1. Intellectual Property Right Bernard Denis, DG-KTT

2. Technology Transfer Intellectual Property Right Vs Technology Transfer Intellectual Property Right is about the right you have to control the access and use of your knowledge and innovation Technology Transfer is about transferring public research knowledge and innovation to industry for commercial exploitation using: - licensing - collaborative R&D - consultancy - spin-off 2

3. Technology Transfer Intellectual property: what is IP(R)? Intellectual Property Invention, know-how, drawings, specifications, photographs, samples, models, processes, procedures, instructions, software, reports, papers, semiconductor IC topography,... Intellectual Property Right Any protection offered by law to Intellectual Property: patents, utility models, design rights, copyrights, database rights, secrets,… 3

4. Technology Transfer Patents Vs copyright Patent Formal procedure Protect the invention described in the patent Requirements: novelty, utility and non-obviousness Geographic limitations Costs Copyright Automatic Protect the expression (words, images,…) not the underlying ideas 4

5. Technology Transfer Patenting at CERN* Motivation Image of CERN as source of innovation with an economic impact Revenues is NOT the primary motivation  Fair share of commercial revenues  while allowing free access for research in the HEP community Benefits of the patent system The originator and owner of the invention are clearly identified Inventions are better formalized, tangible and easier to transfer When do we patent? Invention made in the framework of HEP programme Invention made in the framework of collaborative R&D Why do we patent? We patent when we believe the invention has a commercial potential * Strategy currently being reviewed 5

6. Technology Transfer IP in collaborative R&D Managing IP in collaborative R&D means: Identifying pre-existing IP(R) (so called background IP ) Defining the access to background IP in the framework of the R&D project and for commercial exploitation Defining the rules for the protection of the results (so-called foreground IP ) Defining the principles for the ownership of the foreground IP Defining the mechanisms and rules for the use and dissemination of the results and in particular for the commercial exploitation of results 6

7. Technology Transfer Importance of IP management in collaborative R&D “The IP aspects of the relationships between the participants in collaborative research determine the nature and success of these activities, and play a crucial role in the design of the structures of the collaboration; they cannot be added as an afterthought” Expert Group Report on the Role and strategic Use of Intellectual Property Rights in International Research Collaborations, April 2002. The aim is to allow : Freedom to research and wide dissemination of results Access to public funds Effective management of financial return 7

8. Technology Transfer IP in collaborative R&D at CERN* Principles: Identification of background IP(R) Clear ownership of background IP(R) (the owner should be a party to the collaborative R&D) Access to background IP(R) for the execution of the project Foreground IP(R) (results) owned by the party generating it Decision to patent made by a coordination committee. Party non interested may transfer the right Industrial partner has the right to commercially exploit (with possible exclusivity) in his field Industrial partner pays the costs of patenting Academic partner retain the right to use the foreground IP(R) for R&D Clear revenue sharing scheme 8 * Strategy currently being reviewed

9. Technology Transfer Conclusion “Intellectual property rights can be used to promote openness and cumulative innovation as much as they are used to promote exclusivity” (O’Mahony, 2003) 9