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Inspiring PartnershipsThe national IP Protocol 2016
Barry Fennell PhD Collaborate to Innovate, Cork, 5th April, 2016
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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
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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
Significant Background IP
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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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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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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
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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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KTI Knowledge Transfer Ireland
Enterprise Ireland, The Plaza,
East Point Business Park, Dublin 3.
T +353 (0)1 727 2000
E kti@knowledgetransferireland.com
W knowledgetransferireland.com
@kticonnect
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The main document
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• Framework underpinning research
collaboration and access to IP from
state-funded research.
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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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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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32
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
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