National IP Protocol 2016 |
Inspiring Partnership –
the national IP Protocol 2016
Policies and resources to help industry
make good use of public research in Ireland
03
National IP Protocol 2016 |
Foreword
As a country, Ireland has invested significantly in building our research capacity in
strategic areas allied to industry needs. We have invested in human capital, in top quality
Researchers and in third and fourth level education. We now have excellent physical
research infrastructure in place coupled with structures to commercialise research.
We want investment in research to drive innovation and competitiveness in business and
the public sector and enable the creation of sustainable jobs, in line with the goals of our
Action Plan for Jobs. The research system in Ireland has matured to a level where it is
now appropriate to accelerate the return from public investment. This revised and updated
national IP Protocol aims to do just that by encouraging innovation from Irish research and
the commercialisation of all forms of Intellectual Property arising from the publicly-funded
research sector.
This updated IP Protocol is the product of an extensive process of consultation between the
Department of Jobs, Enterprise and Innovation and Knowledge Transfer Ireland (KTI), and
people working at the industry-research interface. This includes industry (large and small),
the venture capital community, Research Performing Organisations (RPOs), Technology
Transfer Oces (TTOs), the enterprise agencies, State research funding organisations and
the Irish Universities Association. We would like to thank all those who contributed to
shaping this new text.
The Government’s objective for the IP Protocol is to support all enterprises from small
businesses to multinationals to engage with publicly-funded research with ease and
certainty. This happens through enterprise collaboration with Ireland’s universities, institutes
of technology and other publicly-funded research institutions. The Protocol underpins this
by creating a mutually beneficial environment in which enterprise and Researchers can
access and share knowledge, expertise, technology and IP. This in turn supports innovation
in products, services and processes leading to more competitive companies able to scale
and grow, and to deliver products and services for the global marketplace.
The IP Protocol sets out the Government’s policies to encourage industry to benefit from
publicly-funded research and describes the practical arrangements for this to happen.
Since the formation of KTI, as mandated in the first protocol, industry now has a range
of resources at its disposal to make the process of engagement with RPOs clear and
swift. This second iteration of the protocol reflects our commitment to ensuring that the
knowledge transfer system continues to be agile and responsive to change and growth in
both enterprise and research.
Damien English, TD
Minister for Skills, Research and Innovation
Foreword
Section 1 National IP Management Requirements
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05
National IP Protocol 2016 |
Introduction
Introduction
Ireland’s research and innovation strategy actively promotes
close working relationships between industry and the public
research system. It aims to provide a world-leading environment
in which industry – both local and from abroad – enthusiastically
uses Irish public research for discovery and innovation.
The IP Protocol 2016 is an update to the original IP Protocol
which was published in 2012. It is about helping industry – from
start-ups and small and medium enterprises to multinational
corporations – to access the research and development carried
out in Ireland’s universities, institutes of technology and other
public research institutions (collectively termed ‘Research
Performing Organisations’ or RPOs
1
). It sets out the Government’s
policies to encourage industry to benefit from this research and
development and describes the practical arrangements for this to
happen. The IP Protocol also sets expectations – on RPOs and on
industry parties wishing to engage with RPOs.
The IP Protocol was always intended as a living document, its
evolution and updating being informed by practice. Knowledge
Transfer Ireland (KTI, the government’s central technology
transfer office) has responsibility for this. The updated version
of the Protocol is based on extensive consultation with people
involved in the commercialisation of research in Ireland from
across the ecosystem comprising industry (small and large),
investors, Research Performing Organisations (RPOs) and State
Agencies funding research and innovation. The vast majority of
those consulted valued the national IP Protocol as a very useful
framework to articulate the rules of engagement for Collaborative
Research between RPOs and industry. The revision aims to strike
the balance between the removal of ambiguity in certain areas
while retaining flexibility.
The focus of the Protocol is primarily on Collaborative Research:
where industry and RPOs work together on a Programme of
research. Industry and the State may share the cost of the research
or it may be fully funded by the company. This latter situation
is sometimes referred to as “contract research”. The Protocol also
deals with industry access to the results of research that is funded
entirely by the State. It encompasses all forms of research and
development activity - from pure and applied research through to
incremental and near-market development.
It is complemented by a suite of Model Agreements and associated
Practical Guides which can be used as a starting point for drafting
and negotiating the contracts that underpin IP arrangements
between industry and the research base.
More information about how to work with the research base
in Ireland, including information on research, expertise and
IP available and downloadable template Model Agreements,
can be found at www.knowledgetransferireland.com/Model-
Agreements
Throughout this document, the following words have the
following meanings:
– “shall” is a mandatory principle that may not be varied by
negotiation.
– “should” implies good practice that will normally be
followed. Industry and RPOs are free to adopt a different
approach where this is in the best interests of successful
relationships and research commercialisation.
– “may” implies a practice that the party concerned can follow
if it chooses.
1
Any organisation that performs research and development funded at least in part
by the State. Please see Appendix A for a more complete definition of the term RPO.
National IP Protocol 2016 |
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Contents
Page Index Topic
03 Foreword
05 Introduction
07 Contents
09 Chapter 1 Policy
12 1.1 Implementation of the IP Protocol
15 Chapter 2 Framework
17 2.1 Principles applicable to research funded 100%
by the State
18 2.2 Principles applicable to research funded 100%
by industry
18 2.3 Principles applicable to research funded partly
by industry and partly by the State
21 Section A Access to IP in wholly State-funded research
22 Section B Access to IP in Collaborative Research
wholly funded by industry
24 Section C Access to IP in Collaborative Research
partially funded by industry
25 2.C.1 Intellectual Property
27 2.C.2 Programme Plan
27 2.C.3 Publication rights
28 2.C.4 Governance arrangements
28 2.C.5 Additional principles that apply to Multi-party
Collaboration Agreements
29 2.C.6 Obligations of each RPO participating in
Collaborative Research
29 2.C.7 Obligations of an industry party participating in
Collaborative Research
30 Section D Licensing
32 2.D.1 General principles in IP licensing
33 2.D.2 Fee-bearing Exclusive or Non-exclusive
licences
34 2.D.3 Non-Exclusive Royalty-Free licences (NERFs)
34 2.D.4 Assignment
35 2.D.5 Retained rights
36 Section E Costs and contributions towards research
37 2.E.1 State Aid
38 2.E.2 European Competition Law
39 Section F IP Management
40 Section G The Irish Knowledge Transfer system
41 Appendix A
43 Appendix B
1
09
Policy
Chapter
Section 1 National IP Management Requirements
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National IP Protocol 2016 |
Chapter 1 Policy
1 Ireland aims to provide an exemplary innovation ecosystem
that creates economic and societal benefits. This includes
the promotion of entrepreneurship, high potential start-
ups and job creation by new and established firms. An
essential condition for this is a user-friendly system that
enables industry and the public research sector to work
well together and which encourages the commercialisation
of all forms of Intellectual Property (‘IP’) arising from
publicly-funded research.
2 In encouraging industry and RPOs to
work together, the State’s aims are:
– For Ireland and its centres of research excellence
to be the partner of choice and to be optimally
attractive for industry to engage with the
academic community in research Programmes.
– For such Programmes to assist enterprises in
researching, developing, validating and testing
new technologies/products/platforms in ways
that will lead to commercialisable assets.
– To deepen industry’s R&D base in Ireland.
– To engage Ireland’s SMEs in innovation
to ensure their long-term sustainability.
– To grow and develop the research excellence and
expertise of Ireland’s academic research community.
– Ultimately to deliver a return to the Irish economy,
aligned to evolving national priorities.
3 Where commercially exploitable IP arises as a result of State
funding for research and development, the opportunity
shall be taken to commercialise the IP in all possible Fields,
applications and territories where it is consistent with
achieving Ireland’s objectives.
4 The purpose of this commercialisation, from Ireland’s
point of view, is to maximise the economic and societal
benefits and returns to Ireland from its public investment
in research.
5 The primary objective of commercialisation is the creation
of sustainable jobs in Ireland. This is the most important
form of economic and societal benefit.
6 Where the potential for job creation in Ireland is limited or
non-existent, the aim is commercialisation elsewhere that
will lead to wealth flows and benefits to Ireland.
7 All enterprises, from start-ups and small and medium
enterprises (‘SMEs’) to multi-national corporations, can
easily access this IP. Companies and research performers
should be able 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.
8 Commercialisation shall also, as far as possible without
compromising these policy statements, benefit the
Higher Education Institutes and State-funded Research
Organisations (“Research Performing Organisations”,
RPOs) and provide incentives to the Researchers involved
in creating the IP. These benefits include not only
opportunities for RPOs to share financial rewards but also
the promotion of greater industry involvement in RPO
research, leading to new research Programmes, increased
funding for RPOs and the stimulus of greater industry
interaction for individual Researchers.
9 All those involved in commercialisation of IP, RPOs and
industry alike, should seek to build networks of long term
knowledge sharing relationships, reflecting the ecosystem
nature of innovation.
10 Where there are opportunities to commercialise the IP
arising from RPO research, then all parties shall pursue
commercialisation of that IP in a timely manner.
11 RPOs shall pursue commercialisation, keeping in mind
the objective to create economic and societal benefit
for Ireland through the creation of sustainable jobs.
This can be achieved in a number of ways, including:
– Creating licensing opportunities for all types of
enterprise, thereby creating employment and a more
competitive and sustainable economy in Ireland.
– Supporting the creation of spin out companies,
with the potential for job creation in Ireland.
– Attracting and maintaining foreign direct investment
in Ireland, with its potential for economic growth and
job creation.
12 In some situations, RPOs will need to decide which of these
three mechanisms takes precedence, making informed
judgments about which specific approach will maximise
overall economic and societal benefits for Ireland.
1.0
Policy
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Chapter 1 Policy
13 RPOs shall aim to maximise the benefits of
commercialisation to Ireland rather than focusing
exclusively on the benefits to the RPO. They should build
relationships with industry that will support a sustainable
flow of commercialisation outputs, rather than seeking to
maximise the returns from individual transactions.
