Joint IP ownership with your academic collaborator: the hidden grant compliance risk

A terrible tech transfer headache... An SME and a university win a collaborative grant, work together for 18 months, generate genuinely valuable IP — and then discover they have fundamentally different expectations about who owns what and who can do what with it.

The problem isn't bad intentions. It's that joint IP ownership under UK law creates a set of default rules that surprise almost everyone who hasn't dealt with them before.

1. The default position in UK law

The default position in UK law is that joint inventors would each own an equal undivided share of any invention to which those inventors contributed — but neither can license or assign without the other's consent. This is the part that catches people. You might assume that owning 50% of the IP means you can commercialise your 50% with third parties independently of the other joint owner(s). You can't. Without explicit agreement or consent, other joint owners effectively have a veto over your licensing strategy and your ability to grant sublicences or assign your rights in the invention. For a startup trying to move quickly, this can be paralysing. This does work both ways, meaning that the university collaborator cannot licence the tech to a competitor — but ideally the situation would be avoided by having clear agreements in place before any work is done, and ideally before any disclosures are made to each other.

2. Grant funders expect exploitation — but joint ownership can prevent it

Grant funders expect you to exploit the results — but joint ownership can prevent exactly that. UKRI grant terms typically require beneficiaries to use reasonable endeavours to exploit the project results. If you're in a joint ownership situation with no agreement on exploitation rights, you have a compliance obligation you may not be able to fulfil. This isn't a theoretical risk — it's a structural conflict between your funder's requirements and your IP position, which you must make sure you resolve before entering into the grant terms and subsequent collaboration agreement in the first place.

3. The Lambert Toolkit

The Lambert Toolkit exists precisely for this situation — and most founders have never heard of it. The UK Intellectual Property Office provides a set of model collaboration agreements (the Lambert Toolkit) specifically designed for university-industry research partnerships. They range from "university owns everything and grants the company a licence" to "company owns everything and grants the university a right to use for academic purposes." Starting from a Lambert template rather than a blank sheet can provide a useful framework for negotiations of heads of terms, and you are starting from a point which both parties' legal advisers should understand.

4. Agree IP terms before the grant starts

The time to agree IP terms is before the grant starts, not when the results arrive. This sounds obvious but it is a common failure point. Once valuable IP exists, both parties have leverage and the negotiation can become adversarial. Before the project starts, when the value is speculative and goodwill is high, is ideally when you would seek to agree terms that work for both sides. Your grant application and any project plan should reflect that these terms are being agreed — funders can certainly look at this.

5. Background IP needs protecting separately from foreground IP

Your existing IP — the technology you bring into the collaboration — should be explicitly listed and excluded from the definition of any IP generated during and because of the project (foreground IP). Background IP and foreground IP should be specifically dealt with in the collaboration agreement. Ideally you will also address the issue of any "improvements" to background IP which may arise from the project, and establish who will own, prosecute and commercialise these. If your background IP isn't carved out clearly, you risk creating ambiguity about whether your pre-existing technology is now partly owned by your academic partner.

Publication rights and practical considerations

There will be lots of other terms to negotiate that are not always obvious but can take time. For example, as an academic, the collaborator is likely to want to publish the work. As a start-up thinking about a solid IP strategy, the last thing you want is for your confidential information to be published in a journal or presented at a conference. Often the academic is given publication rights, but only once you have approved the content and date (i.e. after you have filed a patent application). A side point here — it is no good the tech transfer and PI being aware of this clause if the PhD student working on the project isn't and goes and presents at a conference because they were unaware. Ensure everyone involved in the project has some IP knowledge and is clear as to what they can and can't do.

Start the conversation now

If you're entering a collaborative grant with a university and haven't had the IP ownership conversation yet, start it this week, but make sure you have read the grant terms first! Also ensure you are having the conversation with the right person. Often a start-up founder will make a verbal agreement with a PI — however, it is highly likely that the PI won't own the foreground IP that they will generate, the university will. As such, the PI doesn't have the authority to bind the University as the owner of the foreground IP. In addition, you need to make sure you are engaging with the right department, which might be the TTO, licensing team, funding department or other legal team.

It's one of the most important pre-application conversations you'll have — and a good IP lawyer can help you negotiate and structure it in a way that protects your interests while keeping the university relationship warm. Downstream, investors will want to see that clear agreements have been put in place and the university is not going to challenge you later in respect of key IP.