Outline

This page is designed to assist you in identifying any major issues early in your discussions.

The Project

  • What are the start date and the end date of the Project?
  • If work starts before the agreement is signed, is the agreement to have retrospective effect?
  • What resources (human and other) will each party provide? (Is everyone satisfied that there is a complete description of what each party is to do/provide and when? Has this been checked with the researchers?)
  • Is the University's contribution to be limited to what the funding provided by the Sponsor and any public funding allows it to do?
  • Who are the people who are key to the Project?

Financial Contribution (from the Sponsor) and External Funding

  • What financial contribution will the Sponsor make?
  • Is this a fixed amount or does it depend on amount spent by University, staff costs etc.?
  • What expenditure will the Sponsor re-imburse to the University?
  • Is the Sponsor paying on a full economic costs or FEC (for information about FEC see useful resources) plus profit element basis?
  • Will the Sponsor cover increases in salaries, NI etc.?
  • How frequently will invoices be rendered?
  • Is the Project supported by any external funding?
  • Are there any terms attaching to that external funding that conflict with what the parties want to do?
  • Are any such terms applicable to both parties or just the University?

Background

  • What Background will each party provide?
  • Do other companies in the Sponsor's group need to use the University's Background? If yes, will they agree to keep it confidential?
  • Is some or all of the Sponsor's Background confidential?
  • May the University's staff and students publish any of the Sponsor's Background? (see Academic Publication below)

Results

  • Which party will initially own the IP in the Results?
  • If the University owns the IP will it:

    -  allow the Sponsor and its group companies to use that IP:

        a.  in a specific field?
        b.  in a specific territory?

    -  agree to negotiate with the Sponsor to:

        a.  take an exclusive licence; or
        b.  take ownership (assignment) of any IP?

  • If the University is to grant an exclusive licence to the Sponsor, have the basic terms of that licence been agreed - payment, IP identified, targets, territory, field, duration, reversion?
  • If the University is to assign any IP to the Sponsor, have the basic terms of that assignment been agreed - payment, IP identified, territory, reversion?
  • Have the parties agreed a patenting strategy?
  • Will the Sponsor contribute to costs incurred by the University in patenting at the Sponsor's request?
  • If the Sponsor owns any IP or has exclusive rights, what rights will the University have:

    - for academic research/teaching/clinical patient care?
    - to use for the Project?
    - other?

Confidentiality and Academic Publication

  • Is confidential information to be kept confidential indefinitely or for a definite period after the end of the Project? If the latter, what period?
  • Is academic use/publication of

    - Results;
    - Sponsor's Background

permitted in principle, subject to safeguards?

Liability

  • Will either party give any warranty:

    - as to the quality of its contribution or
    - that any IP it contributes or creates will not infringe third party rights?

  • Will the Sponsor indemnify the University against any third party claims arising from use of Results/University's Background?
  • Is there any financial cap on liability? If yes, what is that cap?
  • Is liability for loss of profits, business, contracts etc. to be excluded?
  • If the University assigns any IP to the Sponsor will it give a warranty of full title guarantee?

Termination

  • May either party terminate if a member of the other's key personnel leave/are unable to continue and the replacement is not satisfactory?
  • If the answer is yes, will the Sponsor still pay reasonable employment costs?