1
MU Directive No. 10/2013
Intellectual Property at Masaryk University
(in the version effective from 1/9/2013)
In accordance with Section 10, paragraph 1 of Act No. 111/1998 Coll., on Higher
Education Institutions and on Modification and Amendment of Other Acts (Higher
Education Act), I issue this Directive:
Part One
Introductory Provisions
Article 1
Subject Matter
(1) This Directive regulates the protection and use of intellectual property at Masaryk
University (MU) and lays down the rights and obligations relating to the creation,
notification, registration, protection and use of intellectual property.
(2) This Directive is also an internal regulation which, in accordance with Section 16,
paragraph 3 of Act No. 130/2002 Coll., on the Support of Research and
Development from Public Funds and on the Amendment to Some Related Acts
(Act on the Support of Research and Development) as later amended (hereinafter
referred to as “Act No. 130/2002 Coll.”), regulates the manner and use of the
results of activities in research, development and innovation.
(3) Obligations relating to accounting records and valuation of intangible assets at MU
are comprehensively regulated in the Bursar's Instruction for the Valuation and
Registration of Intellectual Property at MU (hereinafter the “Instruction for the
Valuation of Intellectual Property”).
(4) The provisions of this Directive shall be without prejudice to specific rights and
obligations relating to the protection and use of intellectual property established
by the grant provider vis-à-vis the grant recipient or the partner. Where the grant
provider requires something other than that provided for in this Directive, the
regulations of the grant provider shall have priority. In the event that special
rights and obligations relating to the protection and use of intellectual property
are stipulated in a contract between MU and a third party (e.g. a contract for
agreed research, a contract for work or a contract for cooperation), the provisions
of this paragraph shall apply accordingly.
Article 2
Specialised Workplaces, Competences of the Economic Unit and Contact Persons
(1) The MU Technology Transfer Office (TTO) is a specialised workplace for the
management, protection and use of intellectual property and related technology
and knowledge transfer, cooperation with the application sphere and the
establishment of spin-off companies1
. The TTO provides support to MU economic
units (abbreviated to HS in Czech) in the field of the exploitation of intellectual
property and, within the scope of this Directive, ensures the external exploitation
of intellectual property.
(2) The Masaryk University Publishing House (MUPH) is a specialised workplace for
publishing and publishing results in the form of book and magazine publications in
1
Art. 7, paragraph 2 of the Masaryk University Organisational Regulations.
2
both printed and electronic form, which provides support to other economic units
as part of its activities.
(3) Competence in the case of exploitation of copyrighted works (Articles 20 and 21),
databases (Article 23) and the external exploitation of know-how not related to
industrial property (Article 15, paragraph 4) is exercised by the relevant economic
unit.
(4) The head of the economic unit is obliged to designate a person who will be the
contact person for the identification and use of intellectual property on behalf of
the relevant economic unit (hereinafter referred to as the "IP contact person").
(5) In performing their tasks, specialised workplaces are entitled to request the
cooperation of originators or authors of intellectual property or other persons at
the relevant economic unit.
Article 3
Definitions
For the purposes of this Directive:
(1) Author2
: the natural person who created the work; in the case of a collective
work as a whole, also a natural person who has chosen or arranged it in a creative
way.
(2) Author's work(s)3
: a literary work, other work of art or a scientific work that is
the unique result of an author's creative activity and is expressed in any
objectively perceivable form, including electronic, permanent or temporary,
regardless of its scope, purpose or meaning. Authors' works include, for example,
literary, musical, dramatic and musical dramatic, choreographic and pantomime,
photographic, audio-visual, art, architectural, applied art and cartographic works,
but also a computer programme, a work created by the creative processing of
another work, language, proceedings or databases.
(3) Copyright4
: property and personal author's rights to works.
(4) Biotechnological invention5
: an invention relating to (1) biological material
which is isolated from its natural environment or produced by a technical process,
even if it has already occurred in nature, (2) plants or animals, unless the
technical feasibility of the invention is limited to a particular plant variety; an
animal breed, or (3) a microbiological or other technical process and a product
other than a plant variety or an animal breed obtained in this way.
(5) Databases6
: a set of independent works, data or other elements systematically
or methodically arranged and individually accessible by electronic or other means,
irrespective of the form of their expression or whether the database is protected
by copyright or by the special rights of the maker of the database.
2
Section 5, paragraphs 1 and 2 of Act No. 121/2000 Coll., on Copyright, on Rights Related to
Copyright and on Amendments to Certain Acts (the Copyright Act), as later amended (hereinafter
referred to as the “Copyright Act”).
3
Section 2, paragraph 1 of the Copyright Act.
4
Sections 11 and 12 of the Copyright Act.
5
Section 2 of Act No. 206/2000 Coll., on the Protection of Biotechnological Inventions and
Amending Act No. 132/1989 Coll., on the Protection of Rights to New Plant Varieties and Animal
Breeds, as amended by Act No. 93/1996 Coll.
6
Section 88 of the Copyright Act.
3
(6) Grants: public funds provided to MU for the specified purpose from the state
budget of the Czech Republic and the National Fund7
, the budget of the local
authority, the budget of the EU or other states.
