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Inspiring PartnershipsThe national IP Protocol 2016

Barry Fennell PhD Collaborate to Innovate, Cork, 5th April, 2016


www.knowledgetransferireland.com

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Mission

To support business and the research base to maximise

innovation from State-funded research by getting technology,

ideas and expertise into the hands of business, swiftly and

easily for the benefit of the public and the economy.


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Background

since 2000 the State has invested significantly in

building industry relevant research capability and

creating commercially relevant IP in our RPOs

government’s policy to encourage industry to

access and benefit from this research

drive the supply of innovative solutions to global

markets and the creation of sustainable jobs


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The national IP protocol

Framework for industry to access

public research

• Published 2012

Developed by industry, investors,

technology transfer, government

Mandated the creation of a central

Technology Transfer Office

• Established Sept 2013

• Formally launched as KTI, May 2014


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The Protocol comprises two volumes:

1. The Policy document

• National policy

• The framework underpinning

research collaboration and access

to intellectual property from state-

funded research

2. The Resource Guide

• National IP management

guidelines

• Links to the wealth of resources

such as Model Agreements,

Practical Guides and pro-forma

templates


National Policy

Max economic and societal benefits from public investment in R&D by

commercialising IP arising from State funding.

Enabling all enterprises to access and exploit IP quickly, on terms that

provide fair value to all parties and in ways that are predictable and

consistent from one negotiation to the next.

Ensuring RPOs have published policies & procedures in place that

enable them to give Industry an acceptable and consistent level of

confidence around the management of IP arising from their research.

That HEIs & RPO benefits from commercialisation and provide

incentives to researchers involved in creating IP.

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Significant Background IP

Background IP introduced to a Programme where:

• The Background IP is the subject of a granted patent, and/or

• The Programme substantially relies on this background IP

and without it the Programme would be difficult or impossible

to carry out.

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Collaborative Research Agreements

The collaborative research agreement should be negotiated and

signed by both parties prior to the work commencing.

It should include the terms and conditions that relate to:

• Details of the research to be undertaken and who will carry it out (Programme Plan).

• Mechanisms for the identification and protection of IP developed during the project.

• Management of IP, including payment of associated costs.

• Licensing and/or assignment of IP arising in performance of the project (“Foreground IP”)

• Licensing of pre-existing IP introduced into the collaboration and owned or licensed by the RPO

and/or the industry party (“Background IP”).

• Publication of research results

KTI Practical Guide to Model Collaborative Research Agreements:• Sets out the issues to consider when entering into a research collaboration

• Contains:

– Annotated Model Agreements with explanatory drafting notes

– Decision tree

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Non Severable Improvements

IP that, as a minimum:

• Was created using Significant Background IP introduced to

the Programme.

• Cannot be used or commercialised without infringing on the


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Non Severable Improvements

IP that, as a minimum:

• Was created using Significant Background introduced to the

Programme.

• Cannot be used or commercialised without infringing on the

Significant Background.

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Background IP introduced to a Programme where:

• The Background IP is the subject of a granted patent, and/or

• The Programme substantially relies on this background IP

and without it the Programme would be difficult or impossible

to carry out.

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• National policy




funded research



guidelines




templates


Resource Guide is a supporting document

Provides an overview of the knowledge transfer system in

Ireland

Details the national IP management requirements

Provides access to and information on the practical tools

and supports

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National IP management requirements for RPOs

1. Ensure early awareness amongst researchers of the importance of IP

management.

2. Set obligations on individual researchers to ensure IP is managed in a

professional way.

3. Maintain confidentiality before publication of research and confidentiality of IP

provided by and to others.

4. Protect IP arising from research projects/programmes.

5. Introduce existing background IP into a research project/programme diligently.

6. Conduct appropriate due diligence before licensing IP.

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Find a Research Expert

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KTI Knowledge Transfer Ireland

Enterprise Ireland, The Plaza,

East Point Business Park, Dublin 3.

T +353 (0)1 727 2000

E [email protected]

W knowledgetransferireland.com

@kticonnect


The main document

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• Framework underpinning research

collaboration and access to IP from

state-funded research.


A Access to IP in wholly State-funded research

No industry contribution so this is an arms length negotiation

Exclusive or non-exclusive licences on fair commercial terms

In exceptional circumstances assignment:

• Subject to compliance with EU State Aid obligations and to the assignment

being consistent with the policy objectives of the national IP Protocol

• But no chance of recovering the IP if the company doesn’t commercialise

Chapter 2 Section A

Details of IP available for licensing from all of Ireland’s research organisations

can be found at http://www.knowledgetransferireland.com/Find-a-Research-

Partner/Browse-Licensing-Opportunities/

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http://www.knowledgetransferireland.com/Find-a-Research-Partner/Browse-Licensing-Opportunities/


State Aid

State Aid may be deemed as given indirectly to a company by the

government where, for example:

• It does not pay the full cost of Collaborative Research carried out on

its behalf by a publicly funded RPO

• It collaborates on a research project with a publicly funded RPO,

and it acquires a commercial benefit in a way that isn’t permitted by

the State Aid rules

• http://ec.Europa.eu/competition/state_aid/overview/index_en.html

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B Access to IP in Collaborative Research wholly funded by industry

The industry party will have the ability to take assignment of IP arising

in the project (called “Foreground IP”).

But alternative access routes may be sufficient to meet the industry

party’s needs (NERF).

RPO will have the option to negotiate access to the Foreground IP to

use it for research and teaching purposes.

If assigned then the company will carry the burden of patent costs.

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Collaborative Research

Work involving research of mutual interest where an

industry party works with an RPO.

Collaborative Research: wholly industry-funded

Collaborative Research in which the industry party meets

the full economic cost of carrying out the Programme.

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C Access to IP in Collaborative Research partially funded by Industry

Industry funding in cash and/or in kind, including participation in the research itself

The most suitable IP access route and outline terms should be agreed before the project

begins, and specified in the Collaborative Research Agreement.

Industry party will have right to negotiate and conclude a licence to Foreground IP

created in the project on fair commercial terms:

• Subject to the industry party making at least the minimum contribution to the cost of the research

– The minimum contribution will be set by the State research funder for the particular State funding programme

• The contribution made by the industry party will be taken into consideration in determining licence

terms

Access routes:

• Option to negotiate a licence to Foreground IP as it arises.

– Exclusive or non-exclusive basis and in specific Fields and Territories

• Option to negotiate a non-exclusive royalty-free (NERF) licence to Foreground as it arises

– in which case licence will be negotiated and executed at that time.

• A non-exclusive royalty-free (NERF) licence to Foreground IP at the outset

– Negotiated as part of the collaborative agreement

– The NERF licence(s) will be executed on completion of the project

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C Access to IP in Collaborative Research partially funded by Industry

The industry party may also be able to take assignment of certain

arising IP (called “Non-Severable Improvements”)

• This IP is directly linked to the industry partner’s important pre-existing IP

that it brings into the project (which is called “Significant Background IP”).

• What constitutes Significant Background IP will be agreed upfront by the

parties.

• The majority of IP introduced into a project (by either party) is not expected

to fall into this category.

Joint ownership of Foreground IP should be avoided as it involves

complex management arrangements.

Chapter 2 Section C31


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• National policy




funded research



guidelines




templates


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