14 RPOs shall have policies and procedures in place that are
publicly published and enable them, to the extent that is
reasonable, to give industry an acceptable and consistent
level of confidence around the management of IP arising
from their research. These policies and procedures shall
include arrangements for good planning, governance
and execution of research Programmes and publications,
with particular attention to the management and
commercialisation of IP.
15 In support of this policy, a Framework for industry
engagement with public research, in Chapter 2, provides
detailed requirements, guidelines and procedures for
commercialisation of IP in line with this policy.
16 Where research is funded by the State or owned by the
State, it should benefit the State. It therefore follows that all
RPOs shall:
– Apply this Policy and the Framework in Chapter 2, to
ensure consistency and predictability of approach.
– Within the requirements of this Policy and
of the Framework, be flexible in negotiating
individual Commercialisation agreements, in
order to obtain the best result for all parties.
– Have procedures in place to ensure their staff,
contractors, consultants and students understand
the principles of this policy, the options available
for commercialising IP arising from their
research, and the benefits of commercialisation.
– Have arrangements in place to enable them to meet
these requirements.
17 The State research funding organisations have diverse
objectives for their research funding, reflecting their
differing missions. However, all these organisations share
a common interest in commercialising IP arising from
the research they fund whenever this is possible, and,
accordingly, shall implement this policy.
18 Knowledge Transfer Ireland (KTI) has responsibility for
setting direction for RPO best practice to enable compliance
with the policy and procedures set out in this document
and a consistent interpretation and adoption of the policy
and procedures by the State research funding organisations.
1.1
Implementation of the IP Protocol
13
National IP Protocol 2016 |
Chapter 1 Policy
2
15
Framework
Chapter
16
National IP Protocol 2015
Section 1 National IP Management Requirements
17
National IP Protocol 2016 |
Chapter 2 Framework
19 This chapter sets out the standards for all industry-RPO
negotiations of Collaborative Research contracts, so as to
support speed, consistency and predictability of outcomes
in the negotiation process. It describes how industry
can benefit from access to IP arising from Collaborative
Research which it undertakes with an RPO which is funded
wholly or in part by the company, and how it can also access
IP where it has had no research involvement with the RPO.
20 In this chapter what is mandatory and what is not is
described. It is appropriate, in some situations, that there
is a degree of flexibility, so that the parties can negotiate
the most pragmatic agreement. This approach recognises
differing sectoral characteristics and the different forms
which IP may take. This chapter does not aim to discuss
legal concepts of the factors influencing decisions taken in
IP management in every detail and, in particular, is not a
comprehensive treatment of all legal issues.
21 The principles for industry-RPO research engagement
cover the different types of research to which access is
given by industry and the RPOs to industry which are:
– Wholly State-funded Research: This is
where a State research funding organisation
has paid 100% of the costs of the research.
– Collaborative Research: wholly industry-
funded: This is where the industry party has a
specific need and where it meets the full economic
cost of carrying out the Programme of work.
– Collaborative Research: part industry-funded:
This is where an industry party partially funds and
works with an RPO on a Programme of mutual
interest. There will be an element of State research
funding meeting part of the cost of the Programme
of research. This type of Collaborative Research
may involve two or more parties as follows:
- Bilateral Collaborative Research: part industry-
funded: one industry party works with one RPO.
- Multi-party or consortium-based Collaborative
Research: part industry-funded: several industry
parties and RPO(s) working together.
22 When research by an RPO is wholly funded by the State,
the RPO shall own any IP arising from the research. The
RPO shall then be free to negotiate arrangements for other
organisations to access the IP to maximise the benefits of
commercialisation for Ireland.
23 The RPO shall be free to publish the results of its research,
provided it first follows the procedures in place within the
RPO to ensure, where appropriate, IP is properly protected
before anything related to that IP is published.
24 Access by industry to IP owned by an RPO will normally be
by the granting of licence(s) on fair commercial terms by
the RPO on an exclusive or non-exclusive basis requiring
that:
– The licensee(s) shall pursue commercialisation of that
IP in a timely manner; and
– The licensee(s) shall acknowledge and agree that the
RPO shall be free to use the IP to continue its research
and teaching in any Field covered by the licence to the
licensee.
25 In exceptional circumstances, an RPO may agree to transfer
or assign ownership of its IP, subject to compliance with
EU State Aid obligations and to the assignment being
consistent to this policy’s objectives.
2.0
Framework
2.1
Principles applicable to research funded 100%
by the State
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Chapter 2 Framework
26 When the full economic cost of research by an RPO is
wholly funded by industry, the industry party shall be
entitled to a Non-Exclusive Royalty-Free (NERF) licence, an
exclusive licence or an assignment of any IP arising from
the research Programme.
27 Where an exclusive licence or assignment of any IP arising
from the research Programme is agreed, the RPO may
request access to this IP for teaching and research purposes
and the industry party shall give due consideration to this
request.
28 Industry parties who contribute to the cost of a research
Programme that is partially funded by the State shall be
entitled to benefit from the IP arising in that Programme
by way of a licence. Such a licence shall contain, or be
consistent with, the following principles:
– The licensee(s) shall pursue commercialisation of that
IP in a timely manner.
– Licences shall be granted on fair and reasonable
commercial terms (subject to compliance with EU
State Aid obligations) which provide opportunities for
economic and societal benefits for Ireland.
– Where the RPO licenses the IP to an industry party, the
RPO shall retain the right to use that IP for its research
and teaching.
– The RPO shall be free to publish results of the research
Programme, including those that relate to the IP,
provided it first follows an agreed process to notify the
industry party of its intention to publish and to agree
any restrictions on publication.
29 An industry party shall be entitled to negotiate an exclusive
licence or assignment rights to specific improvements to
certain Background IP or other proprietary assets which
that industry party has introduced to the Programme.
30 In certain situations a Non-Exclusive Royalty-Free (NERF)
licence of IP created during a research Programme may
be negotiated, subject to compliance with EU State Aid
obligations.
31 In exceptional circumstances, RPOs may agree to transfer
or assign ownership of its IP to the industry parties subject
to compliance with EU State Aid obligations.
32 IP that is jointly owned by an industry party and an RPO
involves complex management arrangements and should
be avoided.
2.2
Principles applicable to research funded 100%
by industry
2.3
Principles applicable to research funded partly
by industry and partly by the State
19
National IP Protocol 2016 |
Chapter 2 Framework
Table 1: Summary of the ways in which industry can access IP from the RPO sector
Does an industry party want
to commission research at an
RPO and pay the full cost of the
research?
YES
This is Collaborative Research:
wholly industry-funded.
Refer to:
– Chapter 2 Section B
– IP Protocol Resource Guide
NO
Does an industry party want to
collaborate with an RPO on a new
or existing research Programme
and contribute to the costs of that
Programme?
NO
Does an industry party want to
access IP which
(i) already exists within an RPO as
a result of wholly State-funded
research
or
(ii) which is available to license from
the RPO as a result of research
not involving the industry party
YES
This is Collaborative Research.
Refer to:
– Chapter 2 Section C
– IP Protocol Resource Guide
If the research Programme involves
more than one industry party and/or
more than one RPO
If the research Programme involves
only one industry party and one RPO
This is a Multi-party Collaborative
Research Programme: part industry-
funded
This is a Bilateral Collaborative
Research Programme: part industry-
funded
This will involve negotiating a licence
from the RPO.
Refer to:
– Chapter 2 Section D
– IP Protocol Resource Guide
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Chapter 2 Framework
33 This Chapter 2 describes the types of research and access to
IP in more detail:
– Research wholly funded by the State –
Section A
– Collaborative Research: wholly industry-funded –
Section B
– Collaborative Research: part industry-funded –
Section C
34 It also discusses:
– IP Licensing – Section D
– The costs of research and the implications of State Aid
legislation – Section E
– The management of IP, including governance –
Section F
– The knowledge transfer system and the role of RPOs
and other organisations in supporting the IP Protocol –
Section G
35 The IP Protocol Resource Guide (Section 1) discusses
National IP Management Requirements in detail and
provides links to all supporting documents and contracts
which include:
– Template Model Collaborative Research Agreements
that may be used as the basis for industry-RPO contracts.
– A Decision Guide which assists in selection of the
appropriate template to use and which also explains
essential elements of the contracts.
– Template Licence Agreements and Practical Guides to
their use which cover a variety of IP-types and exclusive
and non-exclusive arrangements.
– See also www.knowledgetransferireland.com/Model-
Agreements/Catalogue-of-Model-Agreements.
36 Irish law should govern all RPO contracts relating
to Collaborative Research or the exploitation or
Commercialisation of IP owned or created by the RPOs,
including any IP licences, IP assignments or Collaborative
Research Agreements.
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National IP Protocol 2016 |
Chapter 2 Section A
37 This Section applies when an industry party seeks access to
IP that has arisen from past or current research by an RPO
which was or is wholly funded by the State.
38 It is helpful to read this Section in conjunction with other
parts of this Chapter, particularly:
– Section D – Licensing
– Section E – Costs and contributions towards research
– Section F – IP Management
39 When research by an RPO is wholly funded by the State,
the RPO shall own any IP arising from its research. The
RPO shall then be free to negotiate arrangements for other
organisations to access the IP in order to maximise the
benefits of knowledge transfer and commercialisation for
Ireland.
40 Access to IP owned by an RPO created in wholly State-funded
research will be by way of the granting of exclusive and/or
non-exclusive IP licence(s) by the RPO on fair commercial
terms.
41 While an RPO will not normally consider assigning
ownership of its IP, it may in exceptional circumstances
once IP has been created, agree to transfer or assign
ownership of the IP, provided that it receives fair value in
return, is able to continue its research and teaching in the
Field, and satisfies itself that the assignment is the best
route to generate maximum benefit for Ireland.
42 Notwithstanding the provisions of this Section, special
provisions applicable to IP may apply in situations where
one of the explicit objectives of the State funding was or
is to generate research outputs that can be preserved for
sharing and informed use, beyond the originating research
team and RPO, by the scientific or academic community
and/or for policy and practice purposes. Publicly-funded
research outputs within this description might include
anonymised datasets from population and patient-based
studies; genotypic and phenotypic information; samples
linked to cohort and population surveys and broadly
enabling research tools.
