Initiatives in Europe Facilitating Collaboration of...
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Initiatives in Europe Facilitating Collaboration of Publicly-
funded Research Organizations (PROs) with Businesses by
Model Contracts and IPR Rules
Initiativen in Europa zur Unterstützung der Kooperation
von öffentlich finanzierten Forschungseinrichtungen mit
Wirtschaftspartnern durch Vertragsmuster und Regelungen
für geistige Eigentumsrechte
Thomas L. Bereuter, David Jerolitsch, Peter Heimerl
Content
Part I ........................................................................................................................... 2
ABSTRACT ............................................................................................................. 2
ZUSAMMENFASSUNG .......................................................................................... 2
I. INTRODUCTION ............................................................................................. 3
A. Relevance of collaborative R&D ...................................................................... 3
B. General regulations with impact on the relationship between PROs and
businesses .............................................................................................................. 8
1. Ownership of IP generated .............................................................................. 8
2. Public funding ................................................................................................ 11
C. Challenges for Collaborative R&D ................................................................. 12
D. Codes, Guidelines and Model Contracts Facilitating Collaborative R&D ....... 14
1. Supranational Codes ..................................................................................... 14
2. National Codes .............................................................................................. 20
3. Model contracts and supporting initiatives ..................................................... 24
CONCLUSION ...................................................................................................... 40
OUTLOOK ............................................................................................................ 40
Part II ........................................................................................................................ 41
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ABSTRACT ........................................................................................................... 41
DISCUSSION ........................................................................................................ 41
Seven steps for facilitation of collaboration .................................................... 41
Part III ....................................................................................................................... 45
Definitions ............................................................................................................. 45
Part I
ABSTRACT
Effective and efficient technology transfer by collaborative R&D between universities
or other publicly-funded organizations and businesses is partly hampered.
Negotiation of terms and conditions often prove to be a challenge if partners don’t go
for long-term oriented win-win relations. Contracts have to correspond to the mission
of all parties and their contribution within the collaboration. Furthermore all legal
requirements need to be met as well.
Different initiatives in Europe aim to facilitate the negotiation and the contracting by
implementation of supranational and development of national codes as well as model
contracts. Focusing on the model contracts the contractual relationship between for-
profit companies und knowledge oriented publicly-funded research organizations will
be analyzed systematically.
ZUSAMMENFASSUNG
Effektiver und effizienter Technologietransfer im Zuge von kooperativer F&E
zwischen Universitäten bzw. anderen öffentlich finanzierte Forschungseinrichtungen
und Unternehmen ist partiell behindert. Die Verhandlung der Vertragsbedingungen
erweist sich oftmals dann als eine Herausforderung, wenn keine langfristige
Beziehung zum Vorteil aller beteiligter Partner angestrebt wird. Die Verträge haben
sowohl die Mission bzw. den Auftrag der Vertragsparteien und deren Beiträge im
Rahmen der Zusammenarbeit zu berücksichtigen. Zudem sind die legistischen
Rahmenbedingungen einzuhalten.
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Verschiedene Initiativen in Europa verfolgen die Intention, die Verhandlung und den
Vertragsabschluss durch die Implementierung internationaler, sowie durch die
Entwicklung von nationalen Regelwerken als auch von Vertragsmustern zu
unterstützen. Fokussiert auf die Vertragsmusterinitiativen werden die
Vertragsbeziehungen zwischen profitorientierten Unternehmen und
erkenntnisorientierten öffentlich finanzierten Forschungseinrichtungen systematisch
analysiert.
I. INTRODUCTION
A. Relevance of collaborative R&D
As a consequence of financial and economic crises economic realities of
increased competition due to globalization are more obvious. Mostly, it is not size
that matters but the ability for agile adoption to change. Companies’ best of class are
even proactive. By creating new business models and developing new markets
change can be initiated. Before new rules are applied to them they tend to influence
the establishment of new rules. Therefore, these companies are also called game
changers.
A prerequisite for an active or proactive attitude is that companies are excellent
in attracting and motivating those rare talents that make the difference during idea
creation, R&D and translation of results into viable products. In the high-tech arena
even international companies with their resources nowadays fail to hire and to
motivate the best and brightest. The answer to that challenge is open innovation1. By
accessing the best available expertise worldwide synergies with own resources are
yielded. Mutual collaboration with universities or in general with public research
organizations PROs, enables companies to scout for talents, for new ideas,
technologies and IPRs. If these are combined with suitable business cases a sound
source for innovation is created. Consequently, sustainable business development
goes along with innovation creating new jobs, dynamic growth and international
competiveness.
Companies like Procter & Gamble, General Electrics, 3M, IBM, Google,
Microsoft, DuPont, Honeywell and Whirlpool are frequently presented as role
1Henry Chesbrough, Open Innovation: The New Imperative for Creating and Profiting from Technologies, Harvard Business School Press, Boston, 2003.
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models2. In the corresponding case studies it is demonstrated how open innovation is
able to rejuvenate the product portfolio and, consequently, to contribute significantly
to the revenue streams. The collaborative thinking that goes along with open
innovation has improved over the years but is not understood and implemented
throughout industries and regions.
The not-invented here syndrome is still a challenge. Endorsed by the hope that
research done in-house by own means could result in the innovations required for
being competitive, companies still try to innovate alone. This is limiting the innovation
potential, especially in Europe.
If the publication output is applied as a metric for generation of new insights,
ideas and knowledge, Europe holds the first position since many years compared to
the USA and Asia–Pacific, although the latter region is catching up quickly3.
The Global Innovation Scoreboard report (GIS4) allows a more thorough
comparison of the EU 27 to the other major R&D spenders and emerging economies
by applying a set of indicators. This comparison draws a quite opposite picture
demonstrating that the EU has an innovation gap compared to major competitors.
Europe is catching up towards the US, is keeping pace compared to Japan but lacks
the dynamic of the Asia-Pacific region.
2Rolf-Christian Wentz, Die Innovationsmaschine: Wie die weltbesten Unternehmen Innovationen managen, Springer, Berlin; 1st ed., 2007, ISBN-10: 3540736263 3Nature 436, 314 (21 July 2005), doi:10.1038/436314a, www.nature.com/nature/journal/v436/n7049/full/436314a.html 4www.proinno-europe.eu/page/european-innovation-scoreboard-2008
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Source: Global Innovation Scoreboard report
EU 27 is quite divers in its achievements. The European Innovation Scoreboard
(EIS) provides a comparative assessment of the innovation performance of EU
Member States. There are the so-called innovation leaders (green), with innovation
performance well above that of the EU 27 and all other countries. Then there are the
innovation followers (yellow), the moderate innovators (orange) and the catching-up
countries (blue).
Source: European Innovation Scoreboard report
Compared on a national level there is an obvious broad performance range
and, therefore, a lot room for improvement for a major part of the nations. The
European commission has set ambitious goals and strategies to address this
challenge.
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Particularly promising is the potential of collaboration of companies with PROs.
Based on the experience in Anglo-American nations and in the US in particular, it is
widely understood that universities are able to contribute significantly to the
innovation performance and, therefore, to the prosperity of a society. The boom of
patents generated by US-universities is attributed to the Bayh-Dole Act from 1980. It
gave US universities, small businesses and non-profits control of the intellectual
property that resulted from government funding of their research. Consequently, over
the years the contribution of university research to the innovation record has
increased steadily.
According to the ATUM survey5 for the US universities just in 2008 research did
result into 18,949 US and 848 non-US patent filings, 3,280 US patents issued, 5,039
license and options executed, 648 new commercial products introduced, 595 new
companies formed. Collaboration with industry resulted in $51.47 billion total
sponsored research expenditures. In the recent study by the Biotechnology Industry
Organization6 the economic benefits of university patent licensing from 1996 to 2007
are estimated to have had a $187 billion impact on US gross domestic product, a
$457 billion impact on US gross industrial output with 279,000 new jobs created.
Behind those numbers are innovations which have improved the quality of life for
people around the world. Examples include the hepatitis B vaccine, the prostate-
specific antigen test, Google, and the influenca vaccine FluMist. AUTM’s Better
World Report tells on a yearly basis the real life stories connected to PROs
contribution7.
5Association of University Technology Managers press release 2008 about the AUTM US Licensing Activity SurveyTM FY2008, The unsung hero in job creation: New survey reveals universities’ impact on the US economy, www.autm.net/AM/Template.cfm?Section=Licensing_Surveys_AUTM&CONTENTID=4208&TEMPLATE=/CM/ContentDisplay.cfm 6www.bio.org/ip/techtransfer/BIO_final_report_9_3_09_rev_2.pdf 7www.betterworldproject.org/
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The economic impact and success stories like those mentioned above have
created awareness worldwide for the described impacts of technology transfer and
their underlying mechanisms. Consequently governments started the transformation
process by setting up the basis for a suitable legal and funding framework worldwide.
In the EU legal regulations have been adopted and the commission developed a
several of programs, tools and recommendations.
THE COMMISSION OF THE EUROPEAN COMMUNITIES: (1) When re-launching the Lisbon Strategy in 2005, the Heads of State or Government stressed the key role that better links between public research organisations, including universities, and industry can play in facilitating the circulation and use of ideas in a dynamic knowledge society and in enhancing competitiveness and welfare. (2) An effort should be made to better convert knowledge into socio-economic benefits. Therefore, public research organisations need to disseminate and to more effectively exploit publicly-funded research results with a view to translating them into new products and services. Means to realise this include in particular academia-industry collaborations – collaborative or contract research conducted or funded jointly with the private sector –, licensing and the creation of spin-offs. (3) Effectively exploiting publicly-funded research results depends on the proper management of intellectual property (i.e. knowledge in the broadest sense, encompassing e.g. inventions, software, databases and micro-organisms, whether or not they are protected by legal instruments such as patents), on the development of an entrepreneurial culture and associated skills within public research organisations, as well as on better communication and interaction between the public and private sector. (4) The active engagement of public research organisations in intellectual property management and knowledge transfer is essential for generating socio-economic benefits, and for attracting students, scientists and further research funding. (5) Member States have in recent years taken initiatives to facilitate knowledge transfer at national level, but significant discrepancies between national regulatory frameworks, policies and practices, as well as varying standards in the management of intellectual property within public research organisations, prevent or hamper trans-national knowledge transfer across Europe and the realisation of the European Research Area. Cf. ec.europa.eu/invest-in-research/pdf/ip_recommendation_en.pdf
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B. General regulations with impact on the relationship between PROs and businesses
In Europe changes of national and EU legislation during the last decade
introduced basic rules for cooperation and thus do have a great impact on the way
how companies and universities are able to cooperate.
1. Ownership of IP generated
In the US the Bayh-Dole Act8 is seen as milestone of legislation dealing with IP
arising from federal government-funded research. The simplicity of the regulation hits
the complex core of the mechanism behind IP-commercialization.
At the European level there is unfortunately no consistent system of IP
ownership applied to the results of publicly funded research. On a national level law
reforms mostly in the form of public research acts were implemented with the effects
of the Bayh-Dole Act in mind. The intention is to facilitate the exploitation of publicly-
funded research results. While there are a large number of issues involved in
achieving this task, mostly just one key issue common to all jurisdictions is the option
for ownership of the inventions9. Those reforms abolished the professor’s privilege10
prevalent at universities in most nations of continental Europe in favor of institutional
ownership. Consequently, inventions created by researchers are owned or may be
claimed by the institution where the researcher works and not the researcher
personally. For the first time universities were enabled to manage IP centrally which
8Enacted by the congress of the US in December 1980 as University and Small Business Patent Procedures Act, 2010 marks the 30th anniversary of the act www.b-d30.org. 9Generally, these acts relate to inventions only. The ownership principles for the remainder of the different types of IPR are left to general labor or IP laws to decide. 10Monitoring and Analysis of technology transfer and intellectual property regimes and their use - Professor’s Privilege , 2008, Draft Report for the European Commission DG Research, www.eutechnologytransfer.eu/deliverables/professors_privilege.pdf
“Certainty of title to inventions made under Federal funding has (amongst others) one significant
benefit: it protects the right of scientists to continue to use and to build on a specific line of inquiry.
This is fundamentally important to research-intensive institutions because of the complex way in
which research is typically funded, with multiple funding sources. The retention of title to
inventions by the institution is the only way of ensuring that the institution will be able to accept
funding from interested research partners in the future. This is a critically important benefit of the
Bayh-Dole Act that is not widely understood”, stated the Council on Governmental Relations in a
review in 1999.
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their employees have created. Although the change has taken place in nearly any
jurisdiction of the EU 27 in Sweden and Italy11 the former rules still apply.