(7) Intellectual property: rights to the results created by the author in the
performance of tasks arising from his/her employment or another employmentlaw
relationship with MU, in the fulfilment of study obligations, or results to which
MU has acquired rights under the contract. Intellectual property is (1) industrial
property rights, (2) intellectual property protected by other legislation, (3)
copyright or (4) database rights.
(8) Intellectual property protected by other legislation: intellectual property
rights which cannot be protected by registration in a particular register and are
also not copyrighted; this includes (1) the rights to unregistered marks, unless
protected by industrial property rights, (2) trade secret rights, (3) confidential
information rights or (4) know-how rights.
(9) Protected plant variety8
: a variety on which, pursuant to Act No 408/2000
Coll. protected rights are granted.
(10) Know-how: a summary of organisational, managerial, economic,
entrepreneurial, technical, commercial, marketing, scientific, research and other
knowledge and experience (1) related to MU activities, (2) is suitable for
commercialisation, (3) is expressed in any objectively perceivable form; and (4) is
not generally known or generally available.
(11) License: the consent under which MU grants other subjects the right to use the
subject of intellectual property in the framework of external use of intellectual
property or under which MU acquires the right to use the subject of intellectual
property.
(12) Acquisition of intellectual property rights: the acquisition of rights where
MU acquires intellectual property rights from a third party on the basis of a
transfer agreement (transfer of rights) against payment or free of charge or
acquires the right to use the subject of intellectual property under a license or
other agreement.
(13) Acquirer: an entity (natural person or legal entity) that acquires an intellectual
property right under a remuneration or a free transfer contract (rights transfer) or
acquires the right to use intellectual property under a license or other contract
concluded with MU.
(14) Costs associated with the external commercial exploitation of
intellectual property: in particular costs related to the evaluation of the market
potential of intellectual property (e.g. market research or remuneration of
external experts), costs related to the protection of intellectual property
(administration and maintenance fees or fees of patent attorneys), costs
associated with licensing, transfer of rights, transfer of the share of MU in a spinoff
or costs associated with the provision of services using MU intellectual property
for remuneration.
(15) Trademark9
: any sign capable of being represented graphically, in particular
words, including personal names, colours, drawings, letters, numbers, the shape
7
Act No. 218/2000 Coll., on Budgetary Rules, as later amended.
8
Section 2 of Act No. 408/2000 Coll., on the Protection of Plant Variety Rights and on Amendment
to Act No. 92/1996 Coll., on Varieties, Seeds and Seedlings of Cultivated Plants, as later amended
(Act on Variety Rights), hereinafter referred to as “Act No. 408/2000 Coll.”.
9
Section 1 of Act No. 441/2003 Coll., on Trademarks (Trademark Act), as later amended
(hereinafter referred to as “Act No. 441/2003 Coll.”).
4
of the product or its packaging, provided that such designation is capable of
distinguishing the goods or services of one entity from those of another.
(16) Announcement of the originator of the object of industrial property:
notification of the originator of a business invention or other object of industrial
property, on the basis of which MU decides on the application of industrial
property rights.
(17) Partner: an entity that participates in a defined part of a grant project based on
a contractual relationship with the grant beneficiary, where from the conditions of
the grant there is an obligation on the beneficiary to transfer to them part of the
grant in an amount approved by the provider.
(18) Patent10
: a basic industrial-legal form of protection of the invention.
(19) Business invention11
: an invention created by the originator in performing
tasks arising from his/her employment or another employment-law relationship
with MU.
(20) Subsidy provider12
: central government body or other entity authorised to
provide a subsidy.
(21) Assigning the exercise of copyright13
: contractual assignment to another
person of the exercise of copyright in an employee work; the assignment is
subject to the consent of the author of the work, unless the assignment is for the
sale of the business.
(22) Industrial property: rights to the results of intellectual activities that are
industrially exploitable; in particular, the rights to inventions, technical solutions
eligible for protection of a utilisable model, industrial design, topography of
semiconductor products, improvement of design, plant variety, a patent for a
biotechnological invention or a trademark.
(23) Industrial pattern14
: the appearance of the product or part thereof consisting
in particular of the lines, contours, colours, shape, texture or materials of the
product itself, or its decoration.
(24) Subsidy recipient15
: the entity which directly acquires a subsidy from a
provider and is indicated in the decision or in the subsidy contract.
(25) Originator16
: any natural person in employment or another employment-law
relationship with MU who has created or co-created a subject of intellectual
property that is not a copyrighted work.
(26) Spin-off (or spin-out ): a business company established by (1) MU directly or
(2) another entity controlled by MU or (3) a person who was an employee of MU
at the date of establishment of this business company or (4) another entity
10
Sections 1 and 34, paragraph 3 of Act No. 527/1990 Coll., on Inventions and Rationalisation
Proposals, as later amended (hereinafter “Act No. 527/1990 Coll.”).
11
Sections 9 and 10 of Act No. 527/1990 Coll.
12
Section 2 paragraph 2, letter a) of Act No. 130/2002 Coll.
