Agreements

“Commercialising IP” is a series of fact sheets aiming to provide an introduction to the forms of commercialisation that can be useful for a less advanced public likely to be involved in exploitation of intangible assets. The content provided therein is not intended to be exhaustive, and professional advice is strongly recommended when it comes to choosing the most suitable commercialisation practice for your organisation and dealing with the complex legal issues surrounding these deals. Yet, with these guides we aim to give you some understanding of the basic principles, which can help you save money and time.

This fact sheet focuses on spin-off, also known as “spin-out”, intended as a separate legal entity created by a parent organisation (PO) to exploit its intellectual property (IP) assets. Once the company is established, the PO will transfer or license to it the IP concerned, in order for the spin-off to commercialise it. This fact sheet identifies the key factors to create a well-conceived spin-off company with a main emphasis on the IP-related aspects that can contribute to its success. Spin-off is considered as a common practice in Universities and Research Organisations (ROs), in order for them to exploit and maximise the economic benefits of the knowledge created, as often these organisations lack the required capabilities to market their intangibles.

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We are pleased to inform you that the European IPR Helpdesk has produced a new fact sheet dealing with commercial licence agreements.

This booklet is a follow-up to the “Commercialising IP” series, providing an introduction to the forms of commercialisation that can be useful for people involved in exploitation of intangible assets.

This particular fact sheet aims to clarify when licence agreements should be used. Moreover, in this document we highlight the key provisions seen in most licensing agreements, as well as the specifics of licensing certain types of intellectual property rights.

Follow the link below to download this hands-on document.

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Join the EU IPR Helpdesk webinars in May!

Interested in learning more about licensing, including negotiation tips and legal traps? Or would you like to deepen your knowledge of Technology Transfer? Then, please feel free to register for our upcoming virtual training courses in May. You can join our webinars conveniently from your own computer, either from your office or home. Participation in the training courses is free of charge.

Detailed information on registration and learning objectives is available on our website:

6 May 2013: Licensing

27 May 2013: Technology Transfer

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We are pleased to inform you that the ninth issue of the European IPR Helpdesk Bulletin has been released and is now available on-line.

A central thread of this European IPR Helpdesk Bulletin is related to the efficient management of intellectual property (IP) as a tool for commercial gains. From a brief description of an interesting tool put at the disposal of organisations by the Danish patent and trade marks office (DKPTO), to test the efficiency of their strategy, to two others article on IP commercialisation highlights and using customs for intellectual property enforcement, you will be given suggestions and recommendations on how make the most of your intangible assets.

An article specifically on trade marks will tell you that a good brand incontestably brings an added value to the organisations, but the success of the trade mark requires a solid and well prepared strategy. In addition to that, a case study will put forward the way a University Technology Transfer Division can facilitate the process of connecting industry with research institutes (and vice versa) and to actively support the cooperation as a whole.

The usual quiz, information about the new Ambassador scheme and other events of interests will close our quarterly publication, which we hope will be thought-provoking!

The booklet on "Non-Disclosure Agreements", freely provided by the U.K. Intellectual Property Office (UKIPO) in the Healthcheck booklet series, gives an overview on approaches to protecting confidential business information to be shared for business purposes.

NDAs are written agreements which record the conditions under which you disclose information or ideas in confidence. You are strongly advised to consider using one if you are going to disclose any information or ideas which you wish to be kept confidential.

If you are interested on how NDAs can help you, read on this booklet here and our fact sheet here. If you want to get better acquainted to the meaning of confidential business information, the European IPR Helpdesk also produced a fact sheet on it, which is downloadable here.

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The European Commission has opened a public consultation regarding the revision of rules on technology transfer agreements with a view to changing the existing exemptions.

The Commission may impose rules so as to avoid companies using licensing agreements to divide up markets among themselves or to block competing technologies from entering markets. The block exemption prevents determinate technology transfer tools (e.g. patents and know-how licences) from the application of these competition law rules.

The new TTBER rules are also expected to address the functioning of “patent pools”. The Commission is inviting comments on its proposals until May 17, 2013.

For further information and to submit your contribution, please click here.

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IP Panorama, a “Joint Development of E-learning Content” developed by the Korean Intellectual Property Office (KIPO), the Korea Invention Promotion Association (KIPA), and the World Intellectual Property Organization (WIPO), has an interesting new addition on “IP Issues in Franchising”.

To access the e-learning platform, please click here.

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