Commission Recommendation of 10 April 2008 on the management of intellectual property in knowledge transfer activities and Code of Practice for universities and other public research organisations (notified under document number C(2008) 1329) (Text with EEA relevance)
Date: 2008-04-10
Institutions: European Commission
Subjects: access to information, cooperation policy, intellectual property, knowledge management, research body, school-industry relations, university

5.6.2008

EN

Official Journal of the European Union

L 146/19

RECOMMENDATIONS

COMMISSION

COMMISSION RECOMMENDATION

of 10 April 2008

on the management of intellectual property in knowledge transfer activities and Code of Practice
for universities and other public research organisations

(notified under document number C(2008) 1329)

(Text with EEA relevance)

(2008/416/EC)

THE COMMISSION OF THE EUROPEAN COMMUNITIES,

(4)

Having regard to the Treaty
Community, and in particular Article 165 thereof,

establishing the European

The active engagement of public research organisations
in intellectual property management and knowledge
socioeconomic
transfer
generating
benefits, and for attracting students,
scientists and
further research funding.

essential

for

is

Whereas:

(1) When relaunching the Lisbon Strategy in 2005,

the
Heads of State or Government stressed the key role
that better links between public research organisations,
including universities, and industry can play in facilitating
the circulation and use of ideas in a dynamic knowledge
society and in enhancing competitiveness and welfare.

(2)

(3)

An effort should be made to better convert knowledge
into socioeconomic benefits. Therefore, public research
organisations need to disseminate and to more effectively
exploit publicly funded research results with a view to
translating them into new products and services. Means
to realise this include in particular academia-industry
collaborations — collaborative or
research
conducted or funded jointly with the private sector —
licensing and the creation of spin-offs.

contract

inventions,

Effectively exploiting publicly funded research results
intellectual
depends on the proper management of
property (i.e. knowledge in the broadest
sense, en-
compassing e.g.
software, databases and
micro-organisms, whether or not they are protected by
legal instruments such as patents), on the development of
an entrepreneurial culture and associated skills within
public research organisations, as well as on better
communication and interaction between the public and
private sector.

(5)

(6)

(7)

transfer

Member States have in recent years taken initiatives to
level, but
facilitate knowledge
at national
significant discrepancies between national
regulatory
frameworks, policies and practices, as well as varying
standards in the management of
intellectual property
within public research organisations, prevent or hamper
transnational knowledge transfer across Europe and the
realisation of the European Research Area.

a

for

approaches

Following the 2007 Commission Communication (1),
common European
for
setting out
European
framework
Council
in June
therefore invited the Commission,
2007, to develop guidance on the management of intel-
lectual property by public research organisations in the
form of a Recommendation to Member States.

knowledge

transfer,

the

This Recommendation seeks to provide Member States
and their regions with policy guidelines for the develop-
ment or updating of national guidelines and frameworks,
and public research organisations with a Code of Practice,
in order to improve the way public research organ-
isations manage intellectual property and knowledge
transfer.

(1) COM(2007) 182.

L 146/20

EN

Official Journal of the European Union

5.6.2008

(8)

(9)

transfer

as knowledge

Collaboration in the field of research and development as
well
activities between the
Community and third countries should be based on
clear and uniform recommendations and practices that
ensure equitable and fair access to intellectual property
generated through international research collaborations,
to the mutual benefit of all partners involved. The
attached Code of Practice should be used as a reference
in that context.

the principles of

A number of good practices have been identified that
should help Member States to implement
this Rec-
ommendation.
It is for each Member State to choose
the procedures and practices best designed to ensure
this Recommendation are
that
followed, having regard to what would be most
effective in the context of
that Member State, since
practices that are effective in one Member State may
in another. Existing guidance
not be
provided at Community and OECD level should also be
taken into account.

effective

as

(10)

The Commission and the Member States should monitor
this Recommendation and its
the implementation of
impact, and foster
the exchange of good practices
regarding knowledge transfer,

