Enterprise Ireland S Policy Regarding IP Ownership IPP

These Requirements apply to research projects undertaken under the Innovation Partnership Programme with non-HPSU companies and guarantee both partners access to the research results on reasonable and reliable terms.

This document was prepared in accordance with National Guidelines, theState Aid Rulesand Enterprise Ireland Policy. At application stage, partners need to be clear regarding their respective responsibilities in owning and exploiting ForegroundIP generated within the Innovation Partnership project. A Heads of Agreement must be submitted to EnterpriseIreland as part of the project approval process. After project approval, funding will not be released to the college until a signed Heads of Agreement is submitted to EnterpriseIreland.

If you are a pre-HPSU or HPSU company or working with a HPSU company then EnterpriseIreland will require that the college own Foreground IP produced in the project. This is EnterpriseIreland policy. Please see Note 5, page 2 of this document for further details.

ForegroundIntellectual Property refers to all patentable or potentially patentable inventions, copyrighted works, and commercially useful confidential information, samples, compounds, devices and compositions of matter created during the project.

1. Who owns the Foreground IP generated in an Innovation Partnership project?

1. Under national guidelines, the Inventor’s employer owns intellectual property generated by the Inventor. Because EnterpriseIreland is providing the bulk of the funding to the college partner, the requirement is that the college will own Foreground IP generated within the project. This includes Foreground IP produced by the college personnel and Foreground IP produced by company personnel who are located on-site in the college as an in-kind contribution to the project by the company.

1. The company may own Foreground IP created by an employee providing evidence is made available to show that the company person was the single creator with no input from college resources. This will not apply to a company person located on-site in the college as an in-kind contribution to the project.

1. EnterpriseIreland strongly recommends that one partner (i.e. the college) own the Foreground IP with appropriate licensing rights to the other partner rather than both owners jointly owning IP. However Joint Ownership of the Foreground IP by the company and college will be acceptedif ALL of the following conditions are met;

a.The company is bringing background IP and know-how to the project that will be necessary for the partners to develop Foreground IP.

b.The Foreground IPis jointly created by the researchers employed by both partners and is supported by evidence such assigned lab books.

c.A Joint OwnershipManagement Agreement is in place that will define clearly how joint IP will be managed and exploited. Irish patent law allows joint owners to commercialise directly and independently from the other partner but requires that an owner receives consent from the other partner to licence or assign rights to the IP to a third party. Because the college partner needs to licence the IP to third parties to commercialise, they must be in a position to licence jointly owned IP and this provision must be included in the Agreement.

2. How is joint Foreground IP defined?

1. Foreground IP that is generated jointly by both company and college personnel and based on background IP and know how of both partners can be owned jointly (in full) by both college and company. Joint ownership only applies to Foreground IP jointly created by both parties. It is not a sweeping agreement across all IP developed in a project. All jointly owned IP must be managed under a Joint Ownership Agreement.

3. Exploitation of Foreground IP generated in an Innovation Partnership project?

1. The college has access to all Foreground IP and has the perpetual right to use Foreground IP for internal non-commercial use and teaching purposes, excluding confidential, proprietary or commercially sensitive information.
2. The company has access to all Foreground IP and will have first option to negotiate a licence to exploit the IP generated within the projectwithin a specific time limit in their field of interest.
3. The college will have first option to negotiate a licence to exploit Foreground IPowned but not exploited by the company.
4. A Joint Ownership Management Agreement is in place that will define clearly how joint IP will be managed and exploited. Irish patent law allows joint owners to commercialise directly and independently from the other partner but requires that an owner receives consent from the other partners to licence or assign rights to the IP to a third party. Because the college partner needs to licence to commercialise, they must be in a position to licence jointly owned IP and this provision must be included in the Joint Ownership Agreement.

4. Publication of Research Results

1. The company has the right to review intended publications within a reasonable time limit and request the removal of confidential, proprietary or commercially sensitive information.The college has the right to publish research results after removal of confidential, proprietary or commercially sensitive information.

5. What is a HPSU or High Potential Start up company?

1. This is a classification that Enterprise Ireland applies to a new start up company with clear potential to employ 10 people or more and / or achieve sales of > € 1m within 3 years of starting to trade. These are early stage companies. To clarify if a company is a HPSU please contact the Innovation Partnership Programme Managers for further information.

6.References

1. National Code of Practice for Managing and Commercialising Intellectual Property from Public-Private Collaborative Research, November 2005.
2. Funding Agency Requirements & Guidelines for Managing Research Generated Intellectual Property
3. Community Framework For State Aid For Research And Development And Innovation (2006/C 323/01)

Annex 1:

Collaborative research involves a company partner and college partner coming together to jointly develop and undertake a research project. Collaborative research projects should exhibit the following features:

The academic and company jointly develop the workplan:

• The academic and company jointly undertake the work
• The outputs generated benefit the academic, college and company
• Typically the college owns Foreground IP*. See Part 1 of this document for details.
• The project builds on existing know-how and IP in the college
• The project is very likely to lead to new high quality publications by the research group
• Mobility: College researchers undertake work on the company site and/or company personnel to relocate to college for a significant portion of the project.

*: There may be some situations where the output of the project may be owned jointly by both parties.