Interpretation of the Guidelines for the Formulation of Intellectual Property-related Provisions of Industry-University-Research Cooperation Agreements (Trial)

In order to promote industry-university-research cooperation and the transfer and transformation of intellectual property rights, guide enterprises, institutions of higher learning and scientific research institutions to do a good job in the ownership and disposal of intellectual property rights in industry-university-research cooperation, and effectively prevent and control relevant legal risks, the State intellectual property Office, the Ministry of Education and the General Office (Office) of the Ministry of Science and Technology jointly issued the guidelines for the formulation of intellectual property-related provisions of industry-university-research cooperation agreements (trial) (hereinafter), the contents of the Guidelines are now interpreted as follows.
Q: What is the background of the guidelines?
Answer:At present, the level of patent transformation and application of colleges and universities in China is relatively low, and the effective patent implementation rate and industrialization rate of colleges and universities are significantly lower than the national average. Industry-university-research cooperation is an important mode of patent transformation and application in colleges and universities, but there is a hidden danger of unclear contract agreement, and intellectual property disputes are common in industry-university-research cooperation. According to the public data of court judgment documents, more than 50% of the cases of intellectual property contract disputes in colleges and universities that have been settled in the past ten years are related to the unclear agreement of relevant terms. The main reasons for the disputes are the unclear agreement of patent transfer, service invention reward, patent implementation license, trade secret and other terms. For example, a university in Beijing had a dispute with a cooperative enterprise due to unclear trade secret agreements, and universities in Tianjin and Hubei had been involved in disputes due to unclear job invention rewards and remuneration agreements. The survey found that the industry-university-research intellectual property disputes that entered the litigation process were only the tip of the iceberg, and most of the disputes were not made public due to negotiation or termination of cooperation.
There are many reasons for the above phenomenon.
First, most of the intellectual property-related contracts concluded by colleges and universities and enterprises in the cooperation of industry, university and research are mostly format contracts, the terms are simple and not rigorous enough, and the potential intellectual property risks are not estimated enough.
Second, when the industry-university-research institute negotiated cooperation, they did not pay enough attention to the rights and obligations related to intellectual property rights, did not have enough understanding of the transaction attributes of industry-university-research cooperation, and did not clarify the core content of intellectual property ownership through negotiations before signing the agreement.
Third, most colleges and universities lack professionals for the transfer and transformation of intellectual property rights, and lack of experience and ability in intellectual property operation.
In response to the above problems, the three departments jointly formulated the guidelines. On the one hand, it can guide both parties to clarify the ownership and disposal of intellectual property rights from the beginning of the project, thereby improving cooperation efficiency, reducing legal risks, and avoiding intellectual property disputes; on the other hand, it is conducive to improving the cooperation between colleges and universities and enterprises. Legal awareness, transaction awareness and negotiation awareness, standardize and guide the process of intellectual property transactions.
Q: What is the main content of the Guidelines?
Answer:In order to improve the pertinence, the guidelines only list the core provisions related to intellectual property rights in the industry university research cooperation agreement, including common provisions and individual provisions. Common clauses include definition and interpretation, confidentiality, etc. Individual clauses are divided into three categories according to the common situation of intellectual property ownership in industry-university-research cooperation: intellectual property is owned by universities or research institutes, owned by enterprises, shared by both parties or owned by each other. According to the different disposal methods of intellectual property rights, it is further subdivided into 7 situations. The specific content of the personality clause includes the ownership and use of intellectual property rights, academic publication, etc.
It should be noted that under the "relevant provisions on intellectual property rights owned by universities or scientific research institutes", drawing on foreign experience, a model in which cooperative enterprises have the right to negotiate transfer or license within a certain period of time is introduced. This model is conducive to speeding up the commercialization process of patented technology and enabling colleges and universities to obtain higher intellectual property rights conversion benefits.
In addition, in the context of advancing the reform of the empowerment of job-related scientific and technological achievements, the Guidelines specifically consider the granting of scientific research personnel the ownership or long-term use of job-related scientific and technological achievements, clarify the relevant content, and avoid the possibility of multiple rights entities in the disposal of intellectual property rights. The problem of the company will better promote the smooth transformation of job inventions.
Q: What is the use of the guidelines?
Answer:Colleges and universities and enterprises can draw up the relevant provisions of the cooperation agreement on intellectual property rights according to the disposal methods of intellectual property rights preferred by both parties and with reference to the contents of the corresponding types of provisions in the guidelines, and make adaptive modifications to the contents of the provisions according to the actual situation, as part of the relevant agreements and contracts of industry-university-research cooperation.
At the same time, in order to facilitate the use of all parties of schools and enterprises, combined with the main content of the "Guidelines", the State Intellectual Property Office has organized and developed corresponding basic public welfare service tools, which can be filled in and generated online for industry-university-research cooperation agreements. Both parties of the industry-university-research cooperation can refer to the instructions for use and select the appropriate agreement template for online filling according to the intellectual property ownership of the relevant achievements of the industry-university-research. After filling in, the user can download the completed agreement text by himself.
Q: What is the next step after the release of the Guidelines?
Answer:In the next step, the three departments will use multiple channels to promote universities, scientific research institutes and small and medium-sized enterprises, organize special training or develop special training courses, and effectively reduce the intellectual property risks in the process of industry-university-research cooperation. In addition, during the trial implementation of the "Guidelines", the three departments will collect feedback from all parties in a timely manner, and update or develop detailed versions for different scenarios and objects according to social needs.

Source: State Intellectual Property Office