HEREBY RECOMMENDS THAT MEMBER STATES SHOULD:

1. ensure

all public
knowledge transfer as a strategic mission;

that

research organisations define

2. encourage public research organisations to establish and
publicise policies and procedures for the management of
intellectual property in line with the Code of Practice set
out in Annex I;

3. support the development of knowledge transfer capacity
and skills in public research organisations, as well as
measures to raise the awareness and skills of students —
in particular in the area of science and technology —
regarding intellectual property, knowledge transfer and
entrepreneurship;

4. promote the broad dissemination of knowledge created
with public funds, by taking steps to encourage open
access to research results, while enabling, where appro-
priate, the related intellectual property to be protected;

5. cooperate and take steps to improve the coherence of their
respective ownership regimes
intellectual
property rights in such a way as to facilitate cross-border
collaborations and knowledge transfer
in the field of
research and development;

regards

as

6. use the principles outlined in this Recommendation as a
basis for introducing or adapting national guidelines and
legislation concerning the management of
intellectual
property and knowledge transfer by public research or-
ganisations,
agreements
concerning research cooperation with third countries, or
for any other measures to promote knowledge transfer,
or when creating new related policies or
funding
schemes, while observing State aid rules;

concluding

as well

for

as

7. take steps to ensure the widest possible implementation of
the Code of Practice, whether directly or through the rules
laid down by national and regional research funding bodies;

8. ensure equitable and fair treatment of participants from
Member States
in international
and third countries
research projects regarding the ownership of and access
to intellectual property rights, to the mutual benefit of all
partners involved;

9. designate a national contact point,

the tasks of which
should include the coordination of measures regarding
knowledge transfer between public research organisations
and the private sector,
including tackling transnational
issues,
in liaison with similar contact points in other
Member States;

10. examine and make use of the best practices set out in

Annex II, taking into account the national context;

11.

inform the Commission by 15 July 2010 and every two
years thereafter of measures taken on the basis of this
Recommendation, as well as their impact.

Done at Brussels, 10 April 2008.

For the Commission
Janez POTOČNIK
Member of the Commission

5.6.2008

EN

Official Journal of the European Union

L 146/21

ANNEX I

Code of Practice for universities and other public research organisations concerning the management of
intellectual property in knowledge transfer activities

This Code of Practice consists of three main sets of principles.

The principles for an internal intellectual property (hereinafter IP) policy constitute the basic set of principles which public
research organisations should implement in order to effectively manage the intellectual property resulting from their —
own or collaborative — activities in the field of research and development.

The principles for a knowledge transfer (hereinafter KT) policy complement those relating to IP policy by focusing more
specifically on the active transfer and exploitation of such intellectual property, regardless of whether or not it is protected
by IP rights.

The principles for collaborative and contract research are meant to concern all kinds of research activities conducted or
funded jointly by a public research organisation and the private sector, including in particular collaborative research
(where all parties carry out R&D tasks) and contract research (where R&D is contracted out to a public research
organisation by a private company).

Principles for an internal intellectual property policy

1. Develop an IP policy as part of the long-term strategy and mission of the public research organisation, and publicise

it internally and externally, while establishing a single responsible contact point.

2. That policy should provide clear rules for staff and students regarding in particular the disclosure of new ideas with
potential commercial interest, the ownership of research results, record keeping, the management of conflicts of
interest and engagement with third parties.

3. Promote the identification, exploitation and, where appropriate, protection of intellectual property, in line with the
strategy and mission of the public research organisation and with a view to maximising socioeconomic benefits. To
this end, different strategies may be adopted — possibly differentiated in the respective scientific/technical areas —
for instance the ‘public domain’ approach or the ‘open innovation’ approach.

4. Provide appropriate incentives to ensure that all relevant staff play an active role in the implementation of the IP
policy. Such incentives should not only be of a financial nature but should also promote career progression, by
considering intellectual property and knowledge transfer aspects in appraisal procedures, in addition to academic
criteria.

