Rector's Directive No. 47/2018 ****************************************************************************************** * ****************************************************************************************** ****************************************************************************************** * Measure of the Rector of Charles University on Knowledge and Technology Transfer at Char ****************************************************************************************** Date of effect: 12 November 2018 *========================================================================================= * Introductory Provisions *========================================================================================= 1.The creative activities implemented at Charles University (“the University” or “CU”) in research, development, and innovation generate outputs which are defined in the CU Recto the implementation of intellectual property rights at CU, or such outputs are generated Act No. 130/2002 Sb., on the support of research and development from public funds and o to some related acts (“the Act on the Support of Research and Development”), as amended. of creative activities are related to intellectual property rights and the University is dispose of such rights. The intellectual property rights may be subject to knowledge and transfer as provided in this directive. 2.Knowledge and technology transfer means in accordance with Point 15 of the Framework for research and development and innovation (“the framework”) any process which has the aim collecting and sharing explicit and tacit knowledge, including skills and competence in and non-economic activities such as research collaborations, consultancy, licensing, spi publication and mobility of researchers and other personnel involved in those activities scientific and technological knowledge, it includes other kinds of knowledge such as kno use of standards and regulations embedding them and on conditions of real life operating and methods for organisational innovation, as well as management of knowledge related to acquiring, protecting, defending and exploiting intangible assets (“the transfer”). Inte property rights may also be subject to transfer, and if the aim of such transfer is in p commercial use, it represents the commercialisation of intellectual property within the directive (“commercialisation” and/or “commercialisation of intellectual property”). 3.The commercialisation of intellectual property under CU Rector’s Directive No. 17/2018 o for work for hire at Charles University is carried out in accordance with the above dire *========================================================================================= * Part I - Commercialisation, Commercial Use of Outputs *========================================================================================= ------------------------------------------------------------------------------------------ Article 1 - The Subject Matter ------------------------------------------------------------------------------------------ 1.This directive regulates the procedure of knowledge and technology transfer at CU. 2.This directive also implements s. 16 (3) of Act No. 130/2002 Sb., on the support of rese development from public funds and on the amendment to some related acts, as amended. 3.The agenda under paragraph 1 of this Article is organised, managed, coordinated, and unl otherwise also implemented by the CU Centre for Knowledge and Technology Transfer (“CU C separate unit of CU, or in accordance with the Rules for the Internal Governance of the person designated by the Director of the CU CKTT. 4.The final phase of the commercialisation of intellectual property, usually consisting in appreciation (licensing, transfer of intellectual property rights, creation of a spin-of etc.), is usually implemented by Charles University Innovations Prague s.r.o. (“CUIP”), fully owned by CU, with the principal purpose of supporting and ensuring the commerciali intellectual property. In the given field CUIP closely cooperates with CU CKTT. ------------------------------------------------------------------------------------------ Article 2 - Provisions for Commercialisation ------------------------------------------------------------------------------------------ 1.Commercialisation is ensured in the modes regulated by this directive by: • The relevant workplace of a CU faculty; • The relevant workplace of another unit of CU; • CU Centre for Knowledge and Technology Transfer Centrum; and • Charles University Innovations Prague s.r.o. 2.Any disputes concerning the mode of commercialisation arising before the moment when com under Article 2 is ensured by CUIP in accordance with Article 1 (4) are decided by the d CKTT. *========================================================================================= * Part II - Modes of Commercialisation and Transfer *========================================================================================= ------------------------------------------------------------------------------------------ Article 3 - Modes of Transfer and Commercialisation ------------------------------------------------------------------------------------------ The possible modes of commercialisation include: a.Transfer of intellectual property rights; b.Granting of the right to use the intellectual property in the form of a licence; c.Creation of a spin-off company for the purpose of assignment of rights in intellectual p d.Other appropriate forms of transfer based on the current needs of CU, such as contract r consultancy, etc. ------------------------------------------------------------------------------------------ Article 4 - Transfer of Intellectual Property Rights ------------------------------------------------------------------------------------------ The transfer of intellectual property rights takes the form of a contract of transfer/assi to a third person by entering into a relevant type of contract under the Civil Code (usual sale or an innominate