Massimiliano GranieriVice president

MITO Technology, Milan

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

During the project

After the project

Background Foreground

Ownership Access

SidegroundEssential / Non essential

Jointly owned / individually owned

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• Standardization activities (for some technologies)

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 competences and share data (via Open Acces strategies)

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• All other parties disagreed, but it was too late

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

different parties (typical anticommons)

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 make is not just about you. It is about us (MITO Technology).

Thank you

Massimiliano Granieri, Ph.D., LL.M.Vice president

MITO TechnologyVia Vittorio Veneto 2/a

20124 Milan | Italy

Ph.: +39 02 2951 6342Fax: +39 02 2941 3168

Web: http://www.mitotech.eu Email: massimiliano.granieri@mitotech.eu

Twitter: @MITOTechnology