The experience in managing Intellectual Property and Technology ...

The experience in managing
Intellectual Property and Technology Transfer
at the European Commission
Salvatore Amico Roxas
Intellectual Property & Technology Transfer Unit
European Commission - Joint Research Centre
salvatore.amico-roxas@ec.europa.eu
Bruxelles, 12 May 2011
www.jrc.ec.europa.eu
1

JRC Mission
Joint Research Centre
… is to provide customer-driven scientific and technical support for the
conception, development, implementation and monitoring of EU policies.
As a service of the European Commission, the JRC functions as a reference
centre of science and technology for the Union.
Close to the policy-making process, it serves
the common interest of the Member States,
while being independent of special interests,
whether private or national.
Supporting nuclear safety, citizen’s security, health and environmental protection, safety of
food and chemicals, alternative energies, econometrics, prospective technologies…
2

Our Structure: 7 Institutes in 5 Member States
IRMM - Geel, Belgium
Institute for Reference Materials and Measurements
ITU - Karlsruhe, Germany
Institute for Transuranium Elements
IE - Petten, The Netherlands
Institute for Energy
IPSC - Ispra, Italy
Institute for the Protection and Security of the Citizen
IES - Ispra, Italy
Institute for Environment and Sustainability
IHCP - Ispra, Italy
Institute for Health and Consumer Protection
IPTS - Seville, Spain
Institute for Prospective Technological Studies
≅ 2900 staff, ≅ 300 M€/y budget
(+ 40 M€/y competitive income)
Joint Research Centre
> 2,800 staff across Europe
3

Unit “Intellectual Property and Technology Transfer” (IP&TT)
JRC Intellectual Property and Technology Transfer Unit (A.02)
has a mandate to protect and manage the IP
assets of the EU Institutions
It provides wide support at different phases of the innovation cycle:
IP legal advice, technology promotion, licensing, advice on
collaborative R&D, entrepreneurship, market entry and spin-offs
2 Sectors IP
Giancarlo Caratti
(Head of Unit)
An Spinoy
(Assistant to the HoU)
Pirjo Welroos (head)
Stefano Gentile
Cristina Meca
Karolina Kozlowska
Inga Raudsepp
Innovation &
Knowledge Transfer
Olivier Eulaerts (head)
Salvatore Amico Roxas
Eleni Damianou
Huseyin Kebapci
Inga Sileryte
4

Role of the Unit “Intellectual Property and Technology Transfer” (IP&TT)
JRC manages the IP portfolio of the European Communities (patents, trade marks,
software, copyrights, …) and offer support on IP issues to all EU institutions
(European Commission, Council, European Parliament, agencies, …)
�Patent portfolio over 125 patents, 35 software
�165 trade marks
�Support in the exploitation of the technologies
�Support on IP issues in R&D collaborations
�Support on KT issues
5

IP&TT unit
It acts as a one-stop shop
for any matter related to
detection, protection,
promotion and
commercialisation of JRC
R&D results.
In addition, the unit runs
awareness raising
programmes on IP and
Entrepreneurship and
organises a yearly
competition for bringing
innovative projects closer to
the market.
IP TRAINING
IP&TT unit business model
IP&TT UNIT’S
SUPPORT TO
INNOVATION
ENTREPRENEURSHIP TRAINING
INNOVATIVE PROJECTS COMPETITION
JRC
WORKPROGRAMME
Direct R&D
(Scientific and
technical support to
EC policies)
Indirect R&D
(Participation to FP
projects)
Exploratory
research
IP&TT UNIT PROTECTS
RESULTS
Technologies, Software
Databases
Trademarks
IP&TT UNIT PROMOTES
RESULTS
Networks (EEN…)
Dedicated events
Online portfolio
KNOWLEDGE TRANSFER BY IP&TT UNIT
Dissemination
Licensing
Spin‐off creation
6
SCIENTIFIC
PUBLICATIONS

IP management related to:
Main activities
1) Support to the transfer of technologies to the market
2) Internal management
3) R&D collaborations
7

Innovative Projects Competition
Entrepreneurship training
IP Training (e-learning + live)
1) Transfer of technologies
8

1) Transfer of technologies - Innovative Projects Competition
Purpose: to encourage JRC researchers to create and exploit innovative products and processes, which
can result from the JRC institutional work programme, participation in indirect actions, or as a result of
exploratory research.
Two main type of projects considered:
- Projects with a high exploitation potential, but without current means for technical and commercial
development.
- Projects with an institutional or public potential, with the aim to develop products and processes to a stage
at which they can be proposed for extensive use by institutional/public users (Member States).
Examples from IPC 2010:
- Development of portable system for contactless detection of hidden people
- PESTO: Portable Energy Storage Box
- Cassette system for automated synthesis of Bi-213 labelled radiopharmaceuticals
- Automatic multilingual indexing of parliamentary documents
9

Details
1) Transfer of technologies - Innovative Projects Competition
� Around 7-8 projects selected each year
� Funding for a maximum of 12 months
� Examples of eligible projects are patented/patentable inventions without a laboratory or
industrial prototype, a prototype which needs to be developed and tested according to
industrial specifications, software with commercial applications, analysis of market or
institutional requirements etc.
� Budget: max 80K euro per proposal
10

