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N. 35, September - October 2007
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 | IP & RTD: Articles
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Who is due the larger slice?
David Fischbach, technology transfer officer for
Ticinotransfer1
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How to fairly split the loot of intellectual property
rights (IPRs) in order to satisfy all the project partners involved in a
collaborative research project. A concrete Swiss example.
In Switzerland and elsewhere, the cooperation between companies and
research centres is an appetizing prospect for both parties. Companies have the
chance to access competences, infrastructures, and sometimes sources of funding
that are usually difficult to find anywhere else. From the point of view of
universities and public research organisations (PROs) partnerships with private
actors allow a direct transfer of technologies and knowledge, as well as
providing an opportunity to bring inventions and discoveries to the market by
means of the commercialisation activities carried out by the private partners.
Since PROs and companies are different in nature, they have
different goals. The raw logic of profit prevails in the case of private
companies, while PROs aim to disseminate the knowledge: publications are
fundamental for developing and maintaining a PRO’s reputation. These
different goals for intellectual value creation lead to potential conflicts
since each party wants to pursue its own goals.
Companies would like to keep the developed knowledge (and the
related IP ownership) exclusively for themselves PROs, on the other hand, want
to see the results disseminated as widely as possible. In most cases a
compromise can be reached.
This is to be expected from a country that made neutrality and
compromise its symbols, and this is especially true in the case of applied
research projects funded by the Helvetic Confederation. In recent decades, the
Federal Agency for the promotion of innovation (CTI) has funded collaborative
projects involving academia and industry, where both parties have to provide
their own contribution (public sector usually contributes 40% of the total
resources, while the private sector gives 60%). The contract the partners sign
with CTI does not provide for a fixed rule on how to “split the
loot”; parties must reach an agreement. Such contractual flexibility
allows the parties involved to arrive at the best solution in any kind of
funded project. Therefore, in addition to the standard concise contract signed
with the funding organisation, project partners are also asked to sign a
specific collaboration agreement, which includes the aspects related to IP.
This is the framework in which the university Technology Transfer
Offices (TTOs) operate.
The TTO’s role, as intermediary between PROs and private
companies, has become more important in the last two years since CTI
established the Networks for the transfer of technologies and knowledge, which
include both institutional and private actors. Five consortia have been
established to better settle the interests involved: these are “super
parties,” platforms that allow the parties involved to negotiate win-win
agreements.
A “harmonious” sharing of the IP rights stemming from
collaborative R&D projects is usually based on the following practices:
- Companies are usually assigned the rights for the commercial
exploitation of the IP. Sometimes appropriate compensations, which are not
excessive and are utilized to cover the protection costs and to grant prizes to
the researchers, are agreed upon. Research centres do not get rich through such
activities (that is not their main goal!). Companies usually enjoy exclusive
rights in their sectors of interest, and non-exclusive in other sectors. The
ownership of the IP rights (patents and so on) can be assigned directly to the
companies charged with their exploitation, while inventors and research centres
are simply mentioned in the related official forms.
- Research centres are assigned the rights to publish, in any form
(papers, books, conferences, lessons, broadcasts, …). This is an
absolute necessity for research centres, even if companies are concerned about
confidentiality. Usually the problem is limited in extent, as industrial
secrets are not the primary objectives of researchers. Researchers generally
focus on the general and scientific aspects of the research results. Companies,
however, have the right to examine the material that will be published in
advance. Furthermore, research centres are eager to carry out further research
in the field with other partners, provided that unfair competition practices
are avoided, such as collaborations on the same research topics with direct
competitors of the project partners. Finally, research centres may retain the
right to exploit the IP rights in sectors outside of the interest of the
partner companies.
1.
Network for the transfer of technology and knowledge of the
Italian-speaking Switzerland, acknowledged by CTI (www.ticinotransfer.ch). («)
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