LAMBERTLAMBERTMODEL AGREEMENTSMODEL AGREEMENTS

A View from IndustryA View from Industry

Malcolm Malcolm SkingleSkingleDirector Academic Liaison, GSKDirector Academic Liaison, GSK

Talk Plan:

• The process undertaken to develop the Lambert Toolkit – “the rules of combat”

• The Players

• The Lambert ToolkitAgreements, Decision Tree & Guidance Notes

• How GSK are currently using the Boilerplates

• Roll out & plans for the future

The Lambert Toolkit

• Builds on previous ‘successes’– AURIL – CBI ‘LINK’ agreement– ‘Wellcome Trust’ charity Revenue Sharing

agreement.– ‘Russell Group’ Studentship agreement.

• All widely used; all save time and angst.

The process undertaken to develop the Lambert Toolkit

December 2003 Lambert Review (§3.27-3.37)

• Collaborative research one of the most effective forms of KT…

• Important to determine IP ownership and rights…• Negotiations … extremely lengthy and costly…• Problem could be addressed [with] a small set of

standard agreements…• Strong support for idea in HEIs and industry.

The Timetable & Getting started• Invitation from Richard Lambert to all key stakeholders to

discuss the project 4th May 2004

• Kick-off meeting 23rd & 24th June 2004

• Each of the Inner Group were asked to articulate in 6 or less slides what they wanted to achieve from the 2 day exercise

• Discussed, in detail, the principles and content of the boilerplate agreements

• Christine Reid drafted agreements for further consideration by Inner Core Working Group

Lambert Inner Core Working Group• Clifford Friend, Cranfield University• Jeff Skinner, UCL/ UNICO / Praxis• Catherine Quinn, Oxford University• Brian McCaul, Liverpool University / AURIL

• Neill Mackenzie, Avidex / BIA

• Nick Peacock, Rolls-Royce• Julie Grady, Hewlett-Packard• Malcolm Skingle, GSK• Jackie Wilbraham, AstraZeneca

• Christine Reid, Manches Solictors• Russell Brooks, GSK legal adviser

Iterative Process:• Inner working group agreed on the basic format for the

agreements• Disseminated output to the Outer Core Group (all other

stakeholder groups) & collate comments• Incorporated, these views, where appropriate• The Inner and Outer working groups met together on 3

occasions• Finally got endorsement from the Outer Core Group to

proceed with the boilerplate agreements (Lambert 1-5) on 6th December 2004

Nick Peacock – Rolls Royce

• 4 critical issues addressed:– Ownership of IP – cost and ability to protect– Use of IP – exclusive or non exclusive– Royalty / Success payments– Publication and confidentiality

• The conditions industry will accept on the above are a function of industry input to the collaboration (money & intellect) and the importance of the technology field to the business. These are usually related.

• Need to consider a holistic approach

Key Issues

Company Background

University Background

ForegroundProducts, production License, spin-out

Assumptions:- Both parties principally rely on own background for competitive advantage.- But neither wants to be blocked from using foreground IP (patented or otherwise)- So usually they only need to have/retain ‘freedom to use’ the foreground- If sponsor needs exclusivity, IP must be valuable, so reasonable that they pay royalty/fee.

Jeff Skinner, UCL

The Lambert Toolkit

The 5 Model Agreements•Main body the same – differ only in:

– IP rights – Publication rights in pure ‘contract research’.

•One size does not fit all • Different approaches/spectrum of solutions• Starting points/negotiation• Ease & speed up the process - not solve every

issue•Workable and reasonable compromise• Not a substitute for “thinking” & pragmatism

The Toolkit: Models, Other Documents, Links

• 5 Model Agreements– With links to Guidance Notes– Decision tree (“Fuzzy”) to guide user which agreement

to use

• Useful Resources – Other useful documents– Hypertext links to useful websites

Keys to Reaching Agreement:

– Understanding the issues (guidance notes/education)

– Communicating– Reaching real agreement on the principles

(outline)– Choosing the right model agreement (decision

guide)– Amending where necessary

Guidance Notes explains…..Models and approaches & rationale for some provisions

• Confidentiality of Background / Academic Use / Publication

– Importance of some provisions• Schedule 2 (Project Description)

– Legal issues• Warranties/Liability• Freedom of Information / Charitable Status• Intellectual Property • State Aids• VAT / R&D Tax Credits

Agreement Outline• The Project:

– Start and end?– Resources (human and other)?

– Project Description• who does what / provides what / when?• Checked with both sets of researchers

– Are there non-financial inputs to the project? Access to key equipment, biologicals, compounds

– Key people?

Agreement Outline

– Sponsor’s contribution• Fixed amount?• Time and materials?• Full Economic Cost or FEC plus profit?• Increases in salaries etc.?• Invoicing

– External Funding?• Are terms consistent ?

Agreement Outline

• Background:

– What does each party provide?– Do Group Companies need to use?– Confidentiality?– Academic Publication?

Agreement Outline

• Results:– Who owns?– Licence to in field/territory?– Exclusive licence terms agreed?– Assignment terms pre-agreed?– Patenting Strategy?– Costs of patenting?– University rights to use for academic purposes?

