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The Enterprise Europe Network IP Working Group WIPO Forum Intellectual Property & SMEs October 2010, Rome. Jane Watters Dave Morgan Enterprise Europe Scotland Enterprise Europe South West Scottish Enterprise GWE Business West. EEN and IP – the challenges. Background
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The Enterprise Europe Network IP Working GroupWIPO ForumIntellectual Property & SMEs October 2010, Rome Jane Watters Dave Morgan Enterprise Europe Scotland Enterprise Europe South West Scottish Enterprise GWE Business West
EEN and IP – the challenges Background Initiative from EACI Agreement of SAG of EEN Call to Arms 2009 for IP WG Aims – IP vital element of EEN Advisors Objectives – Tools, resources, sign post Composition – National Experts project management EACI
Addressing the IP challenges The EEN IP Working Group has designed and developed: • EEN IP training, June 2010 – planned annually • Signposting directory - organisations such as NPOs, and other regional IP intermediaries • IP toolkit with glossary of terms – questions and resources e.g. tools, e-modules, questions for businesses
Objectives of the IP Toolkit At each stage in an EEN Adviser’s daily work with companies we need to bear in mind some questions about Intellectual Assets/Property, to give better advice and increase the quality of business agreements companies achieve Even if you are not an IP specialist, you should know who/how and when to signpost clients for further IA/IP related information
The IP toolkit includes: • Guidance on how and when to discuss IP with clients, with suggested questions to help • A toolkit of available resources, including • Organisations to signpost clients for further support (e.g. IP Specialist support organisations, other colleagues in host organisations, or IPR conference on Firstclass) • A variety of tools to assess IA/IP etc • Example agreements which can help clients to ensure they cover the relevant issues during negotiations Here are some examples…..
First company visit • Is the product or service novel or innovative? • Has it been protected (formally through IP registrations or less formally e.g. has the company documented a process and kept it secret)? • Is the client aware of how IA/IP can be used as a business tool? • Is signposting to a specific expert required for further detail? • Innovaccess tool - Why IP is relevant for you • IP4inno - E-learning modules • Identify the IP skills in your consortium, host organisation or region to signpost clients for an IP review
Business agreement – check list • Field of use / period of time covered/market/countries concerned • Check validity of IPR – renewal fees paid up • Exclusivity/sole etc – included in glossary • Royalty (need an IPR expert to calculate the %)? • Grant clause e.g. if license is based on an application, which is then not granted, what happens? • Who can own/register foreground IPR (linked to improvements etc) • Who is responsible for acting against counterfeiting? • By the end of the agreement, which partner(s) retain(s) IPR? • Settlement on improvements of products, services,.... • Termination clauses
Tools and tips: business agreements Guidance • WIPO introduction to IA/IP • UK IPO Licensing booklet • UK IPO checklist for licensing Example agreements from intermediaries • Sample agreements (Scotland only) • WIPO Guidance on IP licensing and sample agreements Find Professional IP advisers and attorneys • Law Society Scotland database • CITMA/CIPA Framework 7 IP issues • Model agreements for FP7
Next steps • Final review of the toolkit • Check and approval of IP toolkit by EACI • IP toolkit published on Network intranet • Discuss follow up activity
Thank you! ….if you have any suggestions for practical resources we should include, or others who would benefit from this toolkit…..do let us know! jane.watters@scotent.co.ukdave.morgan@enterpriseeuropesw.org.uk