Provision of Intellectual Property Services to European Universities and Public Research Organisations
Brussels, Belgium, 18 June 2018
A service contract for on-demand services to promote the general objective of boosting the commercialisation of research results from European Universities and Public research organisations. These services will comprise of:
initial IP audit or evaluation,
a more complete IP evaluation or due diligence,
preparation for patent applications and design and trademark applications,
advice and support in negotiating technology transfer agreements.
The services provided under this contract will be a support measure whereby Universities and Public research Organisations technology transfer officess could have access to existing commercially available IP services to assist in their efforts to commercially exploit the results of specific projects their publicly funded research.
These serviceswill comprise an optional first phase:
Initial IP audit or evaluation, which will advise on the amount and type of IP protection needed for the University's or Public Research Organisation's own intellectual assets as well as the need to acquire rights to third parties IPRs (as well as on complementary assets or resources that need to be acquired) in order to exploit these assets. This could an outline strategy for commercialisation options and route to market.
Beyond this initial evaluation, the contractor will provide a range of IP services which will include the following:
Patent landscaping, which would help Universities and Public research Organisations to define the commercialisation pathways by identifying which technologies or parts of technologies· are already covered by patents and other IPRs of others. This would address, in the case of early-stage-technologies, finding the most attractive uses or application areas and market potential or the identification of other IP assets to which rights need to be acquired. This would go beyond that provided under the initial audit.
A more complete IP evaluation or due diligence, which would comprise an audit with technological, legal and market dimensions, to assess the quantity and the quality of intellectual property assets owned by (or to be acquired by) the beneficiary and an estimation of the importance and value of these IP assets based on their capacity to generate future revenues. This would comprise an assessement of the quality of the technology in terms of degree of inventiveness, an evaluation of the strength and scope of the claims and an estimation of value of future product markets and the shared that could be captured therefrom.
Preparation for patent applications and design and trademark applications aligned with business needs for patent, and representation and defence of these applications to the European Patent Office (EPO)10 and EU intellectual property office (EUIPO)11 or national Intellectual property offices in the Member States or in third countries. This would involve defining the breadth of the claims and the geographic coverage and patent prosecution pathway.
Advice and support in negotiating technology transfer agrements be they in or out licencing or acquistion or assignment of IPRs. This would involve advising on realistic values of the IPR to be licenced or sold or licences to be acquired if needed to ensure freedom to operate in the context of specific licence conditions and of a strategy in conducting negotiations.
It is estimated that the workload for the implementation of the each of the tasks is similar.
The services and tasks described aim to offer a rigorous support to European Universities and Public research organisations to commercialise their research results and to improve their access to finance.
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