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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
Scottish Enterprise
Enterprise Europe South West
GWE Business West
EEN and IP – the challenges
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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
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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
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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:
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• 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
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• 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
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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
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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
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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!
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….if you have any suggestions for practical
resources we should include, or others who
would benefit from this toolkit…..do let us
know!
[email protected]
[email protected]