13
Section 58, paragraph 1 of the Copyright Act.
14
Section 2, letter a) of Act No. 207/2000 Coll. on Protection of Industrial Designs and on
Amendment to Act No. 527/1990 Coll., on Inventions and Rationalisation Proposals, as later
amended (hereinafter referred to as “Act No. 207/2000 Coll.”)
15
Section 2, paragraph2, letter c) of Act No. 130/2002 Coll.
16
Sections 8, paragraph 2 and 9, paragraph 1 of Act No. 527/1990 Coll., and Section 2, letter d) of
Act No. 207/2000 Coll.
5
controlled by an employee of MU in connection with the use of MU intellectual
property.
(27) School work17
: author's work created by a MU student to fulfil his/her study
obligations towards MU. Similarly, a work created by a participant in lifelong
learning is considered a school work.
(28) Topography of semiconductor products18
: a series of fixed or encoded
interrelated images depicting a three-dimensional permanent arrangement of
the layers of which the semiconductor product consists, each showing a pattern
of a single layer of a semiconductor product or a portion thereof, or the surface
of a semiconductor product in individual stages of production or part thereof
which is not normally produced in the semiconductor product industry. This term
also refers to parts of the topography that are usable separately, as well as
images used to produce this topography.
(29) Utility model19
: a form of protection for technical solutions that are new, go
beyond mere professional skills and are industrially applicable. A utility model
represents a simpler form of protection than a patent.
(30) An invention20
: the result of an inventive activity which is new and industrially
applicable, and eligible for patent protection.
(31) A result: the result of human activity (especially creative, economic,
entrepreneurial, technical, commercial, marketing, scientific, research or
organisational) that may be subject to intellectual property protection and is
eligible for use by MU itself or by another entity.
(32) Use of intellectual property: the use of the intellectual property of MU itself or
an entity other than MU. For the purposes of this Directive, use shall mean in
particular the use of intellectual property within the meaning of the relevant
legislation21
. For the purposes of this Directive, the use of intellectual property
shall be subdivided into:
(a) Internal use: general use of intellectual property for MU requirements.
(b) External use: use of intellectual property by an entity other than MU, which
may be:
i. External commercial exploitation (commercialisation): remunerated
use of intellectual property by an entity other than MU on the basis of (1)
transfer agreement (rights transfer), (2) license or (3) other agreement, (4)
transfer of MU's share in a spin-off or (5) providing services using the
intellectual property of MU. Commercialisation means external commercial
exploitation.
ii. External Free Use: Free use of intellectual property by an entity other
than MU based on a free (1) transfer agreement (transfer of rights), (2)
license or (3) other agreement, (4) transfer of MU's share in a spin-off or (5)
providing services using the intellectual property of MU.
17
Section 35, paragraph 3 of the Copyright Act.
18
Section 2, paragraph 1 of Act No. 529/1991 Coll., on the Protection of Topographies of
Semiconductor Products, as later amended
19
Section 1 of Act No. 478/1992 Coll., on Utility Models, as later amended
20
Section 3 of Act No. 527/1990 Coll.
21
Section 46, paragraph 1 of Act No. 121/2000 Coll.; Section 18, paragraph 1 of Act No. 441/2003
Coll.; Section 32, paragraph 1 of Act No. 207/2000 Coll.; Section 11, paragraph 1 of Act No.
527/1990 Coll.; Section 12, paragraph 2 of Act No. 478/1992 Coll. and Section 2358, paragraph 1
of Act No. 89/2012 Coll.
6
(33) Employee work22
: individual or collective author's work created by the author
to fulfil his/her duties resulting from employment or another employment-law
relationship with MU.
Part Two
Industrial Property
Article 4
Industrial Property Right
(1) If the subject of industrial property was created by an originator in an
employment relationship or other employment-law relationship with MU, and MU
has asserted the right to the subject of industrial property, this right shall pass to
MU, unless otherwise agreed23
. This is without prejudice to the right of
authorship.
(2) If the industrial property was created by the originator as part of an employment
relationship or other employment-law relationship with MU and at the same time
the industrial property was contributed to by an originator outside employment or
other relationship to MU this right is transferred to MU, unless otherwise agreed24
.
This is without prejudice to the right of authorship.
Article 5
Notification of Industrial Property
(1) The originator is obliged to notify MU in writing of the occurrence of any result
created by him/her which may be industrial property.
(2) The notification of the origin of the industrial property (hereinafter referred to as
the "notification") within MU is submitted by the originator to the TTO, to whom
he also submits the documents necessary for a proper assessment of the
possibility of exercising the industrial property right25
.
(3) The notification shall be submitted on the form “Announcement of the Originator
of Industrial Property” (Appendix No. 1).
(4) If there is more than one originator, the notification shall contain the signatures of
all originators and statements of the line managers26
of those who created the
industrial property as part of their employment or another employment-law
relationship with MU.
(5) The TTO shall assist the originators in the preparation of the notification.
(6) A copy of the notification shall be sent by the TTO to the head of the economic
unit where the result which may be industrial property originated.