contract which is not specifically regulated by the Civil Code). ------------------------------------------------------------------------------------------ Article 5 - Licence ------------------------------------------------------------------------------------------ 1.The granting of rights to use intellectual property through a licence is usually impleme licensing agreement under the Civil Code. 2.Licensing agreements are regulated in more detail in a separate guidance document on the implementing this directive. ------------------------------------------------------------------------------------------ Article 6 - Spin-off Companies ------------------------------------------------------------------------------------------ 1.A spin-off company for the purposes of this directive means a juridical person created f of using or further developing the intellectual property of CU. Intellectual property ri granted to the spin-off for example based on a licensing agreement, by sale/transfer, or another appropriate mode. CU may acquire a share in such spin-off. 2.The purpose of a spin-off is to ensure better transfer of the outputs of research into t sphere, i.e., to convert the University knowledge and the outputs of research into a pro that can be sold. 3.The plan to create a spin-off company under this directive is submitted to the director decides on the course of action. The plan must include a proposal for the arrangement of rights including the disposal of specific outputs and the related business plan regulati commercial exploitation of the outputs, including the proposed way of sharing profits an 4.The fact that the person from whom the idea to create a spin-off originated has an owner in the spin-off company does not affect the right of such person to a remuneration under provisions of the CU Rector’s directive on implementation of intellectual property right 5.The procedure for creating spin-off companies is regulated in a separate guidance docume CKTT on the methodology for implementing this directive. ------------------------------------------------------------------------------------------ Article 7 - Contract Research ------------------------------------------------------------------------------------------ 1.Contract research as one of the forms of transfer is in accordance with the framework im contracted research or research services, or as (ii) collaborative research. 2.Contracted research or research services usually contain the following features: a.An external partner stipulates the terms and conditions of the contract, owns the outp research activities, bears the risk of failure, and pays the remuneration or the relev the provided service; b.The given research service is provided by CU for a market price or, if it is not possi the market price, it is provided for (i) a price that includes full costs and a usual given industry; or (ii) a price that is agreed during negotiations under usual market providing that at the same time CU focuses on maximising the economic benefits and at marginal costs are covered. 3.Collaborative research differs from contracted research or research services under the p paragraph in particular in that it is so-called effective collaboration between CU and o external partners focused on joint independent research and development; the partners ar formulating the research objective and bear the risks jointly, i.e., all involved partne the full costs of the project incurred by them. It is possible that an external partner costs of the project. If the created outputs are based on consensus of the entities invo undertakings, CU receives a compensation based on the market price of the assignment. 4.The dean or director of another unit is responsible for making written contracts with co entities on contract research under paragraphs 2 and 3 of this Article, or on the implem joint research and development projects and for their compliance with the applicable leg CU internal regulations. If the planned total price of the order for the period of exist contract including any compensations that may arise in connection with its implementatio 5 million, it is necessary to discuss entering into such contract with CU CKTT and to su Rector of CU. If the contracted research or a joint research and development project wit entity involves several faculties or other units, all deans of the faculties involved an of units involved are responsible for the making of the contract and management. Intelle created in the course of implementation of contracted research or a joint research and d project with a commercial entity passes to the ownership or usage of the entities involv principles agreed in the written contract. During the negotiations on specific contracts persons must act in accordance with the justified interests of CU. If it is a project fu national or international public funds, it is necessary to follow the specific rules of provider of support. 5.Contract research at CU may be regulated by a separate internal regulation of CU. • ------------------------------------------------------------------------------------------ Article 8 - Consultancy ------------------------------------------------------------------------------------------ 1.The provision of expert consultancy services by employees of CU to external partners is and one of the most frequent and simplest modes of transfer used to turn knowledge into application in the public and private sectors. 2.The consultancy services include in particular: • Analyses; • Expert opinions, expert reviews; • Advisory and consultancy services; • Evaluations, preparation of methodologies; • Custom-made training courses; • Resolution of specific and practical issues. 3.Consultancy services for external partners are provided outside the scope of employment, stipulated otherwise in the employment contract or the job description of a specific emp 4.CU CKTT provides support for the implementation of consultancy services within the meani directive. 