just a small amount of funding in return. The company wanted a piece of any IP that might be generated by the much larger project. The longstanding master agreement with the company covered IP from work funded exclusively by the company. The faculty member was caught in the middle. The issue was ultimately resolved, but with some acrimony along the way.

In yet another case, a major corporation with an international focus was seeking to support research by a young faculty member, with most of the support funding a student. The research was very early stage, but the company retained outside patent counsel to aggressively pursue rights to BIP. This made no sense. Northwestern looked at its own portfolio, and suspects that the company might have been seeking to snag non-exclusive rights to an obscure patent going back ten years arising from the work of a faculty member no longer at the institution. The company could have simply licensed the technology.

In the current difficult environment, are there best practices to keep in mind? Mr. Warshawsky suggests that universities avoid artificial deadlines when dealing with companies. Universities should also be wary of master terms that could go beyond the contract that is being negotiated. Universities should understand the possible impact of agreements on unrelated research and unrelated researchers. In a perfect world, every contract will reflect the statement of work behind it.


Brian Fitzgerald, Professor in the Faculty of Law at Queensland University of Technology in Brisbane, Australia, discussed several issues related to international collaboration in IP. He began by covering several trends in collaboration between national patent offices.

He reminded the audience that it is important to remember that patents are granted by national patent offices. There is no such thing as an “international patent.” Over time several major agreements have established a framework aimed at facilitating the ability of inventors to apply for patents in multiple jurisdictions while reducing the amount of redundant work on the part of applicants and patent offices. For example, the Paris Convention of 1883 grants an inventor the priority date established in their original application for applications made within a year in other convention-member jurisdictions. The Patent Cooperation Treaty of 1970 established an international application, allowing an inventor to do an international search to discover the jurisdictions in which it would be advantageous to file while

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