22
Section 58, paragraph 1 of the Copyright Act.
23
Section 9, paragraph 1 of Act No. 527/1990 Coll. Section 13, paragraph 1 of Act No. 207/2000
Coll.
24
Section 9, paragraph 1 of Act No. 527/1990 Coll. Section 13, paragraph 1 of Act No. 207/2000
Coll.
25
Section 9, paragraph 2 of Act No. 527/1990 Coll.; Section 13, paragraph 2 of Act No. 207/2000
Coll.
26
Section 11 of the Labour Code.
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Article 6
Assessment of the Notified Industrial Property
(1) Upon receipt of the notification, the TTO verifies whether it is indeed industrial
property, what are MU's shares in the creation of an industrial property in the
case of co-patents with agents outside employment or another employment-law
relationship with MU, whether the industrial property is related to research
projects, or other decisive factors in assessing the application of an industrial
property right
(2) The TTO will then produce an “Opinion on the Application of MU Industrial
Property Rights” (hereinafter the “opinion”). The formulation of the opinion shall
take into account in particular the nature of the subject of industrial property, its
eligibility for possible external commercial use, as well as the rights and
obligations to the subject of industrial property arising from Act No. 130/2002
Coll., the conditions of the subsidy provider or a contract between MU and a third
party.
Article 7
Enforcement of Industrial Property Rights
(1) The TTO submits the opinion to the Rector, who decides whether or not MU will
exercise the right to industrial property.
(2) The Rector may entrust the director of the TTO in whole or in part with the
decision on the assertion or non-assertion of an industrial property right.
(3) MU asserts the right to industrial property items especially when the industrial
property item is beneficial to MU, i.e. especially if the industrial property item is
eligible for external commercial use.
(4) When exercising the right to industrial property, MU also takes into account cases
where, in accordance with the provisions of Section 16, paragraph 3 of Act No.
130/2002 Coll. rights to the results of activities in research, development and
innovation belong to the beneficiary of the subsidy.
(5) The TTO shall inform the originator and the head of the economic unit where the
industrial property originated.
(6) The exercise of the right to industrial property leaves the right to authorship
unaffected27
.
(7) In the case that MU within the statutory period28
does not enforce the right to
industrial property, this right passes back to the originator.
Article 8
Internal Use of Industrial Property
(1) The date of the decision on the exercise of the right to industrial property is the
day on which the industrial property is determined for internal use.
Article 9
External Use of Industrial Property
(1) On the basis of the decision on the application of the right of MU to the industrial
property, the TTO will commence work related to the protection of industrial
property (searches and filing of the application for protection), if protection is
27
Section 9, paragraph 1 of Act No. 527/1990 Coll.; Section 13, paragraph 1 of Act No. 207/2000
Coll.
28
Section 9, paragraph 3 of Act No. 527/1990 Coll.; Section 13, paragraph 3 of Act No. 207/2000
Coll.
8
desirable, and possibly with its external use (activities linked to commercialisation
including the preparation and conclusion of transfer, license or other agreements).
Costs related to the industrial-legal protection of industrial property items shall be
borne by the TTO, unless agreed otherwise.
(2) Where a right to industrial property has been decided, the industrial property
concerned shall be subject to the regime of business secrecy and its use shall be
governed by this Directive (in particular Articles 12 to 15) until such time as it is
formally protected by law. In this context, the TTO informs the originator and the
head of the economic unit of the obligations arising from the protection of
business secrets, as well as the prohibition of pre-publication of the industrial
property in the context of publishing activities.
(3) The procedure for introducing industrial property into the accounting records of
intangible assets and their valuation, including the determination of the moment
when the industrial property is intended for external commercial use, is specified
in detail in the Instruction on IP Valuation.
Article 10
Cancellation of Industrial-legal Protection
(1) If MU does not find a satisfactory use within 36 months of filing an industrial
property application for protection, the Rector may decide to withdraw from
industrial property protection (termination of protection or waiver of rights) after
discussion with the TTO director and the head of the economic unit.
(2) Prior to the eventual termination of industrial-legal protection, the originators
must be allowed to acquire industrial property rights on the basis of a contract
with MU.
(3) The Rector may entrust the director of the TTO in whole or in part with the
decision to withdraw from industrial property protection.
(4) The TTO informs the originator and the head of the economic unit where the
subject of industrial property originated of the cancellation of industrial-legal
protection.
Article 11
Trademark Protection and Use
(1) Activity related to the protection of signs capable of forming a trade mark29
(in
particular, conducting searches, filing applications for protection or acting on
behalf of MU in the relevant enrolment proceedings), and externally using
trademarks (concluding license, transfer or other contracts) fall within the scope
of the TTO. The TTO shall bear the costs relating to the industrial property
protection of the trade mark, unless otherwise agreed.
(2) The date of registration of the trade mark in the trade mark register is the date of
the decision that the trade mark is intended for internal use.
(3) The procedure for the introduction of trademarks into the accounting records of
intangible assets and their valuation, including the determination of the moment
when the trademark is intended for external commercial use, is further specified
in the Instruction on IP Valuation.
