Licensing the results of collaborative R&D in Europe

IP Draughts is recovering from an enjoyable but rather long day yesterday in Vienna.  Vienna, the capital of Austria.  Not to be confused with Vienna, the capital of Dooly County, Georgia, USA, or any of the other 20 doppelgangers that Wikipedia lists. You know, land of the Hapsburgs, sachertorte and that wheely-thing like the London Eye.  You know, that wheely-thing, which featured in the brilliant 1949 film of the Third Man.

Not that IP Draughts had any time to enjoy the sights of Vienna on this occasion, as he was kept hard at work speaking and moderating some sessions of a conference entitled Licensing, Transfer of Ownership and Dispute Resolution: Commercialisation of Intellectual Property Generated in International R&D Projects.  The course was sponsored and organised by WIPO, LES and the Austrian Research Promotion Agency.

The conference focussed on the commercialisation of IP arising from EU Framework VII consortium agreements.

Fellow speakers included Bruno Vandermeulen from the Belgian office of Bird & Bird (or & Bird & Bird, as they seem to be branding themselves nowadays, which prompts the irrelevant thought that a bird in the and is worth two in the bush).  As practitioners in this field know, EU consortium agreements are usually made under Belgian law. Bruno gave a very interesting talk which explained some of the distinctive features of Belgian commercial law affecting IP agreements, as well as recounting some anguished calls he had received from US clients who were alarmed by having to agree to Belgian law in EU consortium agreements.

Another type of gold medal

Other speakers in the sessions in which IP Draughts was involved included Heinz Goddar, a German IP lawyer, part-time judge, part-time professor (in Germany, USA, China and India simultaneously), doctor, IP strategist, LES gold medal winner, and all round good egg.  Heinz explained German IP law in relation to academic inventors, as well as giving insights into many other legal issues affecting IP commercialisation.

The excellent Robin Rasor, past-President of AUTM and Director of the Licensing Office at the University of Michigan, provided some insights from a US perspective.  She mentioned that most US universities have recently started including IP terms in their contracts of employment for academic staff, in light of the US Supreme Court decision in Stanford v Roche.  She also provided the interesting statistic that (only) 50-80% of US university research receives Government funding, and therefore there is a substantial number of projects that are not affected by the constraints of the Bayh-Dole Act in relation to ownership of results.

Other topics discussed during the day included:

  • the perils of joint ownership of IP
  • the variance between national laws on ownership of employee inventions, and the need for due diligence by licensees
  • implied terms in licence agreements under national laws
  • whether a letter of intent is binding
  • whether a professor who signs an agreement purportedly on behalf of an institution commits the institution
  • the effect of insolvency on IP agreements

Most of the people attending the conference seemed to be from Austria, Germany or Switzerland, with a smaller number of participants from Northern and Southern Europe.  During the day, IP Draughts found himself reflecting on, and being impressed by, the fact that most people in the room were not native English speakers, and yet they were able to discuss complex commercial and legal matters in English without difficulty.

Occasionally, though, the right word eluded a speaker.  IP Draughts is still smiling about one comment, made by an invited speaker during a discussion of the different skills required for research and for running a technology business.  The speaker commented: Researchers should research and entrepreneurs should entrepren.  Yes, indeed.

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Filed under Commercial negotiation, Intellectual Property, Legal practice, Licensing

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