Intellectual property rights in research and development collaboration/ contract agreements between research institutions, universities and firms: part 1 — European Union, US

Abstract

Keywords: research and development contracts, research and development collaborationagreements, intellectual property rights, research organisations, universities
 The practice of regulating intellectualproperty relations in R&D cooperation agreements / R&D contracts between researchinstitutions, universities (academic institutions) and companies in the EU, USA, aswell as in the recommendations of international organizations is studied.It is noted the significant role given in the EU, the USA to the settlement of IP issuesin R&D agreements. It is shown, that the development of model agreements inthe United States is carried out mainly at the university level. In the EU it is significantthe role of the European Commission, national government bodies in the developmentof the agreements.The principal provisions of IP regime in the R&D agreements are noted, which include:identification of Background IP and New IP. Granting Background IP rightsusually on the basis of a non-exclusive royalty license. Consolidation of New IP rightsfor academic institutions. Granting New IP rights on royalty-based licences or paidtransfer of rights.It is noted the importance of possibility of restitution of IP property rights to academicinstitution if the company does not commercialize the granted IP. Also, of the assignmentof IP rights to academic institutions for research and training purposes incases of granting exclusive licenses and transferring property rights.The principles of distribution of intellectual property rights and use of research resultsin R&D agreements are determined, which should be applied in the practice ofconcluding corresponding agreements in Ukraine. Amendments to the Law ofUkraine “On Scientific and Scientific-Technical Activity” are proposed to provide forthe indication of the types of R&D agreements, as well as the principles of using IP inagreements.