(4) Articles 4 to 8 and 9, paragraph 2 of this Directive do not apply to trademarks.
29
Section 1 of Act No. 441/2003 Coll., on Trade Marks and on Amendment to Act No. 6/2002 Coll.,
On Courts, Judges, Lay Judges and the State Administration of Courts and on Amendment to
Certain Other Acts (Courts and Judges Act), as later amended and the Trademark Law, as later
amended.
9
Part Three
Intellectual Property Protected by Other Legislation30
Article 12
(1) If the intellectual property right, which is protected by other legal regulations, was
created by the originator in the framework of employment or another
employment-law relationship with MU, the right to this intellectual property
belongs to MU, unless agreed otherwise.
Article 13
Business Secret
(1) Where results, industrial property or other facts are subject to trade secrets31
,
executives32
in whose workplace business secrets are used, are obliged
(a) to determine the extent of facts which MU considers to be a trade secret,
(b) to grant specific employees access rights to business secrets,
(c) to acquaint the relevant employees with the determination of facts which MU
considers to be a trade secret, with their duties in their protection, including
the consequences of breaching these obligations,
(d) and to ensure the confidentiality of business secrets accordingly.
(2) Agreements on the protection of business secrets with entities other than MU
(especially in cases where it is necessary to acquaint third parties with MU's
business secrets) are concluded on behalf of MU by the head of the economic unit
concerned with the protection of the business secrets.
(3) The TTO cooperates with the relevant economic unit in relation to the protection of
trade secrets.
(4) In the case of violation of business secrets, the relevant legal regulations shall be
followed33
.
(5) The use of business secrets is similarly governed by Articles 14 and 15 of this
Directive governing the internal and external use of know-how.
(6) Information constituting business secrets is confidential information under the
Labour Code34
.
(7) The use of results subject to a certain level of confidentiality shall be governed by
the relevant legislation35
.
30
Definition contained in Article 3, paragraph 8 of this Directive.
31
Section 17 of Act No. 513/1991 Coll., The Commercial Code, as amended (hereinafter referred to
as the “Commercial Code”); Section 504 of Act No. 89/2012 Coll., The Civil Code (hereinafter
referred to as “Act No. 89/2012 Coll.”) and
32
Section 11 of the Labour Code.
33
Sections 20 and 53 of the Commercial Code; Sections 2985, 2988 and 2989 of Act No. 89/2012
Coll.
34
Section 276, paragraph 5 of the Labour Code.
35
Act No. 412/2005 Coll. on the Protection of Classified Information and on Security Eligibility, as
later amended.
10
Article 14
Internal Use of Know-how
The day on which the know-how is captured in an objectively perceivable form (text,
graphical record, tables, etc.) is the day on which the know-how is intended for internal
use.
Article 15
External Use of Know-how
(1) The external exploitation of know-how is carried out on the basis of transfer
contracts, license contracts, work contracts, mandate contracts or unnamed
contracts.
(2) Prior to the conclusion of a contract for the external use of know-how, the knowhow
must be recorded in an objectively perceivable form, and the recording of
such know-how forms an annex to the contract.
(3) The external use of know-how related to industrial property is decided by the TTO
director on behalf of MU and the contract for the external use of such know-how is
concluded on behalf of MU by the director of the TTO.
(4) The external use of know-how not related to industrial property is decided and
contracts for external use of such know-how are concluded on behalf of MU by the
head of the economic unit where the know-how originated.
(5) Subject to prior agreement between the head of the economic unit and the TTO
director, the TTO director may decide on the external use of non-industrial knowhow
and conclude a contract on the external use of such know-how on behalf of
MU.
(6) Before concluding a contract on the external commercial use of know-how, the
person concluding the relevant contract shall ensure that a “Know-how Register”
is drawn up (Appendix No. 2).
(7) The procedure for recording know-how in the intangible assets and their valuation,
including the determination of the moment when the know-how is intended for
external commercial use, is further specified in the Instruction on IP Valuation.
Part Four
Author's works
Article 16
Author’s Property Rights to Employees’ Works
(1) MU exercises, in its own name and on its own behalf, the proprietary rights to
copyright works that are employees’ works36
, unless otherwise specified in this
Directive.
(2) The head of the economic unit is obliged to take measures to ensure that MU is
entitled to exercise copyright (for employees’ works) or to provide third parties
with sub-licenses (for employees’ works or works created by authors outside
employment or another employment-law relationship with MU) in all cases where
Act No. 130/2002 Coll.37
, the subsidy provider or contract between MU and a third
party stipulates that the copyright for the results (copyrighted works) is to be
owned by MU.
36
Section 58, paragraph 1 of the Copyright Act.
37
Article 16, paragraph 3 of Act No. 130/2002 Coll.
11
Article 17
Exercise of Property Rights to Employees’ Works by MU Employees
(1) MU retains the right to exercise of copyright for its employees in respect of
employees’ works created for publication in professional journals or conference
proceedings (hereinafter referred to as “employees’ works retained in the exercise
of property rights”)38
.
