ABSTRACT
Public-sector research institutions can use a variety of
agreements to protect and manage intellectual property.
hese agreements are powerful tools to foster competition
in the private sector and reduce prices for consumers in
developing countries. his chapter provides an overview
of the following types of major agreements—conidential-
ity, material transfer, development (in which the licensee
is responsible for further development), co-development
(in which two parties collaborate on continued develop-
ment), and distribution—explains the functions of those
agreements, and suggests strategies for their efective use.
he chapter also discusses the meaning and usefulness of
the standard elements and formulas found in such agree-
ments. It explains the meaning and signiicance of the
terms and language used and discusses such key issues as
product liability, fees and royalties, and arbitration. he
chapter emphasizes the importance of establishing and
maintaining trust when negotiating and implementing
agreements.
HANDBOOKOFBESTPRACTICES|
responsible for further development), co-develop-
ment (in which two parties collaborate on contin-
ued development), and distribution.
Most agreements are between two parties,
but some may involve three or more parties. he
public sector agency or the negotiating party may
provide the irst draft of an agreement for nego-
tiation. Whoever writes the irst draft often has
the advantage, so public sector agencies should,
whenever possible, take the initiative to prepare
the agreement. Regardless of who provides the irst
draft, the proposal should adhere to the principle
of good negotiations: ofer an agreement that you
would be willing to sign, if you were the other
party. A good agreement beneits both parties. For
an agreement to work, the two parties must trust
each other and maintain this trust throughout the
implementation of the agreement. With a high
level of trust, moreover, a request to renegotiate
by either party may be better received should cir-
cumstances change. Finally, since enforcing inter-
national agreements through legal remedies may
be diicult, such agreements should be considered
solemn commitments that must be observed.
2. THEuSEAndLIMITATIonSof
TEMpLATEAGREEMEnTS
he chapter provides a number of template or
sample agreements for each major type of contact.
CHAPTER7.1
1. InTRoduCTIon
One important goal of public sector licensing
should be to promote competition between pri-
vate companies. Monopolies and high prices are
not caused by patents themselves but by how pat-
ents are managed, so the goals of the public sec-
tor can be served by using licensing strategies that
foster competition and reduce prices.
Many kinds of agreements are used to pro-
tect and manage intellectual property (IP). hese
include agreements for conidentiality, material
transfer, development (in which the licensee is
MahoneyRTandAKrattiger.Agreements:AReviewofEssentialToolsofIPManagement.InIntellectualPropertyManage-
mentinHealthandAgriculturalInnovation:AHandbookofBestPractices (eds.AKrattiger,RTMahoney,LNelsen,etal.).
MIHR:Oxford,U.K.,andPIPRA:Davis,U.S.A.Availableonlineatwww.ipHandbook.org.
©2007.RTMahoneyandAKrattiger.SharingtheArtofIPManagement:PhotocopyinganddistributionthroughtheInter-
netfornoncommercialpurposesispermittedandencouraged.
Agreements:AReviewofEssentialTools
ofIPManagement
RichaRdT.Mahoney, Director, Vaccine Access, Pediatric Dengue Vaccine Initiative,
International Vaccine Institute, Republic of Korea
anaToleKRaTTigeR, Research Professor, the Biodesign Institute at Arizona State University; Chair,
bioDevelopments-International Institute and Adjunct Professor, Cornell University, U.S.A.