Guidance

Lambert toolkit

The Lambert toolkit is for universities and companies that wish to undertake collaborative research projects with each other.

Overview

We have created this toolkit for universities and companies that wish to undertake collaborative research projects with each other. The toolkit consists of:

  • a set of 5 model research collaboration (one to one) agreements
  • 4 consortium (multi-party) agreements
  • a decision guide
  • guidance documents

The Lambert Working Group on Intellectual Property (IP) prepared the toolkit.

The objectives of the toolkit are to:

  • facilitate negotiations between potential collaborators
  • reduce the time and effort required to secure agreement
  • provide examples of best practice

Key elements of the Lambert model agreements

The key elements of the Lambert agreements are:

  • the ownership and rights to use the results of the project
  • the financial and other contributions made by the commercial sponsor
  • the university’s use of the results for academic purposes

These are the focus of the decision guide for the research collaboration agreements and also apply to the consortium agreements.

Considering your position in these areas should help you to identify which of the model agreements to use as a starting point.

Results of the project

The outcome of most projects will be the IP in the results.

The model agreements also cover applying for a patent to protect any patentable invention that results from the project.

Ownership of the IP and the rights to use that IP in the results of the project are key elements of the model agreements. Anyone wishing to use the results will have to get the permission (licence) of the owner. The owner, in turn, will expect to make a return from the exploitation of the IP.

A licence or right to exploit may be limited in many ways; for example, it may be limited to use in a particular area or field of technology.

The licence or right to exploit may be limited to a particular geographical market, for example, the US or European market.

Sometimes the right to use may be exclusive, giving only one party the right to exploit the IP, or non-exclusive, allowing more than one party to exploit it.

Benefits from ownership of IP

The ownership of the IP and the right to use it are important considerations because they can confer a competitive advantage.

Where the results of a project enable the creation of a product with unique characteristics that is attractive to customers, ownership of the IP, or the exclusive right to use it, provides protection for the investment made in developing the product and taking it to market.

The ownership of the IP and right to use it are becoming increasingly important to universities in the UK as the government seeks a greater return on the monies invested in publicly-funded research. The right to use IP may also be important to future research at the university, and to the university fulfilling its charitable objectives. Equally knowledge transfer and the engagement of universities with industry is acknowledged to be important to the economy of the UK and Europe.

It is clear from the above that ownership of IP in the results of the project and the rights to exploit it will be one of the key elements of any research collaboration agreement. The potential value of such ownership and rights will vary according to the nature of the IP, the nature of the rights and the market for its exploitation. For the same invention, an exclusive right to exploit it worldwide in any field will be worth more than a non-exclusive right to exploit it limited to a particular field of use and/or a limited geographical market.

Financial contribution from the commercial ‘partner’

The assumption underpinning the 5 model research collaboration agreements is that the commercial ‘partner’ will seek greater or further rights to exploit the results in situations where it has made a greater contribution, be it financial or other or both, to the collaborative project.

Where the commercial ‘partner’ needs full ownership of the results for commercial reasons, the university may agree to this. But the cost to the commercial ‘partner’ will be greater than where the results are of less immediate commercial importance or interest to the sponsor.

For example, where the project is more speculative in nature, or has implications for future research at the university, the financial contribution of the commercial ‘partner’ will be lower and the rights to use and exploit the IP granted by the university will be more limited.

Maximising innovation and finding a workable compromise

The aim of the model agreements is to maximise innovation. The cornerstone of the 5 model research collaboration agreements is that, at the least, a commercial sponsor should have the right to use the results on a non-exclusive basis so as to promote the use of the results and therefore innovation.

Critical to model consortium agreements B and C is that there is an exploitation plan and that if a party tasked with exploiting the results does not do so, the rights to exploit other parties’ results come to an end. Model consortium agreement A creates a level playing field under which all the parties have the right (but not the obligation) to exploit the results.

The model agreements have not been developed with the aim of maximising the commercial return to the universities; the aim is to encourage university and industry collaboration and the sharing of knowledge. They do not represent an ideal position for any party; depending on the circumstances they are designed to represent a workable and reasonable compromise for both or all parties.

Academic publication

A key element of any research agreement entered into by a university will be the right to publish the results, for example, in the form of scientific papers and to use the results in connection with teaching and academic research.

Publication is not only the life blood of the academic researcher’s career but also important to the development of the research profile of the university.

But premature publication may damage the competitive position of the university and/or the commercial ‘partner’ and/or the chances of protecting and exploiting the IP.

For example, early disclosure would prevent an application for a patent from being successful because the invention would not be novel. The effect of this is that there would not be any protected lead-in time to get a product to market and there would be competition from other parties at all stages.

The 5 model research collaboration agreements provide a spectrum in relation to the right to publish, with no rights to publish for the academics at one end of the spectrum and unrestricted rights at the other.

