Ireland's National IP Protocol 2019 - An Overview by Alison Campbell, Director KTI

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Introducing Ireland’s
National IP Protocol 2019
A framework for Research Commercialisation in Ireland

IP Protocol 2019 - context
 National framework for research
commercialisation.
 In place since 2012; reviewed and
updated 2016 & 2019.
 Feeds directly into Innovation 2020 –
Government strategy for research,
development, science and technology
– in which innovation through
commercialisation of research is key
component.
 Produced and managed by Knowledge
Transfer Ireland (KTI) and hosted on
our website.
 Only framework of its kind in the
world.
2

IP Protocol 2019
 Relevant to:
• all enterprises from small businesses
to multinationals
• prospective spin-out companies
• RPOs.
 Sets out Government policies to
encourage industry to benefit from
publicly-funded research.
 Describes good practice and
practical arrangements for research
engagement and
commercialisation.
 Associated Resource Guide.
3

IP Protocol- what’s new for 2019?
 Easier to navigate.
 Guidance on collaborative &
contract research and licensing
remain unchanged.
 New chapter on spin-out
company formation.
 More information on State Aid
rules.
 Additional national IP
Management Requirement
relating to RPO IP Policy.

A framework for…
 Collaborative Research
 Contract research
 Licensing
 Spin-out company formation
 IP Management

Framework for Spin-Out Company Formation
 Pathways to company formation.
 Roles, responsibilities and rewards
for Founders, Investors and the
RPO.
 Roles and responsibilities of
Directors and Observers to the
Board. (KTI Guide)
 Approaches to determining equity
and revenue.
 Legal agreements and related
documents involved.
• Links to KTI Practical Guide to Spin-out
Company Formation & associated Model
Agreements

Spin-out company formation – more detail:
Objectives
 The objectives for spin-out company creation are consistent
with the national policy for research commercialisation in
Chapter 1, which include:
• Ensuring commercialisation of intellectual property from publicly
funded research.
• Maximising the economic and societal benefits and returns to
Ireland.
• Providing benefit to the RPO and incentives to the researchers
involved.
• Creating sustainable jobs in Ireland.

Pathway to spin-out
 The Protocol recognises that company development and
investment may take place over a long time and may be
complex
• Some companies secure investment at the time of or soon after
formation, others will take longer.
• There will typically be several rounds of investment.
 Pathways to spin-out will vary.
• The Protocol does not dictate what these will be.

Good governance is essential
 Researcher(s) or other individual(s) within the RPO are
governed by the RPO’s Policy for IP commercialisation.
 There needs to be policy & processes in place within the RPO to
ensure proper approvals for spin-outs and to many actual or
perceived conflicts of interest.
 Any engagement with the RPO will be subject to separate
arrangements to avoid conflicts of interest and state aid issues
from academic consultancy, use of facilities.

Equity and licensing
 RPOs will expect to take equity in the company.
 Spin-outs are usually reliant on RPO intellectual property at the
time of formation and will take a licence.
• In some cases will not access protected IP rather will rely on
knowledge and expertise (know-how).
• IP will be offered by way of a licence to the IP.
• Assignment may be possible at a certain trigger point.
 Valuation should take into account the State investment to date.
 However, the Protocol does not prescribe the valuation,
recognising that equity share and licensing are commercial
negotiations.

Roles and responsibilities
 Typical characteristics and expectations on:
• Founders
• Investors
• RPOs
 Roles and obligations of Directors & Observers to the Board.

Consideration of EU rules relating to Research,
Development & Innovation with RPOs
 Summarises State aid
considerations.
 References European
Competition Law.
 KTI Practical Guide to State
Aid in R,D & I for RPOs and
companies working together
due later this year.

Resource Guide
 Sets out the 10 National IP
Management Requirements
• Relevant to all RPOs
 Provides resources supporting the
National IP Management
Requirements.
 Makes available template
agreements
• KTI Model Agreements & Practical
Guides
• New series related to spin-out company
formation
 Describes the Knowledge Transfer
System.

The ten national IP Management Requirements
→ Requirement 1: Adopt and disseminate a policy
for IP commercialisation that includes the Minimum
Requirements for an IP Commercialisation Policy
(new)
→ Requirement 2: Ensure early awareness
amongst researchers of the importance of IP
management.
→ Requirement 3: Set obligations on individual
researchers (supported by robust RPO procedures
and internal IP management systems) to ensure IP
is managed in a professional way.
→ Requirement 4: Maintain confidentiality before
publication of research and confidentiality of IP
provided by and to others.
→ Requirement 5: Protect IP including IP arising
from research projects and programmes.
→ Requirement 6: Introduce existing background
IP into a research programme diligently.
→ Requirement 7: Conduct appropriate due
diligence before licensing IP.
→ Requirement 8: Maintain appropriate records of
IP and licences.
→ Requirement 9: Manage actual and potential
conflicts of interest.
→ Requirement 10: Implement systems for the
sharing of income from the commercialisation of IP
within the RPO.
Requirements are further described in the
Resource Guide

KTI Practical Guide to Spin-out Company
Agreements
 Describes the kinds of
agreements
• When and why to use
• What to look out for
• Focus on early-stage companies
 Companion Guide of Model
Agreements
• With detailed drafting notes
 Suite of KTI Model
Agreements
• Available to download in Word
 Not mandated.

Thank you
Alison Campbell, Director
Knowledge Transfer Ireland
E: alison.campbell@knowledgetransferireland.com

Ireland's National IP Protocol 2019 - An Overview by Alison Campbell, Director KTI

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Ireland's National IP Protocol 2019 - An Overview by Alison Campbell, Director KTI