(2) Authors of employees’ works are obliged to observe the restrictions set by the
subsidy provider or a contract between MU and an external entity (e.g. a contract
for contracted research, contract for work or cooperation contract) when
exercising copyright property rights for works with retained property rights, in
particular copyright in terms of the extent of material, territory, time or quantity,
in terms of exclusivity or the possibility of providing sub-licenses.
(3) The provisions of paragraph 1 of this article do not apply if the work retained in
the exercise of property rights is to be used for the needs of MU, in particular for
publication in journals and conference proceedings published by MU.
(4) The internal standards of MU or the economic unit39
may provide that for certain
copyright works employees may not exercise copyright at all, may exercise limited
property rights over copyright, or may provide that, in specified cases, employees
may exercise copyright in full or limited scope to other works than employee
works while retaining the exercise of property rights.
Article 18
Granting of Copyright License upon Request of the Author of the Employee’s Work
(1) If the author considers that MU is not sufficiently exercising property rights to
his/her work or is not exercising them at all, he has the right to apply for a license
for such work40
.
(2) In this case, the head of the economic unit where the work was created decides
on the granting of the license.
Article 19
Assignment of the Right to Exercise Property Rights for Copyright
(1) MU may assign the right to exercise property rights to an employee’s work to a
third party only with the prior written consent of the author. Before entering into a
contract on the assignment of the exercise of property rights to an employee’s
work, the economic unit’s head is obliged to ensure that the author's consent
(assignment) has been given to the assignment of the property rights to the
employee work to a third party41
.
(2) The written consent of the author pursuant to the previous paragraph is not
required if MU concludes a license agreement granting the right to exercise the
right to use the employee’s work, as in this case the assignment of the right to
exercise property rights does not take place.
Article 20
Internal Use of Copyrighted Works
The day on which the employee’s work is captured in an objectively perceivable form is
the day that the work is intended for internal use.
38
Section 58, paragraph 1 of the Copyright Act.
39
Art. 2, paragraphs 1 and 2 of the Principles for the Creation and Publication of Internal Norms of
Masaryk University.
40
Section 58, paragraph 3 of the Copyright Act.
41
Section 58, paragraph 1 of the Copyright Act.
12
Article 21
External Use of Copyrighted Works
(1) The external use of employees’ works, with the exceptions provided for in Article
17, paragraphs 1 and 4 of this Directive, shall be decided and concluded by the
head of the economic unit on behalf of MU where the author of the employee’s
work is in employment or another employment-law relationship.
(2) In the case of a co-authored work in which individual co-authors are in
employment or another employment-law relationship with differing economic
units, the external use of employee works is decided and the license agreement
concluded on behalf of MU jointly by the heads of the relevant economic units.
(3) In the case of a co-authored work in which a co-author is a person who is not in
employment or another employment-law relationship with MU (student or external
author), a written statement of the will of such persons is necessary for a decision
on the external use of the co-authored work and the conclusion of a license
agreement.
(4) Subject to prior agreement between the head of the economic unit and the
director of the TTO, the director of the TTO may decide on the external use of the
work and the license agreement may be concluded on behalf of MU.
(5) Upon prior agreement between the head of the economic unit and the director of
the MUPH, the director of the MUPH may decide on the external use of an
employee’s literary work and conclude the license agreement on behalf of MU.
(6) The procedure for the introduction of employees’ works into the accounting
records of intangible assets and their valuation, including the determination of the
moment when the employee work is intended for external commercial use, is
further specified in the Instruction on IP Valuation.
Article 22
School Works
(1) In the case of school works that are final works within the meaning of Act No.
111/1998 Coll., On Universities and on the Amendment and Supplementation of
Other Acts (Higher Education Act), as later amended42
, MU uses these works not
for profit and in a manner determined by the MU Study and Examination
Regulations.
(2) For other school works, except for computer programmes43
, MU is entitled to use
them for teaching purposes or for its internal needs44
. In other cases, MU is
entitled to use the school work on the basis of a license agreement concluded with
the author on behalf of MU by the head of the economic unit that needs to use the
school work.
(3) MU enters into a license agreement with authors of school works with the
possibility of providing a sub-licence whenever stipulated by Act No. 130/2002
Coll.45
, a subsidy provider or, if necessary, to fulfil the purpose of a contract
between MU and an external entity (for example, for the purpose of a contract for
contracted research, a work contract or a cooperation contract).
42
Section 47b, paragraph 1 of the Higher Education Act.
43
Section 66, paragraph 7 of the Copyright Act.
44
Section 35, paragraph 3 of the Copyright Act.
45
Section 16, paragraph 3 of Act No. 130/2002 Coll.
13
Part Five
Databases
Article 23
(1) MU has the special rights of the maker of the database in all cases where the
acquisition, verification or presentation of the contents of the database constitutes
a substantial or qualitatively substantial contribution46
.
(2) MU is the maker of the database if a natural person (employee, student or other
natural person) or a legal entity makes a database for it or when a natural person
or legal entity does so at the instigation of MU47
.
(3) Articles 20 and 21 of this Directive apply mutatis mutandis to the internal and
external use of the database (whether under transfer, license or other contracts).