The ‘middle ground’ is represented by the academic researchers being able to publish under a protocol that allows the commercial ‘partner’ an element of control over the content of, and the timescale for, publication (eg in order to give the sponsor an opportunity to secure patent protection).

The outlines

It is important that you identify any major issues or differences of approach early on in the process of negotiating the research project. By doing so, you will be able to concentrate on resolving those issues.

Before drafting an agreement you should discuss the main issues relevant to your project both internally and with your collaborators. This will help ensure you have similar expectations for the proposed project. There are 2 outline documents which are designed to help you identify these issues and agree expectations.

Joint ownership

None of the 5 research collaboration agreements deals with the joint ownership of IP because this occurs more rarely than people think and it is more difficult for both the sponsor and the university to manage. The research collaboration agreements adopt the simpler approach that one or other of the parties will own the IP, but the result of negotiations may be that the university owns the IP in result ‘A’ and the sponsor owns the IP in result ‘B’.

Consortium agreement A contains an example of a joint ownership provision in clause 5.4.

The members of the Lambert Working Group recommend that you avoid joint ownership where possible. If it is important that more than one party owns some IP, a better way forward may be to consider whether some of the IP should be owned by one party, other IP by another party and so on, rather than having several or all of the organisations participating in the project having a joint interest in the ownership of the IP.

If you do decide to have joint ownership it is important that the agreement sets out what rights each joint owner has to exploit the IP. For an example of this please see clause 5.7 in consortium agreement A.

Model research collaboration agreements

There are 5 model research collaboration agreements, covering one to one projects each providing a different approach in the key area of who is to own, and have the right to exploit, the intellectual property in the results or outcome of the collaborative project.

Research collaboration agreement Terms IPR
Agreement 1 Sponsor has non-exclusive rights to use in specified field/territory; no sub-licences University
Agreement 2 Sponsor may negotiate further licence to some or all University IP University
Agreement 3 Sponsor may negotiate for an assignment of some University IP University
Agreement 4 University has right to use for non-commercial purposes Sponsor
Agreement 5 Contract research: no publication by University without Sponsor’s permission Sponsor

The model agreements are merely starting points and their use is not compulsory, but by using them you may be able to reduce the amount of time and money spent negotiating.

You should decide which of the 5 approaches best suits your purpose and negotiate with the other party to achieve consensus and a signed agreement before work on the project begins.

Decision guide

To help you decide which of the model research collaboration agreements most closely reflects the circumstances of your project, we have prepared a decision guide to lead you through some of the principles and criteria that you may wish to take into account when deciding on the ownership and rights to exploit IP. You may find it helpful to consult this before using any of the model research collaboration agreements.

In reality, model research collaboration agreements 2 and 3 may be combined so that the sponsor has the right to negotiate an exclusive licence and/or an assignment. The outcome of negotiations could be, for instance, that the sponsor takes an exclusive licence in one territory and an assignment of IP in a different territory.

The decision guide has been structured as a series of questions to help identify the key elements of a research collaboration agreement.

The decision guide asks a series of questions to identify:

  • the relative importance of the project results to the sponsor and the project’s reliance on the sponsor’s materials or existing IP
  • the importance of academic use and publication to the university and its researchers
  • the importance of the project to future research at the university

By combining the responses to these questions, it is possible to identify which of the research collaboration agreements may be the most appropriate starting point.

If a project is of critical commercial importance to the commercial sponsor, and cannot take place without using the sponsor’s technology or IP, the user is directed to consider research collaboration agreement 4 or research collaboration agreement 5.

If it is important for the academic party to own the IP, the user is directed to research collaboration agreements 1-3

Where publication of the results would have a serious impact on the competitive position of the sponsor and the sponsor wishes to ensure that publication does not take place the user is directed to research collaboration agreement 5.

In this way the decision guide provides a starting point for negotiation based on the situation of the university and the sponsor, rather than focusing on ownership of any IP per se.

The decision guide is for use with the bilateral research collaboration agreements only. There is no decision guide for the 4 consortium agreements because there are too many possible permutations for multi-party research.

Model consortium agreements

There are 4 model consortium agreements, for use where more than 2 parties are collaborating. The 4 agreements use the same terminology and have the same structure as the 5 research agreements, but contain additional provisions to cover some of the complications that arise as a result of having more than two parties.

The consortium agreements cannot cover all the circumstances that might arise when a group of universities and industrial ‘partners’ get together to carry out research, but they illustrate terms that might apply in four possible scenarios.

Consortium agreement Terms
Agreement A Each member of the consortium owns the IP in the results that it creates and grants each of the other parties a non-exclusive licence to use those results for the purposes of the project and for any other purpose.
Agreement B The other parties assign their IP in the results to the lead exploitation party who undertakes to exploit the results. (Alternatively the lead exploitation party is granted an exclusive licence).
Agreement C Each party takes an assignment of IP in the results that are germane to its core business and undertakes to exploit those results.
Agreement D Each member of the consortium owns the IP in the results that it creates and grants each of the other parties a non-exclusive licence to use those results for the purposes of the project only. If any member of the consortium wishes to negotiate a licence to allow it to exploit the IP of another member or to take an assignment of that IP, the owner of that IP undertakes to negotiate a licence or assignment.