43 When the State research funding organisation expects such
datasets and samples to have Unrestricted Availability or be
Independently Available, this will be stated in the contract
under which it awards funding for the research to the
RPO. In such cases, access should be without unreasonable
restrictions so as to enable wide scientific and public
benefit. Licences granted to individual industry parties
should not compromise this access model.
Section A
Access to IP in wholly State-funded research
| National IP Protocol 2016
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Chapter 2 Section B
Section B
Access to IP in Collaborative Research
wholly funded by industry
44 This Section applies when an industry party commissions
an RPO to carry out research on its behalf and pays the full
economic cost of that research.
45 It is helpful to read this Section in conjunction with other
parts of this Chapter, particularly:
– Section D – Licensing
– Section E – Costs and contributions towards research
– Section F – IP Management
46 A Collaborative Research Agreement shall be negotiated
and signed by both parties prior to the work commencing.
A Collaborative Research Agreement template, covering
this full industry funding situation, can be found on the
KTI website (www.knowledgetransferireland.com/Model-
Agreements/Catalogue-of-Model-Agreements).
47 The Collaborative Research Agreement should include the
terms and conditions that relate to:
– Details of the research Programme and who will carry it
out (Programme Plan).
– Mechanisms for the identification and protection of IP
developed during the Programme.
– Management of IP, including payment of associated
costs.
– Licensing and/or assignment of IP arising in performance
of the Programme (often called “Foreground IP”.)
– Licensing of pre-existing IP introduced into the
collaboration and owned or licensed by the RPO and/or
the industry party (usually called “Background IP”).
– Publication of research results.
– Management and oversight of the Programme.
48 The industry party shall be entitled to the following rights
to the Foreground IP:
– Assignment
– Exclusive licence
– Non-Exclusive Royalty-Free (NERF) licence
49 Even in the case of an exclusive licence of IP or an assignment
of IP, the RPO retains the option to negotiate access to the
Foreground IP to use it for teaching and research purposes
and the industry party shall give due consideration to this
request.
50 As Background IP may be required to carry out a
Collaborative Research Programme, a party which
introduces its Background IP into such a Programme
should grant to the other party a non-exclusive royalty-free
licence to use that Background IP for the sole purposes of,
and to the extent necessary, to carry out its work on the
Programme.
51 As Background IP may be required in the future for the
commercialisation of IP arising from a Collaborative
Research Programme, any Background IP to be introduced
into the Programme by a party shall be detailed in the
Collaborative Research Agreement.
52 The introducing party shall state in writing whether its
Background IP will be available for license by the other
party at the end of the Programme and whether there are
any restrictions attached to the use of that Background IP.
53 Where an RPO confirms at the time it introduces
Background IP, that the Background IP is available for use or
commercialisation by the industry party after the end of the
Programme, it will not, until the expiry of the Programme,
enter into any contracts which would further limit its
ability to grant those access rights to that Background
IP which have been offered without the industry party’s
consent.
54 Prior to contractually agreeing to introduce Background
IP to a research programme the RPO will need to consider
whether committing such Background IP into a Programme
is essential to that Programme and, if not, whether
introduction is likely to prevent or delay alternative
commercialisation of the Background IP, bearing in mind
the objective to deliver optimum social and economic
benefit to Ireland.
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National IP Protocol 2016 |
Chapter 2 Section B
55 Where any RPO Background IP is so confirmed as being
available for use by an industry party after the end of the
research Programme, then the industry party(s) shall
have a right to negotiate a non-exclusive licence to this
Background IP. This licence:
– Will only be for the purposes of, and to the extent
required to, commercialise the IP arising from the
Programme.
– Will be on such terms and conditions as would be found
in a usual arm’s length commercial licence, to be agreed
between the parties in good faith.
56 In exceptional circumstances, the industry party may have
a right to negotiate an exclusive licence to Background IP,
subject to compliance with EU State Aid obligations, if the
RPO agrees this at the time it commits to introduce the
Background IP to the Programme.
57 Notwithstanding the provisions in the preceding
paragraphs an RPO shall retain its rights in respect of Non-
Severable Improvements to any Significant Background
which the RPO has introduced to the Programme, unless
agreed otherwise.
| National IP Protocol 2016
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Chapter 2 Section C
Section C
Access to IP in Collaborative Research
partially funded by industry
58 This Section describes how industry can benefit from
access to IP where it is partially funding a Programme of
Collaborative Research at an RPO. It applies when one or
more industry parties and one or more RPOs are working
together in a Collaborative Research Programme that is
funded partly by the State and partly (in cash and/or in
kind, including participation in the research itself) by the
industry party(s).
59 It is helpful to read this Section in conjunction with other
parts of this Chapter, particularly:
– Section D – Licensing
– Section E – Costs and contributions towards research
– Section F – IP Management
60 A Collaborative Research Agreement, shall be negotiated
and signed by the parties prior to the commencement
of the Collaborative Research Programme. A template
covering this situation can be found on the KTI website
(www.knowledgetransferireland.com/Model-Agreements/
Catalogue-of-Model-Agreements).
61 RPOs, industry parties and State research funding
organisations shall meet their obligations in Collaborative
Research Agreements to ensure the effective and timely
commercialisation of IP.
62 As a prelude to negotiating a Collaborative Research
Agreement, the parties may negotiate and agree a non-
binding term sheet that defines the core terms relating to
the Programme, and upon which the detailed Collaborative
Research Agreement will be based. In some cases, State
research funding organisations may make the signature of
a term sheet addressing certain key topics a requirement of
grant of funding.
63 Where a State research funding organisation permits
commencement of a Collaborative Research Programme
on the basis of a signed term sheet, the RPO and industry
party should aim to convert all terms agreed between
them into a fully executed binding Collaborative Research
Agreement within 90 working days following the date on
which the first part of the funding awarded by the State
research funding organisation is drawn down.
64 The Collaborative Research Agreement shall include terms
and conditions that address:
– Details of the Programme and who will carry it out
(Programme Plan).
– Mechanisms for the identification and protection of IP
developed during the Programme.
– Management of IP, including payment of associated
costs.
– Licensing of IP arising in the performance of the
Programme (often called “Foreground IP”).
– Licensing of pre-existing IP introduced into the
collaboration and owned or licensed by the RPO and/or
industry party (usually called “Background IP”).
– Licensing of industry introduced Background IP where
necessary to allow exploitation of Foreground IP by the
RPO.
– Publication of research results.
– Management and oversight of the Programme.
65 The Collaborative Research Agreement shall comply
with the mandatory principles regarding professional IP
management, as described in further detail in the IP Protocol
Resource Guide at Section 1 National IP Management
Requirements.
66 Before the research Programme starts, the parties should
discuss in confidence the different exploitation routes
and the associated issues of commercialisation, risk and
appropriate rewards. They should agree arrangements for
IP access by each of the parties that are appropriate to the
specific collaboration and that will allow exploitation to
be maximised. This should take into account such matters
as what each party is bringing into the collaboration, what
rights will be essential to allow a party to commercialise
results, what rights are desirable or where freedom to
operate is more important than obtaining exclusivity. It
is reasonable to expect that rights to Foreground IP may
be divided up according to core business interests of the
parties – industry and the RPO.
25
National IP Protocol 2016 |
Chapter 2 Section C
2.C.1
Intellectual Property
67 The industry party shall be entitled to negotiate and
conclude a licence to Foreground IP on fair commercial
terms, within a pre-agreed period (such as six months)
starting on the date on which the RPO formally notifies the
industry party of the creation of the IP. After this time if a
licence is not concluded, the RPO shall be free to negotiate
arrangements for other organisations to access the IP in
order to maximise the benefits of commercialisation for
Ireland.
68 IP licences of IP arising from Collaborative Research shall
be granted by the RPO to the industry party subject to the
industry party making at least the minimum contribution
to the cost of the research Programme. The minimum
contribution shall be determined by the State research
funding organisation (see Section E Costs and contributions
towards research).
69 Choosing the form of IP licence shall be based upon
legitimate academic and business considerations of the
parties giving due regard to this Policy. The form of IP licence
that applies during and after the research Programme
should ideally be identified and agreed by the parties before
the Programme starts and before the Collaborative Research
related agreement is entered into.
70 In some situations, a Non-Exclusive Royalty-Free (NERF)
licence to Foreground IP may be granted by the RPO to
the industry party following completion of the research
Programme, subject to compliance with EU State
Aid obligations. This is subject to the industry party
contributing minimum amount, see Section E.
71 There are two ways in which a NERF licence should be
made available:
– When negotiating the Collaborative Research
Agreement the parties may agree that the industry party
may have a right following completion of the research
Programme to a NERF licence to use the Foreground
IP arising from the Programme in which the industry
party is involved, for defined purposes, Fields and/
or territories. Such a licence will not provide access
to any other RPO IP. The parties may make separate
arrangements for access to other IP (such as Background
IP required to use the Foreground IP).
– During the Programme and within six months
following the RPO notification to the industry party that
Foreground IP has been created, the industry party may
be granted a NERF licence for use of this Foreground IP
for defined purposes, Fields and/or territories. During
this six month period or until such a licence is granted
or until the industry party declares its intention not to
apply for such a licence, whichever occurs first, the RPO
shall not enter into any contracts which would limit
its ability to grant to the industry party such a licence
in the Field. After the end of the six month period, the
industry party may still apply for a NERF licence at
any time but the grant of such a licence shall be at the
discretion of the RPO.
Example of when a NERF licence might be
appropriate:
During a targeted Collaborative Research Project
between a multinational ICT company and a
university, IP was created. In this case, copyright
in computer software. Under the terms of the
collaborative agreement, the company had the
option to request a NERF and to negotiate an
exclusive royalty bearing licence. The company
chose the NERF right as this satisfied its business
needs by providing freedom to operate. The
university was able to pursue additional licence
opportunities in areas where there were several
potential licensees.
| National IP Protocol 2016
26
Chapter 2 Section C
72 While an RPO will not normally consider assigning
ownership of its IP, it may in exceptional circumstances,
once Foreground IP has been created, agree to transfer or
assign ownership of the Foreground IP, provided that it
receives fair value in return, is able to continue its research
and teaching in the Field, and satisfies itself that the assignee
is in a position to commercialise the IP for the benefit of
Ireland.