Part six
Remuneration
Article 24
Motivational Reward
(1) The head of the economic unit may grant a motivational reward to the originators
of industrial property for its creation.
(2) The head of the economic unit where the subject of industrial property originated
shall award a motivational reward if MU exercises the right to the subject of
industrial property pursuant to Article 7, paragraph 1 of this Directive and the TTO
informs the head of the economic unit of the assertion of MU rights under Article
7, paragraph 4.
(3) The amount of the motivational reward is at least 10 thousand CZK. The technical
and economic importance of the subject of industrial property is decisive for the
amount of the motivational reward.
(4) The originators are provided with the motivational reward by the economic unit
where the industrial property originated.
(5) A motivational reward is understood to be reasonable remuneration in accordance
with the applicable legislation48
.
Article 25
(1) The motivational reward in accordance with Article 24 is the income of the
originator from dependent activity49
.
Article 26
Reward from Commercialisation of Industrial Property
(1) In the event that the motivational reward paid pursuant to Article 24 becomes
manifestly disproportionate to the benefits accruing from the exploitation or other
exercise of industrial property, depending on external commercial exploitation, the
originator shall, under the conditions set out in this article, have a right to reward
46
Section 88a, paragraph 1 of the Copyright Act.
47
Section 89 of the Copyright Act.
48
Section 9, paragraph 4 of Act No. 527/1990 Coll.; Section 13, paragraph 4 of Act No. 207/2000
Coll.
49
Section 6 of Act No. 586/1992 Coll., on Income Tax, as later amended.
14
from commercialisation of industrial property, hereinafter referred to as a
'commercialisation reward').
(2) Additional settlement according to the relevant legal regulations50
is understood to
mean the commercialisation reward.
(3) In determining whether there is an apparent disproportion in accordance with
paragraph 1 of this article of the Directive, account shall be taken of the
employer's material contribution to the creation of the industrial property, the
extent of the originator's work and the revenues generated by the external
commercial exploitation of the industrial property.
(4) It is for the TTO to determine whether there has been an apparent disproportion
in relation to the generation of revenue from the external commercial exploitation
of industrial property under paragraph 1 of this article. To this end the head of the
economic unit shall, upon request of the TTO, provide information on whether the
motivational reward and its amount have been paid to the originator.
(5) The manner in which the external commercial exploitation of industrial property
has been carried out (license agreement, contract on the transfer of rights,
provision of industrial property services, etc.) in order for there to be a right to a
commercialisation reward.
(6) MU, the originator and the acquirer may agree that all or part of the
commercialisation reward will be paid to the originator, not through MU, but
directly by the acquirer. In this case, the price for the external commercial
exploitation of industrial property must be divided into the price received by MU
and the commercialisation reward received by the originator in the contract under
which the external commercial exploitation of industrial property is carried out.
(7) The commercialisation reward referred to in the previous paragraph is income of
the originator from other self-employment51
.
Article 27
Determining the Amount of the Commercialisation Reward
(1) The amount of the commercialisation reward is determined as the share of the
originator in the net proceeds from external commercial exploitation of industrial
property (commercialisation).
(2) The net commercialisation proceeds are determined by deducting from the
commercialisation earnings credited to MU the costs related to the external
commercial exploitation of industrial property, the amount of the motivational
reward paid pursuant to Article 24, paragraph 3 of this Directive, the relative
amount for the economic unit and, as the case may be, the relative amount of
MU income tax (hereinafter referred to as the “net commercial income”).
(3) In the event that the amount of net commercial income amounts to CZK 3,000
to 2 million CZK, the originator has a 70% share of the net commercialisation
proceeds. A 30% share belongs to MU, while TTO manages these funds as funds
intended for the purpose of financing the protection and other external
commercial exploitation of intellectual property. If there is more than one
originator of a given industrial property, the net proceeds from
commercialisation must be at least CZK 3,000 for each co-author.
(4) If the amount of net commercialisation income exceeds 2 mil. CZK, the
originators are due from proceeds from commercialisation of an amount
50
Section 9, paragraph 4 of Act No. 527/1990 Coll.; Section 13, paragraph 4 of Act No. 207/2000
Coll.
51
Section 7 of Act No. 586/1992 Coll., on Income Tax, as later amended.
15
exceeding CZK 2 mil. CZK a 35% share. A 65% share belongs to MU. The
provisions of the preceding paragraph of this article shall apply mutatis
mutandis, with the exception of the last sentence.
(5) In the event that the economic unit where the subject of industrial property
originated contributed to the external commercial exploitation of industrial
property, TTO will conclude an agreement with the economic unit on the
distribution of MU's share of net commercialisation income, taking into account
economic unit's contribution to the external commercial exploitation of industrial
property.
Article 28
(1) The originator's share of the net commercialisation proceeds referred to in Article
27 of this Directive shall be the income of the originator for employment52
.
(2) If the originator is not in employment or another employment-law relationship
with MU on the date of payment of his share of the net proceeds from
commercialisation53
, the originator's share of the net commercialisation income
paid is the originator's income from other self-employment54
.
