IP Draughts has recently stumbled across this guidance note, which appears on the AUTM website (here linked from the Stanford University website, as I have lost the link on the AUTM site). It lists 9 points that universities should consider when structuring technology licence agreements. Eleven leading US universities and the Association of American Medical Colleges are named as the authors of the note.
Most of these points seem eminently sensible for universities. With some summarising and paraphrasing, the nine points are:
1. Research rights. The university should reserve rights to conduct research (and permit other non-commercial bodies to conduct research), including research sponsored by commercial companies.
2. Diligence and licence scope. To ensure that the technology is broadly implemented: (a) exclusive licences should include diligence obligations on the licensee; (b) licences should not be broader than necessary to encourage development of the technology; (c) mandatory sublicensing or reservation of rights may be appropriate to meet unmet needs; and (d) in some areas, non-exclusive licensing may be preferable, eg in the case of research tools.
3. Improvements. Avoid licensing improvements. Where improvements are licensed, do so in a tightly defined way, including as to inventors, field, duration, etc.
4. Conflicts of interest. The TT office is well placed to spot potential conflicts but is usually not responsible for taking decisions about them. They should report potential conflicts to the relevant university authorities.
5. Research tools. Universities should seek to ensure broad access to research tools. This could be by a mixture of non-exclusive and exclusive licensing.
6. Enforcement of IP rights. Litigation is seldom the preferred option, and nuisance suits should be avoided. Where litigation is pursued it should be based on a clear, mission-oriented rationale.
7. Export controls. Be sensitive to [US] export laws and regulations, the detailed terms of which may affect the wording that should be used in US know-how licences.
8. Patent aggregators and trolls. Be careful about licensing such organisations. In the case of “value added” aggregators, such licensing may support the university’s objectives, but the terms should promote the university’s goal of delivering useful products to the public. Avoid licensing patent trolls.
9. Developing countries and unmet needs. Universities should strive to construct licensing arrangements that ensure that underprivileged populations have low-cost or no-cost access to medicines.
Most of the above points, although designed with US universities in mind, reflect best practice in UK universities. The guidance note acknowledges that rigid adherence to these principles will not always be appropriate.
Similar points are discussed in more detail in the UNICO Guide on Licence Agreements that we drafted for UNICO (now PraxisUnico) in 2005-6.