〈日本知財学会誌〉Vol.1 No.1 ― 2004 : 22 ― 30

Recent Developments in the Business ofPatent Licensing―Technology Transfer from Universities andResearch Institutions to Industry in Germany
Heinz Goddar, European/German Patent Attorney, Boehmert & Boehmert

the sometimes most valuable inventions made at

1. Historical Development

such institutions by professors, rather, withoutleaving any trace in statistics of patent offices list-

Before early 2002, more precisely, before

ing patent applicants and patentees, as far as own-

February 7, 2002, technology transfer, particularly

ership of such patent applications and patents by

by way of licensing, from research institutions anduniversities and research institutions were

universities in Germany to industry took place ininvolved, the licensing and technology transfer,a very indirect way only. The reason was that

respectively, took directly place between the indi-

until then, as it will be explained in more detailvidual inventors（professors）and industry.

below, inventions made by university professors

Things have changed dramatically since then,and other individuals of a similar status belonged

because on February 7, 2002, the Professor’s

to such professors themselves. As a consequence,

Privilege was abolished. Since then, universities

the inventors and professors directly had thehave the possibility to obtain ownership of inven-right to transfer such inventions, e.g. by licensing,tions made by professors, too, like private compa-

to industry cooperation partners. Typically, suchnies from their employees, so that since then noresearching professors had consultancy agree-

direct technology transfer, in the sense of pur-ments with industry partners, which provided forchasing and/or licensing―in of patentable technol-

financial contributions of the industry partner toogy, from university researchers, particularly pro-the respective professor, such financial benefits forfessors, to industry, can take place anymore.

the professor either already including the remu-

Rather, industry in general will have to conclude,

neration for the inventions made by the professor

as it will be shown below in more detail, an agree-

under such a project, later on to be assigned andment with both the professor and the university,transferred to the industry partner, or such coop-

namely with the latter to get hold of patentableeration and consultancy agreements including

inventions, and with the professor in order to getlicense regulations for such inventions.

certain rights and declarations from him/her

As a consequence of the aforementioned

which universities and research institutions“Professor’s Privilege,” universities and similar

because of the binding provisions of the German

research institutions did not acquire ownership of

Law concerning Inventions made by Employees22蘓 2004IPAJ

ISSN 1349 ― 421X
All rights reserved.

Recent Developments in the Business of Patent Licensing

cannot get from the professor.

sor.

Technology Transfer from universities and

If it was not avoidable that the university pro-research institutions in Germany to industry being

fessor etc. makes use of “normal” employees inlargely ruled by the last-mentioned law, in the fol-public service, e.g. of the university, including pub-lowing just designated as “The Law”, in the fol-lic servants, the above mentioned flexibilities oflowing the basic principles thereof will be

the Old Law had to be taken into consideration,

described, as far as they are relevant for universi-

namely with regard to participation of the univer-ty inventions, followed by a proposal for a “trilat-

sities etc. in the profits made out of such inven-eral agreement” of the aforementioned kind, well-tions.

known, in the meantime, in the legal art in

It should be duly noted, however, that par. 42 ofGermany ― and beyond ― as “Berlin Agreement.”

the “Old Law” even in cases of inventions madeby professors etc. gave the possibility that the uni-

2. Inventions made by University
Employees ― Old Law

versity in a case where specific university means
were used for the coming into existence of therespective invention, the university might partic-

The “Old Law,” by the former version of Art.

ipate in the profit achieved by the professor etc.

42, provided for inventions of professors, lecturers

According to the personal experience of theand scientific assistants to be free, i.e. all such

author, however, in most instances the aforemen-inventions were not subject to the restricting reg-tioned possibilities of universities to participate inulations of The Law as far as owner-ship and eval-

the profit made by “normal” employees, publicuation of inventions by employees, whether in pri-servants and professor, practically never werevate or in public service, are concerned. The

used.

aforementioned regulation privileged the aforementioned group of persons to a high extent andArt. 42 of The Law was replaced, on February
7, 2002, by a new article 42.

was the basis for most of the cooperations
between university institutes and private spon-

3. University Inventions ― New Law

sors, in order to create “independent” inventionsin the sense that the sponsor could get hold there-

The new Law, by the revision of Art. 42, hasgiven up, first of all, any distinction betweenof.
As a matter of course, professors only could use

inventions made, at universities, by “normal”

the aforementioned provisions fully if they madeemployees, like workers, scientific personnel of asure that no other “normal” employees of the uni-“non-professor” nature etc., provided that these

versity were involved in the coming into existence

employees have to do with research matters, andof inventions of the kind in question. Very often

those of professors/assistants/lecturers.