Article 29
Remuneration of the Originators of Know-how and the Authors of Employees’ Works
(1) Articles 24 to 28 of this Directive shall apply mutatis mutandis to the
remuneration of originators of know-how and authors of employees’ works, aside
from the exceptions below.
(2) Originators of know-how and authors of employees’ works may be granted a
motivational reward in accordance with Article 24 of this Directive.
(3) Net commercial proceeds are determined by deducting from the commercial
proceeds of the know-how or employees’ works credited to MU the costs
associated with the external commercial exploitation of intellectual property, the
relative amount of MU administrative overheads and, where applicable, the
relative amount of MU income tax.
(4) Determining whether there is an apparent disproportion, determining the amount
of the commercialisation reward and paying the originator's share of the net
proceeds from commercialisation are within the competence of the relevant
economic unit where the know-how or work was generated.
(5) In cases where the commercial management of intellectual property in accordance
with Articles 15, paragraph 5 and 21, paragraph 4 of this Directive is carried out
by the TTO, the determination of the amount of the commercialisation reward and
the payment of a share of the net commercial income is within the competence of
the TTO. Article 27, paragraph 5 of this Directive shall apply mutatis mutandis.
Part Seven
Acquisition of Intellectual Property Rights
Article 30
(1) The TTO director decides on the acquisition of industrial property rights and
concludes the relevant transfer, license or other contracts on behalf of MU.
52
Section 6 of Act No. 586/1992 Coll., on Income Tax, as later amended.
53
Section 10 of Act No. 527/1990 Coll.
54
Section 7 of Act No. 586/1992 Coll., on Income Tax, as later amended.
16
(2) The TTO director decides on the acquisition of know-how rights related to
industrial property and the relevant agreement on the acquisition of know-how
rights is concluded on behalf of MU.
(3) The acquisition of rights to know-how not related to industrial property is decided
and the relevant agreement on acquisition of rights to know is concluded on
behalf of MU by the head of the economic unit which needs the know-how for its
activities. Subject to prior agreement between the head of the HS and the TTO
director, the TTO director may conclude an agreement on the acquisition of rights
to such know-how.
(4) The TTO director decides on the acquisition of trademark rights and concludes the
relevant transfer, license or other contract on behalf of MU.
(5) The head of the economic unit which needs to use the copyrighted work, acting in
the name of MU, decides on the acquisition of the right to use the copyrighted
work or on the acquisition of the right to exercise property rights and concludes
the relevant license or other agreement. Subject to prior agreement between the
head of the economic unit and the TTO director, such a license or other
agreement may be concluded by the TTO director on behalf of MU. Subject to
prior agreement between the head of the economic unit and the NUPH director,
such a license or other agreement may be concluded by the NUPH director on
behalf of MU.
(6) The head of the economic unit may stipulate by internal rule that MU staff are free
to decide and to conclude the relevant license or other contract on behalf of MU
for the right to use the computer programme or database (freeware or opensource
software) for research or teaching purposes.
(7) The head of the economic unit that needs to use the database decides on the
acquisition of the right to use the database and concludes the relevant license or
other agreement on behalf of MU. Subject to prior agreement between the head of
the economic unit and the TTO director, such a license or other agreement may
be concluded by the TTO director on behalf of MU.
(8) When deciding on the acquisition of intellectual property rights, the MU
management rules for the relevant calendar year shall be followed. When deciding
on the acquisition of industrial property rights, the expected revenues from the
external commercial exploitation of the industrial property shall always be taken
into account in relation to the costs of industrial property protection of the
industrial property.
(9) The procedure for introducing acquired intellectual property into the accounting
records of intangible assets and their valuation is specified in the internal
regulations of MU55
.
Part Eight
Special and Final Provisions
Article 31
Special Provisions
(1) The method and possibilities of financing the creation, protection and use of
intellectual property are set out in the Instruction on IP Valuation.
(2) The director of the TTO and the head of the relevant economic unit are
responsible for the use of intellectual property in accordance with the conditions
55
MU Directive No. 12/2012 Registration of Tangible and Intangible assets.
17
stipulated by legal regulations, internal regulations of MU and contractual
obligations of MU, especially if its creation was financed from public sources.
(3) The director of the TTO may set up a Technology Transfer and Commercial
Cooperation Council in accordance with internal standards, the tasks of which will
include, in particular, the assessment of strategic technology transfer projects and
major commercialisation projects at MU.
Article 32
Final Provisions
(1) This Directive shall come into effect on 1/9/2013.
(2) This Directive repeals and replaces Rector's Directive No. 8/2009 “Intellectual
Property at Masaryk University”.
(3) The following appendices are included in the Directive:
(a) Appendix No. 1: Form “Notification of the Originator of the Industrial Property”
(b) Appendix No. 2: Form “Know-how Record Sheet”
(4) Compliance, interpretation and updating of the Directive are the responsibility of
the TTO Director.
(5) Verification of the correctness of accounting and registration of intellectual
property is the responsibility of the director of the TTO and the head of the
Accounting Office of RMU.
Brno, 30 August 2013
Mikuláš Bek
Rector