Lambert 2 Toolkit Perceptions

The Lambert 1 Toolkit was created to improve collaboration between Universities and Business through a series of model agreements. But a usage review by IP Pragmatics in 2013 showed that even after eight years, there was scope to improve uptake, especially by the industry. The revised Lambert 2 Toolkit which was launched in October 2016 is meant to address that. Has it?

To find out, PraxisUnico and Auril, which have merged recently, put together a session in the annual conference, facilitated by Dr Rupert Osborn (IP Pragmatics) who led on the usage review, and chaired by Professor Malcolm Skingle CBE RTTP (GSK) who also chaired the Lambert Working Group.   

Working Group members Christine Reid (Northwood Reid) and Dr Geoff Archer (Teesside University) gave an overview of the seven collaboration agreements (1 -6 and 4A) and four consortium agreements (A-D). They were followed by Professor Seshadri Vasan RTTP (Public Health England and University of York) who co-drafted the fast track model agreement which is also part of this Toolkit. Finally, Jenny Vaughan summarised the views of the Intellectual Property Office which is hosting the Toolkit.

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Christine stressed that the Lambert Agreements cannot fit every situation and the closest Lambert Agreement should be used as a starting point for negotiation in order to achieve a reasonable compromise. Academic partners should remember that the minimum for industry is a non-exclusive license, she added, drawing attention to the guidance document which addresses State Aid, the charitable status of Universities, anti-bribery, and data protection (which will require updating before the introduction of new data protection legislation in May2018).

Geoff presented on use in practice with examples from Teesside, highlighting the importance of the use of the Heads of Terms and anticipating the collaboration agreement terms when applying for KTPs. He also observed that the constitution of the Working Group and the IPO hosting the Toolkit significantly overcame “Your Agreement versus Our Agreement” arguments. Vasan said that the fast track model agreement was useful during public health emergencies like Ebola and Zika because failure to achieve quick consensus is not an option.

Reflecting on the role of the IPO as the secretariat, Jenny highlighted the importance of sharing good practice, continuous improvement and evaluating impact as key objectives. Efforts are underway to adapt the Toolkit in emerging economies like Brazil, China, India and Korea to support knowledge exchange internationally, she added.

Table 2: Website statistics from the IPO website between 1 October 2016 – 30 June 2017

https://www.gov.uk/guidance/university-and-business-collaboration-agreem...

A straw-poll was conducted during the session, which gave a useful insight on perceptions, even if it is not statistically accurate (Table 1). It is too early to assess the true impact of the updated Lambert 2 Agreements.  However, click statistics from the IPO website (Table 2) provide a rough idea of which type of model agreements are encountered more often, but no further inference should be drawn from this because a downloaded (clicked) file may not be used even once, or used multiple times, and even re-hosted on servers outside the IPO. The signposting to the Toolkit recently added to the Innovate UK Guidance to Funding Competition Applicants is helping to raise awareness.

The conference session stimulated questions and observations from the audience. the key ones are discussed below:

·       The decision tree was praised as a useful tool.

·       There should be a fair and reasonable return to Universities from any KTP (or other) collaboration and the contributions of the parties should be assessed so as to take the project outside the ambit of state aid or to come within the state aid rules:

o   What is a “fair and reasonable” return from the KTP project should take into account the level of financial input and the other resources and benefits contributed to the project by each party.

o   Universities that wish to use a KTP collaboration agreement based on the Lambert Agreement 6 (KTP) should ensure that the contributions such as background IPR, facilities and human resources are adequately described in Schedule 2 and that financial contributions (including any post-project financial rewards) are included in Schedule 1.

o   Universities are, of course, free to enter into KTP agreements which treat the ownership and exploitation of IP differently from that envisaged in Lambert Agreement 6.

·       The KTP case study on page 22 of the State Aid in Research, Development and Innovation: a Guide for Universities is an example of a KTP project which complies with the conditions of the Innovate UK State Aid GBER Scheme. The case study is not exhaustive or prescriptive; for instance a KTP project could be taken outside the scope of state aid if the collaborator paid the market price for the IPR or if the value of the benefit to the collaborator came within the de minimis limits (assuming that all the other conditions of the de minimis Regulation were met).

·       The Decision Guide and the guidance on Lambert Agreement 6  were written on the basis of the scenario outlined in Lambert Agreement 6 (i.e. where the Company owns the Results of the Collaboration) and are not intended to be used where the parties to a KTP collaboration decide that the University is to own the Results. If it is common practice for Universities to own the Results of a KTP collaboration, another model KTP agreement, a different Decision Guide and additional guidance may need to be added to the Toolkit.

The discussion highlighted that the guidance is largely viewed as being useful. A few specific questions were raised where some Universities adopt different practices from those envisaged by the Lambert Working Group, but this is perhaps not surprising as a generic toolkit cannot encompass all situations.

In the Autumn 2017, one year on from launching the updated Lambert 2, the IPO will be working with key stakeholders to conduct a survey to understand  how the new tools are being used, by whom (both universities and industry) and what future revision of the Lambert Toolkit may be needed.

The next opportunity to learn about the Lambert Toolkit is at the Chartered Institute of Patent Attorneys Congress in London on 28^th September 2017 featuring Christine Reid and Seshadri Vasan.  In the meantime, to find out more information on the toolkit, please make contact through the IPO at innovation@ipo.gov.uk.