this was done by making sure that contributions

All inventions made by employees, active into the invention only came from students, post-

research, at universities are covered by the Law,

graduate scholars etc., all of which do not get into

including those made by professors, assistants anda regular employment arrangement with the uni-

lecturers, in the following just designated as “pro-versity and the professor, respectively, rather only

fessors,” in other words, the so-called “Professors’

into a kind of private non-employment, but spon-

Privilege” has been deleted.

sored semi-tutorship under the respective profes-

Also the new Law, however, does not cover23

〈日本知財学会誌〉Vol.1 No.1 ― 2004

inventions made by “non-employees” at universi-of the gross income, as royalty income, from theties, like students, scholars etc., so that in these

university.

cases special regulations will have to be found on

The new Law applies to all inventions, asa contractual basis between professors, universi-

already said, made by university employees after

ties, sponsors, etc.

February 6, 2002. If carriers of the former

All inventions made by university employees,

Professors’ Privilege, because of existing contracts

including professors, will now have to be notified

concluded with private cooperation partners, liketo the university, but only, if the inventor intends

industry companies, before July 18, 2001, are oblig-

and is in agreement with, respectively, publication

ed to transfer their obligations, as it formerly wasof her/his invention. If the inventor does not wish

usually the practice in Germany, to the coopera-

to publish, e. g. in cases where he/she considers ation partner, the Professors’ Privilege for such

publication to be detrimental to public security,

inventions is extended to be applicable until

health, morality considerations etc., there is no

February 7, 2003. Inventions made from February

duty to notify the invention to the university.

7, 2002, till February 7, 2003, in other words, are

Two months after the notification of the inven-still subject to the Professors’ Privilege, if thetion to the university the inventor is entitled toaforementioned conditions are fulfilled. Even if

publish the respective invention.

existing agreements provide for differently, inven-

Within the normal “claiming” term, i. e. up to

tions made after February 7, 2003, by professors

four months after the notification of the invention

will be subject to the new law, i. e. the universities

has been received by the university, the universi-

will also in these cases have the possibility to

ty can unrestrictedly claim the invention andacquire ownership of such inventions by claiming,

therefore acquire ownership thereof, as in privatewith the remuneration consequences as discussed

practice.

above.

Factually, however, the aforementioned four-With all probability, the revision of the law

month term which otherwise in private industry

which has already taken place in Germany, ending

is available for a decision on whether to claim annearly 60 years of the Professors’ Privilege, will

invention and patent it or not for universities islead to the result that all inventions made at uni-

restricted to two months, because of the regula-versities in future will become available to the uni-tion that the inventor “regularly” may publish two

versity for evaluation. First experiences since themonths after his notification of the invention tocoming into force of the new Article 42 of The

the university. That means, in practice, that uni-

Law have already proven this. For evaluation pur-versities that wish to patent inventions made byposes, universities in Germany are now all provid-

employees, such as professors, will only be given

ed with pullystaffed intellectual asset management

two months for this decision process, including

offices, as has been known for many years fromformulation of a patent application and depositinge.g. U.S. universities. In Germany, departments of

it at a patent office, e.g. the German or thethis kind had very little to do in the past, because

European Patent Office!

the most valuable inventions, made by professors,

If the university has claimed the invention andwere taken out of the universities’ hands by pri-thereby has acquired property thereof, and if thevate cooperation agreements, as already discussed

university later uses the invention e.g. by selling it

above. This practice has now finished Private

or licensing it out, the inventor is entitled to 30%

industry has to negotiate with universities in24

Recent Developments in the Business of Patent Licensing

order to get hold of e.g. by licensing, university-

ter of new Art. 42 of The Law, the university

based inventions, even if the cooperation partners

inventors are entitled to get 30%. Furthermore,of the industry company are professors, withindustry would like to ensure that the inventing

whom otherwise a more or less “private” deal had

professors etc. would not only, make their inven-been made in the past.

tions available to industry via the university,

The rather high remuneration of university

rather industry would also like to be sure that theinventors, namely 30% of the gross e.g. royalty

professors would also give consultancy services, inincome of the universities, which is distinctly high-connection with such inventions, to industry, ander than normal remunerations paid for employees’

also would promise to transfer to universities even

inventions in private industry, has already led tosuch inventions which they would not like to pub-the result that many more university inventions

lish ― otherwise, the professors according to Art.

are notified to the universities, the latter taking

42 of The Law would be entitled to “hide” suchcare of all patent application and evaluation proce-inventions until they choose to publish. All thesedures etc.

legal effects can only be obtained by an agreement between industry and the professor.

