Brunswick Agreements, produced by ARMA, offer templates for partnerships between universities or with non-commercial organisations.

The National Institute for Health and Care Research (NIHR) has developed model agreements to streamline NHS related clinical research. These resources help structure the management and use of IP and wider knowledge assets in collaborative projects.

Consultancy agreements

Consultancy agreements set out the terms under which an individual or institution provides services to a client. The agreement should clearly define ownership, access and use rights for any IP and knowledge assets involved.

In consultancy agreements, it is helpful to clarify the institution’s background IP and any new IP that may be created during the project. This includes how each party may use it for teaching, research, licensing, or commercialisation. It is useful to agree early on how confidential information will be handled, how publication will be managed and whether confidentiality or nondisclosure terms are required.

The financial arrangements, including any possible assignment of IP rights, can be clarified within the agreement. It can also be helpful for the agreement to describe how disputes, termination and situations such as insolvency or non‑exploitation of IP could be approached.

Knowledge transfer partnerships (KTPs)

A knowledge transfer partnership (KTP) is a funded collaboration between a business or not-for-profit organisation and a UK knowledge base. This includes institutions such as a university, college, Catapult or research and technology organisation. KTPs are used for defined innovation projects that need academic or technical expertise.

In a typical KTP, the knowledge base recruits an associate to lead the project within the business, with support from academic and business supervisors. KTP projects usually run for 12 to 36 months. Agreements should make clear how IP, knowledge assets, confidential information, and project outputs will be owned, used, and managed.

Material transfer agreement (MTAs)

A material transfer agreement (MTA) sets out provisions for the transfer of tangible research materials between two parties. These materials may include biological samples, chemical compounds, or other physical substances used in research. MTAs clarify IP rights over any inventions made using the materials, ownership and use, liability, and confidentiality, including clauses to protect sensitive information relating to the materials. They also cover publication rights including any conditions for publishing research results involving the materials.

Some key IP-issues to consider in your MTAs may include things such as:

ownership of original materials
background IP
rights to derivatives and modifications
inventions and patent filing
publication
confidentiality
if commercialising, further IP agreements may be needed

Considering IP in your research collaborations may prevent disputes over IP and ensure compliance with regulations.

Licence agreements

A licence agreement allows the owner of IP rights to give another party permission to use those rights without transferring ownership. The IP owner retains ownership while granting rights of use under agreed terms.

Licences can be granted for a range of IP rights and knowledge assets, including patents, copyright, designs, software, databases, know-how and research outputs.

The agreement may clearly set out:

the IP rights or knowledge assets covered by the licence
who may use them
the permitted uses
whether the licence is exclusive, non-exclusive, or sole
whether the rights may be shared or sub-licensed
the duration and territorial scope of the licence
any financial arrangements or provisions for sharing benefits

Clear licence terms help the parties understand the rights being granted, the conditions that apply and the intended outcomes of the project. They also support the effective management of IP and knowledge assets throughout the life of the agreement.

Confidentiality provisions may be required where research outputs, technical information or other sensitive material are shared during negotiations or throughout the licence period. These typically state what information is confidential, how it may be used, who may receive it, when disclosure is permitted and how long confidentiality obligations will apply.

The IPO provides examples of both a Non-disclosure agreement and a Confidentiality agreement.

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