Transcript for:
Intellectual Property (IP) Requirements for Engine Project Application

hi everyone my name is Jerome LEF and I'm director of intellectual property at Engen in this video I will be giving you an overview of the IP related requirements of your engine project application for the full information and for context please refer to the guidance documents available on the programs landing page on our website the objectives of this presentation are to summarize what engine wants to achieve with regards to IP to introduce the IP related documentation so that you know what sort of guidance is readily available to you and where it can be found to help you understand the requirements of an engine project application with regards to IP and to spark up questions as early as possible in the application development process so that whatever gives you pause can be cleared up in a timely manner Engen wants to work with project Partners to achieve the following ensure the respect of project IP management requirements this will be discussed in the next slide increase IP knowledge and sophistication in project Partners this will be done by way of guidance documentation and direct assistance during the project ensure that IP related risks are identified and managed uh this is an exercise that should extend from Project planning into the project itself and ensure that the overall level of Ip risk to the project at the onset is acceptable for engine to justify funding it and this highlights the importance to do Upstream risk assessment and to demonstrate that you did so in your project application the program's IP requirements are set out in the master project agreement which you can find on the program's landing page the main requirement is that each partner must have sufficient access to all project IP during the project access must allow each partner to conduct their part of the project and we suggest that this access be free of charge and also after the project uh the access must be granted at least for the purpose of further internal R&D and commercialization activities as set out in the answers to the SS questions and supporting documents this access must also be granted on Fair reasonable and non-discriminatory terms this is to ensure that each partner can reasonably expect to come out of the project with what they need to commercially leverage the project outcome moving forward and ultimately access to project IP is subject to secrecy and competitive issues if a partner were to bring or develop sensitive IP that is of no use to the other partners in light of the project as defined in the application then the Consortium can agree to limit access to such IP as DC fit now let's have a look at the key documentation that will help you address IP in your project application first the project IP guide which we'll discuss in more detail later contains useful definitions and context it is recommended that you read it early so that you understand the terminology used in the rest of the documentation and next the IP tables are a form to be used by applicants to make the inventory of all IP assets that are either to be leveraged in the project or created during the project we'll revisit this one later as well and then there's the application guide uh this guide gives you the full scope of what your application must include uh for instance it specifies that engine requires the IP tables to be provided with the application this is also where you will find the assessment questions you must answer in your application and in the associated guidance you'll see recommendations to touch on certain IP aspects and your answers to certain questions and finally there's the Financial guide among other key information on Project Finance this guide sets out criteria for the reimbursement of Ip related costs note that only smmes are eligible for reimbursement of such costs also there is a $200,000 cap in eligible cost perme we strongly suggest that SES contact a patent agent to discuss objectives potential search and Analysis work and potential filings this discussion can also inir what will be entered in the IP tables if you can't update in detail the estimate in good time uh engine recommends that s's budget about $50,000 for this uh this is a reasonable amount to work with for freedom to operate assessment patentability searching and patent application expenses with respect to one technology next let's have a look at some of the key definitions provided in the project IP guide first an IP asset is a body of information that defines a technology for example a system process or product in full or in part some technologies can be broken down in several assets on the basis that each can be individually owned practiced licensed out or sold a background IP asset is an IP asset that is created before the project and that is contributed to the project by a partner for it to be either used or improved upon during the project and the foreground IP asset is an ipset that is expected to be produced during the project by one project partner or more the IP types are specific categories of intellectual property that could potentially be applied to an IP asset depending on its subject matter and the business objectives of its owner to give the owner some control over how the asset is used the rights and obligations by which this control is achieved depend upon the IP type some types like patents are governed by laws whereas others like confidential information or governed by contracts an IP item corresponds to an applied use of an IP type in connection to an IP asset often times there will be more than one IP item used for a given IP asset for example patents which involve a public disclosure are often used in combination with trade secrets for a given IP asset there can also be more than one IP item of the same IP type the project IP guide also provides high level pointers and best practices about IP planning and management covering the makeup of the team respons responsible for IP management topics typically addressed in IP related policies a list of typical IP related business objectives and some details to think about when forming your Consortium and identifying your Project's IP assets with the foregoing in mind we can now take a closer look at the IP tables used to describe the Project's IP assets along with other attributes that are useful for the reader to understand how each asset ties into the project so there are two tables one dedicated to back ground IP the other is for foreground IP although this isn't shown here the first page of the document includes guidance as to what engine expects to see in each column the tables as provided include eight lines for IP assets and each has space for two Associated IP items naturally you can edit the tables to add or remove lines as needed we ask for a short description of each IP asset those descriptions should be concise but explicit enough for the reader to understand how it fits into the project in light of the answers to the assessment questions short descriptions would also be useful for IP items especially if there are differences in scope but in some cases the item description can be the same as for the associated asset and the other columns are either specific to assets or to items which is why certain cells are blacked out once your tables are ready the document must be uploaded to the application portal by going to the screen and to conclude this video here is some general advice read the project IP guide early in the application process to familiarize yourself with the terminology also work with your partners to reach a common understanding of the Project's IP assets with absolute clarity as to ownership and access and finally in your answers to the assessment questions provide evidence that you have jointly and thoughtfully considered the key IP related aspects of the project to convince the Assessor that your Consortium can be reasonably expected to successfully complete the project and to commercially leverage its outcome thank you for your time feel free to reach out with any questions