4. Agreements on Research Cooperation
between Industry and University ―The “Berlin Agreement”

As a result, the necessity of having a trilateralagreement of the kind already discussed was
acknowledged by practically all interested parties
in Germany.

Immediately after the coming into force of new

As a consequence thereof, a group of experts

Art. 42 of The Law, it became clear to universi-

from both the university environment and indus-

ties, industry, and legal scholars in Germany thattry, namely, consisting, as far as universities werea prosperous future of successful technology

concerned, of TLO experts from Berlin universi-

transfer from universities and research institu-

ties, mainly represented through “ipal Gesellschaft

tions to industry would depend on the develop-

für Patenverwertung mbH,” the central TLO for

ment of a contract or agreement structure of a tri-

the majority of the Berlin universities, and inlateral nature, namely between potential universi-

the case of industry comprising a number ofty inventors, i.e. professors, universities, and indus-

large German companies, like BASF, Bosch,try, in order to fulfil the following conditions: First

DaimlerChrysler, Schering, and others, have nego-of all, because of the binding character of new

tiated components of a master agreement which

Art. 42 of The Law, the agreement would have to

can be used, and currently is widely used, in

regulate that inventions made under a certain

research cooperations between German industry

research project between a university and indus-

and universities. The result of the aforementioned

try were, a）reliably brought into the possession

discussions and negotiations between universitiesof the university, by using the binding provisions

and industry, moderated by the author of this arti-of The Law, which also apply in private industry,cle, has been the current already rather famous（so-called “unrestricted claiming” of inventions）,“Berlin Agreement” or “Berlin Contract,” details ofand b）would also regulate the remuneration

which can be found under www.ipal.de, including

industry would have to pay to the university forcomments and updatings, by anybody interested

such inventions, as royalties, from which, on thein in-depth knowledge and additional explanations.

other hand, again because of the binding charac-

In the following, as already discussed in an arti25

〈日本知財学会誌〉Vol.1 No.1 ― 2004

cle written by the author of this paper and Mr.

sity will generally demand that the entire costs

Hermann Mohnkopf, IP Counsel for Rolls-Royceare assumed. The university, in the person of theDeutschland Ltd. & Co. KG, Germany, published inresearch worker ― here and in the following usual-

Les Nouvelles December 2003, pp. 176 ff., based only understood to mean the “project director”

the aforementioned paper the “Berlin Contract”

responsible ―, is not required to interpret data or

will be discussed in more detail.

results in any way; neither the university nor theindustrial partner has any interest whatsoever in

4.1. Structure and Organisation

publication. The result of a contract for work andA preface dealing with the genesis and the pro-services of this kind is an obligation owed by the

posed practical application of the Berlin Contract

university to the industrial partner. In this case,is followed by a brief introduction, which is intend-

according to the Berlin Contract ― and one is

ed to explain how the Contract components are totempted to say that this ought to be self-evident!

be handled. This is then followed by differentia-― all the results of the research, including anytion indicia for the Contract components in theinventions that might be made by the university,

Berlin Contract, which, it is hoped, will facilitate

i.e. by the research worker or by any other mem-assigning a specific joint-research project between

ber of the university, belong to the industrial part-a university and industry to one of the categories

ner without any additional remuneration, and it isof a contract for work and services, research com-the latter which decides at its own discretion

mission or co-operation on research. These differ-

whether to file applications for any industrial

entiation indicia should not be understood here asproperty rights, to engage in exploitation actions,alternatives, nor should they apply cumulatively,etc. It goes without saying that any applications

but, as the very name suggests, they are merely

for industrial property rights are filed by theintended to provide the practitioner with pointers

industrial partner exclusively in its own name,to help him make the appropriate assignment.

without any right whatsoever on the part of theAfter the above-mentioned list of “differentiation
indicia” come Contract components for research

university to participate.
4.2.2. Research Commissionscommissions between universities and industry,In the context of research commissions, thefollowed by appropriate Contract components forindustrial partner places a targeted commission

co-operation on research and development, whichwith the university to carry out certain researchis referred to in the following as “research co-oper-

work, the result of which is nevertheless open, butation.”

the way of performing that work and the purposeof the study are defined. In this case too, the uni-

4.2. Pointers Helping to Differentiateversity will expect the entire costs to be assumed.

between Contracts for Work and

The data or results have to be interpreted by theServices, Research Commissions,research worker. The industrial partner, having

and Research Co-operation

placed the commission, will as a rule be interested

4.2.1. Contracts for Work and Services

in receiving the results at short notice or at least

If an industrial partner commissions a universi-

on schedule. The university, or the research work-

ty to carry out certain research work, with aner, for their part have an interest in seeing theunambiguous, known objective and lays down aresults published. In this case, no successful result

defined way of performing that work, the univer-is owed by the university.

