Expert Group Report Management of Intellectual Property in ... - KoWi

2.2. Ownership of Research Results, including Inventions
While there is a wide divergence of statutory legal regimes governing ownership of inventions across
Europe, we can see several trends and practices as follows. The ownership of the results from public
funded research is governed by three different types of regimes, namely 1) employment and IP related
legislation, 2) Government Research regulations, which of course vary from country to country and 3)
contractual arrangements with industrial sponsors.
Ownership under employment and IP-related regulations.
IP - related legislation in Europe generally identifies three types of invention. Firstly, we see service
inventions, when the act to invent is a function covered under the employment agreement. Secondly,
we see free inventions, which are made independently of the employment arrangements by relying in
no way on the resources or expertise of employment. Thirdly, we see in some countries the concept of
dependent inventions for inventions made outside the scope of the employment agreement but making
use of information, materials or equipment owned by the employer.
From a review of European territories it can be observed that all countries assign the service
inventions to the employer, although the definitions of service inventions vary to some extent from
country to country. Several countries include the right to a fair compensation to the employee
inventor. This model is predicated on the needs of industrial companies that invest in research and
development as one of their main sources of competitiveness.
When this ownership regime is translated to PRO-based research, the general principle is not easily
applicable for several reasons:
- In certain European countries, many researchers are not actually on the “payroll” of the
university, but are sponsored directly by government grants, while the general infrastructure
where the research is conducted belongs to the university;
- Students are often involved in research activities but are neither employed nor actually
compensated. Sometimes national law describes their work as falling under the category of
dependent inventions;
- In PROs, the researchers are compensated for doing research and making discoveries. Most
researchers would claim that they are actually not compensated for making inventions, which
is going one step further, namely conceiving useful applications of their discoveries and
reducing them to practice. They do not feel obliged to manage or transfer inventions and
consider that they are generally free to publish in the public domain without much control.
- Professor’s privilege exists in several territories and this means that ownership of results and
inventions lies with the research team, not with the PRO employing them.
In the “open science model” the results from the research are quickly published and enter the public
domain. The issue of ownership is resolved at that point since nobody “owns” those results anymore.
If, on the contrary, it is intended to protect the results and the inventions as trade secrets or patent
applications for further development, the issue of establishing ownership becomes critical. No party
will invest significant funds to develop an invention where ownership is questionable.
In practice, there must be at one stage a single party concentrating the ownership rights (or at least first
option) in order to be in a position to exploit the inventions i.e. to grant licences or to assign ownership
for exploitation purposes. The most logical route is to concentrate those rights by vesting first
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