Granting licenses and options

The CAU endeavors to present its intellectual property rights to a broad public in order to increase its marketing opportunities.

Intellectual property rights of the CAU can be licensed to interested parties. Also options on registered but not yet granted property rights are possible. The sale of property rights takes place only in exceptional cases.

For the CAU, the "Recommendation on the handling of intellectual property in knowledge transfer activities and for a code of practice for universities and other public research organizations" serves as a guideline.

For legal compliance, the CAU observes legal framework conditions such as:

  •     Law on employee inventions ArbnErfG
  •     Communication from the European Commission - Union framework for State aid for research, development and innovation (2014 / C 198/01) (EU state aid law)
  •     Commission Regulation (EU) No 1217/2010 of 14 December 2010 on the application of Article 101 (3) of the Treaty on the Functioning of the European Union to certain categories of research and development agreements
  •     Commission Regulation (EU) No 316/2014 of 21 March 2014 on the application of Article 101 (3) of the Treaty on the Functioning of the European Union to categories of technology transfer agreements
  •     Guideline "Corruption Prevention and Anti-Corruption in the State Administration of Schleswig-Holstein (Anti-Corruption Directive SH)
  •     Provincial ordinance on the secondary employment of civil servants working in higher education (Hochschulnebentätigkeitsverordnung SH (HNtVO))
  •     BGH judgment Az. X ZR 59/12 (2013) on the filing of patents for used invention inventions, (so-called Dusseldorf decision)

The CAU also expects compliance with these framework conditions from its licensees.

As a rule, non-exclusive licenses are granted which are subject to thematic restrictions. An exclusive license is usually granted retrospectively if it becomes apparent during the course of the license marketing that an economic success and thus regular license payments occur. If an exclusive license is sought from the outset or if there are personal connections between higher education inventors and licensees, the CAU will commission an external appraisal of values ​​in advance of the negotiations, the valuation of which will form the basis of the license negotiations.

As a matter of principle, payments in the amount of the expenses incurred and percentage royalties, and in the absence of turnover, also annual increases in minimum licenses. From the beginning of the contract the licensee bears all running costs for maintenance and extension of the protection rights desired by the licensee.

CAU-based spin-offs, whose participants are also usually co-inventors, can use CAU options and licenses in their young companies. The CAU distinguishes between spin-offs and "extended workbenches". The former are developing their business plan on the basis of a patent family and want to break away from the university with an independent company. However, "extended workbenches" have the business purpose of continuously collecting research results from the university and further developing them into products and processes for economic applications. As a rule, participants do not want to leave the university. They are thus in the unprotected competition of the free market.

Licensing conditions for spin-offs can be linked to milestone developments based on their business plan. If such recovery plans are developed together with the CAU, the risk can be shared in an initially non-exclusive license agreement. On the other hand, the CAU has to be more involved in the success later.

The Technology Transfer Unit will also be happy to advise you on these issues.