RIGHT TO PUBLISH
EPFL has the mission to disseminate the knowledge acquired in accomplishing its tasks and to publish its works. EPFL research results cannot be kept confidential and the researchers shall be able to publish them (after a reasonable deadline to apply for a patent).
OWNERSHIP OF KNOW-HOW REMAINS AT EPFL
EPFL is a public institution with a mission of teaching and research and a goal of dissemination of its knowledge. In this context, EPFL grants to the industrial partner the priority right to file patent applications on the results of the project in its name and at its costs (see Intellectual Property here); the industrial partner shall also be free to use the non-patented know-how and knowledge of EPFL generated during project; but there is no transfer of ownership of such know-how and knowledge.
USE OF PATENTED RESULTS
When an industrial partner applies for a patent on results of a project, EPFL keeps the right to use such patent, with the right to grant sublicenses, outside the field(s) of use (precisely defined in the agreement). The partner benefits from exclusivity inside such field(s).
In any case, EPFL may use any patent for education and research purposes in any field.
The industrial partner and EPFL may freely use the project results that are not patented.
USE OF SOFTWARE
In general the industrial partner has a non-exclusive right to use the codes developed during the project. Exclusive rights may be negotiated in particular cases, notably if the software is developed “ab initio” in the project.
The purpose of these agreements is different. Given its purpose (research), the research agreement or the industrial grant agreement generally leads to the creation of new intellectual property, while the service agreement leads to a well-defined deliverable (description of services) using existing skills and knowledge (e.g. routine analysis, tests, measurements, expertise).
Based on the nature of the tasks to be performed by the laboratory, the agreement will be qualified as “research” or “service”.
Publication rights and use of the results / data generated by EPFL are radically different:
No right to publish or use for EPFL in service agreements;
Right to publish and use (as per the agreement) for EPFL in research agreements.
The purpose of the agreements is the same, but due to the particular situation of the laboratory or the specificity of the project, the intellectual property rights granted to the industrial partner are different:
Research agreement: exclusive rights on the patented results in a defined field of use.
Industrial grant: priority right to negotiate a license or a transfer (option).
In the context of cooperation between a laboratory and an external partner, the following principal aspects shall be determined by means of an agreement:
Planned work program (including duration and milestones), in form of a specific annex;
Budget and funding;
Intellectual property (rights on results, patents and software);
Confidentiality of shared information;
Responsibility of the parties.
The TTO is your partner for drafting, negotiating and approving agreements with industrial partners. Do not hesitate to call upon us quite early in the process, in order to ensure an efficient conclusion of the agreements.
Agreements with industrial partners of more than CHF 50’000.- are subject to approval by TTO before signature and, from now on will also be signed by the head of the TTO.
The agreement shall comply with the rules of EPFL and is negotiated in collaboration between the TTO and the concerned laboratory. The management, including the financial management, and the execution of the agreement is the responsibility of the laboratory.