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N. 13, Feb - Mar 2004
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 | IP & RTD: Articles
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University employees' inventions and IPR-Management - a challenge for the Consortium
Sergio Greco
Institut für Informations, Telekommunikations und Medienrecht (ITM), Münster.
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Projects involving research co-operation with universities present a special challenge for the IPR-Management of a Consortium. University employees and especially professors are often subject to special statutory regulations due to the fundamental "freedom of science" right. However, the definition of this right differs from state to state. In the following article, particularities and problems concerning inventions by university employees in Germany and Italy will be highlighted. These problems basically arise from the fact that the contractual partner in a consortium is regularly a university or a university department and not a university employee. Therefore, the employee is neither bound by the consortium agreement nor by the model contract with the European Community.
The Situation in Germany
As soon as a university employee, like any other employee in Germany, makes an invention, he must immediately provide a written report to his employer. As regards service inventions, the university can claim the invention within 4 months. In the event that the invention isn't either the result of the employee's tasks or essentially based upon his experience at the university, it is a free invention. Such an invention also has to be notified at once to the employer and in this case, the university has a 3 month-period in which to deny that it is a free invention.
These deadlines will certainly be known to the competent department within the university. However, it will not usually be familiar with all of its contractual obligations under a project supported by the 6th framework programme. The university is legally bound by the model contract with the European Community to claim the invention without any limitation, if it has to be considered as knowledge arising from the project (Annex II, Art. 32.2). In order to reduce the risk of a breach of contract, it is advisable for the university to involve the consortium in the decision-making process of whether the invention should be claimed, regardless of whether it is a free invention or a service invention.
This procedure applies to all employees in Germany. As far as inventions by university employees are concerned, the following particularities also apply. University employees are entitled to a compensation of 30% of proceeds. Moreover, university scientists (e.g. professors, junior professors and researchers as long as they carry out their research and teaching tasks independently) are allowed to continue using their invention within the scope of their teaching and research activity.
What is more important for research co-operation, however, is the freedom of publication. A university scientist is free to decide whether to publish (= positive freedom of publication) the results of his research work within the scope of his teaching and research activity, or not (= negative freedom of publication). If he wants to publish his results, he has to report this decision to his employer within the given time limit, generally 2 months in advance. The employer's approval is not required. University scientists may publish their results even if a patent registration is planned. The employer merely has to be given the opportunity to register the invention; it is not necessary for it to have already done so.
What is more problematic for universities is the university scientist's negative freedom of publication. He has the right to deny publication of the results of his work. He cannot renounce this right in advance as regards the university. However, since a fundamental right is primarily a right against the state, in Germany the opinion exists that university scientists may renounce this right in advance towards third parties, i.e. the other consortium partners. This requires the contractual involvement of the university scientists.
The Situation in Italy
In Italy, the law concerning employees' inventions is still being developed. In October 2001, a right similar to the professor's privilege which has now been abolished in Germany was introduced. According to current laws, an employed researcher at an Italian University is the exclusive right holder of his invention. Even though the university may decide certain issues, it is neither the right holder of a patent or licence. In Italy, it is considered that an invention may be transferred to the university in advance. It is proposed that this assignation should be regulated within the by-laws of the respective university and supported by an additional clause in the corresponding research contract.
Finally, it is important to take into account that the results mentioned concern inventions made by university employees. Once a research result does not constitute an invention but, e.g., copyright-protected software, different problems and conclusions will be reached in both Germany and Italy. Moreover, inventions by freelance researchers, i.e. persons who have not signed an employment contract with the university, are subject to other legal regulations. However, this does not fall into the scope of the present article.
The above discussion illustrates the difficulties presented by the differing national regulation of a given situation, a problem which cannot be solved by the unitary participation rules of the framework programme. They present a challenge for the IPR-management of every consortium, but can be solved by suitably drawing up the necessary contracts.
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