DTU—your collaboration partner
Framework for agreements on research collaboration
Since 1829
DTU has worked to create value for society using the technical sciences
Every year, DTU enters into more than
1,600 agreements with companies
COMMISSIONED RESEARCH PAYMENT CO-FINANCED RESEARCH MARKET PRICE FIXED PRICE
DTU—your collaboration partner
Since its foundation in 1829, developing and creating value for society in close collaboration with the corporate sector has been part of DTU’s DNA.
DTU enters into more than 1,600 research agreements with companies annually. Danish companies engaging in collaboration with DTU experience greater growth than their peers.
As a public research institution, DTU is subject to a set of rules and regulations governing its collaboration with the corporate sector. Among other things, we are subject to legislation that clearly defines the scope of research collaboration agreements negotiable by DTU.
By reading this folder, you can gain an insight into what it takes to enter into an agreement with DTU, should you have an idea to a research project.
Thank you for your interest in collaborating with us.
President Anders O. Bjarklev and Director for Innovation and Entrepreneurship, Senior Vice President Marianne Thellersen
Two models for collaboration on research—two different models for negotiation
DTU may enter into research collaboration in two fundamentally different ways. Research collaboration may be carried out as either ‘co-financed research’ or ‘commissioned research’.
The basic structures of the two models are determined by law.
The two models differ in a number of areas. They offer different terms and conditions for exploiting project results, for keeping the results confidential, and for determining the price for performing the work. The models thus offer two different paths that the parties can take when entering into collaboration.
It may therefore prove beneficial to know a bit about the two models if you are to enter into negotiations about a collaboration agreement with DTU.
Differences between the two models for collaboration
CO-FINANCED RESEARCH
Nature of the project: DTU’s activities as a project partner must support DTU’s core tasks and as a general rule must support research and publication.
University finances: DTU can finance part of the project. The project budget must include overhead costs. Government research funding usually factors in overheads at a rate of 44% of total expenditure.
Publication: It must be possible for DTU’s results to be published.
Rights: DTU’s results belong to DTU. DTU can grant the company the right to use the results on market terms. Alternatively, fast-track terms can be agreed by DTU and the company, whereby DTU’s share of the rights is transferred to the company in advance and at a fixed price.
COMMISSIONED RESEARCH
Nature of the project: The activities must be spin-outs from DTU’s ordinary activities and are therefore not core research activities. The activities could take the form of consultancy services or the commercial use of DTU’s facilities.
University finances: All DTU’s costs must be covered, and the activities must not undermine competition in the area. Higher overheads are therefore budgeted than in the case of research collaborations— typically 200% of salary costs.
Publication: DTU’s results can be kept confidential.
Rights: The partner can be granted rights to DTU’s results.
Co-financed research
Co-financed research is research that serves to expand the knowledge of both DTU and the company.
Generally, co-financed research is financed by means of the company’s and DTU’s contribution of resources to the project. Projects can also be co-financed by a grant from e.g. Innovation Fund Denmark. If government funding is provided, the findings of the project must be of value to society in general.
Budgets for co-financed research projects must include an amount to cover DTU’s overhead costs.
For agreements to be made with DTU on co-financed research, a number of conditions must be met:
• DTU’s participation in a co-financed research project is conditional on DTU having a research interest in the project.
• The results created by DTU in the project must belong to DTU. DTU may transfer the right to use the results on market terms.
• DTU must be able to publish its own research results.
• DTU cannot promise that the project will produce results that will be of use to the company.
• DTU is obliged to limit its liability for damages and cannot take out liability insurance.
DTU’s fast-track terms can be used in connection with the co-financing of a research project by a company and DTU. Under these terms, companies can secure the rights to a joint invention at a pre-agreed price and within a clearly defined field.
Fast-track terms for co-financed research collaborations
All the other terms of the agreement are basically the same as the ones applying to research agreements co-financed by the Danish universities.
The fast-track price terms are non-negotiable.
Fast-track terms ensure that the company:
• knows in advance the price of DTU’s share of the joint invention arising from the collaboration.
