Intellectual Property Rights
All new UiO employees are required to sign an agreement concerning the acquisition of rights to work results with a commercial potential (the Acquisition of Rights Agreement).
Illustration photo: colourbox.no
The Act relating to universities and colleges makes it clear that as part of its responsibilities to the community, UiO has a duty to help to ensure that the university’s research results can be exploited commercially, and the University Board adopted the agreement on 28 February 2006.
It follows from the Act respecting the right to employees’ inventions and other acts that UiO has the right to acquire inventions made by UiO’s employees in return for remuneration.
UiO's policy on intellectual property rights
It is stressed in UiO’s policy for the handling of intellectual property rights (pdf) that a separate agreement (pdf) is needed between UiO and employees in connection with the acquisition of rights to the results of work. The agreement is based on the need to supplement and define the statutory solutions and place them in context.
It may also be necessary to supplement statutory provisions in order to fulfil UiO’s obligations to third parties. Research financed by third parties constitutes a substantial portfolio of projects at UiO, the majority of them with funding from the EU or the Norwegian Research Council (NRC).
The agreement also regulates the transfer of individual work results where such transfer is not subject to statutory regulation. For example: plant varieties, other technology and physical items.
What is the purpose of the agreement?
The purpose of the Acquisition of Rights Agreement is to regulate the transfer of rights to work results to which UiO is entitled pursuant to Act no. 21 of 17 April 1970 relating to the right to employees’ inventions, Act no. 2 of 12 May 1961 relating to copyright in literary, scientific and artistic works etc. and Act no. 27 of 15 June 1990 relating to the protection of lay-out design for integrated circuits, and other work results covered by UiO’s policy on rights. The agreement shall also secure the employee reasonable remuneration for the transfer of rights.
What are the main contents of the agreement?
- The agreement entitles UiO to acqire all rights (right of ownership) to work results produced by the employee, and the employee has a right to remuneration from UiO.
- The work results must have a potential for commercial exploitation – this will be evaluated by Birkeland Innovasjon AS (Birkeland Innovation) after the work result has been reported.
- If the employee is in doubt as to whether a work result has a potential for commercial exploitation, he or she shall submit the question to UiO (through Birkeland Innovation).
Which work results are covered by the agreement?
- Patentable and non-patentable inventions
- Other technology that has a potential for commercial exploitation, such as practical solutions, technical principles and know-how, scientific and commercial information and business concepts
- Databases and “catalogues” with appurtenant documentation that are protected by Section 43 of the Copyright Act and that have a potential for commercial exploitation
- Software with appurtenant documentation and source code that has a potential for commercial exploitation
- Plant varieties that are protected pursuant to the Act relating to the plant breeder’s right that have a potential for commercial exploitation
- Layout designs for integrated circuits that are protected by the Circuit Design Act and that have a potential for commercial exploitation
- Physical objects of organic, inorganic or biological material, including substances, organisms and crops, as well as materials, which are a result of UiO’s investments and have a potential for commercial exploitation. The concept ‘UiO’s investments’ covers both the use of university resources and the fact that the items have come into being as a result of activities at UiO.
Which work results are not covered by this agreement?
The agreement does not cover copyright-protected results with the exception of databases, ”catalogues” and software. Publication by a publishing house is not regarded as commercial exploitation pursuant to this agreement.
Will UiO’s acquisition of rights to work results restrict the right to use the work results in further research?
UiO’s acquisition of rights does not restrict the rights of employees or others pursuant to the Patents Act or the Copyright Act to use the work results in further research.
What happens if an employee wishes to publish a work result himself or herself even though this means that the results cannot be exploited commercially?
The agreement safeguards the right to publish, unless third party rights prevent this.
Notification that the employee wishes to publish must be given at the same time as the work result is reported to UiO (through Inven2). The report form (DOFI) will contain a point where publication is reported.
Who is covered by the agreement?
All employees of the University of Oslo.
Who must sign the agreement?
- Persons who are to be taken on as employees of UiO.
- Employees who work on projects with EU or NRC funding.
- Employees who apply for support from Birkeland Innovation in connection with commercial exploitation of work results.
The work agreement and the acquisition of rights agreement
The template for the work agreement includes for practical reasons the provision that a signature on the work agreement applies simultaneously as acceptance of the acquisition of rights agreement.
What do the standard agreements with the EU and the Norwegian Research Council say about the duty of the university to enter into such agreements with its employees?
The Research Council’s general conditions of contract, clause 7.2, fifth paragraph, first sentence:
- “The project manager undertakes to establish such agreements with owners, employees, subcontractors, if relevant, and others, as are necessary to ensure that the project manager becomes owner of the project results and can commercialise them, including sub-licensing them to others.”
EU’s standard conditions: Article II.32.3:
- ”If personnel working for a contractor are entitled to claim rights to knowledge, the contractor shall take steps or reach appropriate agreements to ensure that these rights can be exercised in a manner compatible with its obligations under this contract.”