Earlier this year the Department of Jobs, Enterprise and Innovation, in conjunction with Knowledge Transfer Ireland (“KTI”), launched the National IP Protocol 2016. This sets out the Irish Government’s policies to encourage and support collaboration between industry and Ireland’s universities, institutes of technology and other public research institutions (“Research Performing Organisations” or “RPOs”).
The 2016 Protocol is an update to the first version which was published in 2012 and comprises two volumes; a policy document which sets out a framework for funding RPO research and a resource guide which provides an overview of the national IP management guidelines and links to model agreements developed by KTI which support these guidelines.
The stated aims of the Protocol and related KTI materials include making the commercialisation of IP more accessible and more streamlined, whilst at the same time, adequately protecting the parties involved. The Protocol sets out, in an accessible and intelligible way, the different forms of legal protection (eg types of licences and agreements) which can be put in place depending on the nature of the collaboration and how it is funded (ie research wholly or partially funded by the State or industry). As a matter of policy and, in many cases, as a contractual obligation, RPOs are obliged to comply with the Protocol, so RPOs and potential industry collaborators need to be familiar with its provisions and the specific requirements and recommendations it briefing imposes on RPOs, particularly regarding the ownership, licensing and publication of intellectual property.
The Protocol is described as a ‘living document’, which aims to maintain flexibility and to speed up the negotiations between industry and RPOs. It includes significant changes to the 2012 version, including helpful clarifications of certain fundamental principles. There are also revised definitions of key terms such as “Background IP”, which will be of particular relevance to industry participants who are considering collaborating with RPOs but concerned about the potential consequences of doing so in connection with their own proprietary IP and commercialisation plans.
Although this updated version of the Protocol includes a number of welcome improvements to the 2012 version, it contains limited guidance regarding the application of competition and State Aid rules to the commercialisation of IP arising from collaborative research projects between industry and academia participants. Given the fundamental importance of such rules to the legal and commercial parameters of collaborative research agreements, participants will often need detailed knowledge or separate advice in respect of these issues.
The latest model agreements and related guidance notes published by KTI are stated to be intended to be reasonable and balanced and to act as a starting point for contractual drafting and discussion. It is notable that they expressly provide that neither RPOs nor industry participants are obliged to use the KTI templates. As such, although they will be useful resources, particularly for RPOs, they seem unlikely to be adopted by RPOs as non-negotiable model contracts and are likely to require some amendments or variations in many cases.
In addition to providing guidance to RPOs regarding collaboration with industry participants, the Protocol also sets out requirements and recommendations regarding the management of IP within RPOs, particularly regarding the identification, protection and, where appropriate, publication of IP created during research programmes. For RPOs, it is notable that many of the relevant provisions of the Protocol relating to the management of IP and adopted or appropriate policies and procedures are stated to be mandatory principles.
The publication of this updated version of the Protocol and KTI’s ongoing dissemination of model agreements and guidance notes are welcome additions to the framework for the commercialisation of IP in Ireland and among the key initiatives of Innovation 2020, which is Ireland’s strategy on research and development, science and technology. Other initiatives include increased investment in R&D, continuing to develop clusters focused on specific themes and the introduction of the ‘Knowledge Development Box’.