Blog Maître ANTOINE DUCROCQ Avocat d'affaires des sociétés en croissance par l'innovation

Knowledge Sharing

On 9 April 2008 the Commission adopted a Recommendation on the management of Intellectual Property Rights in knowledge transfer activities and a Code of Practice for universities and other public research organisations.

The objective is to facilitate and promote the optimal use of intellectual property created in public research organisations to increase both knowledge transfer to industry and the socio-economic benefits resulting from publicly funded research. The Recommendation will include a Code of Practice to promote the professional management of intellectual property in the European Research Area within research organisations and to become a reference for cooperation and/or negotiation between research organisations and industry.

1. PRINCIPLES FOR AN INTERNAL INTELLECTUAL PROPERTY POLICY

1. Develop an IP policy as part of the long-term strategy and mission of the public research organisation, and publicise it internally and externally, while establishing a single responsible contact point.

2. That policy should provide clear rules for staff and students regarding in particular the disclosure of new ideas with potential commercial interest, the ownership of research results, record keeping, the management of conflicts of interest and engagement with third parties.

3. Promote the identification, exploitation and, where appropriate, protection of intellectual property, in line with the strategy and mission of the public research organisation and with a view to maximising socio-economic benefits. To this end, different strategies may be adopted – possibly differentiated in the respective

scientific/technical areas –, for instance the "public domain" approach or the "open innovation" approach.

4. Provide appropriate incentives to ensure that all relevant staff play an active role in the implementation of the IP policy. Such incentives should not only be of a financial nature but should also promote career progression, by considering intellectual property and knowledge transfer aspects in appraisal procedures, in addition to academic criteria.

5. Consider the creation of coherent portfolios of intellectual property by the public research organisation – e.g. in specific technological areas – and, where appropriate, the setting-up of patent/IP pools including intellectual property of other public research organisations. This could ease exploitation, through critical mass and reduced transaction costs for third parties.

6. Raise awareness and basic skills regarding intellectual property and knowledge transfer through training actions for students as well as research staff, and ensure that the staff responsible for the management of IP/KT have the required skills and receive adequate training.

7. Develop and publicise a publication/dissemination policy promoting the broad dissemination of research and development results (e.g. through open access publication), while accepting possible delay where the protection of intellectual property is envisaged, although this should be kept to a minimum.

2. PRINCIPLES FOR A KNOWLEDGE TRANSFER POLICY

8. In order to promote the use of publicly-funded research results and maximise their socio-economic impact, consider all types of possible exploitation mechanisms (such as licensing or spin-off creation) and all possible exploitation partners (such as spin-offs or existing companies, other public research organisations, investors, or innovation support services or agencies), and select the most appropriate ones.

9. While proactive IP/KT policy may generate additional revenues for the public research organisation, this should not be considered the prime objective.

10. Ensure that the public research organisation has access to or possesses professional knowledge transfer services including legal, financial, commercial as well as intellectual property protection and enforcement advisors, in addition to staff with technical background.

11. Develop and publicise a licensing policy, in order to harmonise practices within the public research organisation and ensure fairness in all deals. In particular, transfers of ownership of intellectual property owned by the public research organisation and the granting of exclusive licences2 should be carefully assessed, especially with respect to non-European third parties. Licences for exploitation purposes should involve adequate compensation, financial or otherwise.

12. Develop and publicise a policy for the creation of spin-offs, allowing and encouraging the public research organisation's staff to engage in the creation of spinoffs where appropriate, and clarifying long-term relations between spin-offs and the public research organisation.

13. Establish clear principles regarding the sharing of financial returns from knowledge transfer revenues between the public research organisation, the department and the inventors.

14. Monitor intellectual property protection and knowledge transfer activities and related achievements, and publicise these regularly. The research results of the public research organisation, any related expertise and intellectual property rights should be made more visible to the private sector, in order to promote their exploitation.

2 With regard to R&D results having several possible application fields, exclusive licences granted without any limitation to a specific field of use should be avoided. Moreover, as a rule, the PRO should reserve adequate rights to facilitate dissemination and further research.

3. PRINCIPLES REGARDING COLLABORATIVE AND CONTRACT RESEARCH

15. The rules governing collaborative and contract research activities should be compatible with the mission of each party. They should take into account the level of private funding and be in accordance with the objectives of the research activities, in particular to maximise the commercial and socio-economic impact of the research,

to support the public research organisation's objective to attract private research funding, to maintain an intellectual property position that allows further academic and collaborative research, and avoid impeding the dissemination of the R&D results.

16. IP-related issues should be clarified at management level and as early as possible in the research project, ideally before it starts. IP-related issues include allocation of the ownership of intellectual property which is generated in the framework of the project (hereinafter "foreground"), identification of the intellectual property which is possessed by the parties before starting the project (hereinafter "background") and which is necessary for project execution or exploitation purposes, access rights to foreground and background for these purposes, and the sharing of revenues.

17. In a collaborative research project, ownership of the foreground should stay with the party that has generated it, but can be allocated to the different parties on the basis of a contractual agreement concluded in advance, adequately reflecting the parties' respective interests, tasks and financial or other contributions to the project. In the case of contract research the foreground generated by the public research

organisation is owned by the private-sector party. The ownership of background should not be affected by the project.

18. Access rights should be clarified by the parties as early as possible in the research project, ideally before it starts. Where necessary for the purpose of conducting the research project, or for the exploitation of foreground of a party, access rights to other parties' foreground and background should be available, under conditions which should adequately reflect the parties' respective interests, tasks, and financial and other contributions to the project.