The national systems of institutional ownership are substantially different from
each other. On the one hand there is the automatic ownership, with the PRO as first
owner of the IPR, and on the other hand the pre-emption right, with the employee
inventor being the first owner but the right of the PRO to claim and thereby acquiring
the invention (most usually within a specified period of e.g. 3 or 4 months). These
systems also differ from each other on the issue of “if, how, and when” researchers
should be compensated for transferring the IP to the PRO.
Many stakeholders involved in changes of national legislation regarding
universities’ IPR were aiming for a development like in the US. Nevertheless
regulations on a national level still might result in IP ownership fragmentation. Almost
all European nations operate a system of national funding (usually via different
agencies with special focus areas) which attach their conditions to the results of
publicly funded research12. The grants systems enable member states to indirectly
preserve or implement different IP provisions than existing under that Member
States’ domestic statue and case laws. As a result IP-ownership of funding agencies
but also of collaborating businesses fragments and, therefore, this counteracts the
goal of “concentrating IP in the realm of its generation”. In some instances, countries
required the results of research to be commercialized (or remain) in one Member
State alone, (and not on a cross border basis). At a minimum, this may present a
11Ibid: In Italy the professor’s privilege was reintroduced but with the obligation that universities participate if the inventors commercialize successfully. 12Ibid: The Member States surveyed provided some information in relation to grant regimes but the information available does not demonstrate any regional patterns in grant practice.
Austria, Belgium, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany,
Greece, Italy, Ireland, the U.K., Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal,
Slovak Republic, Slovenia, Spain, Sweden are covered by the survey, whereas Bulgaria,
Hungary, Poland and Romania are omitted.
Romania is currently working on a new legislation (oral communication by Alexandru Strenc
from Romanian State Office for Inventions and Trademarks, May 11th 2010).
Switzerland - as not being part of the EU 27 - was not covered by the survey either. In
Switzerland it was not a law change but the increased independence of the universities introduced
by the cantons in the middle of the nineties which triggered the exploitation of university IP (oral
communication by Bruno dalle Carbonare from the BDC Business development company AG,
May 31th 2010).
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barrier to cross border collaboration and prevents free movement of intellectual
capital. The conditions laid down in grant agreements (and the penalties for case of
breaching them) mean that under the contract laws of many Member States,
ownership and exploitation of research IPR might be made subject to another layer of
regulation.
While the laws on state aid can lessen the effect in some cases, their presence
adds to the complexity of IP ownership rules and, by doing so, hamper
commercialization of research results.
In comparison to the US situation with the Bayh-Dole Act, in Europe more time
has to be invested in contract diagnosis and negotiations. This is required to obtain
full control of ownership of IP as a basis for future R&D and consequent
commercialization.
On the other hand regarding the transfer of ownership to third parties, most
regulations in Europe are much more flexible than in the US. Especially multinational
corporations appreciate the fact that as part of a win-win deal IPRs can be assigned
to them.
The law changes in Europe mostly did go along with the new mission for PROs
to support the commercialization of IP by translation of R&D results into innovations
that are successful in the marketplace13. Consequently, PROs did become a more
attractive partner as companies co-operating with PROs can nowadays rely on the
fact that PROs are able to pursue ownership of the IP created by their employees
and that more care is taken to file patents for relevant inventions prior to their
publication in scientific literature, take confidentiality serious, keep adequate
laboratory notebooks etc. Complementary to the legal regimes PRO’s policies often
specify in more detail IP matters which may have an impact on the resulting
ownership, protection and exploitation of IP at a given PRO. This may give rise to
interinstitutional differences within jurisdictions which might not be evident from an
analysis of the legal regime alone. For example, scientists not employed by the
university (e.g. visiting academics, students, etc.) are not bound by the law defining
institutional ownership but PRO’s policies might specify that the mere use of the
universities infrastructure will result in certain ownership claims, opting-in offers
13Examples: In Germany the BMBF federal ministry for education and research developed an action scheme called “Knowledge creates market” in order to improve the commercialization of R&D results. www.bmbf.de/pub/wsm_englisch.pdf In Austria the BMWF federal ministry of science and research calls the sustainable knowledge transfer as the third pillar of the activities of universities besides research and teaching. www.bmwf.gv.at/neuigkeiten/zur_zukunft_der_universitaeten/
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encourage transfer of rights to the PRO in exchange of equal treatment with
employed scientists, software developers are motivated by equal treatment with
inventors etc.14 The IPR Help desk is providing support and checklists concerning
employees' creations in R&D projects15.
Proof of concept of positive long term effects of ownership improvements can be
found not only in the US, Canada16 and Australia17 but also in a variety of PROs in
Europe. In the UK universities always have been entitled to obtain ownership.
Nevertheless kick-off for commercialization required a policy change in 1985 that
paralleled the Bayh-Dole Act. The UK Government withdrew the National Research
and Development Corporation’s first right of refusal on university IP and returned to
the universities the responsibility for managing and exploiting IP. In continental
Europe the first ones to commercialize IPRs were those PROs that have the same
ownership regulations in place like for profit companies. This made everything much
easier and was a pre-requisite for broad stimulation and commercialization of IP. At
the same time their regulatory and governing framework put more emphasis on cost-
benefit aspects than it was used to be with most of the universities. Well known
examples are the commercialization activities of Max Plank Innovations (since
197918) and Frauenhofer-Gesellschaft (since 199519).
2. Public funding
European commission, national governments and their funding programs for
collaborative research placed university-industry collaboration higher on the priority
list in the last years. Nations such as Germany, Austria20 and the UK have initiated
long term governmental programs to support university-industry collaboration
financially as well as administratively in order to promote technology transfer
between the PROs and industry.
14Guideline of Graz University of Technology for commercialization of R&D results, mibla.tugraz.at/06_07/Stk_8/8.htm#81 15Helpdesk on Intellectual Property Rights related issues in EU-funded projects published a basic information about employees creations: www.ipr-helpdesk.org/documents/EmployeesCreationsinRTDprojects_0000002917_00.xml.html 16Canadian Licensing Surveys, ATUM, www.autm.net. Success Stories, Federal Partners in Technology Transfer, www.fptt-pftt.gc.ca 17Funding bodies in Australia, such as the ARC, recognize the Common Law right of universities as employers to retain the intellectual property arising from grant funded research. 18www.max-planck-innovation.de/ 19www.innovations-report.de/html/profile/profil-167.html 20www.ffg.at, http://www.cdg.ac.at
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Public co-funding of industry R&D has to avoid distortion of competition.
Therefore, due to the deminimis cap for the cash equivalent, a company may obtain
as subsidies not more than 200.000,- Euro in a three years period21.
Collaboration with universities could result in indirect subsidies for companies.
As an interpretation of competition law European Commission has published the
Community Framework for State Aid for Research and Development and
Innovation22. The Commission will automatically, i.e. without any notification
requirement, consider that no indirect State aid is granted to the private partner by
the PRO if the conditions set out in the Community Framework for State Aid for
R&D&I23 are fulfilled.
In case of contract research or research services market price24 or full costs25
plus a reasonable margin need to be paid if the company will obtain the results. In
analogy, in case of R&D collaborations the full cost approach or a compensation
equivalent to the market price for the intellectual property rights transferred to the
company is required.
C. Challenges for Collaborative R&D
Despite the high potential technology transfer between PROs and companies is
not always without complications. Collaboration between curiosity driven research in
PROs and business oriented development in companies has to cross cultures and to
yield synergies for all parties involved. Prohibited publications on the one side and
patent filings impeded by prior-art publications of the inventors on the other side are
examples of bad practice. There is also the issue of conflicts of interest and
commitment in cases where actors are having different roles with different goals26.
Misunderstood missions, regulations and legal requirements are nowadays resulting
in additional barriers. Companies tend to assume that having paid taxes not only
hiring of scientist and engineers educated by universities but also their IPRs have to
be for free. Universities tend to oversee that companies major interest within the
21de-minimis aid: europa.eu/legislation_summaries/competition/state_aid/l26121_en.htm 22ec.europa.eu/competition/state_aid/reform/archive_docs/rdi_frame_en.pdf 23Ibid: OJ No C323 of 30.12.2006 – in particular 3.2.1 and 3.2.2 thereof 24For elucidating a market price benchmarks are found at private R&D companies which are working for profit. 25Full costs are not just additional costs plus an overhead of e.g. 20%. The EU accepts within its funding programs 60% as an flat rate for overhead. For coming closer to reality even significant higher percentage need to o be added. At Graz University of Technology e.g. the real overhead for personnel expenditures calculated for 2007 was 83,15%. 26University-industry relationships: benefits and risks, Joe Sandelin, Industry & Higher Education, 24 (2010) 55-62.
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collaboration is to gain a competitive advantage facilitating the generation of
revenues.
The discussion of value of IP already created is still a hot topic as the perception
of value of early stage technology is nearly always asymmetric. Even more difficult is
the discussion of value of unknown IP that might be created in a project not yet
started. Especially in case of inventions based on fundamental research it is usually
impossible to predict which IP with which options for market relevant applications
might be generated. Negotiation of valuation methods is, therefore, a critical success
factor for enabling of win-win relationships. These are often strongly application,
industry and business case dependent. As the topic is rather complex there is no
one-size-fits all solution. Partners need to have corresponding education, training
and experience in order to understand the relevant parameters, make use of the
options for setting up of an suitable business case, defining the corresponding IP
use, applying and adopting established valuation methods and finally defining the
financial terms as well as integrating them into executable contracts.
A prerequisite for that is a mind change for negotiating and implementing of win-
win oriented collaborations. On the short run it is easier to go for win-lose or loose-
win but only win-win collaboration is the sound basis for sustainable long term
relationships which is usually a requirement for R&D collaborations.
Furthermore, the clearance of ownership questions due to potential IP
contamination, negotiation and implementation of contracts is often time-consuming
and the required resources are not always easily available.
Last but not least tech transfer professionals and business executives negotiating
the deal require the support of legal counsels. Sometimes legal counsels are
experienced more as opponents than as facilitators making contracts legally valid,
unambiguous and risk adjusted. In-house legal reviews in companies and PROs as
well often have been cited as slowing down negotiations and alienating partners.
Instead of a deal minded attitude partners are often frustrated by a bureaucratic
approach trying to reduce risks to zero instead of following the business-minded
approach looking for a fair sharing of rewards and associated risks.
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D. Codes, Guidelines and Model Contracts Facilitating Collaborative R&D
Voluntary codes of practice as well as guidelines on IPR ownership and
exploitation have an important role to overcome the aforementioned challenges. In
an EU consultation27 a majority of respondents asked for guidelines in order to
address issues such as the balance between patenting and publishing and on
developing a PRO policy on links with industry generally. The OECD has noted that
legislation might be necessary to create “the incentive for PROs to protect and
commercialize IP” but new laws were not the only measure. In general, guidelines
and codes of practice on IPR ownership and management have the potential to
foster greater transparency and coherence28.
Currently these codes work in parallel with one another, with the pre-existing
legal regime in each nation and with IP policies at the institutional level. They provide
a useful source of potential common ground between contracting parties in
collaborative research. Usually parties are free to decide about their implementation
but there are exemptions29.
The codes are classified as (1) supranational codes, including EU initiatives and
(2) national codes and (3) model contracts.
1. Supranational Codes
OECD and WIPO studies
International organizations like the OECD30 and WIPO31 have evaluated the
perspective of technology transfer and university-industry relations intercontinentally.
Analyzing the status quo, goals and strategies, both organizations have published
corresponding recommendations. Part of those recommendations is awareness
creation, education, training, and in general share of good practices. Furthermore,
27Draft report on the outcomes of the public consultation on transnational research co-operation and knowledge transfer between public research organisations and industry M1-FM/DD (D 2006), ec.europa.eu/invest-in-research/pdf/download_en/consult_report.pdf 28Organization for Economic Co-operation and Development (OECD), Turning Science into Business; Patenting and Licensing at Public Research Institutions, 2003/4. 29In Austria the implementation of the recommendations of the EC is part of the service level agreement for the years 2010-2012 of universities with their ministry. Consequently, best efforts to its implementation have to be undertaken for obtaining the agreed governmental budget. 30Organization for Economic Co-operation and Development (OECD), Turning Science into Business: Patenting and Licensing at Public Research Organizations, 2003. 31World Intellectual Property Organization (WIPO), SMEs Division, Research and Innovation Issues in University–Industry Relations, 06.12.2004
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coherent national IP policies and implementation of IP policies at the institution level
are strongly encouraged.
AUTM Guidelines for University Licensing
If PROs have created IPR that is free for licensing to any third party it is
recommended to have basic principles in place. Licensing approaches might vary
considerably from case to case and from university to university based on the
circumstances. In spite of this uniqueness, universities share certain core values that
should be implemented in all licensing agreements.
