Paving the road to exploitation [a new type of clip for medical purposes] Helpline / Success Story

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The InnoClip project is an ongoing Eurostars project, approved in 2012. Its objective is to develop a new type of clip for medical applications – an innovative solution for the surgical treatment of intracranial aneurysms, “With so many unknowns, Spanish company NEOS Surgery decided it was time to make at least one part of the patient’s journey less uncertain and so the InnoClip project was born.”

For this purpose, a consortium of three partners has teamed up, composed of a Spanish SME, a German SME, and a German research institute.

In June of 2013, after the partners began discussions on the exploitation and commercialisation of their results, it became apparent that their consortium agreement was inconsistent with their common understanding of what arrangements would best suit their strategies. The consortium contacted the European IPR Helpdesk for assistance regarding their intellectual property management given their current contractual status.

One of the results, notably the aneurysm clip itself, had been invented by all three partners. The clip had an abundance of potential to be applied to both the medical and non-medical sectors. The partners agreed, however, that the best exploitation method for the invention as it was – tailored to serve medical purposes – was for ownership to pass to one sole partner for them to exploit in the medical field. The partners therefore called upon the European IPR Helpdesk to review the IP provisions of their consortium agreement as well as a table of results in the annex in order to obtain an external point of view as to the previously stipulated ownership rules.  

The Helpline IPR advisors reviewed the agreement’s clauses and tables and observed that the consortium agreement could not be interpreted to correspond to the management strategy which the consortium was trying to achieve. This created inconsistencies that were getting in the way of a trouble-free exploitation of the results. As explained by one of the partners, this was a typical “case of aligned expectations” as “all agreed on the exploitation strategy […] but the consortium agreement was ill-defined and inaccurate”.

The consortium therefore sought explanations and guidance as to questions of inventorship, ownership and joint ownership of foreground, as well as to the wording to be used when re-drafting the document, in order to amend the consortium agreement, make it more consistent, and use it as the cornerstone of their exploitation strategy. Indeed, a consortium agreement should not block the exploitation of results, rather it should be a tool that partners can use on the road to commercialisation.

“The IPR Helpdesk’s support was very useful indeed”, said one of the consortium partners. “We have celebrated the consortium meeting and a new consortium agreement has been signed, including the changes we mentioned and discussed with the IPR Helpdesk”.

With a new and more suitable consortium agreement in place, the InnoClip consortium is currently going forward with the project and refining its exploitation strategy on a stronger, more suitable contractual basis.