5. Consider the creation of coherent portfolios of intellectual property by the public research organisation — e.g. in
specific technological areas — and, where appropriate, the setting-up of patent/IP pools including intellectual
property of other public research organisations. This could ease exploitation, through critical mass and reduced
transaction costs for third parties.

6. Raise awareness and basic skills regarding intellectual property and knowledge transfer through training actions for
students as well as research staff, and ensure that the staff responsible for the management of IP/KT have the required
skills and receive adequate training.

7. Develop and publicise a publication/dissemination policy promoting the broad dissemination of research and de-
velopment results (e.g. through open access publication), while accepting possible delay where the protection of
intellectual property is envisaged, although this should be kept to a minimum.

Principles for a knowledge transfer policy

8. In order to promote the use of publicly funded research results and maximise their socioeconomic impact, consider
all types of possible exploitation mechanisms (such as licensing or spin-off creation) and all possible exploitation
investors, or innovation
partners (such as spin-offs or existing companies, other public research organisations,
support services or agencies), and select the most appropriate ones.

9. While proactive IP/KT policy may generate additional revenues for the public research organisation, this should not

be considered the prime objective.

L 146/22

EN

Official Journal of the European Union

5.6.2008

10. Ensure that the public research organisation has access to or possesses professional knowledge transfer services
including legal, financial, commercial as well as intellectual property protection and enforcement advisors, in addition
to staff with technical background.

11. Develop and publicise a licensing policy, in order to harmonise practices within the public research organisation and
ensure fairness in all deals. In particular, transfers of ownership of intellectual property owned by the public research
organisation and the granting of exclusive licences (1) should be carefully assessed, especially with respect to non-
European third parties. Licences for exploitation purposes should involve adequate compensation,
financial or
otherwise.

12. Develop and publicise a policy for the creation of spin-offs, allowing and encouraging the public research organ-
isation’s staff to engage in the creation of spin-offs where appropriate, and clarifying long-term relations between
spin-offs and the public research organisation.

13. Establish clear principles regarding the sharing of financial returns from knowledge transfer revenues between the

public research organisation, the department and the inventors.

14. Monitor intellectual property protection and knowledge transfer activities and related achievements, and publicise
these regularly. The research results of the public research organisation, any related expertise and intellectual property
rights should be made more visible to the private sector, in order to promote their exploitation.

Principles regarding collaborative and contract research (2)

15. The rules governing collaborative and contract research activities should be compatible with the mission of each
party. They should take into account the level of private funding and be in accordance with the objectives of the
research activities, in particular to maximise the commercial and socioeconomic impact of the research, to support
the public research organisation’s objective to attract private research funding, to maintain an intellectual property
position that allows further academic and collaborative research, and avoid impeding the dissemination of the R&D
results.

16. IP-related issues should be clarified at management level and as early as possible in the research project, ideally before
it starts. IP-related issues include allocation of the ownership of intellectual property which is generated in the
framework of the project (hereinafter foreground), identification of the intellectual property which is possessed by
the parties before starting the project (hereinafter background) and which is necessary for project execution or
exploitation purposes, access rights (3) to foreground and background for these purposes, and the sharing of revenues.

17. In a collaborative research project, ownership of the foreground should stay with the party that has generated it, but
can be allocated to the different parties on the basis of a contractual agreement concluded in advance, adequately
reflecting the parties' respective interests, tasks and financial or other contributions to the project. In the case of
contract research the foreground generated by the public research organisation is owned by the private sector party.
The ownership of background should not be affected by the project.

18. Access rights (3) should be clarified by the parties as early as possible in the research project, ideally before it starts.
Where necessary for the purpose of conducting the research project, or for the exploitation of foreground of a party,
access rights to other parties' foreground and background should be available, under conditions which should
adequately reflect the parties' respective interests, tasks, and financial and other contributions to the project.

