Overview of IP Requirements for Engine Project Applications

Presented by Jerome LEF, Director of Intellectual Property at Engen

Objectives

• Summarize Engine's IP goals
• Introduce IP-related documentation and guidance
• Explain IP requirements for project applications
• Encourage early questions during application development

IP Goals of Engine

• Ensure respect for project IP management requirements
• Increase IP knowledge and sophistication among project partners
• Identify and manage IP-related risks throughout the project
• Assess and demonstrate acceptable IP risk level to justify project funding

Key IP Requirements

• Master Project Agreement: Available on the program's landing page
• Access to Project IP:
  • During the project: Free of charge for each partner to conduct their part
  • After the project: For further R&D and commercialization, on fair, reasonable, and non-discriminatory terms
  • Subject to secrecy and competitive issues, with potential limitations for sensitive IP

Key Documentation

• Project IP Guide: Definitions, context, and terminology. Read early.
• IP Tables: Form to inventory IP assets leveraged or created during the project
• Application Guide: Scope of required application content, including IP tables
• Financial Guide: Criteria for IP-related cost reimbursement (up to $200,000 for SMMEs)

Recommendations for SMMEs

• Contact a patent agent for guidance, search, analysis, and potential filings
• Budget approximately $50,000 for IP-related assessments and patent applications

Key Definitions

• IP Asset: Information defining a technology (system, process, product)
• Background IP Asset: Created before the project and contributed for use/improvement
• Foreground IP Asset: Created during the project by one or more partners
• IP Types: Categories of IP (e.g., patents, trade secrets) used to control asset use
• IP Item: Applied use of an IP type with an IP asset; multiple items possible for one asset

Best Practices

• Project IP Guide offers pointers for IP planning and management
• Form a team responsible for IP management
• Understand and define IP-related business objectives clearly
• Consider these points when forming a consortium and identifying project IP assets

IP Tables

• Two types: Background IP and Foreground IP
• Each table has 8 lines for IP assets and space for 2 associated IP items
• Provide concise descriptions of IP assets and items, sufficient for project understanding
• Upload the completed tables to the application portal

General Advice

• Read the Project IP Guide early
• Collaborate with partners on understanding ownership and access of IP assets
• Provide thorough evidence in the assessment questions to demonstrate IP considerations

Contact

• Reach out with any questions