Spain: new legal framework for ownership and transfer of inventions developed by public institutions

03 May 2011

Manuel Lobato, Amparo Campos

The Spanish Parliament has introduced a Legislative Act (Ley 2/2011 de Economía Sostenible) which amends several bodies of law with the aim of aiding Spain’s economic sustainability. The Act came into force on 6 March 2011 and contains significant modifications to the Spanish legal framework concerning R+D projects undertaken by public research institutions. This article summarizes the legal implications of this new regulation, namely the impact on ownership and transfer of intellectual property rights involved in R+D projects.

The Act applies to the results of all R+D projects (including intellectual property rights) undertaken by an employee of a public research entity within the scope of his or her employment, whatever the exact nature of the relationship. It stipulates that, in the case of work made for hire, the public research entities for whom the work is prepared are considered to be the owners of any intellectual property rights that exist in the work.

Furthermore, the exploitation of these intellectual property rights is reserved to the public research entities. The legislation determines that licenses concerning transfer of ownership or exploitation of intellectual property rights to third parties are (i) subject to prior authorization from the Ministry (such authorization to command the entity which owns the intellectual property right to assert that the rights at issue are not necessary for the defence of the public interest), and (ii) are bound by the Spanish national law as well as the Articles of Incorporation of the concerned entity. Nevertheless, the Act enumerates eight scenarios in which prior authorization is not required. These include when a transfer is done in favour of another public Administration or a non-profit entity, and when the intellectual property right is jointly owned and the sale is made in favour of joint owners. In cases other than those laid out in the Act, the transfer of intellectual property rights to a third party will be subject to prior public diffusion and adherence to public procurement contract procedure.

Likewise, from now on,  when transferring ownership of intellectual property rights to a private entity, the license agreement must include clauses enabling public entities to recover some of the added value obtained: (i) in the case of successive transmissions of the intellectual property rights, or (ii) where by the time of valuation, due to disregard of certain circumstances, the right was transferred at a lower value than it would have been if the disregarded circumstances had been taken into account.

On the other hand, the new regulation favours the cooperation of public agents with the private sector through participation in technology-based companies. Subject to authorization, the Act enables public research entities such as public universities or state trading companies to participate in the capital stock of certain corporations. In order for this to be allowed, the corporation in question must be dedicated to research, development and innovation, concept testing, the transfer and exploitation of intellectual property rights, the utilization of innovations and scientific knowledge obtained and developed by public agents, or the provision of technical services relating to their own purposes.

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