Theory and practice of intellectual property
№ 4 / 2021

ISSN (Print) 2308-0361
ISSN (Online) 2519-2744

PDF (Ukrainian)

DOI: https://doi.org/10.33731/42021.243182

Published      2021-10-25

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

Yurii Kapitsa
Ukraine
https://orcid.org/0000-0002-9449-8422

Abstract
The practice of regulating intellectual property relations in R&D cooperation agreements / R&D contracts between research institutions, universities (academic institutions) and companies in the EU, USA, as well 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 issues in R&D agreements. It is shown, that the development of model agreements in the United States is carried out mainly at the university level. In the EU it is significant the role of the European Commission, national government bodies in the development of 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 rights usually on the basis of a non-exclusive royalty license. Consolidation of New IP rights for academic institutions. Granting New IP rights on royalty-based licences or paid
transfer of rights.

It is noted the importance of possibility of restitution of IP property rights to academic institution if the company does not commercialize the granted IP. Also, of the assignment of IP rights to academic institutions for research and training purposes in cases of granting exclusive licenses and transferring property rights.

The principles of distribution of intellectual property rights and use of research results in R&D agreements are determined, which should be applied in the practice of concluding corresponding agreements in Ukraine. Amendments to the Law of Ukraine “On Scientific and Scientific-Technical Activity” are proposed to provide for the indication of the types of R&D agreements, as well as the principles of using IP in agreements.

Keywords: research and development contracts, research and development collaboration agreements, intellectual property rights, research organisations, universities

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