• has the right to have DTU’s share of the joint invention transferred as soon as possible.
The price of exclusively owned inventions must still be negotiated once the invention has been made. The same goes for software.
How much does it cost to acquire DTU’s share of the rights on fast-track terms?
DTU’s share of a joint invention can be acquired in two ways.
1.
A lump sum of EUR 10,000 + royalties of 1% of net sales. or
2.
A lump sum of EUR 10,000 + EUR 79,900 divided into three instalments:
• The first instalment is EUR 3,300 at the time of filing the patent application.
• The second instalment of EUR 10,000 is paid at the time of publication of either the first patent application or the first patent.
• The third instalment of EUR 66,600 is paid at the time of issue of the first patent.
The fast-track terms can also be used in PhD projects where the student is employed at DTU. However, they cannot be used in projects with industrial PhDs and PhDs employed by companies. Instead, the company must buy the DTU supervisor’s share of a joint invention for a lump sum of EUR 10,000.
The company can choose to abandon the patent after the first or second instalment if it does not make sense for the company to continue. If the company abandons the patent, the invention must be published.
Commissioned research –commercial activities
Commissioned research is research on commercial terms. The research must be a natural spin-out from DTU’s ordinary activities or consist of the purely commercial exploitation of DTU’s expertise or facilities. It can take the form of e.g. the sale of consultancy services, analyses, measurements, and tests.
Commissioned research must be fully financed by the company commissioning the research.
Financing provided by the company must cover DTU’s total direct and overhead costs.Under DTU’s internal guidelines, project overheads must as a general rule be fixed at 200 % of salary costs.
A commissioned research agreement may include a number of terms that differ from the terms set out in co-financed research agreements:
• DTU may assign the rights to DTU’s results and consider the payment for the results to be included of the company’s financing of the project.
• DTU may keep confidential its own results from the commissioned research.
• DTU has insurance to cover any product liability as well as professional liability
Q&A
Who can use the knowledge created in the project?
#1
Most research projects generate new knowledge created by the university, by the company, or by the parties jointly. It is important for DTU that any new knowledge to which DTU has contributed creates value in society.
Sometimes new knowledge can be patented or subject to other rights. These rights are called intellectual property rights or IPR. When new knowledge is covered by IPR only the partner who holds these rights is allowed to use the new knowledge in a commercial context. It is particularly important to be aware of any rights associated with patentable inventions and with software.
• In the case of inventions made by DTU researchers as part of commissioned research, DTU grants its partner the rights to the invention as part of the project agreement.
• In the case of inventions made by DTU researchers in connection with co-financed research, DTU may decide to grant its partner a right of first refusal to acquire the rights to the invention.
Both in agreements on commissioned research and in agreements on co-financed research, DTU needs the company’s right to DTU’s results to be limited to the specific academic field that the project concerns. This enables DTU to separate the rights granted in different research projects.
In practice, this is done through the description of the so-called ‘field’.
What does the company have to pay for the rights?
In commissioned research projects, DTU grants its partner the rights to the invention as part of the project agreement. Compensation for the rights is included in the payment for the commissioned research.
#2
In co-financed research projects, compensation for the rights is not covered by the company’s possible contribution to DTU’s research. In this case, the company must pay the market price for the invention. If DTU sells rights below the market price, DTU may be guilty of providing illegal state aid.
In connection with co-financed research, fasttrack terms may be agreed, whereby the price and conditions are known in advance. The price and terms of the agreement are non-negotiable.
Fast-track terms are based on prices from previous negotiations and are considered to reflect market conditions.
Q&A
What are DTU’s rights in relation to inventions?
Existing legislation governs how DTU can use the results created by DTU researchers. DTU can only enter into agreements concerning results to which DTU holds the rights.
• DTU can take over the rights to any inventions made by DTU employees. This follows from the Danish Act on Inventions at Public Research Institutions (Forskerpatentloven).
#3
• The Act on Inventions at Public Research Institutions also allows DTU to enter into agreements with e.g. students to take over the rights to their inventions.
