Intellectual Property (IP) Requirements for Engine Project Application

Jun 28, 2024

Intellectual Property (IP) Requirements for Engine Project Application

Presenter: Jerome LEF, Director of Intellectual Property at Engen

Objectives

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

Engine's IP Goals

  • Ensure respect for project IP management requirements
  • Increase IP knowledge and sophistication in project partners
    • Through guidance documentation and direct assistance
  • Identify and manage IP-related risks
    • Extend risk management from planning into the project
  • Ensure an acceptable level of IP risk to justify funding

Main IP Requirements (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 further R&D and commercialization
    • Fair, reasonable, and non-discriminatory terms
    • Respect secrecy and competitive issues
    • Limit access to sensitive IP if agreed upon by the consortium

Key Documentation

Project IP Guide

  • Contains useful definitions and context
  • Recommended to read early
  • Helps understand terminology

IP Tables

  • Form to inventory all IP assets
  • Includes background and foreground IP
  • For both IP assets and associated IP items
  • Guidance provided for each column
  • Requires Adobe Reader for edits

Application Guide

  • Full scope of application requirements
  • Includes assessment questions
  • Provides IP recommendations for responses

Financial Guide

  • Key information on project finance
  • Criteria for reimbursement of IP-related costs
    • Only SMMEs eligible
    • $200,000 cap in eligible costs
    • Suggests budgeting $50,000 for IP-related expenses

Key IP Definitions

  • IP Asset: Information body defining a technology
    • Can be individually owned, licensed, or sold
  • Background IP: Created before the project, contributed by a partner
  • Foreground IP: To be produced during the project by partners
  • IP Types: Categories of IP (e.g., patents, confidential info)
  • IP Item: Use of an IP type connected to an IP asset
    • Can involve multiple IP items and types

IP Planning and Management

  • Refer to project IP guide for best practices
  • Include makeup of the IP management team
  • Typical IP-related policies
  • IP business objectives
  • Forming the consortium and identifying IP assets

IP Tables Insights

  • Two tables: Background IP and Foreground IP
  • Columns: Provide a short description of each IP asset and associated IP items
  • Edit tables to adjust lines as needed
  • Upload the prepared document to the application portal

General Advice

  • Read the project IP guide early
  • Work with partners for a common understanding of IP assets
  • Provide evidence in assessment answers
  • Assure the assessor of successful project completion and IP leverage

Conclusion

  • Feel free to reach out with any questions