We asked Jesper Sellin for key take aways on how to navigate IP ownership in collaborative ventures, something he as Attorney at Law at our Supporting Partner Potter Clarkson will address further at our Science for Lunch on 18 October:
1.) Keep information secret for as long as needed. Use confidentiality agreements before sharing any information and do not share more than necessary. Do not overlook data protection measures and limitation of access to research data. Note that for information to qualify as a trade secret, specific criteria need to be met.
2.) Do not rush to file for patent protection without careful evaluation. Filing too early is a common mistake which may open the door for competitors and prevent better patents from being granted. Gather enough data to support a grant, but file soon enough to prevent others from filing.
3.) Ensure that there are clear policies and agreements in place for establishing ownership to all data and results used or created in the research project.
Potential pitfalls in Sweden:
4.) Professor’s privilege (lärarundantaget) – that ownership to IP created is first vested in the individual researchers. This is unique to Sweden so do not assume for foreign researchers or partners to know about it or understand it. The privilege is to the benefit of commercially driven researchers, which in many cases is a contradiction in terms.
5.) The common belief that joint ownership in results/IP is fair and to the benefit of all parties. Simply not true. Joint ownership is not regulated for purpose in Sweden and will in most cases result in all decisions concerning the IP needing each owner’s approval, which is practically inconvenient and may lead to disputes.
Potential overall pitfalls:
6.) Assuming for the universities to take control of key issues such as IP ownership in collaborations. Swedish universities often have limited knowledge or interest to facilitate the securing of ownership if it gets its research and publication rights.
7.) Specifying Background IP (earlier IP brought into a research project). Although important to clarify and protect Background IP, the universities often raise concerns when bringing Background IP into projects. This as it is challenging for them to identify and verify ownership of its own background.
8.) Keeping the information (IP) confidential. There is often a misconception that all information arising from or shared with universities will become public – even at the universities. However, according to the Public Access to Information and Secrecy Act (offentlighets- och sekretesslagen), information resulting from sponsored research may be kept secret upon requirement from the sponsor.
More on Potter Clarkson at https://www.potterclarkson.com/.