Purpose
� To provide practical training in entrepreneurial management and prepare potential
entrepreneurs at the JRC in planning, starting and running a technology-based company..
Content:
� Detection of entrepreneurial opportunities, marketing, financing, management, IP and other
professional issues.
� Mix of theoretical and practical seminars and presentations. Business idea presentation and
assessment.
1) Transfer of technologies - Entrepreneurship training
� Two sessions: one three-day session and one four-day
11

Target
� Both short-term and permanent staff from all JRC sites.
� Ten to twenty candidates selected to take part in the course.
� Selection criteria:
1) Whether the applicant has already thought seriously about developing a business.
2) Whether the applicant has a research result which could be developed into a business
proposition.
1) Transfer of technologies - Entrepreneurship training
3) The motivation of the applicant to start a business, independently of the business idea.
12

3D – Reconstructor
Examples of IP exploitation
Bolus
KüFa
LISALAB OSVISION SESAMONET
13

Plasmore – a JRC case
Joint result (PhD thesis) University of Pavia - JRC
⇒ local surface plasmon resonance analysis technique
Entrepreneurship course and IP Education at JRC
⇒ Product idea:
Fully Portable Multiplexing Label-Free Biosensor
⇒ First business plan
JRC Case - PLASMORE
JRC Innovative Projects Competition
⇒ Fundings for prototype and further R&D
⇒ Patent application
Education
Research
JRC Support to spin-off creation
+ Licence
14
Innovation

IP Survey
PLUG
Open Source Guidelines
2) Internal management
15

Survey on existing Intellectual Property Rights and Need for
Management and Protection of Intellectual Property in the European
Commission
Aim:
- identifying the IPR assets the European Commission (EC) possesses
- the areas where third parties’ IP assets are used by the EC
- potential weaknesses in the observed IP related management practices
Areas of investigation:
- IP use
- IP rights management
2) Internal management - IP Survey
6 Directorates General of the European Commission: AGRI, COMM, DIGIT,
ENTR, INFSO, JRC
16

2) Internal management - PLUG
Publication Licence Uniform Generation (PLUG)
It aims at providing swift and streamlined means to enable the publication of
European Commission's works (i.e. scientific articles) on peer-reviewed
journals.
One single agreement will regulate all future publications with that specific
publisher.
1) EC to retain copyright ownership of its works. EC to grant the permission to
publish via licensing;
2) uniformity through standard licence terms and conditions to be adopted for
all JRC peer-reviewed publications;
3) increase accessibility to EC information.
17

2) Internal management - PLUG
The rights granted to the publisher are rather broad and include the right to:
- produce, publish, distribute, communicate, reproduce, authorise reproduction
of, translate and publish the translated versions of EC works …..
All rights are however retained by the EU/Euratom for its own use and in
particular:
1) to upload and store a digital copy of each EC work and to make it available
internally;
2) to reproduce the EC works (and make them available to the public);
3) to re-use or allow re-use of the work in dissertations, oral presentations
and/or derivative works authored by EC Staff.
The EC will abstain (for a certain time following the publication) from (2) and
(3) – Embargo Period
18

3) R&D collaborations
Three main categories of IP-related issues:
� Internal IP management aspects, meaning the provisions
governing IP aspects within the members of the partnership;
� Knowledge transfer aspects, meaning those IP aspects that
entail relationships with third parties;
� Governance aspects, meaning the provisions ruling the way
a partnership is established and managed.
19

Internal IP management
aspects
Ownership of results
Notification of R&D results
Protection strategy
Identification and scope of
Background (and, eventually,
Sideground) available
Access rights to Background and
Foreground (and, eventually,
Sideground)
Conditions for granting access rights
IP and human resources in research
activities
Reporting/Monitoring
3) R&D collaborations - IP issues
Knowledge transfer
aspects
Planning of direct and
indirect exploitation
activities
Indirect exploitation:
Conditions for IP licensing
to third parties
Indirect exploitation:
Conditions for IP transfer to
third parties
Incentives for New
Technology Based Firms
(NTBFs)
Knowledge dissemination
Governance aspects
Competence for IP-related
decision
Complementarity between
obligations deriving from
different funding sources
New parties entering
Parties leaving
Ensuring fairness in IP
aspects
20

Our approach gets strong inspiration from:
3) R&D collaborations - References
1) the Commission Communication "Improving knowledge transfer between research institutions
and industry across Europe: embracing open innovation" (COM(2007)182, and the
associated "Voluntary guidelines for universities and other research institutions to improve
their links with industry across Europe" (SEC(2007)449)
(http://ec.europa.eu/invest-in-research/pdf/download_en/knowledge_transfe_07.pdf)
2) the Commission Recommendation “on the management of intellectual property in knowledge
transfer activities and Code of Practice for universities and other public R&D organisations”
(C(2008)1329)
(http://ec.europa.eu/invest-in-research/pdf/download_en/ip_recommendation.pdf)
21