New Wheels - Standard Agreements

No need to re-invent the wheel, they say; use the ones you’ve got.

This article is about the availability and use of standard agreements in university technology transfer and university-business collaboration transactions. Thoughts on this were prompted by two insightful pieces over the end of year holidays from Mark Anderson and his friend IP Draughts in the UK, and Orin Herskowitz at Columbia and his colleagues in the US.

It is an important subject because current transaction time, costs, and friction are too high. The deals which underpin the transfer of technologies from universities to business for development into new products and services that benefit society need to be simplified. Using standards is the way to do this.

IP Draughts

The IP Draughts blog and library of articles is one of the best sources of comment on the legal aspects of university technology transfer. On New Year’s Day the author wrote about using standard, template agreements and concluded:

“we need (a) more template agreements that have general acceptance [to which I say YES], and (b) more discipline about sticking with their terms rather than creating bespoke agreements [YES], unless a bespoke agreement is really justified. On point (a), trade organisations need to get together and prioritise the creation of template agreements for their members [YES, ALTHOUGH THERE ARE A LOT OUT THERE ALREADY]. On point (b), senior management of organisations needs to take a firmer line about streamlining contracting processes through the disciplined use of template agreements [YES].”

So that’s Yes, Yes, Yes to an extent, and Yes.

On the “trade organisations need to get together and prioritise the creation of template agreements for their members” point there are so many out there already that I think the focus needs to be more on adopting them and using them, rather than creating them. 

So, what is out there:

Lambert Agreements

https://www.gov.uk/guidance/university-and-business-collaboration-agreements-lambert-toolkit

These are now housed under the UK Intellectual Property Office website which tells us that “The Lambert toolkit is currently being updated to reflect changes following the end of the Brexit transition. These changes include the guidance notes on data protection, state aid and competition law and the amended annexes in the model agreements.” The template agreements are all still available, albeit in the warmer shade of those European days. It is an excellent resource, very comprehensive with the guidance notes running to many pages.

The areas covered are:

Model research collaboration agreements (7 versions)

Model consortium agreements (4 versions)

Fast track agreements (developed to access Ebola and then Zika related technologies)

Agreements involving the NHS

Sample patent and know-how licence 

Sample patent assignment 

Sample non-disclosure agreement 

Sample materials transfer agreement 

Sample consultancy agreement 

Sample confidentiality notice 

Sample equipment loan agreement 

Russell Group Studentship agreement 

Non-disclosure agreements

Licensing guidance.

That is a lot of templates, models, samples, standards - a lot of wheels, that certainly don’t need re-inventing, but as Brexit shows, do need cleaning up from time to time.

Brunswick Agreements

https://arma.ac.uk/updated-brunswick-agreements/

These are housed under the ARMA (Association for Research Managers and Administrators) website and there are again plenty of them:

Confidentiality Agreements

Research Collaboration Agreements

Grant Joint Award Agreement

Material Transfer Agreements (MTA)

Human Tissue MTA

BVCA Agreements

https://www.bvca.co.uk/Policy/Tax-Legal-and-Regulatory/Industry-guidance-standardised-documents/Model-documents-for-early-stage-investments

The British Venture Capital Association has a range of model agreements for early-stage investments and guidance notes:

BVCA Model Articles of Association 

Practical Law Drafting Notes for the Model Articles of Association 

BVCA Model Subscription & Shareholders' Agreement 

Practical Law Drafting Notes for the Subscription & Shareholders' Agreement 

BVCA Model Term Sheet for a Series A Round 

BVCA Model Subscription & Shareholders' Agreement (Opinion) 

BVCA Technical Briefing - Accounting Treatment of Preferred Shares

PraxisAuril

https://www.praxisauril.org.uk/resource/templates-toolkits

PraxisAuril has a page of Templates, Toolkits and Guidance with links to the Lambert Agreements, links to the Brunswick Agreements, and links to an article from MIT TLO ex-Director Lita Nelsen from 2019 in her Chapter in Biotechnology From Idea to Market.

eLucid

https://e-lucid.com

Beyond the agreement documentation itself, e-Lucid is an example of a platform that aims to improve the overall transaction time, cost and friction, including use of standardised licence terms. It is well worth a look, and well done the team at UCLB for developing it. 

As well as this, there are other institutions that have developed one-click licensing access to standardised research outputs as well.