The intention is to support the universities’ mission and by doing so to address
the dual goals of nurturing future research
and using the innovations of university
research to provide the broadest possible
benefit to the public. AUTM32 has published
2007 Nine Points to Consider in Licensing
University Technology with examples of
clauses for corresponding implementation
into contracts.
EU Recommendations
The EU has developed a series of
activities33, among those the
Recommendation on the Management of Intellectual Property in Knowledge Transfer
Activities and Code of Practice for Universities and Other Public Research
Organizations of the European Commission34,35. This was published in 2008 and is
aimed at developing guidance on the management of IP by PROs in the form of a
recommendation to the Member States.
32www.autm.net/Nine_Points_to_Consider.htm 33Investing in Europe, ec.europa.eu/invest-in-research/index_en.htm 34 The management of intellectual property by public research organizations, europa.eu/legislation_summaries/research_innovation/general_framework/ri0007_en.htm 35Commission recommendation on the management of intellectual property in knowledge transfer activities and Code of Practice for universities and other public research organisations. Brussels, 10.04.2008, C(2008)1329, ec.europa.eu/invest-in-research/pdf/ip_recommendation_en.pdf
Central to the recommendation is
the idea that steps should be taken
to improve the coherence of IPR
regimes as regards the ownership
of IP, in such as a way as to
facilitate cross-border research. The
recommendation suggests using the
recommendations themselves as
the basis for national legislation or
guidelines on IPR management.
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The recommendations for the member states include e.g. the (i)
Encouragement of PROs to establish policies and procedures for the management of
IP; (ii) Support for the development of knowledge transfer capacity and skills in
PROs, as well as to raise the awareness regarding IP, knowledge transfer and
entrepreneurship; (iii) Improvement of the coherence of IP ownership; (iv)
Implementation of the Code of Practice (see below), whether directly or through the
rules laid down by national and regional research funding bodies; (v) Designation of a
national contact point for the coordination of measures regarding knowledge transfer
between PROs and business36.
In the Code of Practice for PROs concerning the management of IP in
knowledge transfer activities principles are defined for internal policies regarding (i)
IP, (ii) knowledge transfer and (iii) collaborative and contract research.
The Internal IP policy of PROs should provide clear rules for staff and students
regarding e.g. the disclosure of new ideas with potential commercial interest, the
ownership of research results, record keeping, the management of conflicts of
interest and engagement with third parties. Furthermore it should promote the
identification; exploitation and protection of IPs in order maximize socio-economic
benefits including incentives, awareness creation and training of basic skills
regarding IP and knowledge transfer.
The Knowledge Transfer Policy should ensure that the PRO has professional
knowledge transfer services in place including legal, financial, commercial know-how
as well as access to protection and enforcement advisors, in addition to staff with
technical background. Furthermore, a licensing policy for exploitation purposes
should result in adequate compensation for IP transfer.
A policy defining Rules for Collaborative and Contract Research should be
compatible with the mission of each party and consider the level of private funding
and be in accordance with the objectives of the research activities, in particular to
maximize the commercial and socio-economic impact of the research, to support the
PROs objective to attract private research funding, to maintain an IP position that
allows further academic and collaborative research, and avoid impeding the
dissemination of the R&D results. IP-related issues should be clarified at
36In Austria a national contact point (NCP) has been designated at the Federal Ministry of Science and Research, assisted by the Federal Ministry of Economy, Family and Youth, the Federal Ministry of Transport, Innovation and Technology. www.ncp-ip.at
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management level and as early as possible in the research project, ideally before it
starts. IP-related issues include allocation of the ownership of intellectual property
which is generated in the framework of the project (“foreground”), identification of the
intellectual property which is possessed by the parties before starting the project
(“background”) and which is necessary for project execution and/or exploitation
purposes, access rights to foreground and background for these purposes, and the
sharing of revenues. In a collaborative research project, ownership of the foreground
should stay with the party that has generated it, but can be allocated to different
parties on the basis of a contractual agreement concluded in advance, adequately
reflecting the parties' respective interests, tasks and financial or other contributions to
the project.
Within the recommendation a list of identified practices of public authorities
facilitating the IP management of intellectual property of PROs has been published.
Among these are the following measures: (i) Sufficient resources and incentives are
available to PROs and their staff to engage in knowledge transfer activities. (ii)
Measures are taken to ensure the availability and to facilitate the recruitment of
trained staff (such as technology transfer officers). (iii) Pooling of resources between
PROs at local or regional level is promoted where these do not have the critical mass
of research spending to justify having their own knowledge transfer office or IP-
manager. (iv) Government funding is made available to support knowledge transfer
and business engagement at PROs. (v) In order to promote transnational knowledge
transfer and facilitate cooperation with parties from other countries, the owner of IP
from publicly-funded research is defined by clear rules (institutional ownership) and
this information, together with any funding conditions which may affect the transfer of
knowledge, is made easily available. (vi) Last but not least: A set of model contracts
is made available, as well as a decision-making tool helping the most appropriate
model contract to be selected, depending on a number of parameters.
Responsible Partnering37
This guide is the result of a joint initiative of the European Commission, EIRMA
European Industrial Research Management Association, EUA European University
37Joining forces in a world of open innovation, a guide to better practices in collaborative research between science and industry www.responsible-partnering.org
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Association, EARTO European Association of Research and Technology
Organizations and ProTon Europe. The handbook was first published 2005 and a
revised edition was released 2009.
Responsible partnering is intended to assist both PROs and private companies
to improve the effectiveness of their collaborative research. The code highlights the
need for a sustainable approach, in other words, it acknowledges that relationships in
which the fruits of research are inequitably allocated between the parties, are less
likely to be durable.
Two main principles are contained in the code: (1) there should be maximum
beneficial use of public research, and (2) that there should be responsible use of that
research. Following from those two core principles, ten guidelines are derived. The
guidelines include the adoption of processes which will enable the parties to establish
what their own respective expectations are. One of the principles is the need for
parties to share equitably in the benefits of research results as well as having clarity
of IPR ownership. Checklists for implementation of the guidelines and for drafting of
contracts are included as well.
EICTA Interoperability White Paper38
This Code was developed by EICTA European Information, Communications
and Consumer Electronics Industry Technology Association. It is aimed to encourage
(technical) information-related interoperability39 for products and services being used
by multiple parties. It is not related to research specifically but has a more general
approach to promote and reward innovation. For that reason it might be described as
a technical sectoral code. The code introduces actions and principles to achieve that
aim. The White Paper notes the potential tension between IP protection rewarding
the innovator and the adoption of a common, perhaps nonproprietary standard for the
public goal of better interoperability. It notes that such tensions can and have been
“managed in a generally successful manner” by the development of so-called “open
standards”.
38
EICTA, 21 June 2004, see also EICTA White Paper on Standardisation and Interoperability, November 2006. EICTA was renamed to Digital Europe www.digitaleurope.org 39In networks, systems, devices, applications and components.
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Towards European Guidelines40
In 2004 DG Research published a number of recommendations which could be
used as a basis for the development of guidelines for the EU. It highlighted the need
for harmonization and convergence of ownership regimes at an EU level. It includes
some useful starting points for research collaborators to consider as minimum
principles.
CREST Report41
The report once again affirmed the need for guidelines at an EU level.
Guidelines should assist PROs and industry to “work out dispassionately what
contractual arrangements for IPR ownership will be appropriate for their needs”. The
CREST Decision Guide is part of the report and is not dependent on any particular IP
system. Therefore, it is a tool that compliments the code of practice.
40 Management of intellectual property in publicly-funded research organisations: Towards European Guidelines. Expert Group Report, WP EUR 20915 EN, ec.europa.eu/research/era/pdf/iprmanagementguidelines-report.pdf 41Intellectual property Cross-border colllaboration between publicly funded research organisations and industry and technology transfer training, Crest Report, 2006 - 2nd cycle, September 2006, ec.europa.eu/invest-in-research/pdf/download_en/kina20796enc.pdf
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2. National Codes
As a large number of issues need to be addressed by PROs and companies in
dealing with the transfer of IP in R&D collaborations some member states like
Ireland, the UK and Denmark have issued guidance on these issues by introducing
non-binding national codes.
Ireland
ACSTI Advisory Council for Science, Technology and Innovation has developed
two complimentary codes:
- National Code of Practice for Managing Intellectual Property from Publicly
Funded Research42 was published in 2004 is focused on IP Management, is non-
binding and may be adapted for local use by PROs. One of its key principles is that
ownership of research has to be vested to the PRO, backed by published ownership
policies and written agreements (entered into by all scientists involved). It suggests
that conflicts of interests should be managed and resolved, and good practice
guidelines (e.g. keeping adequate laboratory notebooks to assist in IP protection)
should be put in place. It encourages PROs to develop a policy on incentives to
research (equity, royalty sharing are examples but it encourages a broad approach to
the issue not restricted to those two options). It also includes a sample invention
disclosure form and a user friendly guide to IPRs.
- National Code of Practice for Managing and Commercializing Intellectual
Property from Public-Private Collaborative Research43 was published in 2005, is non-
binding and covers on 54 pages the whole process from the initial cooperation to
commercialization. It provides a framework for opening negotiations between parties
based on best practice. It states that ownership and access to results of public-
private collaborative research should be negotiated on a project by project basis
based on three key factors: (i) financial input; (ii) intellectual input; and (iii) capacity to
exploit. The last aspect, capacity to exploit, is hardly mentioned in any other
comparable initiative.
It also addresses the need to discuss how disputes between the parties are to be
42www.forfas.ie/publications/2004/title,827,en.php 43www.forfas.ie/publication/search.jsp?ft=/publications/2005/Title,785,en.php
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dealt with. It is explicitly aimed at maximizing Ireland’s attractiveness for foreign
direct investment in research and development by promoting a common IP
management approach and gives preference to commercialization in Ireland.
Negotiation of contracts and correlating challenges are not discussed. Also other
forms of cooperation besides the research collaboration are not mentioned. Both
codes have been well received in Ireland.
Whilst both codes are non-binding, it is important to note that compliance with
their main terms is a pre-condition for obtaining a grant from one of the major
sources of funding for scientific research, the Science Foundation Ireland. Effectively
therefore, it is a strong financial incentive to use them under the grant conditions.
Another core element of Science Foundation Ireland’s terms and conditions is that
there is an attractive incentivisation and financial return for the research project’s
principal investigator and the research team44.
United Kingdom
In the UK several organizations have published non-binding codes relevant to
IP ownership and management:
- Baker Report45 "Creating knowledge creating wealth" Realizing the economic
potential of public sector research establishments is a report to the Minister for
Science and the Financial Secretary to the Treasury by John Baker 1999. It is
focused in particular on issues of good practice, barriers to successful
commercialization, culture, management and the PRO-business relationship.
- A Guide to Intellectual Property Management: Strategic Decision-Making in
Universities46 developed by the UK IPO Intellectual Property Office (formerly known
as the Patent Office) in partnership with AURIL Association of University Research &
Industry Links and UK Universities. It was published 2002 and is designed to inform
and support activities of university senior managers in the development of their IP
strategies and policies.
44SFI Terms and Conditions of Research Grants, August 2006 Edition, at hhtp://www.sfi.ie. 45http://www.hm-treasury.gov.uk/ent_sme_baker.htm 46http://www.ipo.gov.uk/managingipoverview.pdf
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- The Lambert Review was written by Richard Lambert47
The 2004 Lambert Review of Business-University Collaborations came up with
a number of key recommendations on ways improve links between PROs and
business. One of these was that a number of interested parties, including the UK’s
Department of Trade and Industry, AURIL and industry stakeholders, developed a
set of model agreements to be used in collaborative research projects. These would
be used on a voluntary basis as a suite of model contract by universities and
industry. A decision guide with guidance notes was also developed to help parties
decide which of the five main Lambert agreements (or a combination of them) best
suits the particular scenario that PRO or company sponsor is dealing with, and to
navigate through the agreements by themselves.
Denmark
A working group of DI Confederation of Danish Industries (Danks Industri) and
the Danish Rectors’ Conference (Rektorkollegiet) developed “Contacts, contracts and
codices - research co-operation between universities and companies”48 which is non-
binding and sets out useful information and guidance on the interaction between
universities and companies. The Code includes on 48 pages guidance on co-
financed research, sale of self-funded research, sponsored research, commissioned
research, consulting services, Ph.D. studies and IPR. It addresses, in a competent
and user-friendly manner, how to decide payment models, valuations, distribution
rights and the management of the parties expectations of what the results will be in
any given project. Although it is not ment to be a step-by-step guide for setting up a
contract a chapter covers all important aspects of a corresponding contract.
The assignment was to collate many good experiences from cooperation
projects between universities and companies and, against this backdrop, prepare a
report that indicates how hurdles and problems could be handled. It is well suited for
beginners but also provides useful ideas for advanced readers. Although the Danish
legal situation is discussed it is applicable for international use.