There are too many possible variations and permutations to cover all of them and the model consortium agreements are merely starting points that may be useful in shaping the thinking about the structure of a collaboration, but by using them you may be able to reduce the amount of time and money spent negotiating.

You should negotiate with the other parties to achieve consensus and a signed agreement before work on the project begins.

Because there are more parties to the consortium agreements, they have provisions that do not appear in the collaborative research agreements:

  • project management (clause 3)
  • financial management and external funding (clause 4)
  • expulsion and the addition of new parties (clause 10

Consortium agreements B and C have been drafted for use with the Technology Strategy Board’s Collaborative R&D Programme but, with a few changes, may be adapted for other circumstances.

The model consortium agreements do not represent an ideal position for any party; depending on the circumstances, they represent a workable and reasonable compromise for all parties.

Guidance notes

The 5 model research collaboration agreements (One to One)

Guidance notes for the research collaboration agreements are available.

The 4 model consortium agreements

Guidance notes for the consortium agreements are available.

Underlying principle

The underlying principle of the five research collaboration agreements is that, unless there are exceptional circumstances, the industrial sponsor will, as a minimum, pay the University on a full economic cost basis and in return will receive a royalty free non-exclusive licence to use the results of the research (agreement 1). The more the sponsor pays, the more rights it receives so that, where the sponsor owns the IP in the results and the university retains no rights (as in agreement 5), the sponsor’s contribution will be at full market rates. This principle is not cast in tablets of stone, but was what the Lambert Inner working group had in mind when negotiating the terms of the research collaboration agreements.

That approach is too simplistic for use in the model consortium agreements where there are more than two parties, but when determining the payment plan and the return to each of the parties from the exploitation of the results of the research, the contribution that each party has made (financially and other wise) to the project should be taken into account.

Jurisdiction

These guidance notes and the model agreements are designed to be used only when the agreements are governed by English law. If you want to enter into a contract under a different legal system, you can adapt the model agreements, but you will need to take legal advice from a lawyer qualified to advise on that country’s law and who can help you adapt the model agreements where necessary to comply with local laws.

Useful resources

The Lambert Working Group on Intellectual Property thought that it would be helpful to provide examples of the following agreements:

However, these examples have not been subject to the same level of scrutiny and development as the 5 model research collaboration agreements, the four model consortium agreements, the decision guide, the outline and the guidance notes. They are provided for information only. Please keep this in mind.

If you are interested in licensing intellectual property you may wish to read ‘How licensing intellectual property can help your business’ which provides an overview of licensing and references to other more detailed resources on licensing.

Information on non-disclosure agreements is also available.

History of the Lambert Working Group on IP

The Lambert Review on Business-University Collaborations chaired by Richard Lambert, former editor of the Financial Times and formerly a member of the Monetary Policy Committee at the Bank of England and now Director General of the CBI, reported in December 2003 - Full Text of the Lambert Review and its Recommendations.

The objectives of the review, conducted on behalf of the Treasury, were to:

  • highlight opportunities for business-university collaboration
  • identify successful business-university collaborations that could serve as role models
  • offer ideas to stimulate debate and shape policy

Chapter 3 of the review looked at the issue of knowledge transfer in business-university collaborations and made a number of recommendations (see Chapter 3). One of these was that key stakeholders representing universities and business should work together to produce a small set of model collaborative research agreements for voluntary use by industry and universities (see recommendation 3.5), and that these agreements should set out a range of approaches to the ownership and exploitation of IP including, for example, ownership of IP by the university with exclusive or non-exclusive licensing to the business.

The Lambert Working Group on Intellectual Property was set up to achieve the above mentioned objective in May 2004 and was also chaired by Richard Lambert.

Members of the Working Group include key stakeholders such as The Association of University Research & Industry Links, CBI, Regional Development Agencies, PraxisUnico, a number of UK companies, universities, and several government departments.

The Intellectual Property Office is the secretariat to the Lambert Group.

Contact the Lambert Working Group

Lambert Secretariat
Room GY05
Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom

We welcome feedback on the Lambert toolkit, particularly about your experience of using the model agreements. Please email us at the address below.

Email: lambert@ipo.gov.uk

The Lambert agreements and supporting materials are subject to Crown copyright. It is free for universities and companies to use, adapt and re-use the agreements and the guidance notes for the purpose of undertaking collaborative research.

The Crown copyright material can therefore be re-used free of charge and without requiring specific permission. Where practicable, the Crown copyright status and the source of the Lambert Agreements and supporting materials should be cited.