Protecting IP

  • Be aware of the costs and competences that are needed to protect your IP.
    • Applying for, and protecting, a patent is costly.  One should only engage in IP protection and management if one has the appropriate resources.  If it is appropriate to protect and exploit your IP in-house, ensure that you hire qualified personnel - which, usually, is not available at low cost!
  • Check whether you can outsource IP issues to university administration, specialised law firms, or public infrastructure in your country.
    • smaller CRCs in particular might usefully share resources with an already existing IP-related infrastructure (e.g., technology transfer offices at universities, public infrastructure such as patent exploitation units, IP departments of national research organisations, etc.).
    • consider implementing a Board in which IP issues - especially strategies toward the building up of a patent portfolio and your general position regarding industry - are discussed.
  • If you want to play an active role in IP protection, make sure that you have an unambiguous position toward IP!
    • CRCs are institutional settings in which research and industry cooperate in research and development projects.  This immediately leads to the question of which partner should own the IP - university, research organisation, the CRC itself, or an industry partner.  There will be differing regulations depending on how the projects and the CRCs are financed.  If you as a CRC wish to have a strong position in negotiations, one should ensure that one’s standpoint is unambiguous.  The better you know what you want and the more you are familiar with both the legal framework and “good practice”, the stronger your position will be.
  • Check whether there are any sample contracts
    • in a number of countries sample contracts or contract-building blocks have been developed to facilitate IP negotiations between the partners in a CRC.  These contracts usually address the distribution of ownership rights in collaborative, cooperative, and contract research.  It is possible that there are sample contracts for CRCs available.  The use of sample contracts enhances the acceptance of your IP strategy!
This is a learning toolbox. Comments, suggestions and further links are highly welcome.
For your feed back please fill in the following form:
123