The publication contributes to the smooth transfer of knowledge between universities
47Richard Lambert: former editor of the Financial Times and formerly a member of the Monetary Policy Committee at the Bank of England and then Director General of the CBI Confederation of British Industry 48di.dk/English/Shop/Productpage/Pages/isdefault.aspx?productid=2684
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and companies. Recommendations are intended to help PROs and businesses to
become partners in - not just parties to - co-operation.
Austria
Graz University of Technology has developed a binding guideline not only for
the handling of IPRs in general but also one for IP generated within any form of
collaboration with businesses. The guideline defines the IP related rules for all
employees with the power to act and sign on behalf of the university. In the first
version from 2007, enforced 17 days after the release of the already mentioned
Community Framework for State Aid for Research and Development and Innovation,
this Framework together with the feedback of various collaboration partners as well
as the Federation of Styrian Industries have been taken into account. The second
version released in March 2008 was formally negotiated with the Federation of
Styrian Industries with involvement of their Austrian umbrella organization. The
approval of the document has been unanimously within the members of the
Federation of Styrian Industries.
For facilitating the use of the guidelines a check list was developed in
cooperation with the Federation of Styrian Industry49. For assisting the
implementation various compatible model contracts were designed as a service for
the institutes.
The guideline has been provided to the Austrian universities and is in a broader
use. The contract of Graz University of Technology covered in Table II is based on
this guideline. Furthermore, the guidline was applied for definition of the initial starting
point for the IPAL Intellectual Property Agreement Guide (cf. Tables).
Sweden
As already mentioned, in Sweden the professor’s privilege is still in force.
Therefore, an example of how IPs are managed in contracts seemed interesting for
the review.
49Work in progress that is still not published.
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In the seven page guidelines of KTH Stockholm50 the university confesses itself
to the professor’s privilege in a clear way. The university avoids any financial risks by
not filing any patents but supports the scientists by an external company. Inventions
generated by public funding are seen as a contribution to society. For case of
collaborations it is stressed that all employees should have in place contractual
agreements with the research sponsor so that there is a basis for the
commercialization of results secured.
3. Model contracts and supporting initiatives
In nearly all supranational codes awareness creation, education, training, and in
general share good practices is recommended. The European Commission strongly
recommends and supports the availability of a set of model contracts, as well as
decision-making tool for selection of appropriate model contracts as best practice of
public authorities. Just recently this recommendation was renewed by the European
Parliament51.
The EC has made available the CREST cross-border collaboration decision
guide52 to help a business (in particular a SME) and a PRO to decide the best way to
arrange matters in their collaboration agreement. In a first step a series of questions
interactively results in the identification of the issues and their relative importance to
the contract. In a second step the cross border aspects are identified.
In this regard, the CREST Group notes that achieving model agreements which
could have a pan-European application might not be possible as the agreements
might become too complicated to be of practical use. Instead, it prefers the use of
such model agreements at a national level.
If it comes to the drafting of an executable contract this becomes
understandable. Probably for contracts like MTAs a broader international use can be
achieved. Organizations such as AUTM Association of University Technology
Managers53 originated in the US and DESCA54 in the EU have developed model
contracts for material transfer agreements. But there are a lot of subtle national
differences that go e.g. beyond what has already been discussed in relation of
50Patent- och exploateringspolicy vid KTH, intra.kth.se/regelverk/overgripnade-styrning/upphovsratt/1.27147 51University Business Dialogue: a new partnership for the modernisation of Europe's universities, May 20th 2010, Strasbourg P7_TA-PROV(2010)0187, A7-0108/2010, http://www.europarl.europa.eu/sides/getDoc.do?pubRef=-//EP//TEXT+TA+P7-TA-2010-0187+0+DOC+XML+V0//EN#def_1_5 52ec.europa.eu/invest-in-research/policy/crest_cross_en.htm 53www.autm.net, restricted member’s area but membership is open to all interested worldwide. 54www.desca-fp7.eu/fileadmin/content/Documents/Model_for_Material_Transfer_Agreement_2008_09_18.doc
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ownership. In Germany for example in addition to remuneration for the inventors
there are further ties attached to the institutional ownership: Researchers do have a
negative publication right meaning they can publish instead of disclosing the
invention for consequent patenting prior to publication. Furthermore inventors have
the right to file patents in their own name in nations where the employer does not file.
In Austria the remuneration for the inventors has to be appropriate in relation to what
the invention is worth and not in relation to what the PRO has earned with that
invention in particular. Those differences in the legal systems require corresponding
regulations in the contracts.
Following this need, the subsequent part will focus on the survey about national
initiatives facilitating the contract drafting. Some countries have put in place model
contracts such as the UK with the Lambert Tool kit to help potential contracting
parties reach agreement on IPR and reduce that agreement to writing.
Table I: Overview of national initiatives providing model contracts
Initiatives are listed in the Tables according to their national affiliation. The
initiatives are classified in the following as platform initiatives, meaning that PROs
and businesses were engaged and single initiatives, where only one institution or
partners from either PROs or businesses were involved.
Platform initiatives
In case of platform initiatives the engagement of both, PROs and businesses,
usually goes along with a broader discussion and exchange of different viewpoints
with the intention to achieve a more balanced model contract and, consequently, a
broader support of the final outcome in its practical use.
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European commission
Since FP6, Consortium Agreements are mandatory for most FP-funded research
projects. The purpose of a consortium agreement is to regulate critical aspects of
project governance not covered by the grant agreement between the Commission
and the project consortium. Key aspects covered in consortium agreements are
typically: (i) the internal organization of the consortium; (ii) the distribution of the EC
financial contribution; (iii) liability and confidentiality arrangements between partners;
(iv) management of intellectual property and access rights to results (e.g. when, and
on what terms, should access to results be provided to other partners and their
affiliates)
From all those different model contracts available only three were selected as
those are in strong use in practice. Due to their European wide publicity those
contracts have a great normative impact on how collaboration contracts are set up,
even outside the related programs.
EU.1 Seventh Framework Programme. Model grant agreement
The European Commission adopted 2007 the general model grant agreement to
be used in research projects funded under the 7th Framework Programmes (FP7).
This model grant agreement is applicable to the indirect actions under the
'Cooperation' and 'Capacities' Specific Programmes of FP7. It consists of a core text
and several annexes. There is also a list of special clauses to be introduced in the
grant agreement where necessary.
The original language of the grant agreement and its annexes is English. The
translations into the other community languages are provided to facilitate the
understanding of the grant agreement and its annexes. They are not legally binding
and are not officially sanctioned.
EU.2, DESCA Group FP7 Consortium Agreement
DESCA DEvelopment of a Simplified Consortium Agreement for FP7 is a
comprehensive, modular consortium agreement. Initiated by key FP7 stakeholder
groups55, and co-developed with the FP community, it offers a reliable frame of
reference which seeks to balance the interests of all of the main participant
55DESCA was initiated by ANRT (www.anrt.asso.fr), the German CA-Team (represented by Helmholtz - www.helmholtz.de and KoWi - www.kowi.de), EARTO (www.earto.eu), Eurochambres (www.eurochambres.be), and UNITE (www.unite.be)
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categories in FP research projects: large and small firms, universities, public
research institutes etc. The DESCA project aimed of producing one consistent
modular agreement for FP7 which balances the interests of all key player categories,
in the spirit of Responsible Partnering56 . Therefore it is enjoying a broad support
within the FP community.
DESCA is also a much simplified consortium agreement compared to many of
the FP6 models. Inexperience and caution then encouraged prudence and
sometimes over-precision. Now, with the benefit of experience, DESCA offers a
model stripped of unnecessary complexity in both content and language.
DESCA offers variant options for clauses around its core text enabling adoption
to quite different project types (e.g. large long-term multi-partner consortia versus
close-to-market SME-centred projects) or different actor categories (e.g. research-
oriented universities versus application-focused enterprises). DESCA contains
guidance notes to help research managers without legal training to recognize key
issues for them and to make informed choices about the best options to approach
win-win agreements.
UK.1‐5, Lambert Tool kit
In the already mentioned Lambert review57 it was proposed that key stakeholders
representing universities and business should work together to develop a range of
model collaborative research agreements. The Lambert Tool kit58 was developed by
a working group including key stakeholders such as AURIL, CBI Confederation of
British Industry, RDAs Regional Development Agencies, SBS Small Business
Service, UNICO59, a number of UK companies, universities, and several government
departments chaired by Richard Lambert. The group was facilitated by the IPO and
the DIUS Innovation Group60.
Resulting agreements are setting out various approaches to IP ownership,
management and exploitation rights including ownership of the IP by the university
56www.responsible-partnering.org 57Lambert Review of Business-University Collaboration: www.hm-treasury.gov.uk/d/lambert_review_final_450.pdf 58
www.innovation.gov.uk/lambertagreements 59PraxisUnico is an educational not-for-profit organization set up to support innovation and commercialization of public sector and charity research for social and economic impact. www.praxisunico.org.uk 60Department for Innovation, Universities and Skills was merged 2009 with the Department for Business, Enterprise and Regulatory Reform creating BIS The Department for Business, Innovation and Skills www.bis.gov.uk.
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with non-exclusive licensing or exclusive licensing to industry for voluntary use by
business and universities up to nearly unrestricted ownership of the business partner:
UK.1 - the University owns the IP in the research results and grants a non-
exclusive license for the company sponsor to use the results in a specified field
and/or a territory.
UK.2 - the University owns the IP in the research results but it then licenses to
the company sponsor the use of the results in a specified field and/or territory, and
the company sponsor has a right to negotiate an exclusive license in relation to
certain results.
UK.3 - the University owns the IP in the research results and licenses the
company sponsor to use the results in a specified field and/or territory and the
company sponsor has a right to negotiate to take an assignment of the IPRs in some
of the results.
UK.4 - the company sponsor owns the IP in the research results, but some rights
are reserved to allow the University to use the results for academic purposes
(including academic publication) on certain conditions (to protect the confidentiality of
the company sponsor’s data and so as not to jeopardize the possibility of the
company sponsor obtaining patent protection if available for the results).
UK.5 - the company sponsor owns the IP in the research results, and the
University has no right to publish the results.
The model agreements typically have between 11 and 14 pages. They are
commented and, based on a questionnaire; selection of the most suitable type is
supported.
The contracts are nearly complete as only e.g. regulations about Background
required for commercialization of Foreground and regulations about inventor
remuneration are missing.
DE.1‐4, Model contracts by the Federal Ministry of Economics and Technology
The Federal Ministry of Economics and Technology (BMWI) did initiate a working
group in order to summarize existing model contracts. On that basis four model
contracts with 10 to 15 pages each were elaborated: two for contract research
(options: IP-licensing or -assignment), research collaboration and service contract. In
addition model contracts of this and other initiatives in Germany are compared. The
final outcome was published in a 80 pages booklet in 2007 and updated in 2010 to
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consider the lessons learned, the already mentioned Community Framework for
State Aid for Research and Development and Innovation and the new legislation
relating to the inventor remuneration.
The model contracts are complete and bilateral although some regulations are in
clear favor of the business (e.g. publications require a twofold request till they are
accepted; compensation for IPs need to be calculated within the project costs,
Background IP required for comercialisation has to be for free etc.).
DE.5‐6, Berliner Contracts ‐ “Berliner Verträge”
Universities in Berlin and their patent commercialization agency ipal GmbH61 in
cooperation with German industry (represented by companies like BASF, Bayer AG,
Robert Bosch, DaimlerChrysler, Deutsche Telekom, Rolls-Royce, Schering)
elaborated model contracts for contract research and research collaboration. The first
edition was published 2002, updated with the lessons learned in 2007.
In order to differentiate contract research and research collaboration a list of
evidences is provided that facilitates the clear classification. Furthermore a
comparison shows the differences between the modules of the contracts. For certain
issues alternative options are provided (e.g. compensation, invention disclosure etc.).
A guideline for calculation of the compensation is added.
The clear focus on IP topics results in the lack of issues that are mandatory in a
contract like warranty, confidentiality, rescission etc. but hardly become show
stoppers. The spirit of the model contract is that PROs and business are treated as
equal partners and wording has to be balanced. Flexibility is introduced by providing
alternative options for certain issues.
DE.7, Düsseldorfer Contract Workshop ‐ “Düsseldorfer Vertragswerkstatt”
The Düsseldorfer Contract Workshop is a cooperation of the Centre of
Intellectual property and the Technology transfer unit at the Heinrich Heine University
Düsseldorf which is supported by the patent commercialisation agency PROvendis.
Other higher education institutions and businesses of different branches are
integrated by interviews and questionnaires but also by involving the lobbyists of
businesses.
