Module III: Managing Intellectual Property

Workshop participants reviewed several different sample license agreements based on actual deals involving patented biological resources and building contractual walls around trade secrets. In addition to defining basic roles and performance responsibilities, the agreements are intended to:

• establish confidentiality, which survives the term of the agreement;
• prevent employee "siphoning" (recruiting employees of contractual partner or inducing them to provide confidential information);
• limit rights to and use of protected materials;
• ensure access to testing site, data, and research results;
• forbid reproduction of breed or testing procedures;
• specify protection of original materials as well as subsequent byproducts, e.g., seeds, grain, plants and other materials produced from hybrids including DNA, RNA, pollen, etc.,
• ensure right to terminate agreement at any time;
• insert a "grant back" clause for a free, non-exclusive license for inventions based on the agreement;
• specify which state or nation’s laws will govern the agreement; and
• forbid the assignment of responsibility to third parties without first obtaining consent.