26

Recent Developments in the Business of Patent Licensing

The parties involved in drawing up the Berlin

for the reasons which have in the meantime

Contract are unanimous in their opinion that,

already been discussed in detail in the literature, awhen research commissions are organised in this“trilateral” contract between the university, theway, the university has a fundamental right toindustrial partner and the research worker is nec-

remuneration for any invention. The rights in theessary.

inventions concerned, including the right to file

Briefly, this necessity is based on the fact that,the first application and to carry out subsequentbecause of the pre-emptory provisions of the law

applications in other countries, also need to be set-on employees’ inventions, it is only possible for thetled in detail.

contractual agreement between the university

4.2.3. Research Co-operationand the industrial partner to regulate the situation

In the case of research co―operation, the indus-

concerning rights, and obligations to acquire thetrial partner places a research commission withrights etc., in inventions which can be covered by

the university, the objectives and results being

patents or utility models. Any additional know-

open ; the implementation is not defined in detail,how and advisory services which the industrial

and the intended practical application is neither

partner wishes to receive “in person” from a spe-

known in detail nor definitively laid down. Bothcific research worker who is particularly impor-partners, i.e. the university and the industrial part-tant to him as a co-operation partner（e.g. a pro-ner, contribute to carrying out the research pro-fessor）can only be reliably obtained by the indus-

ject on which they are co-operating by providing

trial partner on the basis of an appropriate con-personnel and/or assuming a share of the costs.

tractual agreement with the research worker him-

The industrial partner, having placed the commis-

self, since any “indirect route” via the university

sion, has a medium to long-term interest in themight in this case affect the research worker’s

outcome, both partners have a pronounced ― andpersonal rights with regard to research and teach-possibly a joint ― interest in publishing the results.

ing, which are guaranteed by the constitution.

In this case, the university has no obligation vis-à-A direct agreement between the research work-

vis the industrial partner regarding the success ofer and the industrial partner is also needed if thethe research co-operation agreement.

research worker is to waive his negative publica-

The parties involved in drawing up the Berlintion rights. The same applies to any advanceContract are unanimous in their opinion that, inwaiver of the research worker’s right to take overthe case of research co-operation, the industrial

any applications for industrial property rights orpartner has a separate obligation to remunerate

the industrial property rights themselves and to

the university for any invention, the details offile applications in other countries.

which need to be settled depending on the situa-

For the reasons explained above, the members

tion, as do the filing rights with regard to patents,of the working party consider it appropriate, bothetc.

in the case of research commissions and withregard to research co-operation, to conclude a “tri-4.3. Features Common to Research Com-

partite agreement” between the university, themissions and Research Co-operationindustrial partner and the research worker.

A common feature of the contractual arrange-“Research worker” here is understood to mean

ments both in the case of research commissions

the project director responsible who has been

and with regard to research co-operation is that,appointed by the university and the industrial
27

〈日本知財学会誌〉Vol.1 No.1 ― 2004

partner. If ― and this is likely to apply in mostThe arrangement regarding remuneration incases ― other members of the university, whether

the case of research commissions has the follow-

students or university staff（employees）, areing structure according to the Berlin Contract:

involved in carrying out the work on the research

After the first application has been filed, theproject concerned, it needs to be ensured inindustrial partner pays the university a firstadvance, by means of an appropriate declaration

remuneration amounting to =C 2,500.00. This is thenof association, that the obligations of the project

followed by remuneration payments according todirector also apply, mutatis mutandis, to that groupthe following alternatives:of individuals.

a） =C 2,500.00 at the beginning of exploitation, thisremuneration rising to =C 10,000.00 if exploitation

4.4. Contract Components for ResearchCommissions

begins more than 7 years after the first application; the industrial partner may, however, redeem

According to the model contract, research

the obligation to pay the increased lump sum by

results arising from a research commission belong

paying a further remuneration of =C 2,500.00 before

exclusively to the industrial partner, irrespective

the expiry of the above ― mentioned 7 ― yearof the extent to which the research worker or

period.

other “associated” members of the universityb）When certain turnover thresholds are reached,is/are involved in the production of the corre-

further lump-sum payments are made, though it issponding research results, especially inventions.

necessary to lay down the details on this in the

Regarding the filing of any applications forcontract.

industrial property rights, referred to in the fol-c）After exploitation has begun, an appropriate

lowing as “patent applications” for short, it isremuneration is paid, depending on the degree ofenvisaged that the first application is filed either

exploitation, which is subject to later negotiation.

by the university or alternatively by the industrial
partner, though of course in a manner to be set-

4.5. Research Co-operation

tled in advance, but always as joint applications on

The research results arising from research co-behalf of the university and the industrial partner.

operation are in principle broken down into

This arrangement is intended to satisfy the uni-

results achieved by the industrial partner, joint

versities’ interests in appearing in the relevant

results and university results.

