Inventions, public research institutions

 

In the event of any inconsistency between the Danish and English language versions of the document, the Danish version prevails

 

Re.: Danish Act on inventions at public research institutions

Further to its previous correspondence concerning Danish Act no. 347 of 2 June 1999 on inventions at public research institutions, the External Cooperation Committee would like to inform you of the procedure involved in a patenting process and the guidelines for reporting procedures etc. that apply from 1 January 2000.

From 1 January 2000 onwards, the University must be ready to receive reports about the inventions made by its employees. The University must also coordinate subsequent patenting and marketing tasks.

1. Organising the administrative work

Internally at the University, the tasks involved in utilising research results, patenting etc. will be dealt with by a Patents Committee set up by the rector, which will start work on 1 January 2000.

This committee will be chaired by the pro-dean, with one representative being appointed from the Faculty of Health Sciences and one from the Faculty of Science. Permanent replacements for these members will also be appointed. The committee members cannot be expected to cover all areas of expertise, so the committee will be supported on an ad hoc basis by relevant experts.

The secretariat tasks will be performed by the Rector's Office, who will receive reports about inventions and administer patent issues. The secretariat will also be responsible for coordinating reports submitted by staff employed both by the University and by the hospital sector, and for collaboration with the patents committee set up by the County of Aarhus.

Externally, the tasks connected with utilising research results, patenting etc. will be performed with the assistance of (among others) Østjysk Innovation A/S, with whom the University will be signing a cooperation agreement this December.

The objective of this cooperation agreement is that Østjysk Innovation A/S should help the Patents Committee to establish a decision-making basis, thereby helping to ensure that the University can perform the tasks which the University is obliged to perform under the Act.

With a view to achieving this objective, Østjysk Innovation A/S will establish an organisation to deal with the tasks of research institutions in connection with patenting, licensing and the transfer of technology within the Aarhus region. In addition to its tasks for the University, this organisation will also perform similar tasks for the hospitals in the County of Aarhus and the Danish Institute of Agricultural Sciences.

2. Procedure involved in the patenting process

This letter will focus in particular on procedures for reporting.

The External Cooperation Committee has drawn up a note entitled "Description of procedure in a patenting process". This note contains a description of the typical process adopted for inventions made after 1 January 2000, as expected by the External Cooperation Committee. References to this note will be made below.

a. Reporting inventions

The employee feels that he/she may have made a patentable invention.

The employee knows that an invention can only be patented if it is new and if the innovation value of the invention may be damaged if the invention is published before a patent application has been submitted.

The employee then informs the University in writing about the invention in accordance with a fixed procedure which can be briefly described as follows:

The employee contacts their head of institute or the person the institute has appointed to receive information about inventions in the subject area concerned.

                      The employee and head of institute (or the person the institute has appointed to receive information about inventions in the subject area concerned) decide whether an invention has been made. If they conclude that it is an invention, they complete a report form (see attached form and guidelines).

The form is sent to the Rector's Office, which functions as a secretariat for the Patents Committee.

b. The report is received by the Rector's Office

The Patents Committee secretary confirms receipt of the report by sending a letter to the inventor.

At the same time, the inventor is instructed to refrain from publishing or utilising the invention for a period of two months, and the inventor is asked to attend a meeting of the Patents Committee to discuss the invention as soon as possible. At this meeting the inventor will be given the opportunity to provide supplementary information about the invention, and the Patents Committee will discuss with the inventor how the rights to the invention can be utilised commercially and how further efforts in the case should be organised.

c. First meeting of the Patents Committee

Please see the note on "Description of procedure in a patenting process", in which the content of this meeting is described in detail.

The most important thing is that at this meeting a decision should be taken as to whether the University should refrain at this early stage from taking over the invention, or whether the University should take it over.

If it is decided that the University should refrain from assuming the rights to the invention, the inventor will be informed of the fact (perhaps at the meeting, but if not at the meeting then certainly by letter).

If it is decided that the invention will perhaps be taken over by the University, remuneration to the inventor will be fixed in accordance with the guidelines mentioned below, and one or more external consultants will be asked to assess the case.

d. Østjysk Innovation A/S

Please see the note on "Description of procedure in a patenting process", in which Østjysk Innovation A/S is named as the external consultant, and in which the tasks involved at this stage are described.

As mentioned above, the task of Østjysk Innovation A/S is to establish a decision-making basis for the Patents Committee. Under the Act the University is obliged to assess the potential for utilising the invention commercially and protecting the rights associated with the invention, and must discuss how the rights can be utilised commercially with the employee concerned. This must be done within two months of an employee reporting a potentially patentable invention.

e. Second meeting of the Patents Committee

Once the recommendations of Østjysk Innovation A/S have been presented, a second meeting of the Patents Committee will be convened.

At this meeting a final decision must be taken as to whether the University should refrain from taking over the invention, or whether the University should take it over.

If it is decided that the University should refrain from taking over the rights to the invention, the inventor will be informed of the fact (perhaps at the meeting, but if not at the meeting then certainly by letter).

If it is decided that the invention should be taken over by the University, the case will be transferred for further processing by Østjysk Innovation A/S. The inventor will be informed of the fact (perhaps at the meeting, but if not at the meeting then certainly by letter).

f. Further steps

Please see the note on "Description of procedure in a patenting process". It is merely worth noting here that the University may also decide to refrain from taking over the rights to the invention at a later stage in the patenting process.

3. Guidelines for calculating "reasonable remuneration"

Pursuant to section 12(1) of the Danish Act on inventions at public research institutions, the inventor is entitled to "reasonable remuneration" from the institution when (and if) the invention generates any income. Similarly, pursuant to section 12(2) the institution is entitled to "reasonable remuneration" from the inventor if it is agreed that the inventor should have the right to utilise the invention commercially himself. The institution's guidelines for establishing remuneration are subject to the approval of the Danish Minister for Research.

The Ministry of Research has not yet issued directions to institutions concerning the content of these guidelines. These directions are expected in the course of December. As soon as the directions have been received, the External Cooperation Committee will draw up the guidelines of the University of Aarhus. These guidelines will be issued as soon as the approval of the Ministry of Research has been given.

4. Other precautions

If students take part in research projects, it may be necessary to enter into separate agreements on the legal position of students and on confidentiality.

For this purpose, the External Cooperation Committee has drawn up the attached declaration of confidentiality.

This declaration can be used when a student wishes to take part in a research project in which inventions with the potential for commercial utilisation may be made. Participation in the project must be voluntary, and the performance of tasks in the project should not form part of the student's compulsory study activities. The aim of the declaration is to ensure that the potential for protecting and utilising the rights to any invention is not lost, and to ensure that the student's rights are identified, including any remuneration of the student. The declaration must be signed by the student and research manager concerned.

5. Concluding remarks

The External Cooperation Committee hopes that this letter provides adequate information about the legal situation and administrative procedures involved in the utilisation of research results after 1 January 2000. As mentioned above, guidelines for calculating "reasonable remuneration" will be issued as soon as they have been approved by the Danish Minister for Research. Please address any inquiries about the new Act to Elsebeth Pedersen, administrator, at the Rector's Office on telephone number (+45) 8942 1146 or by email at: ep@adm.au.dk

Yours faithfully

Palle Bo Madsen

pro-dean

/ Elsebeth Pedersen

administrator