Author(s):
Yuriy Kapitsa
Doctor of Law, Director of the Centre for Intellectual Property Studies and Technology Transfer of the National Academy of Sciences of Ukraine
ORCID ID: 0000-0002-9449-8422
Karyna Shakhbazian
PhD in Law, academic secretary of the Centre for Intellectual Property Studies and Technology Transfer of the National Academy of Sciences of Ukraine
ORCID ID: 0000-0002-2205-374X
Dmytro Makhnovskyi
Senior fellow at the Centre for Intellectual Property Studies and Technology Transfer of the National Academy of Sciences of Ukraine
Reviewers:
O.F. Doroshenko, PhD in Law
Scientific-research Institute of Intellectual Property of National Academy of Law Science of Ukraine
Ye.A. Bulat, Doctor of Law, prof.
Oles Honchar Dnipro National University
V.P. Soloviov, Doctor of Economics, prof.
G.M. Dobrov Institute for Scientific and Technological Potential and Science History Studies of the NAS Of Ukraine
Intellectual Property Rights in Research Agreements of Academic Institutions / Gen. Editor Yuriy Kapitsa; Yuriy Kapitsa, Karyna Shakhbazian, Dmytro Mahnovskyi. Kyiv: Akademperiodyka, 2024. 460 p.
The monograph presents the analyses of the problems of regulating the creation, protection, use of intellectual property objects, the distribution of IP in research and development contracts and research collaboration agreements between the research organisations and national and foreign companies and academic institutions, government agencies, national and international funds. An analysis of the legislation and practice of IP regulation in R&D agreements in the European Union, EU Member States, Great Britain, the USA, Ukraine and other countries is presented. Proposals for the approximation of legislative regulation and the practice of concluding R&D agreements in Ukraine and providing the regulation of IP in R&D agreements to the practice of the European Union are substantiated. The publication is intended for researchers, management staff of research organisations, universities, specialists of technology transfer and intellectual property departments, specialists of government institutions who deal with IP protection and research and developments.
CONCLUSION
The monograph is the first complex comparative study of the regulation of intellectual property rights in R&D agreements in the EU, EU Member States, Ukraine, the USA and Newly Independent Countries, WIPO and other international organizations. The publication examines: legal acts; recommendations, model contracts of government agencies, funds, international organizations; IP policies and model R&D agreements of leading universities and scientific institutions in the EU and the USA; the practice of concluding R&D agreements by scientific institutions and universities, state agencies, funds.
The monograph examines:
- regulation of IP protection, allocation and use in R&D agreements between the scientific institutions, universities and companies;
- IP in R&D agreements financed by the government agencies, funds. IP in R&D agreements jointly financed by government agencies, funds and companies;
- allocation and use of IP rights to inventions and other IP jointly created by the parties of R&D agreement;
- issues of confidentiality and the use of confidential information under R&D agreements;
- peculiarities of IP protection, allocation and use in R&D agreements between scientific institutions and universities with foreign companies;
- open access of R&D results. The settlement of open access issues in R&D agreements;
- peculiarities of creation and use of IP by the visiting scholars.
The issue which was the central part in practice of R&D agreements concluding – to find a balance between the interests of academic institutions in using IP for further research and educational purposes; receiving fair remuniration for the use of IP and, on the other hand, the interests of companies in the use of IP for the production of goods, provision of services.
It is shown, that the development of model R&D agreements in the United States is carried out mainly at the university level. In the EU it is significant the role of the European Commission, national government bodies in the development of the agreements. An analysis of the practice of concluding IP agreements indicates the following principles of the IP regime in the R&D:
- allocation of Background IP created before the signing of the agreement. Determination of the conditions for the use of Background IP by other parties of the agreement during research, as well as after the end of the agreement. Granting as a rule of non- exclusive license for use of Background IP;
- allocation of New IP created in the framework of R&D. Determination that the rights to IP belong to the academic institution. The use of the IP by the company is possible under the terms of a license agreement or transfer of rights agreement. In addition to the payment of the cost of carrying out research under the R&D agreement — the company pays license payments for Background IP and New IP. Also, in the case of transfer of rights — the company separately pays remuneration for the transfer of rights to each of the IP;
- determining that, if the license payments or payments for the transfer of rights are less than the company’s benefits from their use, the academic institution and the company should conclude an addendum to the agreement regarding changes in the terms of payments and increases in royalty rates;
- the provision that upon granting of exclusive licenses or transfer of rights for the New IP — the academic institution reserves the rights to use the New IP for the purpose of conducting research and educational activities;
- possibility of restitution of IP property rights to academic institution if the company does not commercialize the granted IP.
We note the differences in the regulation of IP in R&D agreements by the US universities and universities and scientific institutions in the EU Member States. In the US, when conducting research under an agreement with a company, the university acquires the right to a New IP. The company can be granted a license to use IP only if the negotiations between the parties regarding the granting of the license are successful.
In the EU the practice is widespread when the university, scientific organization is obliged to grant license or to transfer the New IP to the company. The parties are guided by the practice in the relevant industry in the country regarding royalty rates and lump sum payments.
As part of the study, a package of recommendations, model agreements, and clauses was developed for scientific institutions in Ukraine regarding the regulation of intellectual property rights in R&D agreements, which reflects the practice of the EU and EU Member States.
These recommendations and agreements took into account the experience of concluding R&D contracts in the Horizon 2020 and Horizon Europe Research and Innovation Framework Programs, Lambert contracts in Great Britain, model contracts developed by ministries and government agencies in Germany, Ireland, Austria, other EU Member States, agreements concluded by universities and scientific institutions in the USA, the EU, as well as taking into account the Commission Recommendation on the management of intellectual property in knowledge transfer activities and the Code of Practice for universities and other public research organizations, 2008.
The model contracts and recommendations were approved by the National Academy of Sciences of Ukraine for the use in scientific institutions of the NAS of Ukraine in 2023, which is the first example in the Newly Independent States of using the principles of the 2008 European Commission Recommendation, the experience of concluding Lambert agreements and similar model contracts in EU Member States (web-site of the NAS of Ukraine: https://ipr.nas.gov.ua/?page_id=2500).
Intellectual property rights in research and development contracts of scientific institutions. Gen. editor Yu.M. Kapitsy, authors Yu.M. Kapitsa, K.S. Shahbazyan, D.S. Makhnovsky. Kyiv: Akademperiodika, 2024. 460 p. (E-Book-Prava_int_vlasnosti)
© Center for Research on Intellectual Property and Technology Transfer of the National Academy of Sciences of Ukraine, 2024
© Akademperiodika, design, 2024
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