73 Notwithstanding the provisions in the preceding
paragraphs an industry party shall have the right to
negotiate the assignment of Non-Severable Improvements
to any Significant Background which that industry party
has introduced to the Programme. This includes situations
in which an industry party may introduce a proprietary
confidential asset into a Collaborative Research Programme
as Background IP. The question of whether any particular
Foreground IP constitutes a Non-Severable Improvement to
any Significant Background will be agreed by the parties and
will usually be determined by the proprietary nature of the
Significant Background.
74 As Background IP may be required to carry out a
Collaborative Research Programme, a party which
introduces its Background IP into such a Programme should
grant to the other party a non-exclusive royalty-free licence
to use that Background IP for the sole purposes of, and to the
extent necessary, to carry out its work on the Programme.
75 As Background IP may be required in the future for the
commercialisation of IP arising from a collaborative
Programme, any Background IP to be introduced into the
Programme, by a party, shall be detailed in the Collaborative
Research Agreement.
76 The introducing party shall state in writing any restrictions
attaching to the use of that Background IP, including any
restrictions on its use by a party after the end of the research
Programme.
77 Where an RPO confirms at the time it introduces
Background IP that the Background IP is available for use or
commercialisation by the industry party after the end of the
Programme, it will not, until the expiry of the research, enter
into any contracts which would further limit its ability to
grant those access rights which have been offered without
the industry party’s consent.
78 Prior to contractually agreeing to introduce Background
IP to a research Programme the RPO will need to consider
whether committing such Background IP into a Programme
is essential to the Programme and, if not, whether
introduction is likely to prevent or delay alternative
commercialisation of the Background IP bearing in mind the
objective to deliver optimum social and economic benefit to
Ireland.
79 Where any RPO Background IP is so confirmed as being
available for use by the industry parties after the end of the
Programme, then the industry party(s) shall have a right to
negotiate a non-exclusive licence to this Background IP. This
licence:
– Will only be for the purposes of, and to the extent
required to, commercialise the IP arising from the
research Programme.
– Will be on such terms and conditions as would be found
in a usual arm’s length commercial licence, to be agreed
between the parties in good faith.
80 In exceptional circumstances, the industry party may have
a right to negotiate an exclusive licence to Background IP,
subject to compliance with EU State Aid obligations, if the
RPO agrees this at the time it commits to introduce the
Background IP to the Programme.
81 Notwithstanding the provisions in the preceding paragraphs
an RPO shall retain its rights in respect of Non-Severable
Improvements to any Significant Background which the
RPO has introduced to the Programme, unless agreed
otherwise.
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National IP Protocol 2016 |
Chapter 2 Section C
82 The Programme Plan should include all the technical aspects
of the research Programme and the deliverables.
83 If the parties wish to make substantial changes to the
Programme Plan, they shall request prior agreement from
the State research funding organisation. Such approval shall
be considered within 30 working days of request and not
unreasonably withheld or delayed.
84 The relevant parties should receive payments on a schedule
agreed with the State research funding organisation.
Payments will be linked to achievement of the milestones
in the Programme Plan and to compliance with the funding
contract.
85 The parties should be aware that the State research funding
organisation may terminate the funding for a Collaborative
Research Programme or terminate a party’s involvement in
the Programme in the event of:
– A failure to meet Programme milestones contained in the
funding contract.
– Any other material breach of the contract under which
the State research funding organisations providing
funding for the Programme, which cannot be remedied
within a timescale acceptable to the State research
funding organisation notifying the RPO of the breach.
– Any material breach of any other contract signed by the
parties in respect of the research Programme.
86 A Programme Plan template can be found on the KTI website
at www.knowledgetransferireland.com/Model-Agreements/
Catalogue-of-Model-Agreements.
87 The ability of RPOs to further their mission of teaching and
research and to maintain an open academic environment
that fosters intellectual creativity is important. Publication
of research results is often a condition imposed by non-
commercial funding bodies.
88 Publication of results from research collaboration aided by
funding from State research funding organisations enables
compliance with State Aid legislation.
89 In principle, RPOs may publish results from a Collaborative
Research Programme including those relating to Foreground
IP. However, premature publication may disclose
confidential, proprietary and/or commercially sensitive
information and either prevent the further protection of
any IP arising from the research Programme or prevent the
value and benefit of Foreground IP from being maximised.
The Collaborative Research Agreement shall contain clauses
that detail how publication of Foreground IP and related
information shall be handled by the parties.
90 Each party intending to publish shall submit the proposed
publication to the other party before submitting it for
publication.
91 The parties may agree to set up a publications review
committee to manage the process of giving permission to
publish Foreground IP and related information arising from
the Collaborative Research Programme.
92 Review times shall be 30 calendar days from submission
of the proposed publication to the Publications Review
Committee or the other party for permission, during which
a party may object in writing to publication. In this event
the party may withhold permission for up to 90 calendar
days from the date the proposed publication was submitted
to them or until any affected IP is properly protected,
whichever occurs first. If no written objection is received
by the party intending to publish within the 30 days, then
permission to publish shall be deemed to have been given.
93 RPOs shall have procedures in place to manage publication
of Foreground IP, in line with the National IP Management
Requirements summarised in the IP Protocol Resource
Guide, Section 1.
2.C.2
Programme Plan
2.C.3
Publication rights
| National IP Protocol 2016
28
Chapter 2 Section C
94 Successful collaborations are those that benefit every
collaborating party and have due regard for each party’s
contributions, objectives and desired outcomes. It is
important to establish consistent governance arrangements
that can oversee day-to-day activities in collaborative
Programmes.
95 The parties should each appoint a single point of contact
for the research Programme to ensure day-to-day adherence
to the direction and scope of the Programme and simple
communication between the parties. This programme
management governance arrangement should be set out
in the Collaborative Research Agreement. Clear lines of
communication to the accountable individuals in both
RPO and industry party should be established to ensure any
unforeseen issues are dealt with.
96 Each party should develop appropriate delegations of
authority, administrative guidelines and accountability
measures to support their participation in Collaborative
Research Programmes.
97 Multi-party Collaborative Research is where more than two
parties come together (e.g. one or more industry parties and
one or more RPOs) in a Collaborative Research Programme
that is funded partly by the State and partly (in cash and/or
in kind, including participation in the research itself) by the
industry party(s).
98 In addition to the conditions described in Sections 2.C.1-
2.C.4, above, the following principles (99-104) apply:
99 In order to effectively manage the negotiation of the Multi-
party Collaborative Research Agreement, where there is more
than one RPO party, the collaborating RPOs should appoint
one of their number to be the Lead RPO. The Lead RPO
should have authority to negotiate the terms and conditions
associated with the Collaborative Research Programme on
behalf of all RPOs involved, so that the industry party or parties
only have to deal with one RPO. The parties in the collaboration
should agree a dispute resolution mechanism for inclusion in
the agreement addressing any matters needing resolution.
100 Multi-party Collaborative Research Agreements must
adequately and fairly address the interests and objectives of
each of the collaborating parties. When negotiating to set up
a new Collaborative Research Programme, the parties should
make sure the proposed arrangements will benefit them all.
101 Co-exclusive licences to Foreground IP may be available to
the industry parties.
102 The parties may agree that separate Bilateral Collaborative
Research Agreements may exist within the multiparty
collaboration. In this case, these agreements, between two
of the parties to the research Programme, shall deal with
specific pieces of research, related to, but distinct from the
rest of the Programme. The agreements should include
terms and conditions dealing with access to Background IP
and Foreground IP relating to that piece of research specific
only to the two parties involved.
103 In all Multi-party Collaborative Research Agreements, a
Programme Steering Committee should be established,
involving representatives from all the parties in the
collaboration.
104 The parties should set up a mechanism to review
publications in order to manage the process of giving
permission to any party’s proposal to publish Foreground
IP and related information arising from the Collaborative
Research Programme. This should take the form of a
Publications Review Committee or an IP Review Committee.
This is particularly important in Multi-party Collaborative
Research, where clear processes and accountability and
timely decision making is essential.
2.C.4
Governance arrangements
2.C.5
Additional principles that apply to Multi-party
Collaboration Agreements
29
National IP Protocol 2016 |
Chapter 2 Section C
105 Each RPO shall ensure that it has entered into appropriate
written agreements with its employees and non-employees
(such as contractors, consultants and students) that grant
it ownership of inventions and other IP arising from their
work (as part of a Research Programme), while providing
for appropriate recognition, incentives and reward for those
involved.
106 Each RPO participating in a Collaborative Research
Programme shall:
– Provide the resources which the Programme Plan says
that it will use in implementing the Programme.
– Carry out that part of the Programme allocated to it in the
Programme Plan.
– Comply fully with its IP management system (IP Protocol
Resource Guide Section 1) in respect of its activities under
the Programme.
– Be responsible for the actions of all its employees and
non-employees (such as consultants, contractors and
students) involved in the Programme on behalf of the
RPO and for any failure by them to comply with its IP
management system or with any terms and conditions of
the Collaborative Research contract.
107 The RPO, its Researchers and students shall not be restricted
from carrying out future research in the same area as that of
the Programme, provided that they comply at all times with
the provisions of the RPO’s IP management system and the
terms of the Collaborative Research contract.
108 If the industry parties, or any other organisation, take a
licence of or an assignment of the Foreground IP arising from
the Programme, the Researchers should be required to give
such assistance to the RPO and to the licensees/assignees as
is reasonably necessary to enable the licensee (or assignee)
properly to use and commercialise the IP, in accordance
with the terms and conditions agreed in the Collaborative
Research contract or related agreement.
109 Each industry party participating in a Collaborative
Research Programme shall:
– Provide the contributions and other resources as set out
in the Programme Plan.
– Carry out that part of the Programme allocated to it in the
Programme Plan.
– Be responsible for the actions of all its employees, sub-
contractors and other non-employees (e.g. students)
involved in the Programme on its behalf and for any
failure by them to comply with any terms of the
Collaborative Research contract.
– Not use any funding or IP from other sources in the
Programme which may have any terms or conditions
attached which conflict with the terms (particularly IP
terms) agreed with the RPO(s).
– Comply with the other terms and conditions agreed with
the RPO(s) in relation to IP used in or created as a result of
the Programme.
