My work at the Max Planck since 2009 has all been conducted under the following non-legally binding agreement, which is partially reproduced below
This memorandum in no way seeks to vary the standard MPIEB employment conditions as they relate to patenting and is intended solely to establish certain guiding principles upon which any generated intellectual property could be managed by the Max Planck Gesellschaft (MPG), should they consider patenting desirable.
1) In line with the declared MPG guidelines that an ‘important principle’ in the negotiation of licensing agreements is that it places ‘no restrictions on the freedom of research, freedom regarding scientific cooperation and freedom regarding publications’. This lack of restriction of use and application for inventors should be guaranteed in all licensing agreements, whether or not they are employed by MPIEB. Likewise, any licensing agreements should ideally not act to restrict the ability of academic and non-profit entities to access and develop these technologies for responsible research and humanitarian/non-commercial applications. Finally, it is understood that if exclusive licensing agreements are considered necessary by MPG for commercial exploitation of the technologies, such licenses should include reservation of rights for non-commercial public research and humanitarian purposes (see example clauses below).
2) It is important to appreciate that due to the currently controversial nature of this technology a long term strategic view prioritizing responsible and appropriate use of the technology is most likely to ultimately result in the most satisfactory outcomes in term of both public benefit and also possible revenue generation. Consequently, it is important that early application should be focused on endeavors (most likely non-commercial in nature) for which this technology is uniquely appropriate, that could provide maximum public benefit, with minimal risk of undesired outcomes.
SAMPLE CLAUSE: Reservation of Non-commercial academic research rights from Stanford University
“Stanford retains the right, on behalf of itself and all other nonprofit academic research institutions, to practice the Licensed Patent and Technology for any purpose, including sponsored research and collaborations. Licensee agrees that, notwithstanding any other provision of this Agreement, it has no right to enforce the Licensed Patent against any such institution.”
SAMPLE CLAUSE: Reservation of humanitarian rights from PIPRA
Definitions:
“Humanitarian Purposes” means (a) the use of Invention/Germplasm for research and development purposes by any not-for-profit organization anywhere in the World that has the express purpose of developing plant materials and varieties for use in a Developing Country, and (b) the use of Invention/Germplasm for Commercial Purposes, including the use and production of Germplasm, seed, propagation materials and crops for human or animal consumption, in a Developing Country.
“Commercial Purposes” means to make, have made, propagate, have propagated, use, have used, import, or export a product, good or service for the purpose of selling or offering to sell such product, good or service.
“Developing Country” means any one of those countries identified as low-income or lower-middle-income economies by the World Bank Group at the time of the effective date of this agreement and all other countries mutually agreed to by Licensor and Licensee.
Reservation of rights. “Notwithstanding other provision of rights granted under this agreement, University hereby reserves an irrevocable, non-exclusive right in the Invention/Germplasm for Humanitarian Purposes. Such Humanitarian Purposes shall expressly exclude the right for the not-for-profit organization and/or the Developing Country, or any individual or organization therein, to export or sell the Germplasm, seed, propagation materials or crops from the Developing Country into a market outside of the Developing Country where a commercial licensee has introduced or will introduce a product embodying the Invention/Germplasm. For avoidance of doubt, not-for-profit organization and/or the Developing Country, or any individual or organization therein, may export the Germplasm, seed, propagation materials or crops from the Developing Country of origin to other Developing Countries and all other countries mutually agreed to by Licensor and Licensee.
