Sample agreements for research and development cooperation

Background and general considerations

Section 42 of the German Employee Inventions Act (Arbeitnehmererfindungs- gesetzes - ArbEG) was amended by the law adopted on 18 January 2002. The amendment abolished the so-called university teachers' privilege. Since then, professors, lecturers and academic employees at universities (this term covers both universities and universities of applied sience "Fachhochschulen") have no longer been able to dispose freely of their inventions but - just like employees in the private sector - have to report them immediately to their employers who are entitled to use the invention, meaning that all commercial utilisation rights in the research result are transferred to the employer. If the employer uses the invention, the university teacher receives a statutory claim for remuneration 30% of the gross revenue generated with the invention in return.

This enables universities on the one hand to implement the task of technology transfer incumbent upon them more comprehensively and effectively. They may also be able to generate additional income from utilisation of the research results, on the other.

The amendment to the German Employee Inventions Act did not bring about any changes for non-university research institutes as their staff do not come under the scope of application of Section 42 of the German Employee Inventions Act.

Cooperation between the academic sector and industry can take on many different shapes. A distinction can be made between commissioned research activities and research cooperation. A research assignment with which industry more or less outsources research to institutions of higher education/non-university research institutes and bears all of the costs incurred is distinguished by the fact that research is conducted in a targeted and open-ended way, while pursuing a clearly-defined path. In a cooperation, both parties make specific contributions towards the success of research that is conducted in a targeted and open-ended way. The precise implementation of research that is conducted in a targeted and open-ended way is not defined and the application purpose is not known or defined in detail either. So-called contracts for work and services represent a third type of cooperation. It is distinguished by an unequivocal and known objective and the method of implementation is also known.

There is often considerable need for coordination in small and medium-sized companies and smaller universities especially regarding the legal aspects of contract research and research cooperation.

For it must be borne in mind that all in all, the situation of industry and of universities/ non-university research institutes is characterised by a high degree of diversity. The spectrum of universities range, for instance, from large universities that have their own contract and patent experts to universities that have just a few lecturers and students in which contracts are not fixed in organisational terms. Another aspect worth considering is that awareness that inventions can be used if an application is filed for a patent varies greatly within the various types of universities and size ranges. The same can be said of industry. The various industries and markets call for the companies to take action that relates to the actual situation.

Correspondingly, the administrative support for this field of tasks varies too. This results in a wide range of contracts for cooperation with industry which frequently results in new types of contracts during negotiations.

It was therefore the goal and mandate of the group of experts to simplify the complex subject matter as much as possible - for not all of the parties involved have the necessary know-how required for cooperation between the scientific community and the private sector.

The sample agreements presented in this document are intended to give small and medium-sized universities and indeed small and medium-sized companies in particular the possibility of concluding agreements on various types of R&D cooperation between industry and the scientific community that are both practical and ensure legal compliance, without incurring major legal costs.

Large companies and large universities have the possibility of conducting negotiations on individual agreements on this basis in a more structured and hence efficient way.

All parties involved should be aware that although five years have elapsed since the Amendment to Section 42 of the German Employee Inventions Act came into effect, adaptation to the new legal situation is by no means complete.