2.C.6
Obligations of each RPO participating
in Collaborative Research
2.C.7
Obligations of an industry party participating in
Collaborative Research
| National IP Protocol 2016
30
Chapter 2 Section D
110 An IP licence agreement is a contract under which an owner
or licensee of Intellectual Property Rights (the licensor)
permits another person (the licensee) to engage in activities
that, in the absence of the licence agreement, would infringe
the Intellectual Property Rights.
111 There is no ‘official’ definition of Intellectual Property (IP),
and for this reason it is often defined specifically in licence
agreements. There are many different types of IP. Depending
on the subject matter of the licence agreement, IP may be
defined as including patents, copyright, database rights,
unregistered and registered designs, trade marks, domain
names and similar property rights.
112 IP licences are sometimes granted to permit a licensee to use,
make and/or sell products that use the licensed IP, often in a
specific Field and/or territory.
113 In return for the grant of an IP licence from an RPO, the
licensee will typically make payments to the RPO in respect
of its use of the RPO’s IP – a fee-bearing licence. In some
situations a licence may be granted by an RPO to a licensee
with no such requirements.
114 Key terms of a typical IP licence agreement will usually
include the following points:
– Detailed definitions of the subject matter of the licence
agreement and key terms used in the licence agreement,
including definitions used to elucidate the parameters of
the licence, such as Licensed IP, Territory, Field, Licensed
Product, Net Sales Value, Valid Claim, etc.
– A ‘grant’ clause which describes the scope of the licence
being granted, for example, the revocability of the
licence, whether the licence is exclusive or non-exclusive,
whether the licensee is permitted to grant sub-licences
and, if so, any conditions for sub-licensing, etc.
– Provisions governing confidentiality and publications.
– Obligations of the licensee, particularly in exclusive IP
licence agreements, to develop and commercialise the IP,
with provisions stating what is to happen if the licensee
fails to comply with these obligations.
– Warranty, liability and indemnity clauses.
– Protection of IP and infringement claims.
– Duration, termination and consequences of termination.
115 Fee-bearing licences will include detailed payment terms,
which may include, for example, terms covering lump
sums, royalties, frequency and time of payments, reports,
record-keeping, audit rights, tax issues, etc.
116 The type of licence that might be used to licence IP from
an RPO will depend on the commercial and other needs or
objectives of the respective parties, the best licence model
to optimise benefit and value for Ireland and the type of
research engagement (where one took place). IP licences
granted by the RPO to industry should be specific to the
target market at which the product or service that utilises
the IP is aimed and the market sector standards that typically
apply to those products and services. By way of example the
following IP licences are possible:
Section D
Licensing
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National IP Protocol 2016 |
Chapter 2 Section D
117 Even in a situation where a licence does not require up-front
or other payments, a licence agreement should be signed by
the industry party with the RPO to ensure rights to the IP are
contractually managed appropriately.
Licence type Associated payments Source
Exclusive licence May be fee bearing.
Patent and other IP management costs should be
transferred to licensee.
Unrelated to any research engagement.
Or
Arising from Collaborative Research: wholly industry-funded
(full economic cost paid by the industry party).
Or
Arising from Collaborative Research: part industry-funded.
Non-exclusive IP
licence
May be fee bearing.
Patent and other IP management costs should be
included in licence.
Unrelated to any research engagement.
Or
Arising from Collaborative Research: wholly industry-funded
(fully paid by the industry party).
Or
Arising from Collaborative Research: part industry-funded.
Non-Exclusive Royalty-
Free (NERF)
Free.
Patent and other IP management costs should be
included in licence.
Arising from Collaborative Research: wholly industry-funded
(full economic cost paid by the industry party).
Or
In certain circumstances only for IP arising from Collaborative
Research: part industry-funded.
Co-exclusive May be fee bearing.
Patent and other IP management costs should be
included in licence.
Only applicable in certain circumstances to IP arising from Multi-
party Collaborative Research: part industry-funded.
Assignment May be fee bearing.
Patent and other IP management costs should be
transferred to assignee.
Arising from Collaborative Research: wholly industry-funded
(full economic cost paid by the industry party).
Or
Subject to a milestone trigger in respect of:
IP unrelated to any research engagement.
Or
IP arising from Collaborative Research: part industry-funded.
Table 2: Licence types
| National IP Protocol 2016
32
Chapter 2 Section D
118 IP licences granted by RPOs shall be for defined purposes,
Fields, duration and territories and on fair commercial
terms.
119 All licences should provide for their termination (for
example, in the case of a material breach of the licence terms
by the licensee or the insolvency of the licensee), so as to
enable the RPO owning the IP to seek further commercial
opportunities for that IP.
120 Know-how, research tools and other broad enabling
technologies owned by the RPO should be very clearly
described in licence agreements, so that they are clearly
identifiable and ring-fenced from other Background IP of the
licensing RPO.
121 IP rights in such know-how, research tools and technologies
owned by the RPO should normally not be assigned or
licensed exclusively and should only be licensed on a non-
exclusive basis, as assignment or an exclusive licence may
preclude the RPO from undertaking further teaching,
research or commercialisation activities in connection with
the IP in the know-how, research tools and technologies in
question. They should only be licensed on an exclusive basis
where:
– The licensee can reasonably demonstrate to the
satisfaction of the RPO that an exclusive IP licence is
essential for the licensee properly to commercialise the
IP it wishes to license from the RPO.
– The RPO is satisfied that the exclusive nature of the
licence will not restrict its ability to continue its teaching,
research and commercialisation activities in the Field in
question.
– The know-how, research tools and other broad enabling
technologies are very clearly described in such detail and
manner as would allow the RPO to ensure compliance
with the exclusive IP licence.
122 The costs of applying for a patent or other protection by
way of registration for Foreground IP owned by an RPO
should be met by that RPO up to the grant of any licence
relating to that IP. When an exclusive IP licence is granted,
the licensee should meet all subsequent patent costs or
other IP protection costs from the grant of the licence.
Reimbursement of prior patent costs may be included in
the licence fee. When a non-exclusive IP licence is granted,
subsequent patent costs and other IP protection costs should
be shared equitably by the RPO and the licensee(s).
123 The RPO should agree the patent and other registered
IP strategy with any licensees or other parties who have
exclusive rights or options to negotiate exclusive licences
with the RPO.
124 The RPO should remain the ‘client of record’ for any agents
or lawyers prosecuting patents or other protection for IP
owned by the RPO.
125 As part of its IP management system, an RPO shall take
reasonable steps to ensure that it keeps a record of any
written notice or claim received by the RPO that the use of
the IP in question is infringing, or could infringe, any third
party Intellectual Property Rights.
126 Action against any alleged infringement of patents owned
by an RPO should initially be taken by the RPO, if it chooses
to do so. Where an exclusive licence has been granted for
the Field and territory in which the alleged infringement is
taking place and the licensee(s) is diligently commercialising
the IP in that Field and territory and can provide prima facie
evidence of the infringement, if the RPO chooses not to
act, it should promptly notify the licensee(s) of that choice
and permit them to take action at their own cost, provided
that they indemnify the RPO against any costs, claims or
damages that the RPO may incur as a result of the action. In
the case of non-exclusive licence grant, if the RPO chooses
not to act it should promptly notify any licensee(s) of that
choice and grant them the right to take action in its place.
127 As the licensee has control over the development and
ultimate use, commercialisation and translation into
products of any IP it licenses from an RPO, the licensee shall
assume any liability which may arise in respect of these
activities and shall indemnify the RPO against any such
liability.
128 In view of the open and academic nature of RPOs and the
many research activities that they carry out, it is recognised
that RPOs are not in a position to give the same assurances
in respect of IP management as a commercial organisation
could give. RPOs therefore should not offer warranties
or representations or assume liabilities concerning IP
management or protection. An organisation contemplating
the commercialisation of IP provided by an RPO should
itself take whatever steps it considers necessary to satisfy
itself as to the condition or level of protection of the IP.
2.D.1
General principles in IP licensing
33
National IP Protocol 2016 |
Chapter 2 Section D
129 The RPO will seek to maximise other opportunities to
commercialise IP for the benefit of Ireland. Therefore, the
same IP will at all times also be available for licensing by
the owning RPO to other interested parties, on terms which
the RPO is free to negotiate with the other interested parties,
except to the extent, if any, that an industry party has an
option to take or has taken a non-exclusive licence or has an
option to take or has taken an exclusive licence, as described
below.
130 Further detailed guidance on licensing is provided in
the KTI Practical Guide to Licence Agreements at www.
knowledgetransferireland.com/Model-Agreements/KTI-
Practical-Guides.
131 Template Licence Agreements are available to download
from the Knowledge Transfer Ireland website at www.
knowledgetransferireland.com/Model-Agreements/
Catalogue-of-Model-Agreements.
132 Exclusive and non-exclusive licences may be negotiated
with an RPO which, unless specific circumstances apply,
will involve financial terms.
133 The types of payments that may be made in a licence may
include one or more of:
– Upfront Fees
– Milestone Payments
– Success Payments
– Royalties
134 Exclusive licences may also include reimbursement of
patent costs or other costs incurred securing protection for
licensed IP.
2.D.2
Fee-bearing Exclusive or Non-exclusive licences
| National IP Protocol 2016
34
Chapter 2 Section D
135 In respect of IP arising in a research collaboration
(Foreground IP), a Non-Exclusive Royalty-Free (NERF)
licence may be granted by an RPO to an industry party that
is contributing at least the minimum payment (see Section
E in this Chapter), subject to compliance with EU State Aid
obligations. Grant of the NERF provides the industry party
with the comfort that it has the right to use the RPO’s IP as
described in the NERF. This may be important in certain
sectors where speed to market is important and/or where a
broad range of Intellectual Property Rights (IPR) are needed
needed to support a product or service and where taking
a commercial IP licence is not compatible with business
models in the sector or with the objects of the RPO.
136 A NERF licence should include reimbursement of ongoing
patent costs or other costs incurred securing protection for
licensed IP in an equitable manner between RPO and other
licensees.
137 While an RPO will not normally consider assigning
ownership of its IP, it may in exceptional circumstances,
once IP has been created, agree to transfer or assign
ownership of the IP, provided that it:
– Satisfies itself that the industry party will commercialise
the assigned IP for the benefit of Ireland.
