Fuentek's Tech Transfer Blog

Tackling the Sticky Intellectual Property Issues in Alliance Collaborations

Recommendations from an LES/ASAP Chapter Meeting Panel

On Tuesday, I had the pleasure of serving as a panelist for the Research Triangle Park (RTP) chapter meeting of the Licensing Executives Society (LES) and Association of Strategic Alliance Professionals (ASAP), focusing on “Managing Intellectual Property Issues in Alliance Collaborations.” I was joined by great panelists (Chris Capel of Smith Anderson Law Firm and Henry Nowak of the University of North Carolina) and a moderator (Qualyst’s Marc Sedam [Ed. note: Marc’s now with the University of New Hampshire]).

Most people would concur that forming alliances and collaborations can be an effective strategy for organizations to advance their technology. However, as anyone involved in collaborations can attest, the intellectual property (IP) considerations can be “sticky” and require continual attention throughout any joint-research efforts.

Some key recommendations that our panel provided for making the most of collaborations while still maintaining your IP are summarized below.

  • Go beyond the NDA: A non-disclosure agreement (NDA) alone is not a sufficient means for protecting IP in alliances. Due diligence done prior to engaging a partner with an NDA, as well as step-wise release of confidential information following execution of an NDA, are effective additional measures.
  • Educate your innovators/collaborators: One cannot overstate the criticality of having your researchers understand the importance of protecting IP in order to ensure successful technology commercialization. However, this education needs to be handled from the perspective of the innovators. What do they value? Understand that, and then frame their education around how protecting IP will support their objectives (e.g., developing a drug that helps patients) and how disregarding IP will block their goals (i.e., no pharmaceutical company will take on a new drug that does not have IP protection, regardless of how effective it may be).
  • Secure buy-in at multiple levels: This is essential and must come from the people actually doing the work (technicians, engineers) through the multiple layers of management. A few horror stories discussed during the session described how months of negotiations and preparation were dismantled because an important person in the chain of command was not kept in the loop.

This is just a small portion of the material covered during the panel. I encourage you to attend future meetings like this. They are a great opportunity to learn of new approaches, benefit from others’ lessons learned and interact with other technology transfer professionals. Will I see you at the next LES event? Check out the Events list on our News page to see where we’ll be next.