“ranking” lists with a corresponding number ofResults achieved by the industrial partner are

first applications. The industrial members of theresearch results attributable solely to the industri-working party accept the fact that “ranking” posi-

al partner’s staff. Joint results mean researchtions of this kind are becoming more and more

results in which the university’s, or the university

important in assessing the performance and thestaff’s, share of the invention is no more than 50

general reputation of universities for the sake of%. University results are research results, ininternational comparisons.

which the university’s share of the invention is

It is the industrial partner alone which decides
whether to file foreign applications in the case of

more than 50 %.
4.5.1. Industrial Partner’s Results

research results based on research commissions,

Research results which fall into the category of

and any foreign applications are also filed solely“industrial partner’s results” belong exclusively toby the industrial partner in its own name.

the industrial partner. The latter has the sole28

Recent Developments in the Business of Patent Licensing

right to file applications for industrial property

The corresponding remuneration for the invention

rights, exclusively in its own name where appro-

may comprise one or more lump-sum payments or

priate; the industrial partner has no obligations

a reasonable licence fee. The members of thevis-à-vis the university whatsoever to pay any

working party regarded the sample calculations

remuneration.

annexed to the Berlin Contract as being appropri-

4.5.2. Joint Results

ate for the standard situation.

In the case of joint results where theIn the case of university results. the university

university’s share of the invention is no more thanhas the right to file the first application in its own,

25 %, the industrial partner has the right to file

exclusive name. After the option is exercised ―the first application exclusively in its own name.

and only in this case does remuneration for the

If the university’s share of the invention is moreinvention have to be paid to the university by thethan 25 %, the arrangement corresponds to theindustrial partner, obviously, the corresponding

one for research results based on research com-

application rights revert to the industrial partner

missions, i.e. the first application is filed as a joint

in a manner to be agreed.

application either by the industrial partner or

The full text modules of the “Berlin Contract”

alternatively by the university, in the names of（or “Berlin Agreement”）can be found, as alreadythe university and the industrial partner.

mentioned, under www.ipal.de.

On the whole, in the case of joint results, foreign
applications are filed in accordance with the

5. Conclusion

arrangements regarding research commissions（see 2.4.）, i.e. by the industrial partner and exclusively in its own name.

Technology Transfer in Germany between
Universities and Research Institutions, on the one

The remuneration for an invention which theside, and industry on the other side, has dramati-

industrial partner has to pay the university is set-cally changed since the coming into force of thetled as follows in the case of joint results: if the

new Art. 42 of The Law. Since then, hundreds ofuniversity’s share of the invention is less than 50

successful cooperation contracts between universi-%, the remuneration for the invention is paid inty and industry in Germany have been concluded

the same way as with research commissions. If

on the basis of the text modules of the “Berlin

the university’s share of the invention is 50 %, theAgreement.” For the first time in modern history,

industrial partner pays the university remunera-

German universities appear, in a significant num-tion for the invention as in the case of the univer-ber, in patent statistics of the patent offices of thissity results, which will be discussed below（seeworld, due to the fact that technology transfer is

2.5.3）, but deducting 10 % from the remuneration

no longer taking place directly from university

agreed for university results of that kind.

professors to industry.

4.5.3. University Results

As a result of the practice in Germany, one may

University results, i.e. research results emanat-state that cooperation between industry and uni-

ed from research co-operation, in which the uni-

versity, as far as inventions by professors who

versity’s share of the invention is more than 50 %,already in the past had successful working cooper-

belong exclusively to the university. The industri-ation agreements with industry, has not deterio-

al partner does, however, have an option on tak-rated. As a second, highly welcome effect, as

ing out an exclusive licence on reasonable terms.

acknowledged by many industry companies, many29

〈日本知財学会誌〉Vol.1 No.1 ― 2004

more inventions from the academic（university）

scientific acknowledgement, to make use of theworld have become available for evaluation to

new mechanisms for easily obtaining patent pro-industry, due to the fact that the new system pro-tection by universities and having their inventions

vides, a challenge to university inventors by its

evaluated by them, publication only taking place

incentive mechanism, which otherwise would justafter “clearance” by the respective TLO.

have published their results, in the hope of getting

30