– Receives fair value in return.
– Is able to continue its non-commercial research and
teaching in all Fields and to use the assigned IP for those
research and teaching purposes.
138 The costs of applying for a patent or other protection
for IP owned by an RPO should initially be met by that
RPO up to the grant of any assignment relating to that IP.
When assignment is granted, the assignee should meet all
subsequent patent costs or other IP protection costs and may
be requested to include historic patent and IP protection
costs as part of an upfront assignment fee.
139 The RPO should agree the patent and IP protection strategy
with any potential assignee who has rights or options to
negotiate an IP assignment.
140 Action against any alleged infringement of patents or other
IP assigned to an industry party should be taken by the
industry party whether or not the alleged infringement
occurred before or after assignment, if it chooses to do so.
141 As the assignee has control over the development and
ultimate use, commercialisation and translation into
product or services of any IP it is assigned from an RPO,
the assignee shall assume any liability which may arise in
respect of these activities, products and services, and shall
indemnify the RPO against any such liability.
2.D.3
Non-Exclusive Royalty-Free licences (NERFs)
2.D.4
Assignment
35
National IP Protocol 2016 |
Chapter 2 Section D
142 Where an RPO has granted an exclusive or non-exclusive IP
licence or has assigned IP to an industry party, the RPO shall
retain the right to use that IP in all Fields or applications for
internal research and teaching purposes.
143 Where an exclusive licence has been granted to an industry
party for defined Fields or applications, the RPO shall
retain the right to commercialise the IP and to use it for
Collaborative Research Programmes with other RPOs and
industry parties in all other Fields or applications.
144 Where a non-exclusive licence has been granted the RPO
shall retain the right to commercialise the IP and the right
to use it for collaborative Programmes with other RPOs and
industry parties in all Fields and applications.
145 Table 3 summarises these rights.
2.D.5
Retained rights
IP licensed non-exclusively to
industry party
IP licensed exclusively to
industry party
IP assigned to industry party
Use for teaching and research
within the RPO.
Yes, for all Fields or applications. Yes, for all Fields or applications. Yes, for all Fields or applications.
Use in Collaborative Research
Programmes with other RPOs
and industry parties, including
Programmes sponsored by industry
parties.
Yes, for all Fields or applications. No, not in the licensed Field
or application (unless by prior
agreement with industry party).
Yes, in all other Fields or
applications.
No (unless by prior agreement with
industry party).
General right to use and
commercialise.
Yes, for all Fields or applications. Only outside of the licensed Field or
application.
No.
Right to sub-license IP (including
transfer of tangible research
materials) to third parties (industry
or other RPOs) for research or
commercial purposes.
Yes, for all Fields or applications. Only outside of the licensed Field or
application.
No.
Table 3: RPO retained rights
| National IP Protocol 2016
36
Chapter 2 Section E
146 Industry may add significant value to Programmes through
intellectual, cash, and/or in-kind contributions.
147 It is important to detail costs and contributions to research
Programmes. This determines the appropriate and fair
access that an industry party should expect to research
results and IP, and has a bearing on the rights which can be
conferred to the industry party under State Aid legislation.
148 The cost and contributions to a Collaborative Programme
shall be set out in the Programme Plan (see Access to IP
in Collaborative Research wholly funded by industry
in Section B and Access to IP in Collaborative Research
partially funded by industry at Section 2.C.2 in this Chapter
and the KTI website www.knowledgetransferireland.com/
Model-Agreements/Catalogue-of-Model-Agreements) before
the contract or Collaborative Research Agreement is agreed
and signed.
149 For Collaborative Research Programmes partially funded
by industry, industry contributions need to demonstrably
benefit the Collaborative Research Programme to be
considered as eligible contributors by State research funding
organisations. The values ascribed by an RPO to any industry
contributions should be documented for independent audit
and shall be reasonable, necessary, allowable and allocatable
under the Programme.
150 Such contributions by industry to a specific Collaborative
Research Programme, and the value given to them by an
RPO, will be agreed with the respective State research
funding organisation as part of the negotiations prior to
the establishment of the particular Programme. Allowable
contributions from industry should be linked intimately to
the research being supported in the Programme in question.
The Programme Plan and the contributions will usually
be documented in the Programme proposal submitted for
review by the State research funding organisation.
151 The following represents a non-exhaustive list of industry
contributions that may be recognised:
– Cash contributions towards the Programme budget.
– Industry in-kind contributions including, but not
necessarily limited to, the following items:
- Industry scientists, engineers and technicians
assigned to working on Programme.
- Personnel exchange or secondment, from industry to
the RPO or vice versa.
- RPO student placements with industry parties.
- Access to unique facilities, instrumentation, test-beds.
- Access to software, data, databases, reagents, biologics
or similar precursors.
- Provision of materials and/or consumables.
- Quantifiable industry know-how, such as advanced
project management capabilities.
- IP maintenance/protection contributions.
152 Consideration may also be given to the ability or willingness
of the industry party to introduce further Background IP,
such as IP know-how, trade secrets, proprietary materials
or similar ‘assets’ into the Programme over its expected
lifetime.
153 In-kind contributions are considered eligible when they
offset specific, quantifiable and necessary Project costs. For
instance, data or software would only be considered eligible
in-kind contributions if they are specifically required for
the Project and would have a quantifiable cost to obtain
elsewhere. Justification of essential nature of in-kind
contributions and their quantifiable value to the Programme
must be provided to the relevant State research funding
organisation as part of the funding application process.
154 Industry contributions cannot be committed multiple
times as cost-sharing contributions (e.g. the same piece of
equipment cannot be included as a cost-share on multiple
State-funded (or part-funded) Programmes simultaneously.
However, such an in-kind contribution may be apportioned
to multiple Programmes, for example in the same
proportions as the time allocated for the use of a piece of
equipment by each Programme.
Section E
Costs and contributions towards research
37
National IP Protocol 2016 |
Chapter 2 Section E
155 The State research funding organisations will, over time,
adopt a common definition of each type of eligible cost
and clearly identify which contributions are recognisable
upfront, on a Programme-by-Programme basis.
156 To qualify for certain benefits of participation, the industry
party shall contribute at least a minimum amount towards
the total costs of a research Programme. This minimum
financial or non-financial contribution varies and is defined
separately for each Programme by the State research funding
organisation funding that Programme.
157 Setting the minimum contributions will take into account
factors such as:
– The types of contribution.
– The size of the company involved in the research.
– What other sources of funding are contributing.
– The type of research (e.g. basic vs. applied) and industry
sector involved.
158 The following shall not count as part of an industry party’s
minimum contribution:
– Any post-programme activities.
– Contributions to the indirect costs of research, such as
secretarial or accounting services.
– The industry party’s general overhead costs.
– Other indirect costs.
159 A methodology for Full Economic Costing (FEC) is
now available in the universities which enables robust
determination of the indirect costs of all activities
undertaken by the universities, including research and
consultancy. KTI will work with RPOs and State research
funding organisations to encourage consistent approaches
to costing, charging and funding of the indirect costs of
research and innovation.
160 State Aid law regulates both direct and indirect State Aid to a
company.
161 State Aid may be given indirectly to a company where, for
example:
– it does not pay the full economic cost of contract research
carried out on its behalf by a publicly-funded RPO; or
– it collaborates on a research Project with a publicly-
funded RPO, and it acquires a commercial benefit other
than in one of the ways permitted by the State aid rules.
162 Collaborative Research Projects involving an industry
party and an RPO in which IP is transferred (by licence or
assignment) to the industry party must adhere to State Aid
legislation. This legislation includes measures to prevent
State resources or public economic support from unfairly
favouring a business concern, the production of certain
goods, or the provision of particular services and distorts
or threatens to distort market activity or competition in
Ireland or in Europe, whether directly or indirectly.
163 Concerns can sometimes arise in Collaborative Research,
particularly those where there is a State research funding
organisation involved and where the market value of the
Foreground IP is not yet known, and so determining the
market value or price for a licence or assignment cannot
be determined. In certain cases grants of licences and/
or assignments of IPR from RPOs may, themselves, be
considered State Aid. Where RPOs secure market rate
payments from industry in relation to Collaborative
Research Agreements for research conducted or in return for
RPO IP use then State Aid is not likely to be an issue for the
Project.
164 Full details on State Aid policy in Europe can be found
at ec.europa.eu/competition/state_aid/overview/index_
en.html. State aid as it applies to Research and Development
and Innovation is addressed in detail in the European
Commission Communication “Framework for State aid for
research and development and innovation ”, (C(2014)3282)
and can be found at ec.europa.eu/competition/state_aid/
modernisation/rdi_framework_en.pdf.
2.E.1
State Aid
| National IP Protocol 2016
38
Chapter 2 Section E
165 Industry parties and RPOs should consider EU competition
rules, particularly in cross-border collaborations and
restrictive licences of IP. There are competition laws in both
Ireland and the EU which prohibit agreements that affect
trade between member states and competition within
the EU to an appreciable extent if the agreement has the
object or the effect of preventing, restricting or distorting
competition in a relevant market. Certain categories of
agreements pertaining to IP have been expressly stated to
fall outside of these competition prohibitions, and reference
should be had to the Technology Transfer Block Exemption
(see: ec.europa.eu/competition/antitrust/legislation/
transfer.html for further information).
166 Collaborative Research Agreements to license IP often
contain terms dealing with exclusivity, Field restrictions,
territorial restrictions and obligations regarding use
that may, depending upon all the terms and conditions,
potentially restrict competition and so RPOs and industry
parties alike should consider these laws when deciding on
the structures for accessing IP owned or created by an RPO.
2.E.2
European Competition Law
39
National IP Protocol 2016 |
Chapter 2 Section F
167 The State requires that each RPO shall have an IP management
system in place that meets the National IP Management
Requirements to ensure that IP arising from research taking
place in Ireland’s RPOs is managed professionally.
168 The National IP Management Requirements are described
in the IP Protocol Resource Guide at Section 1 with links to
the supporting template documents. The most up to date
version of the IP Protocol Resource Guide is maintained
on the KTI website www.knowledgetransferireland.com/
ManagingIP.
