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Building a Business on your Ideas

Barry Fennell PhD WIT, 8th June, 2016


Overview

KTI

Intellectual Property Protocol 2016

Accessing programmes and supports

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Ireland’s Knowledge Transfer System

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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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Terminology: “Knowledge Transfer”(KT) & “Technology Transfer”(TT)

Technology Transfer Office describes the team within a research institute that

supports these activities by sourcing opportunities, discussing needs with

companies, protecting IP drafting and negotiating commercialisation contracts.


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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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Access Rights – Collaborative Research


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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• 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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Connect at knowledgetransferireland.com Commercialisation Pipeline


Commercialisation Pipeline


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Collaboration: Innovation Vouchers

Key focus is to “open the door” to Innovation & collaboration

€5000 Vouchers encourage small companies and public knowledge providers to work together on specific innovation questions and projects related to the company’s needs

Budget: €3.2M

Recent Evaluation: for every €1 invested in this scheme company turnover increased by over €7 • 24% of recipient companies had introduced new products to the company

• 23% had improved products within the company.

• 20% of companies introduced new products to the market

• 19% of cases there had been improved products introduced to the

market.

• 94% willing to participate again.

• 93% would recommend to another business

• 82% would be willing to work with HEIs in future (key objective)

Vouchers Approved and Redeemed

2007 2008 2009 2010 2011 2012 2013 2014 Totals

Vouchers

Redeemed 4 206 526 524 518 525 527 525

3355

Vouchers

Approved 428 588 798 855 757 767 1008 904

6105

Vouchers By Region 2014

Dublin 144

South West Region 68

South-East Region 122

Border Region 46

West Region 48

Midlands Region 20

Mid-East Region 39

Mid-West Region 48


Collaboration: Innovation Partnerships

Partnerships deliver company defined, close to market technology solutions (Licences)

• Average project cost €223,978

• Average Enterprise Ireland contribution per project €154,359

EI co-fund the research at 80% for small companies, 75% for medium sized

companies & 65% for Large companies.

Operating since 2000

Budget: €8.5M

Recent Evaluation: every €1 invest in this scheme company turnover

increased by over €6.69.

• new product to the company (32%)

• new product to the market (36%)

• improved products to the company (23%)

• improved products to the market (16%)

• new processes to the company (39%)

• new processes to the market (16%)

• new services to the company (19%)

• new services to the market (10%)

• 95% would be willing to recommend the Programme to other businesses

• 79% of Principal Investigators had members of their research team transfer to industry

Partnerships by

Region

2014

Dublin 17

South West

Region

18

South-East Region 5

Border Region 3

West Region 6

Midlands Region 2

Mid-East Region 5

Mid-West Region 11


Innovation Partnership

https://www.youtube.com/watch?feature=player_embedde

d&v=1jdwrs2WubU

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https://www.youtube.com/watch?feature=player_embedded&v=1jdwrs2WubU

https://www.youtube.com/watch?feature=player_embedded&v=1jdwrs2WubU


National Framework – KTI Resources

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National Framework – KTI searchable databases

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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


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In 2014


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The national IP protocol

Framework for industry to access

public research

• Published 2012

Developed by industry, investors,

technology transfer, government


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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Conclusion

Motivation (best collaborations)

Selecting the right partner

IP strategy (distinguish rights necessary v desirable)

Funding

Recruit

Attend events to meet peers

Preparation – application process

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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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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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The main document

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• Framework underpinning research

collaboration and access to IP from

state-funded research.


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• National policy




funded research



guidelines




templates


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In 2013


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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Decision Tree – Choosing Appropriate Collaborative Research

Agreement and IP Rights

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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.

Chapter 2 Section B

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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 C

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













Intellectual Property, IP or IPR

Patents, trade marks, service marks, registered designs,

drawings, utility models, design rights, business ideas,

concepts, inventions, discoveries, breeders’ rights,

copyright, database rights, know-how, trade secrets, and

other confidential information, technology, business or

trade names, goodwill and all other rights of a similar or

corresponding nature in any part of the world, whether

registered or not or capable of registration or not, and

including all applications and the right to apply for any of

the foregoing rights.

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Warranties

A contractual promise or statement, breach of which will

entitle the other party to claim damages

Types of warranties that a co can expect when engaging

with an RPO:

• An RPO should be expected to warrant that it has entitlement

to enter the research contract and will undertake the project

with reasonable care.

• The results and background IP should be expected to be

licensed “as is” without any warranties as to fitness for

purpose.

• RPOs should not be expected to warrant non-infringement of

third party IP.

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Liabilities

Liabilities control the level of compensation that each party

may need to pay to the other in the event of any breaches

of their contractual obligations.

The types of liability that a co can expect when engaging

with an RPO include

• RPOs should not be expected to take on liability for indirect or

consequential losses.

• There shall be a financial cap on the potential liability of the

RPO in respect of the research collaboration. This should be

set to the value of the financial contribution to be made by the

Industry party under the research contract, save for any sort

of liability that by law cannot be excluded.

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Indeminities

An indemnity is an obligation by one party to provide

compensation for a particular loss suffered by the other

party.

Typically the licensee shall indemnify the RPO against all

third party claims that may be asserted against or suffered

by the RPO

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