An option to acquire rights in university intellectual property (“IP”) may be encountered in several guises: as a stand-alone agreement, as a clause within an agreement (e.g. a sponsored research agreement or a material transfer agreement), or as a ‘pipeline’ (or ‘IP framework’) agreement in the context of a university spin-out company.
Although it may often form quite a small part of a larger agreement, the grant of an option can raise important issues in terms of an organisation’s intellectual property commercialisation strategy. This is especially true of ‘pipeline’ agreements which are, effectively, a specialised form of option agreement. This Practical Guide looks at ‘pipeline’ agreements in more detail but for now suffice to say that ‘pipeline’ agreements should be approached with utmost caution because of the impact that a ‘pipeline’ agreement can have on the freedom of a research group to function. From the point of view of this Practical Guide, all the agreements referred to above will be covered by the general term ‘Option’, unless specifically stated otherwise.
The purpose of this Practical Guide is three fold:
1 to provide an introduction to Options and their use, including legal, practical and negotiating issues;
2 to provide some suggested templates together with guidelines concerning their completion
3 to consider and discuss some of issues which are problematic or of particular concern to universities.
To read more, download the attached document - this is a member-only resource: last updated 2014