169 Every RPO undertakes to have in place an IP management
system meeting the National IP Management Requirements.
170 However, in view of the open nature of RPOs and the many
research activities that they carry out, it is recognised that
RPOs are not in a position to give the same assurances in
respect of IP management as a commercial organisation
could give. RPOs therefore should not offer warranties
or representations or assume liabilities concerning IP
management or protection. An organisation contemplating
the commercialisation of IP provided by an RPO should
itself take whatever steps it considers necessary to satisfy
itself as to the condition or level of protection of the IP.
171 RPOs shall have published policies and/or procedures in
place that cover, at a minimum:
– Timely identification of IP arising from research,
protection of this IP including the maintenance of
laboratory records and the ways to mitigate premature
public disclosure of IP.
– Recording of this IP and of the associated
commercialisation activities and outcomes.
– Management of potential or actual conflicts of interest
concerning the commercialisation of IP.
– Sharing of royalties and other income from the
commercialisation of IP amongst the RPO itself, the
department(s) involved in the research and the individual
Researchers, inventors or creators.
– Reporting on all commercialisation activities to the
appropriate State agencies and, in particular, to KTI
which is charged with delivering the national Annual
Knowledge Transfer Survey (AKTS).
172 RPOs should ensure that their staff, contractors, consultants
and students are aware of, and follow, these policies and
procedures.
173 RPOs shall encourage their Researchers to participate in
commercialisation, joint R&D Programmes with industry
and consultancy, through financial and non-financial
incentives and rewards.
174 RPOs shall protect and manage IP through their TTOs, with
the aim of effective commercialisation.
175 KTI is responsible to ensure independent audit of the IP
management system to be operated by each RPO to ensure
that such a system is in place; to evaluate the ability of the RPO
to comply with the National IP Management Requirements;
and to support the RPO to achieve compliance with this
Policy and the National IP Management Requirements.
Section F
IP Management
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40
Chapter 2 Section G
176 The Irish knowledge transfer system involves many
actors, including the State research funding organisations
and innovation agencies, the RPOs, investors, industry,
entrepreneurs and individual Researchers. They need
to work together under the national policy to ensure
an effective system for industry-RPO engagement and
commercialisation.
177 The State research funding organisations have different
objectives for their funding reflecting their differing
missions. However, all these organisations share common
interest in the commercialisation of the results of research,
including commercialisation of IP, whenever this is possible.
178 Since initial publication of the IP Protocol, RPOs have used
the document as a reference and have sought to implement
this policy. This includes that the RPO shall make provision
for the support of research engagement with industry
and for the commercialisation of the outputs from State
investment in research, including the commercialisation of
IP.
179 The State directly supports a network of Technology
Transfer Offices (TTOs) in most of the RPOs through the
national Technology Transfer Strengthening Initiative
which is managed by KTI on behalf of Enterprise Ireland.
The primary goal of the TTOs is to maximise the economic
and societal benefits to Ireland of RPO engagement with
industry, in general, and of IP commercialisation, in
particular.
180 Contracts underpinning Collaborative Programmes with
industry should be negotiated within the Research Support
Services department (or other designated officer) of the
RPO with input from the TTO. In some cases, the RPO may
require the TTO to negotiate such contracts.
181 The TTO or other designated officer of the RPO shall be
responsible for negotiating licensing, assignment and
other IP access agreements between industry and that RPO.
Within any limits set by its parent RPO, the TTO shall have
authority to negotiate and sign IP access arrangements with
industry.
182 The State also supports a central technology transfer office,
Knowledge Transfer Ireland (KTI), which provides a unique
portal for industry to navigate across the entire RPO sector;
takes responsibility to ensure the ease of industry-RPO
contracting and is responsible for monitoring and reporting
the performance of the national knowledge transfer system
using appropriate key performance indicators.
183 KTI is responsible for ensuring the continuous improvement
of the national IP Protocol and for publishing updated
versions as required, including keeping this framework and
its resources up to date and ensuring that the resources are
deployed consistently across the RPOs.
184 The IP Protocol Resource Guide, Section 2, describes the
national technology transfer system and the roles and
functions of KTI and the TTOs in more detail.
Section G
The Irish Knowledge Transfer system
41
National IP Protocol 2016 |
Chapter 2 Appendix A
Appendix A
Meaning of terms
Annual Knowledge Transfer
Survey (AKTS)
The national survey which collects, collates and summarises the outcomes of Commercialisation activity from
State-funded research.
Background IP Any Intellectual Property, including in any Material, (regardless of the form or medium in which they are disclosed
or stored) (i) licensed or owned by any party to a research contract prior to the beginning of any Programme; or (ii)
generated or licensed independently of the Programme by that party; and which is brought into or used as part of
the Programme and excluding (for the avoidance of doubt) any IP created by any party to a research contract during
the performance of the Programme.
Bilateral Collaborative Research A research collaboration Project between one industry party and one RPO party.
Collaborative Research Work involving research of mutual interest where an industry party works with an RPO.
Collaborative Research: part
industry-funded
Collaborative Research in which the Programme is funded partly by the State and partly (in cash and/or in kind,
including participation in the research itself) by the industry party(s); Collaborative Research may involve two or
more parties.
Collaborative Research: wholly
industry-funded
Collaborative Research in which the industry party meets the full economic cost of carrying out the Programme.
Commercialisation The use of IP to create, conduct or develop a commercial activity. This may involve exclusive or non-exclusive
licensing or assignment of the IP, may lead to new company formation or the introduction of new or improved
products or services. In the higher education sector, commercialisation is a part of the “third mission” within the
institutions’ functions of teaching, research and contribution to industry.
Enterprise A commercial or not-for-profit legal entity, including but not limited to a start-up, spin-out from an RPO, a small or
medium enterprise, a large national corporation and a multi-national corporation headquartered inside or outside
Ireland.
Field Field of use/area of application.
Foreground IP IP which comes into existence in the course of performance of the Programme.
Independently Available Availability in principle of data for use by independent new, bona fide research, within the terms of participant
consent and not restricted by IPR, prior collaborations or other reasons, and for which the necessary metadata are
well documented and available.
Industry A collective term for commercial or “for profit” enterprises.
Industry party A commercial or “for profit” enterprise engaging with an RPO in a Programme.
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 (including the copyright in software in any code),
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.
Knowledge Transfer Ireland (KTI) The central office responsible for the knowledge transfer (KT)/technology transfer (TT) system in Ireland. In the
previous iteration of the national IP Protocol it was known as the Central Technology Transfer Office (CTTO).
Materials Any and all works of authorship and materials, including, without limitation, data, any functional, technical and/
or performance specification, devices, machinery, samples, products, sensors and data derived therefrom, biological
materials, software programs, any other inanimate or animate matter, any and all reports, studies, data, diagrams,
drawings, charts, specifications, and such other materials in whatever medium (including without limitation, written
or printed, electronic or otherwise, computer discs, floppy discs, CDs, diskettes, tapes or other formats).
| National IP Protocol 2016
42
Chapter 2 Appendix A
Model agreements A set of template agreements maintained by KTI, and updated from time to time, which can be found at www.
knowledgetransferireland.com/Model-Agreements/Catalogue-of-Model-Agreements
Multi-party Collaborative
Research
A multi-party collaboration is one in which one or more industry parties and one or more RPOs are parties in
a Programme. It is funded partly by the State and partly (in cash and/or in kind, including participation in the
research itself) by the industry party(s).
Non-Exclusive Royalty-Free
(NERF) licence
A licence to use IP under which the licensee is not required to pay any amounts (whether initial recurring royalties
or milestone payments). Except that the licensee may be required to pay some or all of any costs for prosecution,
maintenance and defence of any patent or similar granted IP rights.
Non-Severable Improvement IP that, at a minimum:
– Was created using Significant Background introduced to the Programme.
– Cannot be used or commercialised without infringing on the Significant Background.
Project or Programme A set of agreed research activities.
Programme Plan A description of the Programme of work and who will carry it out. The Programme Plan should include all the
technical aspects of the Programme and the deliverables.
Publication The publication of research results or of any part of IP resultant from any Programme, in any public format or fora,
including (without limitation) journals, conference proceedings, conference abstracts, conference presentations,
Ph.D./M.Sc./B.Sc. thesis, website.
Research Performing
Organisation or RPO
Any organisation that performs research funded at least in part by the State; the term includes universities, institutes
of technology, Teagasc, NIBRT, clinical research facilities or translational medicine facilities based at hospitals and
other publicly-funded research institutions.
Researcher A Researcher named in a Programme Plan/Programme and such other employees (part time or full time), Post
Doctoral fellows, visiting scholars, Ph.D. and other students, visiting Researchers, as well as consultants, hospital
consultants, subcontractors, and any other individuals engaged or involved in the Programme at any time, for or
on behalf of the RPO (whether or not engaged by contract). Researchers involved in a Programme may also be from
the industry party.
Significant Background 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.
State research funding
organisations
Organisations which distribute funding provided by the State to RPOs, including but not limited to the Health
Research Board (HRB), Higher Education Authority (HEA), Irish Research Council (IRC), Science Foundation
Ireland (SFI), Enterprise Ireland (EI), IDA Ireland and other government funding agencies.
Technology Transfer Office or
TTO
A team within an RPO which leads work to identify and commercialise IP arising from research by that RPO and
is empowered, within limits of authority set by the RPO and subject to supervision by KTI as to its compliance
with the requirements of this document, to select the optimum commercialisation strategy in each case, conduct
negotiations with external organisations (including industry parties) and conclude agreements with those
organisations.
The primary goal of the TTOs is to maximise the economic and societal benefits to Ireland of RPO contributions to
industry, in general, and of IP commercialisation.
Unrestricted Availability The availability of anonymised data (e.g. summary tables) for which the risk of disclosure (identification of
individual participants) directly or through association with other data sources is extremely low, which can safely
be made readily accessible without restriction (“public”).
Wholly State-funded research Research for which a State research funding organisation has paid 100% of the economic costs of the research.
Appendix A
Meaning of terms
43
National IP Protocol 2016 |
Chapter 2 Appendix B
Updated version produced by Knowledge Transfer Ireland (KTI) in
2016 based upon the consultation and review process undertaken
Q4 2014 – Q1 2015.
