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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

TEO DRAFT 33

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

ISC

ELL

AN

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US

1. B

AC

KG

RO

UN

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IP

R P

RO

TE

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5. I

PR

CO

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3. I

PR

CO

MP

EN

SA

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N

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

ELL

AN

EO

US

1. B

AC

KG

RO

UN

D4.

IP

R P

RO

TE

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ION

5. I

PR

CO

ST

3. I

PR

CO

MP

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

g

Co

mm

iss i

one

d R

ese

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