IPAG recommends the following model agreements, which can be used at different stages of technology research and marketing transactions. These agreements are available in English and German. These include dispute resolution clauses relating to WIPO mediation and WIPO Expedited Arbitration. This option extends to — [time] from disclosure of intellectual property to the developer, OR filing a patent application, OR announcing the patent award, or issuing a patent or concluding the duration of the contract. The terms of these licences must be negotiated in good faith and agreed between the university and the sponsor. In some areas, more time is needed to determine the commercial value of intellectual property. For example, in many technological areas, a single patent rarely defines an entire product, in which case the value of a single patent can only be clear when other patents are derived from a company`s patent portfolio. In such cases, an extended option period, perhaps even beyond the issuance of a patent, may be appropriate. Intellectual property of this type sometimes comes from research in industries such as oil, chemicals and heavy industry and is generally used with other proprietary technologies for actual commercial use.
Contract language for “The sponsor owns the intellectual property” – the university entrusts the sponsor, on request, with all intellectual property rights, titles and interests of the university. The university has the right to ask the promoter to make a final decision on this assignment, no later than three months after the date of the end of this agreement or its extension. The promoter then makes the decision no later than sixty (60) days after the university`s application. Each transfer made by the university to the promoter includes the following conditions: 7 royalties are influenced by a number of factors, including the potential size and profitability of the product granted, the potential costs of marketing, the obligation to pay royalties to more than one licensee for the product, the added value brought to the product by the university`s invention. , and the degree of exclusivity granted by the license. The field of research, the nature of the invention, the size of the research project, the basic or substantive rights, the conduct of research and the nature of the research, as well as the nature of the potential intellectual property, may also affect rates. Royalties can be accumulated, as a percentage or capped each year. Ownership of the ip company resulting from state-subsidized research must be approved by the Bundesferderstelle. 6 As part of an intellectual property transfer agreement, you permanently transfer certain or all IP rights to the assignee for a certain amount. In essence, you sell the rights to a third party in the same way that you could sell physical property for a permanent transfer. As a general rule, you waive any control, participation and rights to transferred intellectual property rights.
The proponent and the university must discuss the decisions to be included in the research agreement. For example, an exclusive license may cancel the granting of a non-exclusive license. What is better for an IP transfer agreement or an intellectual property license? The reality is that there are pros and cons to each choice, depending on your needs and interests.