Agreement Outline

• Confidentiality and Academic Publication:

– Indefinite or fixed period?– Academic Use/publication of:

• Results• Sponsor’s Background

Agreement Outline

• Liability:– Warranty:

• Quality of contribution?• Infringement of IP?

– Sponsor’s Indemnity?– Financial Cap?– Loss of profits etc.?– Warranty of full title guarantee?

Agreement Outline

• Termination:

– Key personnel leave without satisfactory replacement?

– Sponsor to pay reasonable employment costs?

How does a novice decide which agreement they require ?

• Catherine Quinn took the lead on developing the decision tree with major input from the rest of the team

• Through a series of simple web-based questions, a user (with limited experience) is able to very quickly identify the type of agreement that they require.

Decision Guide

• Series of Questions:– Identify which Model provides most appropriate starting

point

• Key Elements/Criteria:– Ownership and rights to use Results – Sponsor’s financial and other contributions– University's use of Results for academic purposes

Decision Guide•Assumptions:

•Wish to collaborate•Can agree project description•Can agree budget & Sponsor's financial &

non-fianancial contribution to project•Sponsor is willing to pay FEC

Decision Guide

•Not tablets of stone•Over simplification / usefulness•May not produce definitive answer•Help develop a “feel”•Drafted from a university perspective

Decision Guide• Did Sponsor commission Project?• Is it critical to Sponsor's technology strategy?• Does Project rely on Sponsor's Background?• Would Project be difficult/impossible without access to

Sponsor's Background?• Is focus research based on Sponsor's Background?• Did Sponsor take lead in designing workplan?• Is Sponsor setting deliverables?• Can Project be ring-fenced from University’s other

research activities?

Useful Resources

•Documents:– Not “endorsed”, but considered – Ideas/starting points– Terms “reflect” Model Agreements

• NDA• Boiler Plates

– Avoid “battle of forms”

Useful Resources• Hypertext Links:

– Information Commissioner - FOI– Patent Office - IP– HM Treasury – DTI– OST (FEC)– AURIL/UNICO– Praxis– Businesslink

Lambert Model 1

• University owns IP in Results (i.e. Foreground)

– University grants non-exclusive licence to Sponsor to use for any purpose in the field/territory

Lambert Model 2

• University owns IP in Results

– University grants non-exclusive licence to Sponsor to use for any purpose in the field/territory

– Sponsor has right to negotiate exclusive licence

Lambert Model 3

• University owns IP in Results

– University grants non-exclusive licence to Sponsor to use for any purpose in the field/territory

– Sponsor has right to negotiate assignment

Lambert Model 4

• Sponsor owns IP in Results

– Assignment of IP– University may use for academic

purposes(teaching and research)– Academic Publication

Lambert Model 5

• Sponsor Owns IP in Results (Contract Research)

– Assignment of IP– University may NOT use for academic teaching

and academic research– University has NO right to publish

Proposed Agreement types:

SponsorContract research: no publication without permission

5

SponsorSponsor owns, university has right to use for non-commercial purposes

4

UniversityAssignment3

UniversityRight to an exclusive licence to some or all IPR

2

UniversitySponsor has non-exclusive rights to use in specified field; no sublicences

1

IPRTermsLambert

Will also have draft MTAs, Consultancy agreements

Issues in all Model Agreements• Project Description/Management• Sponsor’s Financial Contribution• External Funding i.e Charity, Research

Council• Use of Background• Confidentiality -vs Academic Publication/FOI• Warranties/Liability• Boiler Plate/General

How GlaxoSmithKline are currently using the agreements

Collate information & fill in the Blanks• Legal Addresses of Parties• Name of Principle Investigator• Name of Sponsor’s Supervisor• Start & End dates• Field (Business Area)• Funding Schedule• Recipient’s bank details• Programme of Research

Microsoft Word Document

Contact information stored in a relational database

Drop down list of agreement types

Automating the ProcessAccess Relational Database

Contact informationUniversity bank details

Start / End date

Merge DocumentsIn Microsoft Word

Run a Word Macro to populate Lambert agreement

Store uniquely numbered agreement in a defined file directory

First Lambert agreement executed by GSK & University of Manchester on 24th March 2005

Richard Livings / Tamsin Sayer

Roll out & plans for the future

Lord Sainsbury launched the Boilerplate

agreements at an Innovation Event in

Manchester on

21st February 2005

Launch of the Boilerplate agreements

in Manchester on

21st February 2005

Launch for RDA’s & PRSE’s at DTI on 6th April 2005

Next Steps:• Need to promulgate, champion & start using:

– Universities - through UNICO, AURIL, PRAXIS.– Industry groups, Trade Associations, supply

chains– RDA’s and PRSE’s.

• Bound to be some slow uptake in some sectors • Incorporate other standard contracts where

appropriate (e.g. MTA, consultancy, CDA).

Acknowledgements:•Richard Lambert•The whole of the Inner Working Group•DTI •Larry Cullen & Richard Howe (Patents office) •Christine Reid (Manches)

The lady who did most of the work……

Christine.Reid@manches.com