61ipal GmbH assesses and exclusively markets the inventions of Berlin`s scientists and academics. www.ipal.de
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The initiative started 2004 and published in 2008 it’s fourth edition of modules for
model contracts and 2006 it’s revised version of an R&D collaboration contract.
The Düsseldorfer contract is comprehensive, balanced and due to the various
options broadly applicable. Nevertheless the contract with 8 pages stayed rather
short and precise.
AT.1, Graz University of Technology & Federation of Styrian Industries
Model contracts were developed based on the guidelines developed together
with industry and coordinated by the Federation of Styrian Industries (discussed in
2.4). Covered in Table II is a corresponding model contract for research collaboration
but implementing only the option which is chosen most often. In case of contract
research IPR is transferred to the research sponsor but the IP is prepaid by a lump
sum independent if and what relevant IP is generated. The inventor remuneration
according to the Austrian patent law is financed by the research sponsor addionally
and without any cap.
AT.6, IPAG Intellectual Property Agreement Guide
IPAG Intellectual Property Agreement Guide is an initiative of several Austrian
universities facilitated by the patent- and licensing management division of austria
wirtschaftsservice (aws), a business funding branch of Austria´s national promotional
bank. A combination of manual, model contracts and check lists for different kinds of
contracts are being developed. Starting point has been made with the model contract
for the R&D collaboration, which is included in Table II.
By applying the guidelines described in AT.5 and further involvement of
businesses and their lobbying institutions a very broad support of the developed
model contracts and tutorials is intended to obtain. The model contracts are still work
in progress but will be published in the internet62.
DK.1‐4, Johan Schlueter Committee
The Johan Schlueter Committee, supported by the Danish Agency for Science,
technology and Innovation, has outlined five model agreements with 9 to 16 pages.
These are tailored for various types of research collaboration: co-financed research
62www.ipag.at
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collaboration between two or multiple partners, co-financed PhD Study and industrial
PhD project
The model agreements are comprehensive, balanced and flexible as several
options for certain modules are offered.
Lacking is a regulation for cases where Background is required for exploitation of
Foreground. Joint ownership requests unanimous decisions.
Single initiatives
EU.3, EICTA FP7 Consortium Agreement
EICTA, the industry body representing the European digital technology industry,
published 2007 a consortium agreement contract model for integrated projects
funded under FP7. Legal experts of the large and small company members of EICTA
were involved in the drafting which was joint effort with European telecom operators
such as British Telecom and Orange, and was endorsed by the European digital
technology industry. Therefore, this contract model will be a reference contractual
model for the European telecommunications technology, information technology and
consumer electronics industries.
The EICTA model contract is composed of two parts: (A) Part I contains the
information specific to the project, such as its title, the partners involved, their
representatives and the project coordinator. (ii) Part II regroups the general
conditions, defining the roles and duties of each party, the intellectual property rights
and liability regimes, and the conditions to leave the project or to exploit its outputs.
DE.8, Hamburger Contract – “Hamburger Vertrag”
The Hamburger contract developed 2005 is a comprehensive model contract for
R&D collaboration without any options but with an article published commenting the
model contract. The business partner obtains all rights in an “non-bureaucratic” way
and the PRO obtains a capped lump sum covering the research efforts, the IPRs and
an inventor remuneration.
This model contract is an extreme example as it is completely focused on the
interest of the business partner. The PRO is not allowed to publish, apply the results
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in R&D or teaching etc. Usually universities limit this kind of approach to services or
contract research dealing with Background of the business partner.
AT.2‐4, Vienna University of Technology
Vienna University of Technology has developed different model contracts which
are commented for a clear understanding of essential parts. The model contracts
were revised due to practical experience during negotiations and feedback by
strategic partners of the university. In this respect those model contracts are at least
to a certain extent accredited by the business partners of the university.
AT.5, Austrian Research Promotion Agency
The Austrian Research Promotion Agency (FFG) is the national funding
institution for applied industrial research in Austria. In several funding programs
collaborative research is supported and for those are consortium agreements
mandatory which define IP rules. The model contract provided is designed for
multiple partners. Several comments are included explaining the contract. The model
contract is comprehensive. Besides usual components of a collaboration contract
particular consortium aspects are in detail as well so that the contract including the
comments ends up having 29 pages.
Not only industry but also PROs views are considered. For the FFG special rights
are secured which have the potential to delay the commercialization of IPs
generated. Gendering of the contract does not contribute to simplification for the
reader. A non-solicitation clause is included which was not found in the other
contracts reviewed.
AT.7‐8, Austrian Federal Economic Chamber
As a service and support for its members the Austrian Federal Economic
Chamber has published 2009 model contracts for contract research and research
collaboration. In 2010 this was updated and extended by a model for a Letter of
intent, as well as by a model for a Non-disclosure agreement for a research
collaboration of any kind. The model contracts are commented and accessible to all
members that means to all companies in Austria with a business license. Until
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recently the model contracts have been made available to all by Lower Austria
Economic Chamber63.
As PROs have not been involved in the dreafting important regulations like those
for publications are missing. Other issues like confidentiality, liability and termination
are just touched. Regulations are in clear favor of businesses and in this respect to
some extent comparable to the Hamburger contracts. The contracts are in the range
of 5 pages and easy to read.
A Handbook with 53 pages64 was published by WIFI65, the education and training
branch of the Austrian Federal Economic Chamber in 2008. Chapter by chapter
components essential topics and components of a contract are discussed and
summarized by corresponding check lists. In addition to the information about the
basics, options and advantages of collaboration is also contains a basic introduction
to IPRS, information retrieval, tax issues for inventors, license agreements etc. The
handbook is available to all.
The book is comprehensive and mostly balanced. The IPR part is not extensive.
Only in a few aspects recommendations are dominated by the interests of
businesses. Businesses are the paying members of the chamber. I addition the study
was supported by the Federal Ministry of Economy, Family and Youth.
FR.1, Federal Ministry of Economy, Industry and Employment
The Federal Ministry of Economy and lobbyists of industry developed a model
contract for R&D collaboration which is comprehensive and well explained. The
model contract is part of an internet platform serving as a guide to intellectual
property in centers of excellence. By doing so extensive information is provided as
checklists, step-by-step guides etc. giving also reference to other organizations.
As required for centers of excellence rules for running the consortium are
defined. For IPs several options are offered enabling a flexible structure. E.g. joint
Foreground could be owned by the partner dominant in the field or the equal shares
or corresponding to the percentage of the work packages. Improvement of
Foreground and corresponding ownership, commercialization of joint Foreground by
the not generating party etc. is defined.
63wko.at/wknoe/rp/gesamtangebot_wirtschaftsrecht.htm 64Kooperationen in Forschung und Entwicklung – Erfolgsfaktoren, Chancen, Tipps & Tricks, Innovation - Schriftenreihe des Wirtschaftsförderungsinstitutes, Nr. 335, portal.wko.at/wk/dok_detail_file.wk?AngID=1&DocID=813485&ConID=305408 65Wirtschaftsförderungsinstitut, www.wifi.at
TEO DRAFT 34
FR.2‐3, CNRS Consortium Agreement
CNRS Centre national de la recherche scientifique, the National center of
scientific research, is the largest PRO in France and the largest fundamental science
agency in Europe. The model contract for the consortium agreement is the only one
which is in French and English in parallel.
The model contract is comprehensive but lacks options and is, therefore, less
flexible. As required for a consortium agreement the rules for the partners are
defined. Joint Foreground is divided according to the different contributions of the
partners to the project. Also not Foreground generating partners are eligible for
commercialization within their field against compensation.
For collaboration with other PROs a separate and shorter model contract is
provided. Ownership of joint Foreground might be split equally or corresponding to
the work packages. The use of IP is not ruled in detail.
Furthermore a bilingual model contract for research collaboration with
businesses66 and for service agreements67 is provided.
SE.1, Lunds University
Lunds University is the largest PRO in Scandinavia. The model contract has to
consider that in Sweden the so called professor’s privilege still is in place. Only for
contract research68 a template with 3 pages is published. The „General Terms for
Contract Research at Lund University”69 are integrated into the contract as an
appendix with further 6 pages. Explicitly mentioned is that an additional agreement
with the employees is required.
SE.2, VINNOVA ‐ Swedish Governmental Agency for Innovation Systems
The VINNOVA Model Agreement for VINN Excelence Centres is designed for
collaborative research of a consortium in a research centers. IP rules like other
common components of R&D collaboration contracts and comments for a better
understanding are included extending the contract to 23 pages. In contrast to
Swedish universities service intentions of employees can be claimed by the research
center. Therefore, all IP issues including ownership and transfer of Background and 66www.dgdr.cnrs.fr/daj/modele/contrat/doc/CR-FRANC_ANGLAIS_couleur_060905.pdf 67www.dgdr.cnrs.fr/daj/modele/contrat/doc/PS-FRAN_ANGLAIS_couleur_060905.pdf 68www5.lu.se/upload/Juridiskaenheten/GeneralTermsforContractResearch-2009-04-27.doc 69http://www5.lu.se/upload/Juridiskaenheten/GeneralTermsforContractResearch-2009-04-27.doc
TEO DRAFT 35
Foreground as well as joint ownership of joint inventions are specified. Also less
common approaches are anticipated like the auction of IP if a preferred partner is not
interested in a particular IP.
IT.1‐3, University of Milano
Like in Sweden the professor’s privilege has consequences for the IP
management at universities. The University of Milano has adopted the model
contract for contract research of the Confederation of Italian Industries and created
three mutations, for contract research, contract consulting and R&D collaboration
with 4 to 6 pages each.
IT.4, Confederation of Italian Industries
The model contract for contract research is focused on management of the
project including financial terms but lacks detailed IP rules. Background e.g. is not
even mentioned.
Overview of regulations within the model contracts
In Table II various critical components of the legal relationship between PROs
and industry will be compared. Usually in the table it is listed what can be found as
explicit statements in the contract. By doing so implicit regulations that are based on
interpretation rather than on clear wording are omitted.
Table II
EU.1 EU.2 EU.3 UK.1 UK.2 UK.3 UK.4 UK.5 DE.1 DE.2 DE.3 DE.4 DE.5 DE.6 DE.7
EC-FP7(+Annex II)
DESCA Group FP7
EICTA FP7Düsseldorf Contract
WorkshopBMWi Federal Ministry of Economics and Technology Berlin ContractsLambert Tool Kit
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1.1 Use of Background for Execution of the Project
free of charge, no right to sublicence, pos. and neg. (1)
free of charge, non-excl., no right to
sublicence, acc. to annex (pos. and neg.)
(1)
free of charge, non-excl., acc. to Annex
(neg)
free of charge, non-excl., no right to
sublicence
free of charge, non-excl., no right to
sublicence
free of charge, non-excl., no right to
sublicence
free of charge, non-excl., no right to
sublicence
free of charge, non-excl., no right to
sublicence
free of charge, non-excl.
free of charge, non-excl.
free of charge, non-excl.
n.s.free of charge, non-
excl.free of charge, non-
excl.free of charge, non-
excl.
1.2 Use of Background for commercial Exploitation of Foreground generated
no right to sublicence, pos. and
neg. (1)
non-excl., no right to sublicence, acc. to annex (pos. u. neg.)
(1)
acc. to annex (neg), subject to seperate
contract (1) n.s. n.s. n.s. n.s. n.s.
non-excl., right to sublicence,
irrevocable, in the field of application
non-excl., right to sublicence,
irrevocable, in the field of application
non-excl. n.s. non-excl. (3) non-excl. (3) non-excl., temporary
Var.: infinite
2.1 Provisions concerning Joint Foreground
yes acc. to EC-GA yes no no no no no no no yes no no yes yes
2.2 Limitation of the Definition of Foreground (synonym used)
Foreground: no limitation
acc. to EC-GA: Foreground: no
limitation
Foreground: no limitation
Intellectual Property: no limitation
Intellectual Property: no limitation
Intellectual Property: no limitation
Intellectual Property: no limitation
Intellectual Property: no limitation
Seperation in Know-How, Ergebnisse and
Neurechte
Seperation in Know-How, Ergebnisse and
Neurechte
Seperation in Know-How, Ergebnisse and
Neurechte
Seperation in Know-How, Ergebnisse and
Neurechten.s. n.s. n.s.
2.3 Definition of the Field of Application for the Use and Assignment of Foreground
n.s. n.s. no yesyes for licence
no for excl.licenceyes for licence
no for assignmentno no
yes (outside: Var1:ownership BIZ
Var2:ownership PROeach incl. back
licence (PRO: free of charge; BIZ: chargable.)
yes (outside: Ownership PRO, non-
excl. licence at fair and reasonable cond.
to BIZ)
n.s. n.s.Ouside of the research plan:
ownership GPTYn.s. n.s.
