When setting up a consortium project and you come to the stage of concluding a consortium agreement, it's easy to pass off the intellectual property terms to someone else. Let the lawyers deal with it.
However, without your understanding and guidance, the lawyer's default will be a maximally protective agreement.
Maximally protecting IP is the anti-thesis to collaboration. If everyone in a consortium maximally protected their intellectual property, you would not share anything, and you would not talk about anything for the fear that it could be intellectual property. You would not have a consortium.
That is the extreme scenario. It would be nice to assume that there is a generic way to arrange IP, but there isn't. It is always a balance between protection and collaboration. Only someone familiar with the project and familiar with what you want to get out of the project as a partner can strike the necessary balance between protecting IP and collaboration.
The bittersweet reality of joint IP
Joint IP and access rights are the two areas that usually become big sticking points in consortium agreements. By its very nature, a highly interactive consortium will have multiple contributors to each potential piece of IP. That is the point.
The problem is that if everyone owned a bit of each piece of IP, it seriously damages the potential to exploit that intellectual property. It's a dilemma.
The more interactive and collaborative a consortium is, the more challenging the IP terms become. The default often is to turn a blind eye to the dilemma and accept some vague terms about joint ownership.
If you are serious about really achieving something with your consortium project, this is a less than satisfying approach.
An alternative approach is to lay down some more specific criteria as to what constitutes ownership—for example, having to have direct input for principal discoveries. However, such terminology still leaves room for interpretation and is only slightly better than turning a blind eye. It can also lead to further rounds of complicated discussions. There is a better approach.
The better approach is to be clear as possible on what you are going to deliver while still maintaining that degree of flexibility this is crucial to research.
It is also crucial for complex projects because, by definition, they are projects where you don't know what you will achieve at the outset. How then can you be clear on what you are going to deliver?
You craft an excellent set of deliverables. Deliverables are concrete outputs of a project. If your goal is to shift a paradigm or find a new way of treating a disease, it can be hard to reduce that into deliverables.
However, if you keep in mind that deliverables are something you deliver you will find that they can help make the Gordian knot of joint IP ownership easier to untie.
Here is an example. Suppose your project is aiming to identify a new biomarker. In that case, you probably won't know what that biomarker is at the outset or even know in what type of data or in which biological system you will find the biomarker. You will, however, know that you have to conduct a clinical study, perform some molecular profiling, and conduct analyses. Your deliverables then become datasets and analysis reports or manuscripts. These are deliverables that are concrete but yet still allow for a degree of flexibility. They allow for the unexpected finding. You can then use the deliverables to define who is going to own and have access to which deliverables. Ideally, this is in the consortium agreement.
However, in practical terms, the creating of the consortium agreement is usually a mad scramble before a deadline and complicated enough as it is. The next best solution is to include terms that oblige you to decide and agree upon ownership early in the project.
One thing that is important to point out is that even if one partner has exclusive ownership of IP that does not exclude licenses and sub-licenses to other consortium partners. This point was made by Rui M. M. Brito in a discussion about Foreground on a Linked In post.
For an academic researcher, the value of data is obvious. It is what you need to produce results that you report in published manuscripts. For large pharmaceutical and biotech companies, well-characterised datasets with molecular profiling have another sort of value. They help guide drug development decision making.
When deciding about whether or not to develop a different candidate therapy, having data that can provide some objective insights on the likelihood that a candidate therapy will be effective and for which population of patients can save 100's of millions. Where the data is not available, drug developers make those decisions using only intuition and limited published literature.
In Assembled Chaos I detail how important it is for consortium projects to fulfil both partner needs and project objectives. Everyone gets excited about the vision of the project and tends to forget that the big difference you are trying to make in your field is only one source of motivation. It is a source of motivation that depends upon the fulfilment of more foundational needs. Raymond Maslow described this as a hierarchy of needs. You can also think of his hierarchy in terms of researcher needs.
Making a big difference is what Maslow describes as self-actualisation. You are only able to fully commit and achieve self-actualisation when you have met your foundational needs, such as food and shelter. If you are going to have any chance of success with your consortium project you and your partners need assurance that the project is going to help fulfil foundational needs as well as make a big difference. This is pretty easy to think about when you are all the same type of stakeholder. When there are other types of stakeholders in your project, their needs are likely not the same as yours. Data illustrates this well.
Data has become increasingly valuable. With the advent of molecular profiling and advanced analysis techniques, datasets have value well beyond the original set of research questions.
The goal should be to create as many wins for you and your partners as possible. Data is a win for academic researchers because it is what leads to manuscripts and publications; it is a win for industrial partners because it helps to make internal decisions. It is a win for patients because it helps accelerate the process of finding a cure. The consortium agreement should enable this win/win/win situation.
You can achieve this by giving industry partners broad access to the data for internal decision making but limit their ability to publish on that data to an established process that requires approval from an academic lead scientific committee. You need to make sure the consortium agreement includes both of these aspects.
Don't miss out
Consortium projects have the potential to be much more than a tranche of funding. When the collaboration works well, consortium projects can grow into a rich source of future funding and collaboration. The consortium agreement and in particular the intellectual property terms are an opportunity to make sure that you consortium project flourishes. So, don't leave the thinking to the lawyers.
If you want to know more about how to set up consortium projects so that they are a continuing source of funding and collaboration, let's set up a time to talk.