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

except perhaps those results which are specific to confidential information provided by the
industry partner and which are covered by confidentiality.
• To allocate ownership of the jointly generated IPRs to the extent possible according to
predefined criteria corresponding to their nature. The most common criteria are to location
where the research was conducted or the field of application.
• To agree that, for the joint IPRs not meeting such criteria, the joint property is divided and
each party is free to use them non-exclusively, including the right to grant non-exclusive
licences;
• To include arrangements about which party will have responsibility for pursuing
infringers.
Access rights to PRO background technology
The existence of background technology is often the most important consideration for an industrial
partner in selecting a particular PRO for collaborative research. The partner needs access to the
background technology of the PRO to the extent required to make commercial use of the results. Such
background IPR must be identified, including patents, copyright and more generic information such as
Know-How, materials and animal models. It should also be noted that the PRO can rarely grant
exclusive licenses to such background IPR, unless perhaps in narrowly defined fields of use.
There is a balance of interests to be achieved: the access right is equivalent to a commitment not to sue
the Partner for unauthorised use of the background IP in the process of using the foreground IP.
However, when the background IPR of the PRO has commercial value and/or is protected by patents,
financial compensation for the opportunity loss of not being able to grant exclusive licenses to other
parties may be justified and should be negotiated explicitly in the research agreement before
commencing the research.
Patent prosecution, maintenance and enforcement of patent rights
Whoever owns the IPRs, the agreement should provide that IP generated from the collaborative work
should be managed effectively in order to maximise the chances of economic use.
The decision to apply for patent protection should also be covered by detailed procedures.
Historically, PROs did not have sufficient expertise to manage patent applications and this
responsibility was attributed to the industrial partner, under contract research arrangements. Today,
many PROs have developed such capability as an integral part of their IP management responsibility
and are able to take initial steps to protect their registerable IPRs that have potential economic uses.
Ideally, the decision to file a patent application, the scope of protection and the content of the
description should be made by mutual agreement to avoid future problems and ensure maximum
relevance of the application. Contract terms should include at least an obligation to consult and to coordinate
prior to the filing of a patent application. If no agreement can be reached, each party should
remain free to apply for patent protection based on results which its owns or jointly owns, provided
that it does not include confidential information of the other party.
Allocation of user rights
Use rights for research purposes : One of the main functions of PROs is research. It is
therefore essential for PROs to apply all the knowledge generated from collaborative research
to further its research objectives without worrying about the origin of the funding.
Furthermore, as explained below, the scientific interest of certain collaborative work with industry is
one of the main motivations of PROs in entering into research agreements.
35