2.4 Ownership / Assignent according to the Contract
GPTY or joint ownership by several
GPTYn.s.
GPTY or joint ownership by several
GPTYPRO PRO PRO BIZ BIZ
BIZ (5) (6)Var.: PRO outside field of application
PRO
dependent on share of contribution :
BIZ if ≥50%PRO if >50% (6)
PRO; no creation of FG expected
BIZ (6)(7)
dependent on share of contribution:
BIZ if ≥50%PRO if >50% (6)(7)
dependent on share of contribution:
BIZ if ≥50%PRO if >50% (6)
2.5 Commercial Use by BIZ non-excl.
non-excl., no right to sublicence
Option: exclusive licence (13)
non-excl., no right to sublicence
implicit: unlimited (ownership at BIZ)
implicit: unlimited (ownership at BIZ)
implicit: unlimited (ownership at BIZ)if invention is not
taken up: non-excl., right to sublicence,
non-assignable, worldwide, irrevocable
Exklusivlizenz (5)if invention is not
taken up: non-excl., right to sublicence,
non-assignable, worldwide, irrevocable
Option: exclusive licence under PRO
FG (5)if invention is not
taken up: non-excl., right to sublicence,
non-assignable, worldwide, irrevocable
n.s.
implicit: unlimited (ownership at BIZ)if invention is not
taken up: non-excl., non-assignable,
worldwide, irrevocable
Option: exclusive licence under PRO
FG (5)if invention is not
taken up: non-excl., non-assignable,
worldwide, irrevocable
Var1: first right of refulal to exclusive
licence
2.6 Use by PRO implicit: unlimited (ownership at PRO)
R&T: free of charge, non-excl., irrevocable
(17)
R&T: free of charge, non-excl., irrevocable
(17)
R&T: free of charge, non-excl., irrevocable Var.: research with
third parties
noR&T: non-excl., non-
assignable (18)R&T: non-excl., non-
assignable. (18)R&T: non-excl., non-
assignable. (18)implicit: unlimited
(ownership at PRO)
R&T: non-excl., non-assignable.
research with third parties: approval in
writing
R&T: non-excl., non-assignable.
research with third parties: approval in
writing
R&T: non-excl.
2.7 Option for Assignment n.s. n.s. n.s. n.s. n.s. yes (13)yes (if no assignment
beforehand is possible)
yes (if no assignment beforehand is
possible)on joint inventions n.s. on joint inventions n.s. on inventions on joint inventions
Var2: option for assignment
Var3: first right of refusal for assignment
2.8 Extraordinary Assignment when …
when no protection is effectuated, the
commission may require a transfer
n.s. n.s. n.s. n.s. n.s.
when no exploitation by BIZ: transfer to
PRO (when requested by PRO)
n.s.
when no protection is effectuated
Var.: inventions outside of the field of
application
renunciation of IPR by PRO: BIZ has first
right of refusal
when no protection is effectuated or
renunciation of IPR: from BIZ to PRO
n.s.when no protection is effectuated: from BIZ
to PRO
when no protection is effectuated: from BIZ
to PRO
when no exploitation with 5 years
2.9 Exploitation with third Parties
non-excl., no right to sublicence, partial
assignment is possible (19)
n.exkl, no right to sublicence, after
consultation; (19) (20)
non-excl., Var.: right to sublicence;
assignment possible (19) (21)
n.s.yes (licence and
assignment)yes (licence and
assignment)n.s. n.s. n.s. n.s. n.s. n.s. n.s. n.s. n.s.
2.10 Use of Copyrights equal to use of FG equal to use of FG
(22) equal to use of FG
(22)n.s. n.s. n.s. n.s. n.s. n.s. (23) n.s. (23) n.s. (23) n.s. (23)
BIZ: excl., assignable, infinite
(23)
BIZ: excl., assignable, infinite
(PRO FG after exercising the option)
free of charge, excl., assignable (except commercial use)
3.1 License fee for Use of BGfree of charge; Var: fair and
reasonable conditions
fair and reasonable contitions
fair and reasonable conditions
n.s. n.s. n.s. n.s. n.s.acc. to financial plan
(annex 5)acc. to financial plan
(annex 4)acc. to financial plan
(annex 6)n.s.
equal to market standard
equal to market standard
equal to market standard
Var.: free of charge
3.2 Lizenz/Royalty for Use of FGpayment of a
compensation to co-owners
free of charge free of charge free of chargefree of charge;Var.: exclusive
licence chargablePRO: free of charge PRO:free of charge --
-- (24) PRO: free of charge
lump sum acc. to financial plan (24)
PRO: free of charge
exclusive licence: acc. to financial plan (annex 6); chargable after no protection is effectuated by BIZ
(24)
-- -- (25)
PRO: free of charge
chargable (acc. to financial plan) (25)
PRO: free of charge
Var1.: chargable (acc. to financial plan)
3.3 Fee for Assignment of FG n.s. -- -- -- --chargable acc. to
annexfree of charge --
acc. to financial plan (annex 5)
assignment after renunciation of IPR on
BIZ's account
acc. to financial plan; free of charge (after renunciation of IPR)
-- -- --Var. 2 and 3:
chargable according to financial plan
3.4 Compensation for Exploitation with third Parties
fair and reasonable compensation to co-
owners
fair and reasonable compensation to co-
owners; Var.: no compensation
no compensation to co-owners
--PRO refunds cost of
IPRPRO refunds cost of
IPR -- -- -- -- -- -- -- -- --
3.5 Compensation for Inventors n.s. n.s. n.s. n.s. n.s. n.s. n.s. n.s. n.s. n.s. as required by law n.s. as required by law as required by law as required by law
4.1 Specification of IPR-phrasing
by owner n.s.acc. to seperate
contract in mutual understanding
PRO PRO PRO BIZ BIZBIZ (n.s. for
renounciation by BIZ)
BIZ and PRO in accordance (n.s. for
renounciation by BIZ)
BIZ or BIZ and PRO in accordance when
PRO-results are concerned
n.s.BIZ (n.s. for
renounciation by BIZ)BIZ (n.s. for
renounciation by BIZ)by owner (BIZ in case
of joint FG)
4.2 Applicant n.s. n.s.acc. to seperate
contract in mutual understanding
PRO PRO PRO BIZ BIZPRO and BIZ jointly
(PRO temporary custodian) (28)
PRO (28) owner (28) n.s.PRO and BIZ jointly
(PRO temporary custodian) (28)
owner (28) owner
4.3. Applicant Joint FG n.s. n.s.acc. to seperate
contract in mutual understanding
-- -- -- -- -- -- -- PRO and BIZ jointly
(PRO temporary custodian) (28)
-- -- PRO and BIZ jointly
(PRO temporary custodian) (28)
PRO (PRO temporary custodian) (28)
5.1 Filing of IPRs n.s. n.s.acc. to seperate
contract in mutual understanding
PROPRO; BIZ during
negotiation period (29)
PRO; BIZ during negotiation period
(29) BIZ BIZ
BIZ (except for renounciation by BIZ)
PRO (except for renounciation by BIZ)
BIZ (except for renounciation by BIZ)
n.s.BIZ (except for
renounciation by BIZ)BIZ (except for
renounciation by BIZ)
by owner (refund by BIZ after acquisition
of IPR)
5.2 Defense of IPRs n.s. n.s.acc. to seperate
contract in mutual understanding
n.s. n.s. n.s. n.s. n.s.BIZ (except for
renounciation by BIZ)PRO (except for
renounciation by BIZ)BIZ (except for
renounciation by BIZ)n.s.
BIZ (except for renounciation by BIZ)
BIZ (except for renounciation by BIZ)
by owner
6.1 Publication(time limit)
yes(45 days)
yes(45 days)
yes(30 days)
yes(30 oder 60 days)
yes(30 oder 60 days)
yes(30 oder 60 days)
yes(30 oder 60 days)
noyes
(6 weeks)yes
(6 weeks)yes
(6 weeks)n.s.
yes(60 days)
yes(60 days)
yes(30 oder 60 days)
6.2 Geheimhaltung yes yes yes yes yes yes yes yes yes yes yes yes no no yes
6.3 Limitation of Liability and Warranty
yes (33) yes yes yes yes yes yes yes yes yes yes yes no no yes
6.4 Termination yes no yes yes yes yes yes yes yes yes yes no no no yes
6.5 Annexes (italic = model incluced)
- Description of work- General Conditions- Specific provisions
- Background included- Background excluded- Accession document- Listed Affiliated Entities- Initial list of Members- List of third Parties
- List of affiliates- Declaration of Accession- Definition of Needed and Necessary- List of Back-ground excluded- Software subject to controlled licence terms- List of Back-ground software- List of third Parties- Standards
- Financial Contribution - The Project - Good Data Management Practices
- Financial Contribution - The Project - Agreed Licence Terms - Good Data Management Practices
- Financial Contribution - The Project - Agreed Assignment Terms - Good Data Management Practices
- Financial Contribution - The Project - Good Data Management Practices
- Financial Contribution - The Project - Good Data Management Practices
- Research Plan - Time Schedule - Sample Declaration of Accession for PRO staff - List of PRO Staff - Financial Compensations
- Research Plan - Time Schedule - Countries to be considered for foreign IPR applications - Financial Compensations
- Reseach Plan - Time Schedule - Sample Declaration of Accession for PRO staff - List of PRO Staff - Countries to be considered for foreign IPR applications - Financial Compensations
- Task - Time Schedule - Financial Compensations
- Research Plan - Sample Declaration of Accession for PRO Staff - List of PRO Staff
- Research Plan - Sample Declaration of Accession for PRO Staff - List of Countries - Sample Calculations for Financial Compensations
- Description of the Research Project - Specification Sheet - Financial Compensations(1) - Financial Compensations(2) - Financial Compensations(3) - Declaration of Project Management - Further Declaration of Project Management
6.6 Pages (without Annexes) 5 + 37 21 46 12 13 13 12 11 12 11 16 4 7 10 8
6.7 Number of partners >2 >2 >2 2 2 2 2 2 2 (35) 2 (35) 2 (35) 2 2 (35) 2 (35) 2
6. M
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yes (explicity requested)
yes yes
2. F
OR
EG
RO
UN
D
1. B
AC
KG
RO
UN
D
1.1 Use of Background for Execution of the Project
1.2 Use of Background for commercial Exploitation of Foreground generated
2.1 Provisions concerning Joint Foreground
2.2 Limitation of the Definition of Foreground (synonym used)
2.3 Definition of the Field of Application for the Use and Assignment of Foreground
2.4 Ownership / Assignent according to the Contract
2.5 Commercial Use by BIZ
2.6 Use by PRO
2.7 Option for Assignment
2.8 Extraordinary Assignment when …
2.9 Exploitation with third Parties
2.10 Use of Copyrights
3.1 License fee for Use of BG
3.2 Lizenz/Royalty for Use of FG
3.3 Fee for Assignment of FG
3.4 Compensation for Exploitation with third Parties
3.5 Compensation for Inventors
4.1 Specification of IPR-phrasing
4.2 Applicant
4.3. Applicant Joint FG
5.1 Filing of IPRs
5.2 Defense of IPRs
6.1 Publication(time limit)6.2 Geheimhaltung6.3 Limitation of Liability and Warranty6.4 Termination
6.5 Annexes (italic = model incluced)
6.6 Pages (without Annexes)6.7 Number of partners
6. M
ISC
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AN
EO
US
1. B
AC
KG
RO
UN
D4.
IP
R P
RO
TE
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ION
5. I
PR
CO
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3. I
PR
CO
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EN
SA
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N2.
FO
RE
GR
OU
ND
DE.8 AT.1 AT.2 AT.3 AT.4 AT.5 AT.6 AT.7 AT.8 FR.1 FR.2 FR.3 DK. 1 DK. 2
Hamburg Contract
Graz Univ. of Technology & Federation of
Styrian Industries
FFG Austrian Research Promotion Agency
IPAG Intellectual Property
Agreement Guide
Ministry of Economy,
Industry and Employment
CNRS National Center of Scientific
ResearchJohan Schlue
WKO Austrian Federal Economic Chamber
Vienna Universtity of Technology
Co
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free of charge, non-excl., right to sublicence, irrevocable, assignable,
free of charge, non-excl., no right to
sublicence, temporary
n.s. n.s.free of charge, non-
excl., non-assignable
free of charge, non-excl., infinite, non
project bound (2)
free of charge, non-excl., no right to sublicence, non-
assignable
n.s. n.s.
non-excl., non-assignable
Var.: field of appl.Var.: free of
charge/chargable
free of charge, non-excl., no right to sublicence non-
assignable
yesfree of charge, non-
assignablen.s.
non-excl., right to sublicence, assignable,
irrevocable, infinite (3)
yes, subject to seperate contract
n.s. n.s.non-excl., no right to
sublicence, non-assignable, (1)
non-excl., zeitl. infinite, non project
bound
no right to sublicence, subject to
seperate contract
non-excl., non-assignable,
irrevocable (3)
non-excl., right to sublicence, non-
assignable, irrevocable
Var.: non-excl., non-assignable
Var.: in a spec. field of application
non-excl., no right to sublicence non-
assignable, in a spec. field of application
n.s. n.s. n.s.
no yes no no yes yes yes no yes yes yes yes yes no
Forschungs-ergebnisse: no
limitationn.s.