Scotland

I am grateful to Robert Goodfellow for pointing out the work done by University Technology - Invented in Scotland and their page with a number of standard agreements, recognising that Scottish law is different that in England and Wales.

https://www.university-technology.com/workingwithus.aspx

Knowledge Transfer Ireland

https://www.knowledgetransferireland.com/Model-Agreements/Catalogue-of-Model-Agreements/

Moving away from the UK, over to Ireland, KTI provides a catalogue of agreements and an overview; the catalogue describes:

8 intellectual property licence agreements 

1 term sheet for a licence agreement 

1 term sheet for a collaborative research agreement 

2 option agreements 

2 confidentiality agreements 

2 material transfer agreements 

1 consultancy agreement 

3 assignments 

1 heads of agreement for Enterprise Ireland Innovation Partnership Programme.

Austria

Travelling east to continental Europe, I am grateful to Albert Radauer for contributing information about standard agreements in Austria and also an excellent review and evaluation of various standards:

"I helped evaluate the Austrian contract templates for technology transfer and IP licensing called "Intellectual Property Agreement Guide" (IPAG), which are also available in English language . The evaluation includes also an international comparison, based on document analysis and/or interviews, with the UK Lambert Toolkit, the Irish KTO, the contract templates of the Spanish patent office (developed together with the WIPO) and the German contract templates of the German Federal Ministry for Economic Affairs and Energy (BMWi).

ASTP

https://www.astp4kt.eu/resources/doing-business/page-2

And continuing our travels into continental Europe, the pan-European TT organisation ASTP has a Toolbox page with links (for Members only) to a wide range of resources including template agreements.

AUTM

https://autm.net/surveys-and-tools/agreements

Crossing the Atlantic we reach the United States of America, where founding and leading TT association AUTM has an Agreements page headed literally “So You Don't Have to Reinvent the Wheel”. This has links to:

Material Transfer Agreements

Uniform Biological Material Transfer Agreement

Model Inter-Institutional Agreement.

VC / TTO Roundtable - Launching University Life Science Startups

And then, we reach Orin Herskowitz at Columbia University, New York and his colleagues from prestigious US universities and specialist early-stage VC investors who in 2020 formed a VC / TTO Roundtable which has published two helpful documents describing Recommended Process Improvements and Term Sheet Recommendations for Launching University Lie Science Start-ups. Together these provide a comprehensive discussion of the points that often arise from TT-VC discussions and some ideas for approaches to take.

And then of course there’s Google, other internet search engines are available, and simple searches identify a multitude of model, sample, standard, template, toolkit, toolbox, toolkit documents and guidance notes.

Australasia

And finally, far away, IP Australia has developed an IP Toolkit with Knowledge Commercialisation Australasia which has an extensive range of standard agreements and notes and checklists; with thanks to Elaine Eggington and Erin Rayment for pointing me in this direction.

New Wheels

All of these websites and agreements and notes provide an amazing resource. Spending time reading the notes, reading the agreements will be a great way for TT practitioners to learn. 

Many wheels have been invented, some are being modified and cleaned up, new ones are being invented, and no doubt some re-invention is happening.

You do need different wheels for different terrain. For example:

- elite institutions in the US, commercially focussed and comfortable in their strong innovation communities.

- European institutions, sometimes creating their first spin-out with investors inexperienced in understanding universities.

- the UK, where Impact is pulling TTOs away from commercial deals and universities becoming more generous in their approach.

- and of course different wheels for different legal jurisdictions.

I think there are enough wheels out there now. I encourage organisations to start using them together. Together - universities, companies, investors may collectively need to get out of their own way. The websites and agreements and notes described above certainly do not need re-inventing; they need reading. Universities need to accept finally that companies and investors are going to use their stuff to make money, and companies and investors need to accept finally that universities are special.

So, what to do ...?

For the UK, I would stick with Lambert. It has the backing of the UK government, it was put together by experienced practitioners and lawyers (notably Mark Anderson). I would also, again from a UK perspective continue working with the BVCA, with the involvement of the British Business Bank which again has backing from government and many experienced practitioners involved.

For Europe, the EC Joint Research Centre are looking at various approaches and there is already a group looking at a model Inter-Institutional Agreement; no doubt learning from the existing US AUTM model.

For the US, the top institutions are very well organised with standard agreements and skilled negotiators, and are very good at spreading their expertise, often through AUTM, to other institutions in other regions of the US.

Tom Hockaday, January 2021 (updated February 2021)