Massimiliano Granieri
Vice president
University – Industry Collaboration
in EU Funded Projects - An asset for
Commercialisation?
After the EC project ends
H2020 and IP Exploitation
• Exploitation and dissemination of project results are
key objectives of H2020 strategy
• EC Recommendation 1329/2008 principles and best
practices should apply
• Opportunities beyond the black letters
• FP7 projects have been problematic in this respect
Effective Exploitation Starts Early on
• A complex combination of factors influences the
exploitation path
Essential /
Non
essential
Sideground
Background
During the
project
Ownership
Foreground
Jointly owned /
individually
owned
After the
project
Access
Commercial /
non commercial
purposes
End of something, start of something else
• When the projects comes to an end and resources
are exhausted, there can (must?) be a continuation
(and opportunities)
• Actually, obligations of confidentiality, exploitation
and dissemination remain in force as post-project
obligations
• Exploitation is not another activity, it is rather a
continuation of the research and a necessary step to
ensure impact and return on the R&D investments
Avenues of Exploitation
• Direct use by (some of) the partners (SMEs, other
manufacturing entities)
• Licensing to third parties
– Jointly grant licensees by multiple owners
– Licenses granted by one on behalf of the others
– Licenses granted by a special vehicle created for exploitation
(company or patent pool or licensing trust )
• Forming a spin-off or a start-up
• Sales or assignments
A Key Factor
• Writing a sound and forward-looking Exploitation
Plan is crucial part of the strategy
• Not just one of the many deliverables, but a footprint
of an effective strategy
• An occasion to keep interests aligned (good research
goes along with exploitation plans)
• Exploitation is not only about securing IP protection
(dissemination and strategic use of public domain
can be instrumental to a successful practice)
All about IP?
• Which are the ingredients for a successful practice of
IP exploitation and tech transfer?
– Knowledge of foreground and its implications for markets
and society
– Control over the intellectual property and attention to its
quality
– Skills about «connecting the dots of innovation»
– Capacity to identify the right business models and sources
of funding
Life after …
• Exploitation is not just a bureaucratic activity; if it so, it
becomes difficult to involve people (particularly
researchers)
• There can be industrial opportunities along the way (not
just at the end)
• Participation of researchers/inventors is crucial for
technology transfer (particularly for early stage
technologies)
• When technologies are complex and enabling,
exploitation is (paradoxically) more difficult, but
potentially highly rewarding
• Dissemination is important as a way to signal
A real case of IP (mis-)management (1/2)
•
•
•
•
•
•
FP7 Large Cooperative Project
Preliminary meetings to decide on topic, discussions without NDA
Submission of proposal and acceptance
Negotiation with the EC and C.A. (+ annexes)
Project goes quite well until the end
As the Consortium has to define the exploitation plan big and
heated discussions start
• EC is mad at the Consortium and threatens to ask money back
• No impact at industrial level
• What happened?
A real case of IP (mis-)management (2/2)
•
•
•
•
•
•
•
•
Early discussions caused confusion (contamination) of background knowledge
Absence of NDA caused background to flow from one party to another
What appeared as background was created before submitting the proposal
Someone filed a patent on (unclaimed) background and even declared it as
«essential» background in the C.A. (annex II), even though at that time the
patent application was not yet public
No one cared about background
Project foreground turned out to be a couple of prototypes of what was in
the patent application
Prototypes lacked freedom to operate and were infringing the patent
The patent owner, at the end of the project, claimed property of the
(dependent) foreground
Critical issues
• A number of issues appeared in past projects as critical for
exploitation
– Situations of co-ownership (inevitable in multiparty projects, but
potential deal-breaker if unregulated)
– Need of complementary resources (such as proof-of-concept
funds)
– Mismanagement of background and inability to understand the
implications of its dominant nature vis-à-vis dependent
foreground
– Costs of protection (broad geographic coverage requires huge
resources)
– Quality of protection (inventing and patenting around create
negative incentives for potential licensees)
– Blocking situations caused by complementary rights owned by
Dos and Dont’s of IP exploitation
•
•
•
•
•
•
•
Don’t wait until the end to start thinking about IP exploitation (it takes time)
Strategize about your IP (it takes a lot of thinking)
Regulate mutual relationship as early as possible
Don’t leave details behind (“the devil is in the details”)
Mind protection and quality of rights
Define «clear» rights of ownership, use, access
Don’t forget to reserve the right to further exploit the intellectual property
for «research purposes only» (research exemption)
• Don’t treat all technologies alike (business models can be extremely
different)
• Always involve the researchers/inventors (there can be know-how associated
with IP)
A matter of responsibility
We share with you the responsibility
of managing intellectual property
and technologies that can improve
people's life.
That is why every strategic choice we
Thank you
Massimiliano Granieri, Ph.D., LL.M.
Vice president
MITO Technology
Via Vittorio Veneto 2/a
20124 Milan | Italy
Ph.: +39 02 2951 6342
Fax: +39 02 2941 3168
Web: http://www.mitotech.eu
Email: massimiliano.granieri@mitotech.eu