Projekt-Ergebnisse: all technical results
within the field of application (4)
Projekt-Ergebnisse: all technical results
within the field of application (4)
Arbeitsergebnisse: no limitation
Forschungs-ergebnisse: no
limitation
Foreground: no limitation
n.s. n.s.Connaissances Nouvelles: no
limitation
Connaissances Nouvelles: no
limitation
Résultats issus du Projet: no limitation
Foreground: no limitation
Foreground: no limitation
n.s. noyes
(acc. to annex 1)yes
(acc. to annex 1)n.s. n.s. n.s. n.s. n.s. Var.: yes yes no
yes (acc. to annex)
als Variante
BIZ (6)
GPTY or joint ownership by several
GPTY (subject to seperate contract)
BIZ (assignment by PRO with the delivery
of the final report)
BIZ (assignment by PRO with the delivery
of the final report)
GPTY or joint ownership by several
GPTY
GPTY or joint ownership by several
GPTY
GPTY or joint ownership by several
GPTYBIZ
GPTY or joint ownership by several
GPTY
GPTY; if several GPTY in equal,
predefined shares or pro rata (6)(8)(9)(10)
GPTY; if several GPTY: pro rata
(9)(11)
GPTY; if several GPTY in equal shares
or pro rata (9)(11)
GPTY; if several GPTY in equal shares
or pro rata (12)
BIZ(Var: limitation to field
of application)
implicit: unlimited (ownership at BIZ)
excl., right to sublicence,
assignable, unlimited
excl., right to sublicence,
assignable, unlimited
implicit: unlimited (ownership at BIZ)
PRO FG: non-excl.; or excl.licence
Var.: first right of refusal
joint FG: in accordance with PRO
implicit: unlimited (ownership at BIZ)
no R&T: yes R&T: yesR&T: non-excl., non-
assignable
yes, at non disciminating cond.
joint FG: approval by BIZ
R&T: yes
n.s.
n.s. n.s. on inventions on inventions n.s.first right of refusal for
all partnersfirst right of refusal for
all partnersn.s. n.s. n.s.
if one partner is not showing interest in
joint FG
if one partner is not showing interest in
joint FG
PRO FG: yes;Var.: first right of
refusaln.s.
when renunciation of IPR by BIZ:
assignment upon decision of BIZ
when no IPR protection is
effectuated within 4 month
renunciation of IPR by BIZ: from BIZ to PRO
n.s.when no IPR protection is effectuated
when no exploitation or renunciation of IPR: transfer to all remaining partners
when no IPR protection is
effectuated within 4 month; when
renunciation of IPR
n.s.when no application for IPR is effectuated
Var: when no application for IPR is
effectuatedn.s. n.s. n.s. n.s.
n.s.after renunciation of
IPR
PRO: if no IPR protection is
effectuated by BIZn.s. n.s.
yesexcl. licence or assignment in
accordance with all partners
joint FG: non-excl.; first right of refusal of
all partners for assignment
n.s.yes, (right to sublicence)
n.s. implicityes
explicitly desired
PRO with PRO FG: yes, if BIZ not
interestedn.s.
BIZ: excl., subliz, assignable, infinite
equal to use of FG (22)
n.s. n.s. equal to use of FG equal to use of FG equal to use of FG BIZ: excl. n.s.non-excl., else equal
to use of FGSoftware equal to use
of FGn.s.
Copyright: free of charge, non-excl.; Softw.: non-excl.,
chargeable
n.s.
free of chargeequal to market
standardn.s. n.s.
equal to market standard
adequate feeequal to market
standardfree of charge
equal to market standard
free of charge or non discriminatory
conditions
equal to market standard
n.s. n.s. n.s.
--PRO: R&T: free of
charge;n.s. n.s. (26)
equal to market standard
joint FG: compensation to co-
ownersadequate fee
PRO: R&T: free of charge;
equal to market standard
free of charge or non discriminatory
conditions
non commercial research: free of
charge;use of one's own FG:
non discriminatory
Research free of charge
BIZ: chargabele according to financial
plan --
n.s. free of charge free of charge -- n.s. chargableaccording to seperate
contractfree of charge
according to seperate contract
-- n.s. n.s.BIZ: chargabele
according to financial plan
free of charge
--
joint FG: equal to market standard
compensation to co-owners
n.s. -- --joint FG: fair
compensation to co-owners
pro rata compensation to co-
ownersn.s.
fair, equal to market standard
compensation --
compensation to co-owners
compensation according to share in
FG -- --
n.s. as required by lawadequate, minimum as required by law,
paid by BIZn.s. n.s.
in adequate relation to commercial
sucessas required by law
as required by law, paid by PRO
Var.: paid by BIZ
as required by law, paid by GPTY
n.s.joint FG: decision by
every co-ownern.s. n.s. n.s.
BIZ by owner n.s. n.s.joint FG:in
accordanceby owner n.s. .
by owner, joint FG: in accordance
by ownerall GPTY in accordance
all GPTY in accordance
BIZ (after acquisition of rights)
n.s.
BIZ owner PRO and BIZ jointly PRO and BIZ jointly owner owner owner n.s. owner owner owner owner n.s. n.s.
-- owner -- -- in accordanceapplicant to be
appointedapplicant to be
appointed -- owner (9)
jointly, or the applicant is to be
appointed
in the name of all owners
n.s. --
BIZby owner;
joint FG: pro rata or in equal shares
BIZ BIZjoint FG: GPTY in
accordanceby owner;
joint FG: pro rata by owner n.s. by owner n.s.
by owner;joint FG: pro rata
by owner; joint FG: in equal shares or pro rata
n.s. (30) n.s.
BIZ n.s. BIZ n.s.joint FG: GPTY in
accordanceby owner;
joint FG: pro rata by owner n.s.
by owner;joint FG: as well
seperaten.s.
by owner;joint FG: pro rata
by owner; joint FG: in equal shares or pro rata
n.s. n.s.
in accordance with BIZ
yes(2 weeks)
yes(3 weeks)
yes(3 weeks)
yes(1 month)
yes(4 weeks)
yes (2 weeks)
no noyes
(frei zu def.)yes
(1 month)yes
(2 months)yes
(30 days)n.s. (31)
yes yes yes yes yes yes yes yes yes yes (32) yes (32) yes (32) yes yes
no yes yes yes yes yes yes no yes yes yes n.s. yes yes
yes yes yes no yes yes (34) yes no no yes (34) yes (34) yes (34) yes yes
- Research Plan - Development Proposal - PRO's Background - IPRs of Thrid Parties - Declaration of Accession (2x)
- Research Proposal- Work- and Time Schedule- Financial Plan
- Project Description including Field of Application
- Project Description including Field of Application
- Project Proposal- Grant Agreement
- Contact List - Service Packages - List of Background - List of Project Partners - Financial Plan
- Description of the Research Project- Work-, Time- and Financial Schedule- Grant Agreement- Background- Core Licence Agreement- Declaration of Complience of Project partners
- Proposal - Background
- Background
- Project Description- Background- Confidential Informations
- List of Affiliates- Budget Plan
- Members of the Board
- List of Third Parties which may obtain confidential Info
- Sample Contract for Joint FG
- Project Description- Members of the
Board- Background
- Financial Plan- List of Affiliates
- Project Description - Project description - Field of application
- Budget
- the Task - Budget
9 6 7 3 7 29 (kommentiert) 15 5 5 25 13 7 12 9
2 (35) 2+ 2 2 2+ 2+ 2+ 2 2 2+ 2+ 2+ 2 2
joint FG: yes;R&T:infinite
GPTY: in accordancen.GPTY: non-excl.,
no right to sublicence, non-
assignable, for the use of one's own FG
(14)
Research (Var.:for the use of one's own FG):
non-excl., non-assignable
joint FG: acc. to contract of joint
ownership
non-excl., no right to sublicence, non-
assignable, (limited to the field of application when needed for the use of one's own FG)
Research: non-excl., non-assignable
non-excl., subliz, non-assignable,
irrevocable (15)
first right of refusal for all partners when an exclusive licence is
grantedjoint FG: no right to
sublicence, non-assignable (14)
Unlimited when joint owner (14)
1. B
AC
KG
RO
UN
D
1.1 Use of Background for Execution of the Project
1.2 Use of Background for commercial Exploitation of Foreground generated
2.1 Provisions concerning Joint Foreground
2.2 Limitation of the Definition of Foreground (synonym used)
2.3 Definition of the Field of Application for the Use and Assignment of Foreground
2.4 Ownership / Assignent according to the Contract
2.5 Commercial Use by BIZ
2.6 Use by PRO
2.7 Option for Assignment
2.8 Extraordinary Assignment when …
2.9 Exploitation with third Parties
2.10 Use of Copyrights
3.1 License fee for Use of BG
3.2 Lizenz/Royalty for Use of FG
3.3 Fee for Assignment of FG
3.4 Compensation for Exploitation with third Parties
3.5 Compensation for Inventors
4.1 Specification of IPR-phrasing
4.2 Applicant
4.3. Applicant Joint FG
5.1 Filing of IPRs
5.2 Defense of IPRs
6.1 Publication(time limit)6.2 Geheimhaltung6.3 Limitation of Liability and Warranty6.4 Termination
6.5 Annexes (italic = model incluced)
6.6 Pages (without Annexes)6.7 Number of partners
6. M
ISC
ELL
AN
EO
US
1. B
AC
KG
RO
UN
D4.
IP
R P
RO
TE
CT
ION
5. I
PR
CO
ST
3. I
PR
CO
MP
EN
SA
TIO
N2.
FO
RE
GR
OU
ND
DK. 3 DK. 4 SE. 1 SE. 2 IT. 1 IT. 2 IT. 3 IT. 4
Lunds University
VINNOVA Swedish
Governmental Agency for Innovation Systems
Confindustria Confederation of Italian Industries
University of Milanoeter Comitee
Re
sear
ch
Ag
reem
ent -
b i
late
ral
Re
sear
ch
Ag
reem
ent -
m
u lt il
ate r
a l
Co
mm
iss i
one
d R
ese
arch
Co
nsor
tium
A
gre
emen
t
Re
sear
ch
Ag
reem
ent
Co
mm
iss i
one
d R
ese
arch
Co
mm
iss i
one
d R
ese
arch
C
ons
ultin
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Co
mm
iss i
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d R
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arch
free of charge, non-assignable
free of charge, non-assignable
n.s. free of charge n.s. n.s. n.s. n.s.
n.s. n.s. n.s. yes, neg. (1) n.s. n.s. n.s. n.s.
yes yes no yesno
Var.: yesno no no
Foreground: no limitation
Foreground: no limitation
Results: no limitationResults: Information which is protectable
n.s. n.s. n.s. n.s.
yes (acc. to annex)
yes (acc. to annex)
n.s. n.s. n.s. n.s. n.s. n.s.
GPTY; if several GPTY in equal shares
or pro rata (12)
GPTY; if several GPTY in equal shares
or pro rata (12)GPTY
GPTY; if several GPTY in equal shares
or pro rata (12)
PROVar: joint ownership
BIZ BIZ BIZ
PRO FG: non-excl.; or excl.licence
Var.: first right of refusal
joint FG: in accordance with PRO
PRO FG: non-excl.; or excl.licence
Var.: first right of refusal
joint FG: in accordance with PRO
no right to sublicence, non-
assignable., unlimitedn.s.
implicit: unlimited (ownership at BIZ)
implicit: unlimited (ownership at BIZ)
implicit: unlimited (ownership at BIZ)
yes, at non disciminating cond.
joint FG: approval by BIZ
R&T: yes
yes, at non disciminating cond.
joint FG: approval by BIZ
R&T: yes
yes, at non discriminating cond.
(60days) R&T: yes
implicit: unlimited (ownership at PRO)
free of charge, restricted use only
free of charge, restricted use only
free of charge, restricted use only
PRO FG: yes;Var.: first right of
refusal
PRO FG: yes;Var.: first right of
refusal (16)
BIZ has first right of refusal (60 days)
with joint FG: unanimous
n.s. n.s. n.s. n.s.
n.s.
Var: when no application for IPR is
effectuated after assignment
n.s.dissolution of joint
FG: unanimous or in an internal auction
n.s. n.s. n.s. n.s.
