Intellectual Property (IP) Requirements for Engine Project Application

Introduction

• Presenter: Jerome LEF, Director of Intellectual Property at Engen
• Objective: Overview of IP-related requirements for Engine project application

Objectives of Presentation

• Summarize Engine's IP goals
• Introduce IP-related documentation
• Explain IP requirements for project applications
• Encourage early questions in the application development process

Goals of Working with Project Partners

• Ensure respect for project IP management requirements
• Increase IP knowledge and sophistication in project partners
• Identify and manage IP-related risks from planning through the project
• Ensure acceptable level of IP risk for project funding justification

IP Requirements in the Master Project Agreement

• Partners must have sufficient access to all project IP during and after the project
  • Access should be free of charge
  • Access for internal R&D and commercialization activities
  • Fair, reasonable, and non-discriminatory terms
• Access subject to secrecy and competitive issues
  • Sensitive IP can have limited access if agreed upon

Key Documentation for IP in Project Application

• Project IP Guide: Useful definitions and context; recommended early reading
• IP Tables: Form to inventory IP assets leveraged or created during the project
• Application Guide: Full scope of application requirements, including IP tables and assessment questions
• Financial Guide: Criteria for reimbursement of IP-related costs
  • Only SMMEs eligible for reimbursement
  • $200,000 cap on eligible costs per SME
  • Recommendation to consult patent agents

Key Definitions from Project IP Guide

• IP Asset: Information defining a technology (system, process, product)
• Background IP Asset: Created before the project and contributed by a partner
• Foreground IP Asset: Produced during the project by one or more partners
• IP Types: Categories of intellectual property (e.g., patents, trade secrets)
• IP Item: Applied use of an IP type in connection with an IP asset

IP Planning and Management

• IP management team composition
• Topics in IP-related policies
• Typical IP-related business objectives
• Considerations for forming Consortium and identifying Project's IP assets

Detailed Look at IP Tables

• Two tables: Background IP and Foreground IP
• Guidance on what to include in each column
• Short descriptions for each IP asset
• Document to be uploaded to the application portal

General Advice

• Read the Project IP Guide early
• Work with partners to understand IP assets, ownership, and access
• Provide evidence of thoughtful consideration of IP-related aspects in assessment questions

Conclusion

• Open for questions