5.The manner of provision of consultancy services at CU may be regulated by a specific gui on methodology. *========================================================================================= * Part III - Cooperation with CUIP *========================================================================================= ------------------------------------------------------------------------------------------ Article 9 - Commercialisation of Intellectual Property Rights of CU ------------------------------------------------------------------------------------------ CUIP performs for CU activities aimed at the commercialisation of intellectual property ri entitled to dispose of, in particular but not limited to the following: • Provision of consultancy and management services in the creation of companies for the pu application of the outputs of CU scientific research activities or other intellectual pr (creating of spin-off companies); • Mediation of the involvement of external capital in the spin-off company; • Negotiation of licensing conditions, transfer, and similar agreements between CU and a t the use of intellectual property rights; • Direct participation of CUIP in the spin-off company for the purpose of commercial explo intellectual property; • Performance of any other acts necessary for the commercialisation of the intellectual pr that CU is entitled to dispose of. *========================================================================================= * Part IV - Other and Final Provisions *========================================================================================= ------------------------------------------------------------------------------------------ Article 10 - Use of CU Designation ------------------------------------------------------------------------------------------ For all modes of commercialisation under this directive it is possible to use the designat accordance with Rector’s Directive No. 31/2016 and at the same time the conditions and rul other relevant directives must be respected. ------------------------------------------------------------------------------------------ Article 11 - Final and Transitional Provisions ------------------------------------------------------------------------------------------ 1.Consultancy and support in the implementation of this directive is provided by the CU Ce Knowledge and Technology Transfer. 2.CU Rector’s Directive No. 33/2015 on disposal of the results of research, development, a at CU is repealed by this directive and by the CU Rector’s directive on the realisation property rights at Charles University. 3.Further details on knowledge and technology transfer may be regulated in accordance with at the faculties by a dean’s directive and at other units by a director’s directive. In between the provisions of this directive and a dean’s directive or a directive of a dire unit, this directive takes precedence and no later than within three months of the date of this directive the dean’s or director’ directive must be amended to be in accordance directive. This does not affect Rector’s Directive No. 27/2018 on supplementary activiti 4.This directive becomes effective on 12 November 2018. In Prague on 8 November 2018 Prof. MUDr. Tomáš Zima, DrSc., MBA Communication from the Commission – Framework for State aid for research and development a 27 June 2014 (2014/C 198/01). Act No. 89/2012 Sb., the Civil Code, as amended. Provision 2.2.1. of the Framework - Research on behalf of undertakings (contract research services): “25. Where a research organisation or research infrastructure is used to perfor research or provide a research service to an undertaking, which typically specifies the te conditions of the contract, owns the results of the research activities and carries the ri State aid will usually be passed to the undertaking if the research organisation or resear receive payment of an adequate remuneration for its services, particularly where one of th conditions is fulfilled: (a) the research organisation or research infrastructure provides its research service or at market price, or (b) where there is no market price, the research organisation or research infrastructure p research service or contract research at a price which: — reflects the full costs of the service and generally includes a margin established by re commonly applied by undertakings active in the sector of the service concerned, or — is the result of arm’s length negotiations where the research organisation or research i its capacity as service provider, negotiates in order to obtain the maximum economic benef when the contract is concluded and covers at least its marginal costs.“ Provision 2.2.2. of the Framework: “28. Where collaboration projects are carried out joint undertakings and research organisations or research infrastructures, the Commission consid indirect State aid is awarded to the participating undertakings through those entities due conditions of the collaboration if one of the following conditions is fulfilled: (a) the p undertakings bear the full cost of the project, or (b) the results of the collaboration wh give rise to intellectual property rights may be widely disseminated and any intellectual rights resulting from the activities of research organisations or research infrastructures allocated to those entities, or (c) any intellectual property rights resulting from the pr as related access rights are allocated to the different collaboration partners in a manner reflects their work packages, contributions and respective interests, or (d) the research or research infrastructures receive compensation equivalent to the market price for the in property rights which result from their activities and are assigned to the participating u or to which participating undertakings are allocated access rights. The absolute amount of any contribution, both financial and non-financial, of the participating undertakings to t research organisations or research infrastructures’ activities that resulted in the intell rights concerned, may be deducted from that compensation.”