IP-Protected Assets Need Carefully Crafted Contractual Framework, Experts Say

Contracts covering new technologies and intangible assets protected by intellectual property rights, notably patents, industrial designs or copyright, need to be carefully crafted to establish clear ownership of IP rights, said experts at a recent seminar in Geneva. This is the case for contracts related to research carried out in universities or when companies enter a licensing agreement.

The seminar on fiscal and contractual aspects of intellectual property was organised by the Association Genevoise de Droit des Affaires (Geneva Association of Business Law) on 2 December and brought together lawyers and academics.

The seminar presented practical questions around contracts agreed between academic institutions and companies, or between companies.

Intellectual property has an important role in technology transfer contracts between universities and industry, said Nathalie Tissot from Neuchâtel University. Several types of contracts are available to choose from, she said: Cession, licence, research or confidentiality contracts. In Swiss universities, intellectual propriety rights in most cases belong to the university.

In research contracts, several aspects have to be taken into account, she said, in particular pre-existing knowledge, and knowledge arising from the project. It is important to define the limits and the owners of the IP rights.

The details of the contracts depend on the financing of the research – whether it is financed by the universities, by the Swiss confederation, or only by a private partner.

Universities have the IP rights on the results obtained by research. They then valorise those results, and tie researchers to the potential benefits, she said.

There is a draft federal law that has entered the consultation process that would reform the system toward supporting research and innovation, she said. Under the current law, universities have to protect and exploit their IP rights, and researchers are associated with the economic results. Universities are allowed to participate in the creation of start-up companies, she said.

In the draft law, universities will have to present an innovation and research strategy incorporating valorisation of research results and technology transfer options between universities and the industry to solicit funding from the Swiss confederation.

According to Olivier Deloche from Unitec, a University of Geneva technology transfer office, a lot of institutions have technology transfer offices, which are interfaces between institutions and private partners.

IP rights are important in life sciences transfer, said Philippe Ducor, an attorney and University of Geneva professor, most of all because developing research in life sciences is difficult and the duplication of the results is easy.

Technical description of biological materials can prove challenging and sometimes it is necessary for the materials to be physically transferred as a sample, he said. At first, those transfers were covered by informal oral agreements, or “gentlemen’s agreements,” he said, and this is still the case in some academic circles.

Biological materials mentioned in scientific publications have to be available for the scientific community, he said, as each member of the scientific community has to be able to check the hypothesis developed in the article.

However, given the increasing value of biological materials, written agreements are necessary, said Ducor, such as materials transfer agreements (MTAs), which can be included in licences or research and development projects.

The main problem with biological materials is their capacity for auto-replication. When writing an MTA, he said, the donor has to be able to retain control of the materials, and should specify if products from replication follow the same rules as the initial materials.

In the case of modifications done by the recipient of the biological materials, the MTA should specify who will own the IP rights on the new materials.

Transfer of Biological Materials Turned into State Affair

A famous example of biological materials transfer is the case of the discovery of the Human Immunodeficiency Virus (HIV). In February 1983, Professor Luc Antoine Montagnier from the Pasteur Institute isolated the lymphadenopathy-associated virus (LAV) later called HIV.

According to Ducor, in September of the same year, upon a request by US scientist Robert Gallo, Montagnier sent two samples of LAV with a letter asking that the samples not be used for commercial or industrial use, countersigned by one of Gallo collaborator.

In December 1983, Montagnier filed a patent application in the United States on HIV/AIDS tests. In April 1984, Gallo also filed a patent application on AIDS tests. In May 2005, a US patent was granted to Gallo while Montagnier had no news on his application.

This brought a diplomatic hurdle in December 1985 when the Pasteur Institute filed a legal action against the US government. In April 1987, the US and French government reached an agreement equally sharing the proceeds of the US patent between the two countries. In October 2008, Montagnier received Nobel Prize for medicine for his discovery.

Biological materials, such as cell lines, are also often research tools and help the development of new technologies, Ducor said. It is important to determine how close those research tools are to the final products to assess the royalties due on those research materials.