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

The following section highlights the key issues where negotiation and agreement need to be reached in
order to distinguish between traditional contract research and more collaborative links, which will
ultimately promote effective implementation of the Innovation Model 23 .
4.3. Practical Guidance Covering Key Aspects of a Research Relationship
The partners in each of the above relationships need to reach agreement if the objectives of both
parties are to be met. These include questions of access to background intellectual property rights as
well as determining ownership of downstream results and user rights.
Define the nature of the relationship to be entered into between industry and academia.
It is essential that all parties to new relationship understand the objectives of the collaboration, and it
will be very important for each party to understand the issues and perspectives of the other(s). In this
way a deal ought to be able to be constructed which best reflect the common aims. Is the collaboration
intended to be sponsored research, collaborative research or contract research?
Ownership of research results and inventions
In most European countries, especially southern Europe, we are still facing the general custom that the
one who sponsors the PRO research frequently owns the results, without due consideration for the use
of the accumulated background technology and for the government funded infrastructure. Since most
of the research performed in PROs is either government or industry sponsored, the PROs end up
owning virtually nothing. Most European countries have now addressed this problem for government
sponsored research by providing either legislation or assigning ownership to the PROs. The challenge
remains for research sponsored in part by industry to be made available to the industrial partners since
their role is to take potentially useful results and convert them into economic and societal benefits.
Where the PRO does not retain any ownership of IP, this is not only counterproductive in terms of
motivation of the academic staff, but also means that effective management of new technology is
becoming almost impossible. Indeed, as the university keeps building upon the results of previous
work, it becomes impossible to keep track of who funded what. There is always the risk that
ownership will be challenged later and this will discourage most potential licensees.
The same issues arise when corporate funding of research is involved. It can sometimes be much
more difficult to convince industry that leaving ownership with the PRO and obtaining license rights
(exclusive or non-exclusive) is an efficient and effective model for all concerned. However, it is now
becoming more understood and accepted by some industrial partners that because the results of a
research project may have wider applications than sought by such partners and because they can serve
as the basis to further licensable developments, then industrial needs can be accommodated by way of
licence rights.
The right to retain ownership by the PRO carries certain obligations:
1. To ensure that their ownership rights are not jeopardised by inadequate IP management.
In particular, when the research involves associates which are not bound to the PRO by
employment agreements, such as students or researchers paid by grants, to ensure that
these associates have assigned their intellectual property rights gained through the
23 For a discussion of some of these issues, see also the report assembled by the Business-Higher Education
Forum: Working Together, Creating Knowledge: The University-Industry Research Collaboration Initiative,
http://www.acenet.edu/bookstore/pdf/working-together.pdf
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