IP in sponsored and collaborative research

The five clauses that matter

Background IP. What each side brings, listed in a schedule at signature while it is still easy, and what licence the other side gets to it.

Foreground IP. Who owns what is created. Clear allocation with a licence back is usually better than undefined joint ownership, which can deadlock.

Publication. A notice period - thirty to sixty days is the usual compromise - with a right to request a short delay so a filing can be made. Without this, a partner can publish and destroy novelty.

Filing and costs. Who decides to file, in which countries, and who pays. A right to file that nobody funds is not a right.

Exit. What happens to jointly owned rights when the collaboration ends. This is the clause everyone omits and everyone later needs.

One India-specific trap

If any inventor is resident in India, section 39 requires written permission from the Controller before applying outside India, unless an application for the same invention was filed in India at least six weeks earlier and no secrecy direction followed.

With a foreign partner whose counsel files at home by default, this is easy to breach without anyone noticing. Build the check into the agreement.

What to actually do

• Schedule background IP at signature.
• Add a publication notice period with a right to delay for filing.
• Name the decision-maker and the payer for filings.
• Build a section 39 check into any collaboration with an India-resident inventor.