Intellectual property (IP) policy of FAU
IP policy of FAU
With its strength in both fundamental research and application-oriented research, FAU has a significant contribution to make towards driving scientific and academic progress in key areas of society. FAU sees it as its duty to make this contribution, based on the principle of the freedom of teaching and research.
As a university which offers the entire spectrum of academic disciplines, FAU generates knowledge in a wide range of disciplines covering the humanities, social sciences, economics, law, medicine, natural sciences and engineering. FAU strives to promote the dissemination of findings, ideas, developments and technology from all research areas, thereby contributing to scientific and academic progress.
Publishing results in scientific and academic publications takes precedence over all other transfer activities.
FAU also contributes to the common good of society by constantly delivering knowledge and technology which can be used as the basis for designing specific innovations. Technology transfer in this context does not only refer to invention and patent management but also to ongoing scientific training and advice on spin-offs or other such activities.
Claim to exploitation
Research findings generated at FAU can serve as the basis for developing innovative products, technologies and services. This means that the research findings have an inherent economic value going beyond the relevant findings themselves. This value can only be generated, however, by developing a product on the basis of the research. FAU conducts active invention and patent management in order to ensure that this value can be used for the benefit the University.
FAU is aware that the process of developing a product fit for the market can only succeed in collaboration with extramural partners and that these partners will have to make further investments along the way. In order to ensure the economic viability of such investments, mechanisms for the protection of intellectual property have to be triggered in good time. The active IP policy followed by FAU therefore helps to translate the inherent value of the IP into a financial return at the same time as creating the basis for the University to share in these financial benefits whilst representing the interests of its inventors as well as possible. FAU is also keen to involve independent inventors such as students or scholarship holders, and gives them an equal standing to inventors employed by the University when sharing out proceeds generated by the commercial exploitation of IP.
In the long term, FAU aims to generate proceeds for the University within the framework of university autonomy. In addition to the legally stipulated remuneration for the inventor (30 percent of generated income), the Chair behind a successful invention will receive a separate share of the proceeds which it can use as it wishes for research and teaching purposes.
Criteria for registering IP rights for exploitation
When safeguarding research findings and their exploitation, FAU pays particular attention to the interests of the inventors and the University, whilst bearing legal requirements (ArbnErfG, UrhG, BayHSchG) in mind at all times. FAU recognises that it is bound by generally accepted ethical and moral constraints of science, both with regard to the implementation of research projects and to the exploitation of findings generated as a result of this research.
In particular, FAU takes care to ensure that safeguarding suitable research findings and exploiting them in their capacity as IP does not interfere with the researchers’ freedom to publish. The University draws on the expertise of law firms specialising in patents for safeguarding potentially patentable research findings in order to ensure that the requirements of the various disciplines are met.
Inventions created at FAU are classed as either inventions covered by contracts which are transferred to industrial partners under the terms of individual or framework contracts or free inventions not bound to any contract in which case FAU is free to decide on their commercial exploitation. Joint inventions developed in collaboration with other research institutions are also classed as independent inventions. In all instances, the patent management team at FAU is the internal service provider and initial point of contact if you are an inventor seeking advice or would like to discuss a possible patent application strategy. They should also be consulted when selecting and commissioning external patent lawyers and can provide advice on the contents, administration and performance of contractual obligations
When deciding on whether to apply for intellectual property rights to an independent invention, FAU focuses not only on criteria set out in patent law but first and foremost on the economic criteria of market relevance, options for commercial exploitation and economic potential.
With regard to options for exploitation, the decision to protect the IP generated by a research project is taken after considering the extent to which value has been created or is expected to be created within the academic sphere in question. Projects which have either already reached a stage in their development or which are forecast to reach a stage at which they have the potential to significantly improve the options for exploitation ought to be protected by a suitable IP strategy, even if this means FAU has to make a long-term commitment. Another point which is taken into consideration when coming to a decision is whether the invention is potentially of interest to FAU’s industrial contacts and the Network of the Bavarian Patent Alliance (as the central patent exploitation agency for Bavarian institutions of higher education).
Ideally, a successful transfer into the industrial sector should take place via existing networks of inventors or via FAU’s own networks. If there are no specific contacts available for any individual project, then the very least that is expected is that possible contacts in industry are identified beforehand. Close collaboration between inventors, Chairs and the project management team or BayPAT significantly improve a project’s chances of exploitation.
Know-how and copyright
In addition to exploiting IP by applying for a patent or other protection rights, results available in the form of know-how or material can be exploited directly by being licensed or sold. The term ‘know-how’ can refer to items such as valuable biological material, for example hybridoma cell lines used to produce monoclonal antibodies for scientific purposes, transgenic cell lines or organisms. The results protected by copyright can be rights to texts or images, or computer software. Along the lines of the remuneration paid to inventors, FAU also provides remuneration to scientists involved in generating results protected by copyright amounting to 30 percent of net proceeds.
FAU makes all research results available to society in detail and without delay in the form of academic publications, irrespective of their potential for commercial exploitation as intellectual property.
Principles of exploitation
When making arrangements for commercial exploitation, FAU will pay particular consideration to the benefit to society as a whole and will prioritise this over short-term financial gain.
If it becomes apparent that an invention is likely to be of particular significance, the University will choose non-exclusive arrangements over an exclusive contract in order to meet its obligations to serve the common good.
In cases in which it is apparent that a prospective interested party does not have any genuine intention to develop the invention further and merely intends to restrict free competition (blocking patent), FAU will choose not to conclude a contract with this interested party.
Inventions in the area of military and arms technology, nuclear technology and secret communications engineering are a special case. In these instances, FAU will take a stance in each individual case after internal consultations. A statement is drawn up by the patent management team and submitted to the Executive Board which takes the decision. The inventor must refrain from publishing until a decision has been taken.
There are various routes which can be taken to make IP available for commercial exploitation, each of which entail particular opportunities and risks. Contractual obligations vis-à-vis third parties, third-party rights and other factors relevant to the the inventions are taken into consideration accordingly.
IP is transferred from FAU to the respective partners at normal market conditions applicable to the specific product environment. FAU retains in all instances a simple, indefinite right of use for research and teaching purposes. The freedom to publish remains unaffected, and legitimate interests of third parties shall be taken into consideration accordingly.
IP rights belonging to FAU can be exploited via a licence or purchase contract. When arranging exploitation, the fair market value of the IP rights is taken as the basis for agreeing conditions, whereby FAU will strive to obtain a long-term participation in the invention’s commercial success, which is also in the interests of its inventors. In addition, the financial expenditure for the patent application procedure should be re-financed with the proceedings from a patent sale or licence agreement.
Spin-off based on the invention
FAU explicitly encourages the establishment of companies (spin-offs or start-ups) based on the research results in order to drive their implementation into products ready for the market and thereby create jobs.
Future-oriented, technology-based spin-offs and their financing by investors are based mainly on inventions and property rights. In particular, FAU will choose the route of transferring IPR in return for participation as a minority shareholder in order to get the best possible return from the IPR assets. Alternatively, the University will grant the right to use the IP by issuing a licence to the founding company. Within the framework of its legal possibilities, FAU will take the limited financial resources of university-based spin-offs which are just starting out into account in favour of a later participation in their success. FAU shall also stand by this principle if it becomes necessary to sell IP, for example within the context of financing rounds.
The autonomy of the University means that it has both the opportunity and the obligation to exploit all potential of research results in a sustainable and targeted way.