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

directly practice the invention in their product or processes without the consent of any of the joint
owners, subject only, in some countries, to a fair compensation of the other owners, including PROs.
By contrast, in the USA, the joint ownership is divided and each joint owner is free to grant nonexclusive
licenses on joint inventions to anybody, without accounting to the other parties. Only the
granting of exclusive licenses requires the consent of all joint owners. The most diligent party is likely
to exploit the benefits. No party can prevent non-exclusive exploitation of joint ownership by other
parties, even by PROs.
On the face of it, while European statutes may seem more fair to the joint owners, in reality, they make
the management of intellectual assets much more difficult for European PROs, which may be faced
with impossible bargaining position in trying to license out some of their IPRs.
In theory, all European statutes have enough flexibility to allow these provisions to be changed by
mutual consent of the parties. In practice, these provisions are very difficult to negotiate, even among
PRO partners, as was clearly illustrated by the adverse experience in consortium agreements within
the 5 th Framework Program.
There is no simple solution. The Group proposes the following guidelines:
(1) the exclusive use by one of the joint owner requires the consent of all parties and should be
compensated by royalties or other forms of compensation;
(2) each joint owner should be allowed to use directly or indirectly the joint IPR, including the
right to grant non-exclusive licences, provided that first options for exclusivity to the
industrial co-owners have been honoured;
(3) in the event one of the joint owners obtains significant benefits from the use of the nonexclusive
IPRs, the other parties should receive an equitable share of such benefits.
This approach is the one most commonly proposed as the basic position in consortium agreements in
EC framework programmes (FP). It is very close the provisions of French IP law. The first point is
obvious: it is not appropriate to grant one party exclusive rights without compensation. The second
point prevents any party from preventing the grant of licenses, as would be the case for instance under
Belgium law applicable to EC FP contracts. The third point is a compensation for the fact that certain
joint owners, especially PROs, may not be in a favourable position to exploit the joint inventions.
2.4. Education : Introducing a Culture of Awareness of IPR
If management of research results is to be introduced by implementing the Innovation model alongside
the Open Science model, it is essential that there is understanding and acceptance of this mission by
the research community. PROs should therefore encourage the distribution of information about IPR
and support workshops where interested researchers can find out about what is involved in the
technology transfer process. Such meetings can also encourage the exchange of case studies and
experiences by other researchers. It is likely that researchers will be keen to support this if they can see
that it promotes the development of their research fields.
It is essential that realistic expectations about the aims and success criteria around technology transfer
are created as the TO works alongside the inventors. It is important that appropriate incentives are
available for the scientists to reward the additional effort they may be required to provide in addition
to their teaching and research duties. It is also vital that their academic reputations are enhanced by
the traditional publishing activities.
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