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Protecting IP in collaborative research: a four-stage model facilitates the identification and rectification of the predictable pitfalls.

Article Excerpt
The assumption that yesterday's innovation model will lead to prosperity in tomorrow's business world is flawed. Consequently, traditional internal innovation is being augmented by a dramatic increase in collaborative research agreements as firms seek to access innovation from a wide variety of organizations. Dealing with intellectual assets is a critical aspect of planning, negotiating and implementing these relationships.

In this article we shall: 1) point out key intellectual property (IP) pitfalls that managers and their direct reports may face as they enter the world of collaborative research; 2) share techniques to deal with each pitfall. Our goal is to provide line managers with the information they need to avoid the most common IP issues. However, nothing in this article should be considered legal advice. Managers entering into collaborative research agreements must utilize the skills of a competent and experienced intellectual property lawyer as they plan, structure, negotiate, and implement their relationships.

We are using the term "collaborative research" in its broadest sense. The issues we address are relevant to any relationship in which the proprietary IP of one firm is used by another firm. We are also using a broad definition of proprietary IP: intangible business assets for which various types of legal protection or ownership rights are given. For example, the principles in this article are relevant to patents, trademarks, copyrights, domain names, trade secrets, and a wide variety of know-how that differentiates one firm from its competitors.

The "Want, Find, Get, Manage" Model[R] is a useful framework for exploring IP issues in collaborative research agreements (1). It divides the collaborative process into four segments (see Figure 1). Each section has its own IP issues and challenges. Intellectual property decisions made in one segment may impact IP decisions in other segments, as well as the overall value of the collaboration. In the "Want" segment, executives determine the assets, IP or skill sets they want to access externally. In the "Find" segment, they search the world for high-quality sources of the identified resources. Next, they "Get" the resources contractually, including acquiring all necessary rights to carry out their business intents. Finally, they "Manage" the collaborative relationship to success.

Issues in the "Want" Phase

The foundation of a powerful collaborative strategy is a clear definition of what the firm "Wants" to access from the outside world. "Wants" come in many forms including physical assets such as products or capital assets, IP such as patents or trademarks, and human assets such as skill sets and access to specific researchers.

Business and technical managers conduct their "Want" planning at both the strategic and tactical levels. From the strategic perspective, they must understand the firm's strategic intent, business model for the relevant product line, and generally accepted IP practices in the industry. This may sound trivial but it is not. A clear understanding of how the firm converts technology into value allows managers to determine which activities they should carry out internally and which activities they must carry out with partners. It also allows them to define the "Wants" at a level of detail sufficient to move to the tactical level. Planning at the tactical level revolves around determining their specific IP needs. The following questions should guide managers' thinking:

* What is in the "Want" description (the Program) and what isn't?

* What external assets are required to meet the Program objectives?

* What rights to these external assets are needed?

* Is IP ownership/exclusivity necessary?

* What internal assets are available to integrate with the external assets?

* Are the internal assets constrained (e.g., a license) in ways that will impact the Program?

* In which markets, products, services and geographies will our firm use the assets of the other (background IP) and new assets that are the fruit of the collaboration (foreground IP)?

* What is the program's schedule? Is there a fixed deadline that must be met?

* Does the firm require rights to the partner's background and/or foreground IP...

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