(1) With regard to R&D results having several possible application fields, exclusive licences granted without any limitation to a specific field
of use should be avoided. Moreover, as a rule, the PRO should reserve adequate rights to facilitate dissemination and further research.
(2) When a PRO engages in contract or collaborative research with an industrial partner, the Commission will automatically (i.e. without
any notification requirement) consider that no indirect State aid is granted to the industrial partner through the PRO if the conditions
set out in the Community Framework for State aid for R&D&I (OJ C 323, 30.12.2006, in particular points 3.2.1 and 3.2.2 thereof) are
fulfilled.

(3) Access rights refer to rights granted by the parties to each other, as opposed to licences to third parties. They should determine which
for research purposes and/or for exploitation purposes, and on what

foreground/background,

parties can use which pieces of
conditions.

5.6.2008

EN

Official Journal of the European Union

L 146/23

ANNEX II

Identified practices of public authorities that facilitate the management of intellectual property in knowledge
transfer activities by universities and other public research organisations

Knowledge transfer as a strategic mission of public research organisations

1. Knowledge transfer between universities and industry is made a permanent political and operational priority for all

public research funding bodies within a Member State, at both national and regional level.

2. The subject clearly falls within the responsibility of a ministry, which is charged with coordinating knowledge transfer

promotion initiatives with other ministries.

3. Each ministry and regional government body that carries out knowledge transfer activities designates an official
responsible for monitoring their impact. They meet regularly in order to exchange information and discuss ways to
improve knowledge transfer.

Policies for managing intellectual property

4. The proper management of intellectual property resulting from public funding is promoted, requiring that it be
carried out according to established principles taking into account the legitimate interests of industry (e.g. temporary
confidentiality constraints).

5. Research policy promotes reliance on the private sector to help identify technological needs and to foster private

investment in research and encourage the exploitation of publicly funded research results.

6. Sufficient resources and incentives are available to public research organisations and their staff

to engage in

knowledge transfer activities.

Knowledge transfer capacities and skills

7. Measures are taken to ensure the availability and facilitate the recruitment of trained staff (such as technology transfer

officers) by public research organisations.

8. A set of model contracts is made available, as well as a decision-making tool helping the most appropriate model

contract to be selected, depending on a number of parameters.

9. Before establishing new mechanisms to promote knowledge transfer (such as mobility or funding schemes), relevant
stakeholder groups, including SMEs and large industry as well as public research organisations, are consulted.

10. The pooling of resources between public research organisations at local or regional level is promoted where these do
not have the critical mass of research spending to justify having their own knowledge transfer office or intellectual
property manager.

11. Programmes supporting research spin-offs are launched, incorporating entrepreneurship training and featuring strong

interaction of public research organisations with local incubators, financiers, business support agencies, etc.

12. Government funding is made available to support knowledge transfer and business engagement at public research

organisations, including through hiring experts.

Coherence in transnational cooperation

13. In order to promote transnational knowledge transfer and facilitate cooperation with parties from other countries, the
owner of intellectual property from publicly funded research is defined by clear rules and this information, together
with any funding conditions which may affect the transfer of knowledge,
is made easily available. Institutional
ownership — as opposed to the ‘professor's privilege’ regime — is considered the default legal regime for intellectual
property ownership at public research organisations in most EU Member States.

14. When signing international research cooperation agreements, the terms and conditions relating to projects funded
under both countries' schemes provide all participants with similar rights, especially as regards access to intellectual
property rights and related use restrictions.

L 146/24

EN

Official Journal of the European Union

5.6.2008

Dissemination of knowledge

15. Open access is implemented by public research funding bodies with regard to peer reviewed scientific publications

resulting from publicly funded research.

16. Open access to research data is promoted, in line with the OECD Principles and Guidelines for Access to Research

Data from Public Funding, taking into account restrictions linked to commercial exploitation.

17. Archival facilities for research results (such as Internet-based repositories) are developed with public funding in

connection with open access policies.

18. The necessary mechanisms are put in place to monitor and review progress made by national public research
organisations in knowledge transfer activities, e.g. through annual reports of the individual public research organ-
isations. This information, together with best practices, is also made available to other Member States.

Monitoring implementation