Status 23.6.2005
Appendix 2
to the Contract Researchsection
[Text to be used with project leader’s letterhead]
Declaration of consentto the obligations of the role of project leader
in the contract between [University] and [Industry Partner]
forthe research project [abbreviation]
Dear Mr/Ms [Name],
Within the framework of the aforementioned contract, you participate in the execution of the contract work,either with an employment relationshipwith the university or without one (e.g.degree candidate, PhD candidate or student).
The contract between the university and the industry partner also contains stipulations regarding the confidentiality of technical knowledge and information that is directly or indirectly accessible to the researchers involved within the framework of the collaboration with the industry partner. You therefore undertaketo treat as confidential all information, documents and business transactions of the industry partner and the universityto which you become privy through the research project, and to refrain from disclosing such information to third parties. This confidentiality obligation will continue to apply for5 years after the research project ends.
Furthermore, you acceptthe following binding obligations in relation to the industry partner under the contract:
- Ownership of inventions developed prior to the start of the research project and for which you have applied or been granted intellectual property rights (hereinafter,‘existing proprietary rights’)will not be affected by this agreement. As and when the utilization ofthese existing proprietary rights may be beneficial to the valorization ofthe research results and is not in conflict with the rights of third parties, you will grant the industry partnerthese said rights in a non-exclusive license in line withmarket conditions.
2.If you are involved in a research project without an employment relationshipwith the university, you must,in advance, transfer all rights to the research results and any resulting inventions which may be made in the future to the industry partner.
3.With regard to the copyrights relating toresearch results and inventions, you will grant the industry partnerthe right to exclusive and transferable use in any form without restrictions ontime, place or content.In instances when the industry partneruses your copyright protected works or any objects with related rights for commercial purposes and you do not have an employment relationshipwith the university, the industry partner will remunerate you appropriately as the copyright owner, in accordance with § 32 UrhG.
4.Moreover, you retainthe non-exclusive, non-transferable right to use your own research results, inventions and copyrightable works for research and teaching activities, subject to the contractual restrictions regardingdisclosure as specified inclause 6 below and the contractual restrictions regarding your confidentiality obligationwith respect tothe industry partner’s proprietary information. Further, you may only use your research results, inventions and copyrightable works for research for/with third partiesif you receivethe prior written consent of the industry partner. The industry partnermay not unreasonably refuse such consent. This does not include existing proprietary rights, know-how existing prior to the signing of the contract or non-confidential items.
5.As an employee of the university working with the industry partner, you undertake to notify the universityof all employee inventions, in line with § 5 ArbnEG, and to inform it ofthe inventor percentage. If you have an employment relationshipwith the university, you waive the right to exercise your negative publication right,deriving from § 42 Nr. 2 ArbnEG, in relation to all research results achieved with the industry partner in connection with the contract. The notification requirement is only waived in exceptional cases when disclosure cannot be reasonably expected out ofrespect foryour academic responsibility and reputation.
If you are involved in the research project without an employment relationshipwith the university,in your dealings with the university and industry partneryou undertake to report all research results and inventions from the research project to the university.
6.In your dealings with the industry partner, you undertaketo refrain from publishing research results during the research project without the written consent of the industry partnerand to refrain from otherwise disclosing researchresults to third parties– even in the pre-publication phase – unless the industry partner intends to publish itself. You will provide both the university and the industry partner with the manuscript intended for printing or oral publication (hereinafter,‘the publication’) at least sixty (60) days, or in urgent cases at least thirty (30) days, prior to givingthe manuscript to third parties or presenting it for review. If, within forty-five (45) days, or fifteen (15) days in urgent cases, of receipt of the manuscript, the industry partner informs you that the publication affectsits confidentiality interests, you will cooperate with the industry partnerto establish agreement by modifying the manuscript. Ifthe industry partner fails to respond within the forty-five (45) days,or in urgent cases within fifteen (15) days, the consent to publishwill be deemed to have been granted.
Consent from the industry partner is no longer required for the planned publication of research results after the conclusion of the research project.However,the industry partnermayobject to the publication of research results which the industry partnerviews ascopyrightable if publishing would affect a sensitive copyright application already in the preparatory stages. The industry partner will withdraw its objection, however, once the copyrightapplication has been filed. This will occur no later than six (6) months after the research project ends.
7.If the universitychoosesnot to exercise its reversion of rights as set out in the contract between the university and industry partner, the university will grant the industry partner a non-exclusive, international, irrevocable, non-transferable right to use the relevant invention and the resulting copyrights.
8.You willsupport the authorizedcontract partnersin the acquisition of new industrial property rights (patents), in particular,by submitting all necessary declarations in a timely and accurate manner. You will also refrain from anything which may jeopardize the obtaining and maintaining of new industrial property rights.
9.Ifany provision of this agreement becomes null andvoid, this will not affectthe validity of the remaining provisions. In such cases, the parties will replace theseprovisions with new, valid provisions which best serve the intentions of the contract. This alsoapplies to issues not covered by the contract.
Please sign a copy of this letter to indicate your consent. Thank you for your cooperation.
[final clauses]