PRO with PRO FG: yes, if BIZ not
interested
PRO with PRO FG: yes, if BIZ not
interestedyes joint FG: unanimous n.s. n.s. n.s. n.s.
Copyright: free of charge, non-excl.; Softw.: non-excl.,
chargeable
Copyright: free of charge, non-excl.; Softw.: non-excl.,
chargeable
free of charge, no right to sublicence,
non-assignablen.s. n.s. n.s. n.s. n.s.
n.s. n.s. n.s.fair and reasonable
conditionsVar.: counter licence
n.s. n.s. n.s. n.s.
BIZ: chargabele according to financial
plan
BIZ: chargabele according to financial
planfree of charge n.s. n.s. n.s. (27) n.s. (27) n.s.
BIZ: chargabele according to financial
plan
BIZ: chargabele according to financial
plan
fair and reasonable conditions
n.s. -- n.s. n.s. n.s.
-- -- n.s. n.s. -- -- -- --
n.s. n.s. n.s. n.s. n.s. n.s. n.s. n.s.
BIZ (after acquisition of rights)
BIZ (after acquisition of rights)
n.s.joint FG: by owner, who initiates IPR
protection
joint FG: acc. to seperate contract
BIZ BIZ BIZ
n.s. n.s. n.s. n.s. n.s. BIZ BIZ BIZ
n.s. n.s. -- owner, who initiates
IPR protection -- -- -- --
n.s. (30) n.s. (30) n.s. joint FG: pro rata n.s. BIZ BIZ BIZ
n.s. n.s. n.s. joint FG: pro rata n.s. BIZ BIZ BIZ
yes(30 days)
yes(30 days)
yes(30 days)
yes(30 Arbeitsdays)
n.s.in accordance with
BIZin accordance with
BIZin accordance with
BIZ
yes yes yes yes yes (32) yes (32) yes (32) yes (32)
yes yes yes yes no no no no
yes yes yes yes yes yes yes yes
- Project description - Field of application
- Budget
- Project description - Field of application
- Budget
- Research programm
- Communication strategy
11 16 6 23 4 6 5 5
2 >2 2 >2 2 2 2 2
joint FG: unanimous
Abbreviations:
BG Background Technology
FG Foreground Technology
PRO Publicly Funded Research Organisation
BIZ Business Partner
GPTY FG generating Party
R&T Research and Teaching
IPR Intellectual Property Right
Footnotes:
(1) Granting of access rights to BG is subject to a written request
(2) BG may be used outside the scope of the project; certain BG (IPRs etc.) may be excluded
(3) Termination possible, if BG is not available for commercialisation
(4) Except scientific methodology
(5) Variation, if IPR application is not desired by BIZ
(6) Assignment of ownership with signature of the contract
(7) No assignment of rights if BIZ does not fulfil his financial obligations
(8) Variant: allocation of FG depending on the field of application; in this case a financial compensatio to the other GPTY is due to be paid
(9) Joint FG is subject to a seperate contract
(10) Special provisions for the use of further developed FG
(11) Pro rata shall include intellectual, material, financial and human contributions
(12) Pro rata shall include intellectual contributions
(13) Exclusive licence or assignent at non discriminatory conditions
(14) PRO may use FG for reseach and teaching (free of charge, non-excl., non assignable)
(15) Prohibition of parallel research
(16) The partner, who's field of application is closest to FG may obtain exclusive rights
(17) After the end of the negotion period for an exclusive licence, the PRO may use FG in research with thrid parties
(18) Research with third paries within the field of application of the BIZ only after written approval by BIZ
(19) Use and assignment of rights are subject keeping all obligations
(20) Variant: use of joint FG without consent of all GPTY
(21) Variant: special provisions if one GPTY does not wish to participate
(22) Additional module for software
(23) Notice that the contract has to be extended with provisions concerning copyrights for use of development of software
(24) Special provisions for financial contributions if FG becomes a "bestseller"
(25) Compensation for inventions of 2500,- EUR per invention, including special provisions for "bestsellers"
(26) Reasonable compensation for inventions related to the commercial value of the invention
(27) Compensation for inventions of 10% or 5% of the project budget; percentile if the invention becomes commercially sucessful
(28) Special provisions for foreign IPR applications
(29) BIZ may demand applicatio for IPR during the negotion period of 3 or 6 month, even after the termination of the project
(30) PRO has to provide BIZ with support for IPR applications at an hourly rate
(31) Financial compensation for the publication of the PRO final report
(32) Provisions for handling of personal data
(33) Limitation of liability towards the European Commission
(34) Prohibition of poaching
(35) Project manager is a contractual partner, who has to sign the reseach agreement. All co-workers have to sign a declaration of accession
TEO DRAFT 40
For simplicity of the review certain integral components of a contract, e.g. non
disclosure agreement, termination clause, definition and assignment of liability and
warranty, are omitted. Usually these are agreed on a mutual basis and, therefore, are
not well known to become show stoppers.
CONCLUSION
There is already a wealth of information and assistance available to PROs and
businesses on this issue. Encouraging the regular updating of existing materials and
their wider dissemination among the research communities will be the key to
maximizing the use of the resources which already exist.
OUTLOOK
The present review provides an overview about major activities facilitating the
collaboration of PROs and businesses in Europe. In the next step a discussion with
focus on the evaluation of the initiatives is done, so that recommendations assist the
future development of initiatives.
TEO DRAFT 41
Part II
ABSTRACT
With an overview about various initiatives in Europe aiming to facilitate the
negotiation and the contracting between PROs and businesses by implementation of
supranational and development of national codes as well as model contracts a sound
basis is created for a discussion of lessons learned in order to derive
recommendations. It is proposed to follow a step by step procedure enabling
advantages even if not all steps can be taken.
Zusammenfassung
Im Zuge der Übersicht zu den verschiedenen Initiativen in Europa zur
Erleichterung der Verhandlung und der Abschlüsse von Verträgen zwischen
öffentlich finanzierten Forschungseinrichtungen und Unternehmen durch
supranationale und Entwicklung nationaler Leitlinien sowie Vertragsmuster wurde
eine Basis geschaffen für die Diskussion der Schlussfolgerungen und der daraus
abgeleiteten Empfehlungen.
DISCUSSION
Seven steps for facilitation of collaboration
Mid- and longterm collaboration is based on win-win relationships. Achieving win-
win situations is a challenge that can be facilitated. In the following seven steps are
proposed as support measures. All of them require a corresponding kick-off but also
an ongoing support for sustainable implementation as continuously new people enter
the scene and general conditions change over time. Each of them is intended to
improve the efficiency and affectivity of negotiations between potential partners in the
one or the other way.
Clarifying the positions
PROs and companies do have different cultures, goals, motivations and
incentives. Both are working in quite different environments and even the legal
obligations are partly different. For the sake of win-win oriented negotiations it is of
TEO DRAFT 42
advantage to exchange those so that the legitimate interest of the other party is well
understood70.
Principles and basic rule for IPs
Principles and basic rules of how Background and Foreground, that is connected
in any form with the different forms of collaboration with businesses, will be
managed, needs to be developed first. Usually this also involves a clear definition of
the different forms of collaboration, rules for IPs generated but also points to the
difference between additional costs, overheads and full costs.
If these principles and rules are already based on a broader agreement or at
least on discussion between PROs and businesses this can act already as a kind of
term sheet for the set up of contracts. Even if there would be no resources for follow
up resulting in further tools like model contracts those principles and rules could be of
great help on its own.
Best practice on this level would also include rules for avoiding conflict of
interests of involved players71.
Checklists
The definition of a long list of questions that arise during the arrangement of a
collaboration is straight forward in the sense that main questions are mostly constant.
Although the answers to those questions might differ quite significantly on a case by
case basis a checklist is usually a good practice for moderating the process of a
collaboration from its very first beginning till its end.
Model Contracts
In practice hardly any expert starts from scratch if a contract is set up.
Frequently, former contracts already closed with a good fit to the present term sheet
negotiated are adapted to the present case. Therefore, a model contract is of
particular help for all those that do not have well drafted contracts in the drawer. This
70An example how this can be summarized for communication in practice can be found in the manual with model contracts of the BMWi Federal Ministry of Economics and Technology on page 8-9, www.bmwi.de/BMWi/Navigation/Service/publikationen,did=342954.html. 71University-industry relationships: benefits and risks, Joe Sandelin, Industry & Higher Education, 24 (2010) 55-62.
TEO DRAFT 43
is particularly the case for SMEs and PROs without critical mass of expertise in their
respective support units.
For the experts involved in setting up model contracts it is particularly rewarding
to discuss those between PROs and businesses. The discussion creates a better
understanding of the other party and, therefore, has an end in itself even if the
contracts developed might not be used that frequent as intended.
Including informative comments and options by proposing exchangeable
modules will increase the flexibility and, therefore, broaden the range of use of the
model contracts. Furthermore, in annexes proposals might be made e.g. for valuation
methods72, procedures facilitating the settlement of disputes by mediation and
arbitration73 etc. If all is included the length of the model contract will be increased. In
practice there are a lot of collaborations which are neither long term or of high
volume, nor is there an outlook for exiting IP generated Therefore, practice requires
also a pragmatic short cut for coming to an agreed contract.
Decision guide
The selection of the right model contract and also the identification of the proper
modules can be simplified by a decision guide. In particular for the less experienced
this facilitates to navigate through the provided material.
Training and education
The better the negotiating partners are informed about the use of the provided
material and the options to tailor what each party obtains as a reward for its
contributions and achievements the easier it becomes to accomplish win-win
agreements. Also case study based trainings on how to negotiate are a useful
complementation.
72The Berliner Contracts included a first proposal for valuation methods. 73Delayed decisions due to a lack of agreement might cause severe problem for IPR exploitation. In case of defining a fair royalty e.g. the decision might be outsourced to external and independent experts if negotiations failed within in a defined short time period.
TEO DRAFT 44
Active exchange of experiences
For professionalization it is important to obtain access to examples of best
practice but also to lessons learned. Organizations like AUTM, and LES provide
international platforms for an exchange of experience between PROs and
businesses. European organizations like ASTP and Proton are focused on exchange
between technology transfer managers. National organizations of PROs or
businesses are more suitable for discussion of the national characteristics but usually
also lack an exchange between PROs and businesses. Working groups with
members coming from PROs and businesses for discussing particular challenges74
are therefore a further option.
Cross border collaboration is significantly in progress and, therefore, awareness
about national differences, associated challenges and suitable remedies will be
required more and more. EC and WIPO have several activities for improving the
exchange and also for harmonization. A rather new development is the set-up of
national contact points (NCP) in each member state according the recommendations
of the EC. As each NCP will report about the national situation and future initiatives
this could result in a further development.
A more innovative approach could also be to use Web 2.0 options in order to
induce a discussion between the users and to obtain feedback as well as
improvements to services provided as a web service for facilitating PRO-business
collaboration.
74In Austria e.g. the patent law defines that the inventors should become an adequate compensation. This compensation has to be in relation to the value of the technology. As there are different rules in neighboring Switzerland and Germany this results in misunderstandings in cross border collaborations. The set-up of working group with members from PROs and businesses was therefore discussed.
TEO DRAFT 45
Part III
Definitions
Publicly-Funded Research Organization (PRO)75: Any institution (universities or in
general all higher education institutions, Research and Technology Organizations
and others) that carries out R&D for broader application and benefit, to a significant
extent using public funding.
Background76: Information which is held by beneficiaries prior to their accession to
this agreement, as well as copyrights or other intellectual property rights pertaining to
such information, the application for which has been filed before their accession to
this agreement,and which is needed for carrying out the project or for using
foreground.
Collaborative Research64: Several parties are engaged in research towards shared
objectives, collectively building on their individual background and sideground in the
creation of new foreground knowledge.
Contract Research64: One or more parties perform a task for another at an agreed
price and on contract. Contract Research tends to be shorter-term in nature, and be
driven by different dynamics than Collaborative Research, and requires specific types
of agreement that reflect the straightforward nature of the business deal. The term
“Contract Research” is formally defined in the European State aid rules.
Foreground65: Results, including information, whether or not they can be protected,
which are generated under the project. Such results include rights related to
copyright; design rights; patent rights; plant variety rights; or similar forms of
protection.
Synonymous use in the contracts reviewed: UK - Intellectual property, DE.1-4 –
Foreground is separated in Know-How, Ergebnisse and Neurechte, DE.8, AT.4 –
Forschungsergebnisse, AT.8 – Arbeitsergebnisse, FR.1-2 - Connaissances
Nouvelles, FR.3 – Résultats issus du Projet, SE.1-2 – Results.
75www.responsible-partnering.org 76cordis.europa.eu/fp7/calls-grant-agreement_en.html#ideas_ga - Annex II