Accountable officer: Alison Campbell. Director, Knowledge
Transfer Ireland (KTI)
Tom Flanagan was seconded from Dublin Institute of Technology
(DIT) to KTI part time from September 2014 to March 2015, to
lead the consultation process and prepare summary documents
and recommendations for consideration by the Expert Advisory
Group, the KTI Industry Advisory Board and the Knowledge
Transfer Stakeholder Forum.
Editorial review
Ned Costello Irish Universities Association (IUA)
Brendan Cremen University College Dublin (UCD)
Karl Flannery Storm Technology
Keith O’Neill Abbott Nutrition
Richard Stokes Dublin City University (DCU)
IP Protocol 2016 Expert Group
Leo Clancy Head of Technology, Consumer & Business
Services, IDA Ireland
Eadaoin Collins Assistant Principal Officer, Department of
Jobs, Enterprise and Innovation (DJEI)
Ned Costello Chief Executive, Irish Universities
Association (IUA)
Willie Donnelly President, Waterford Institute of Technology
(WIT)
Dara Dunican Programme Manager, Science Foundation
Ireland (SFI)
Karl Flannery CEO, Storm Technology
Audrey Huggard Legal Advisor, University College Cork (UCC)
Bill Kearney Director IBM Ireland Lab, IBM
Eucharia Meehan Director, Irish Research Council (IRC)
Gearoid Mooney Director, Research & Innovation, Enterprise
Ireland (EI)
Darrin Morrissey Director of Programmes, Science Foundation
Ireland (SFI)
Ciaran O’Beirne Technology Transfer Manager, University
College Dublin (UCD)
Ena Prosser Partner, Fountain Healthcare Partners
Mary Shire Vice President Research, University of
Limerick (UL)
Malcolm Skingle Director, Academic Liaison, GlaxoSmithKline
(GSK)
Richard Stokes Director of Innovation, Dublin City
University (DCU)
KTI Industry Advisory Board (2014 & 2015)
Eadaoin Collins Assistant Principal Officer, Department of
Jobs, Enterprise and Innovation (DJEI)
Brian Dalton Assistant Principal Officer, Department of
Jobs, Enterprise and Innovation (DJEI)
Mike Devane Partner, Quilly & American Chamber of
Commerce Ireland (AMCHAM)
Karl Flannery CEO, Storm Technology (Chair)
Barry Kennedy Research Programme Manager, Intel & CEO,
Irish Centre for Manufacturing Research
(ICMR)
John O’Sullivan General Partner, ACT Venture Capital
Alan Phelan CEO, SourceDogg
Ena Prosser Partner, Fountain Healthcare Partners
Malcolm Skingle Director, Academic Liaison, GlaxoSmithKline
(GSK)
Keith O’Neill Director, Regulatory Policy & Intelligence,
Abbott Nutrition
Appendix B
IP Protocol 2016 - Membership of advisory groups
and stakeholder consultation
| National IP Protocol 2016
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Chapter 2 Appendix B
Knowledge Transfer Stakeholder Forum (2014 & 2015)
Alison Campbell Director, Knowledge Transfer Ireland (KTI)
Leo Clancy Head of Technology, Consumer & Business
Services, IDA Ireland
Eadaoin Collins Assistant Principal Officer, Department of
Jobs, Enterprise and Innovation (DJEI)
Ned Costello CEO, Irish Universities Association (IUA)
Brian Dalton Assistant Principal Officer, Department of
Jobs, Enterprise and Innovation (DJEI)
Dara Dunican Programme Manager, Science Foundation
Ireland (SFI)
Tom Flanagan Chair, ITTIG, Centre Manager, Hothouse,
Dublin Institute of Technology (DIT)
Richard Howell Head of Research & Codex Division,
Department of Agriculture, Food & the
Marine
Paul Killeen Head of Research, Innovation & Enterprise,
Athlone Institute of Technology (AIT)
Graham Love Chief Executive, Health Research Board
(HRB)
Eucharia Meehan Director, Irish Research Council (IRC)
Gearoid Mooney Divisional Manager, Research & Innovation,
Enterprise Ireland (EI)
Darrin Morrissey Director of Programmes, Science Foundation
Ireland (SFI)
Muiris O’Connor Head of Policy and Strategic Planning, Higher
Education Authority (HEA)
External Legal Advisor
Deirdre Kilroy, of LK Shields, provided legal advice to KTI.
Individuals consulted in this review
Christine Alcorn, University College Cork (UCC)
Doug Beaton, Health Services Executive (HSE)
Caroline Brennan, University College Dublin (UCD)
Roisin Cheshire, Science Foundation Ireland (SFI)
Leo Clancy, IDA Ireland
Eadaoin Collins, Department of Jobs,
Enterprise and Innovation (DJEI)
Steve Collins, Swrve
Peter Conlon, Maynooth University
Eugene Corcoran, Industrial Research and Commercialisation
Committee (IRCC) Board Member
David Corkery, University College Cork (UCC)
Ned Costello, Irish Universities Association (IUA)
Peter Cowap, Governance, Risk and Compliance Technology
Centre (GRCTC), University College Cork (UCC)
Pearse Coyle, Corporate Spin-outs
Brendan Cremen, University College Dublin (UCD)
Michael Cunningham, Sonex Metrology
Brendan Curran, Alimentary Pharmabiotic Centres (APC),
University College Cork (UCC)
Maureen Daly, Law Society of Ireland
Tony Day, International Energy Research Centre (IERC), Tyndall
National Institute (TNI)
Mike Devane, American Chamber of Commerce (AMCHAM)
Paul Dillon, University of Limerick (UL)
Willie Donnelly, Waterford Institute of Technology (WIT)
Tony Donohoe, Irish Business and Employers
Confederation (IBEC)
Cepta Duffy, Enterprise Ireland (EI)
Dara Dunican, Science Foundation Ireland (SFI)
Gordon Elliott, Trinity College Dublin (TCD)
Michael Farrell, University College Cork (UCC)
Orla Feely, University College Dublin (UCD)
Peter Feeney, National University of Ireland Galway (NUIG)
Adam Finlay, McCann Fitzgerald Solicitors
Karl Flannery, Storm Technology
Paul Gilson, Veryan Medical
Deirdre Glenn, Enterprise Ireland (EI)
Denis Hayes, Industry Research & Development Group (IRDG)
Richard Howell, Department of Agriculture,
Food and the Marine
Audrey Huggard, University College Cork (UCC)
Martin Hussey, Enterprise Ireland (EI)
45
National IP Protocol 2016 |
Chapter 2 Appendix B
Bill Kearney, IBM
Kathryn Kiely, Waterford Institute of Technology (WIT)
Paul Killeen, Athlone Institute of Technology (AIT)
Owen Laverty, Maynooth University
Pat Layde, Colortrend
Alan Leddy, Alcatel Lucent
Breda Lynch, Athlone Institute of Technology (AIT)
Andrew Marsh, University College Cork (UCC)
Robert McCarthy, IBM
David McDonald, Aperilink
Claire McGee, Irish Business and Employers Confederation (IBEC)
Declan McGee, Enterprise Ireland (EI)
Patricia McGovern, Law Society of Ireland
Ross McKiernan, Irish Research Council (IRC)
Tara McMahon, Intel
David McMunn, Law Society of Ireland
Eucharia Meehan, Irish Research Council (IRC)
Gearoid Mooney, Enterprise Ireland (EI)
Peter Mooney, Dawn Meats Group
Richard Morrison, Enterprise Ireland (EI)
Darrin Morrissey, Science Foundation Ireland (SFI)
Eamonn Morrissey, SPX Flow Technology
Dominic Mullan, Dublin Region Innovation Consortium
Pauline Mulligan, Department of Jobs, Enterprise and Innovation
(DJEI)
Richard Murphy, Alltech
John Nolan, Enterprise Ireland (EI)
Ciaran O’Beirne, University College Dublin (UCD)
Paddy O’Boyle, Dublin City University (DCU)
Diarmuid O’Brien, Trinity College Dublin (TCD)
Lily O’Brien, National University of Ireland Galway (NUIG)
Muiris O’Connor, Higher Education Authority (HEA)
James O’Daly, Immucell Ltd.
Tony O’Donnell, SAP
Kieran O’Dwyer, Dublin City University (DCU)
Stephanie O’Keeffe, Health Services Executive (HSE)
Daniel O’Mahony, Seroba Kernel
Josette O’Mullane, Cork Institute of Technology (CIT)
Brian O’Neill, Dublin Institute of Technology (DIT)
Keith O’Neill, Enterprise Ireland (EI)
Pat O’Neill, Midlands Gateway Chamber
John O’Rourke, Boston Scientific
James O’Sullivan, Waterford Institute of Technology (WIT)
Carl Power, NDRC: Making Ventures Happen (previously National
Digital Research Centre)
Ena Prosser, Fountain Healthcare Partners
Siobhan Roche, Science Foundation Ireland (SFI)
Tim Roche, University College Cork (UCC)
Colin Rooney, Law Society of Ireland
Miriam Ryan, Maynooth University
Milda Saenz, INSIGHT, University College Dublin (UCD)
John Scanlan, Maynooth University
Dermot Scanlon, Serosep Ltd
Conor Sheehan, Enterprise Ireland (EI)
Mary Shire, University of Limerick (UL)
Malcolm Skingle, GlaxoSmithKline (GSK)
Frank Smyth, Pilot Photonics, Dublin City University (DCU)
Richard Stokes, Dublin City University (DCU)
Dermot Tierney, Hothouse, Dublin Institute of Technology (DIT)
Mary Tracey, Trinity College Dublin (TCD)
Mike Turley, INSIGHT, University College Dublin (UCD)
Paul Tyndall, Maynooth University
Juan Valverde, Monaghan Mushrooms Group
Emily Vereker, Trinity College Dublin (TCD)
Martin Wallace, GlaxoSmithKline (GSK)
John Whelan, Trinity College Dublin (TCD)
Frank Wilson, Ceramicx
Margaret Woods, Trinity College Dublin (TCD)
Tara Woulfe, University College Cork (UCC)
| National IP Protocol 2016
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Notes
National IP Protocol 2016 |