The Act on Inventions at Public Research Institutions sets out a number of requirements that must be met when an employee at DTU has made an invention:
• As soon as a researcher makes an invention, the inventor must report the invention to DTU.
• Once DTU has received the report, DTU has two months to decide whether DTU wants to take over the invention.
• If DTU chooses to take over the invention, DTU is under an obligation to promote the active exploitation of the invention. If DTU fails to do so, the rights to the invention must revert to the inventor.
• DTU must share any profits from the commercialization of the invention with the inventor.
• At DTU, inventors receive a share corresponding to one-third of any profits generated by DTU from the invention. In the case of inventions made by multiple inventors from DTU, they split their share of the profits.
What rights does DTU have to software?
#4 #5
The rights to software developed by DTU employees as part of their work automatically belong to DTU.
In the case of software created DTU can enter into an agreement whereby the rights be transferred to DTU. This may be relevant in the case of students or guest researchers, for example.
The copyrigth to software is not subject to the same rules which are applicable to inventions. DTU is therefore not under the same obligation to promote the active exploitation of the software or to return the rights to the researcher(s) who created the software. Some software developed at DTU is based on software licensed as open source. This may limit DTU’s ability to enter into agreements on the transfer of rights to DTU’s software.
Can DTU commit to producing specific results?
DTU can never commit to producing specific results. That would be contrary to the general principles of good research practice. DTU can commit to participating in and to carrying out a specific project or to making certain measurements.
Q&A
Will the project results be made public?
DTU’s researchers must publish their own results if the results are suitable for publication. The only exceptions to this rule are results created in connection with commissioned research.
In connection with co-financed research, DTU can agree with its partners how and when publication will take place. This is to allow time to file a patent application if patenting of DTU’s results is either useful or possible.
Public and private financing
The law requires DTU to give public access to information on private financing. This means that the company must accept that information about the research project title, the company’s name and the amount of funding is made public.
PhD students
All PhD students, regardless of where they are employed, must defend their thesis in public in order to be awarded the PhD degree. At the defence, the results of the PhD student’s work must be presented. The defence must be held within three months of submission of the PhD thesis.
The defence may be postponed for up to four months to allow for an invention to be patented.
It is also possible to keep part of the PhD student’s thesis confidential, but only if the rest of the thesis can stand on its own.
What can DTU keep confidential?
#7
Secrets of partners
DTU’s researchers must keep secret any confidential information disclosed to them by a company. In the case of secrets disclosed to a researcher by a company, the obligation to keep the information secret can be stipulated either by law, or in an agreement.
• Information that must be kept confidential under the law includes e.g. information about technical devices and business matters when non-disclosure of such information is of significant financial importance to the individual or company concerned. In such case, DTU’s researchers can and must keep the information secret even if there is no agreement to do so.
• Moreover, some companies may wish to ensure the confidentiality of more information than the information protected by law. In such situations, DTU will in many cases be able to enter into an agreement with the company to keep the information secret. It may also be agreed that the parties should continue to observe a duty of secrecy for a certain period of time after the end of the project.
Own results in connection with commissioned research
DTU’s researchers can decide to keep their own results from commissioned research projects secret.
Room for negotiation
±Within DTU’s two research project collaboration models (co-financed research and commissioned research) it is possible to negotiate agreements that take into consideration the interests and wishes of the parties. A clear framework is established by both models, but with considerable scope for tailoring solutions to individual projects and project participants.
When negotiating a research project agreement, it is helpful if both parties have a clear idea about what is important and what is possible.
If it is important to DTU’s partner to know the price of a potential invention in advance, and being able to commercialize it quickly, then fasttrack terms may be the best solution. Under the fast-track terms, the price is non-negotiable.
It is possible to get an idea of what DTU’s agreements look like. Templates for DTU’s agreements can be found at dtu.dk. If further information is needed, DTU’s lawyers are ready to answer any questions. You can contact them at kjk_team1@adm.dtu.dk
Photos: Mikkel Adsbøl, Steen Brogaard, Héctor J. Rivas Unsplash, Martin Dam Kristensen and Mikal Schlosser
