Expert Group Report Management of Intellectual Property in ... - KoWi

For PRO’s and their industrial partners, it is important that due consideration is given to arrangements
entered into in order to ensure that no infringement of competition rules occurs. Technology transfer
agreements must comply with EU competition law and in particular with Regulation 240/96. Advice
from those skilled in the detail of this discipline is recommended.
Arbitration
The use of Alternative Dispute Resolution clauses to handle all disputes (e.g., Med-Arb,
WIPO) should be seriously considered in some cases or else face the consequences of
inconsistent court decisions and territorially limited national regimes.
2.8. Conclusions
For the PRO creating, owning and managing a portfolio of IPR, whether registered or unregistered, is
an expensive exercise. Given the costs of certain IPRs such as patents, it is essential therefore that a
good business case exists to justify maintaining these IPRs in each country where it was initially filed
for.
It may be easier for industrial partners (whether large industry or start-ups) to litigate or license our
IPRs in a business context, especially where a PRO may have non-for profit status, and is not willing
to become involved in enforcement procedures or multi-jurisdictional litigation. On the other hand an
industrial partner will need to satisfy itself that the IPR protecting the relevant invention is valid,
enforceable and of adequate scope. Concerns on any of these issues will be a serious deterrent for an
industrial partner.
For new companies whose early stage assets are likely to comprise entirely of the IPR portfolio that it
will own or have rights to, the cost implications are a considerable element of their early stage funding
and needs to be properly understood and budgeted for.
The substance of any exploitation deal between a PRO and an industrial partner will comprise a
bundle of different types of IPRs and may raise complex issues of intellectual property law or
competition law. The results of a project will always contain copyright material and is likely to contain
patentable subject matter, confidential information/know-how and tangible materials (e.g., materials or
prototypes). In essence the transfer is an opportunity to develop the technology further rather than an
end product therefore it is essential that the relevant IPRs are properly created, identified and managed
so that they can be attractive to industry or start-ups.
PROs should also consider whether it is appropriate for them to retain access to or control of the IPRs.
In some cases it may be best to assign all IPRs outright to a buyer or start-up company in exchange for
equity. In some other cases it may be preferable to grant only licenses, on a non-exclusive basis or
limited exclusivity basis, so that the PRO and others can continue to use certain aspects and ensure
ongoing development of the technology. KTO personnel need to be in a position to understand the
needs of the industrial sector in each area and to be flexible in the form and degree of transfer as a
result. It is essential therefore that a good dialogue takes place with the commercial partners or
entrepreneurs to ensure that effective and appropriate management of the IPR be maintained.
Pooling of PR may also be an effective way to ensure development of complementary technologies.
Through effective networking this can be done across different organisations. PROs should be careful
to avoid being too protective of their own IPR at the expense of collaborative opportunities. Provided
transparent and realistic discussions take place it should be possible for exploitation of joint portfolios
to be successful.
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