IP rights at the University-who owns what? part I

1. Different scenaries.

Depending on a country´s particular legislation, the regulation and therefore the situation in respect of research staff’s rights of ownership of Intellectual Property in Universities and Public Centres of Investigation may vary substantially.

So, although particular details can vary greatly, we can distinguish between two main groups: the countries that regulate the so-called “professor privilege” where the teacher/researcher has ownership rights to the results of his research, and those countries where these rights either belong to the University/Public Research Centre where the research is carried out, or are assigned by law to said University or Public Research Centre.

Among the first group of countries we find Finland, Italy or Sweden, and in the second group there are countries such as the United States, whose regulation deserve a separate mention, and most of the European countries included in the OECD study 2003[1] (for example, Germany, Austria, Belgium, Denmark, Spain, France, Holland, Ireland, Norway, Poland and the United Kingdom).

1.1. The United States and the Bayh-Dole Act

Previous to this Act, there was no government policy in the United States relating to the ownership of inventions made by contractors and beneficiaries of governmental subsidies/grants. In the majority of cases, the Government kept the ownership rights and granted non-exclusive licences to those interested in exploiting them.  With this approach the Government failed to attract private industry’s interest to license the government-owned inventions.

Under the Bayh-Dole Act Universities decide who to assign the ownership of inventions resulting from publicly funded research, being directly involved in the commercialization process of these inventions. In this way, Universities can begin immediately to develop and strengthen the internal skills necessary to patent and license the inventions created by their research staff. As a result, institutions that had not been very active in this area start creating new technology transfer offices.

1.2. Other examples

– Spain: The Sustainable Economy Act and the Science Act

In respect of Science and innovation, these regulations establish that Public Universities and Public Research Centres are the owners of the results obtained by their researchers as a result of the fulfilment of their research-related obligations. These Universities and Public Research Centres also have the right to protect these results.

-France and its Decree No. 2009/645 on the management between public entities on the industrial property results from research conducted by public officials or public employees.

Intellectual Property’s general regulation in France is set forth in the Intellectual Property Code by virtue of which, in cases of joint ownership, the joint owners must designate, by common agreement, a joint representative to represent them before the National Institute of Industrial Property (INPI, standing for Institut national de la propriété industrielle in French).  However, in respect of joint research units, said Decree 2009/645 states that the ‘host’ organisation will manage the results and exploitation of the industrial property generated.

2. Legal status of researchers

Different situations exist in respect of legal regulations applicable to researchers, depending on whether they are public employees, University teachers, employees, or it is a case of contracts established between the university/Public Research Centre and Foundations or private companies.

Depending on the type of relationship between the researcher and the University/Public Research Centre, one or another regulation will determine what happens with the intellectual property of research results generated within the relationship.   Depending on the particular country, these rules can be included in specific laws related to science and innovation generated in public bodies, labour laws, patent laws, etc.

However, it is advisable for Universities and Public Research Centres to set out clear policies on intellectual property generated by their staff (meaning staff in its widest sense) and also that the agreements entered into with said staff and the University expressly contain the regulation of intellectual property rights arising from such relationships.

In addition, Universities/Public Research Centres often promote co-operation or collaboration agreements with Foundations and/or private companies. A contract is usually concluded between the university and the particular Foundation or private company, where aspects relating to the intellectual property generated are regulated.

3. Different sources of research and implications for Intellectual Property rights.

3.1. University-funded

As commented previously, the rules on ownership of research results produced by Universities and Public Research Centres will depend on the country. There are countries where the “professor-privilege” is still applied and other countries where legislation establishes that these results are owned, in any event, by the University/Public Research Centres concerned.

3.2. Funded by Foundations or private companies

The research may be funded entirely by Foundations or private companies and results will belong to the Foundation or private company, granting some type of licence in favour of the University/Public Research Centre, or establishing joint ownership of the invention vis a vis.

The research may even be carried out in the University or Public Research Centre with partial funding by a Foundation or private company, sometimes establishing a joint venture or similar model with respect to the results obtained.

3.3. Source of leadership and/or funding

The usual practice is that the organisation who ‘leads’ (i.e. funds) the research is the owner of the results, although this is not always the case.

It will also depend on the contribution being made: there will be cases of joint ownership orownership assigned to the University/Public Research Centre with the licence being granted to the company who funded the research. There will even be cases of ownership granted to the University/Public Research Centre but sharing royalties from exploitation of the invention with the body that funded the research, by means of licences.

3.4. What if previous areas of research are assigned to new research employment at the University? May these areas be excluded from the conditions concerning “standard” Intellectual Property?

The answer, as is always the case with legal questions, is that it depends. Thus, we will need to consider the body that provides the research, where such research has been generated and with what means, in order to determine whether there is any kind of ownership over what was contributed and, likewise, must consider how the ‘new university/Public Research Centre’ is going to be involved in future research, and to what extent, so as to determine its role in the ownership of future research.

In any event, to avoid future problems in such cases, it is good practice to sign a contract clearly defining the contributions, the involvement of ‘previous’ institutions/universities, researchers or companies and the ‘new university’, also regulating the assignment of intellectual property rights to research results.