One of the success factors of the MAIN Consortium will rest in the ability of communicating and sharing knowledge bettheyen its member investigators, while at the same time promoting the protection of Intellectual Property (IP) and the exploitation of it through the participation and involvement of small and medium enterprises (SME) in the network. The specific contribution of the SMEs participating in this Consortium should be to provide access to existing and/or novel high throughput technologies/assays for drug screening and target identification and in the pre-clinical development of potential new drugs.
The purpose of the network is to exchange knowledge and information, and the European Community will support the creation of proper tools to favour the advancement and dissemination of knowledge while the economical support to perform research will largely come from national funding agencies. Therefore any resulting IP will belong to the network participants who conceived or developed it.
We expect that the network participant will generate abundant new Intellectual Property and below they define the general principles through which they intend to manage all the IP matters, such principles will be recorded in the Consortium Agreement (“CA”).
The network will create a web site that will be taking into account, among others, the IP management requirements of the network. Very briefly, the web site (see section B7) will be composed by an open area accessible to the public and a restricted access area to which only network members will have access through a personal username and password. This area will be highly secured in order to protect all the confidential information posted therein.
· The results of research not patentable or already protected will be easily accessible to all members of the Consortium and also to non participating researchers and the public, under a customary non-disclosure agreement.
· Reagents created in the Consortium collaboration will be available to the entire community not only the Network members, for research purposes only, under an agreed Material Transfer Agreement. The network will adopt a common MTA to be used for exchange of reagents to third parties and between the parties. A draft of potential MTA is available.
· To allow circulation of confidential information among members whilst preserving Intellectual Property rights, we intend to adopt in the access restricted area of the web site a section where new results not yet published or protected should be posted. This area will be accessible through individual passwords available only to the members of the network. All information and new results posted within the network should be defined by the name of the person and institution disclosing it and by the date of disclosure. These information will help in defining ownership of patentable knowledge in case of litigation. In order for such posting not to have an adverse effect on patenting activities, the information contained in such postings will be deemed to be confidential information proprietary to the member who posted it.
· The Consortium Agreement will include well defined confidentiality clauses to be accepted and respected by all members.
· Each member shall have in place internal policies to protect all patentable results. We expect that each member will have a Technology Transfer Office (TTO) that will monitor and support the patenting process. The TTO of each member will have the opportunity to communicate with other TTO of the network institutions for consulting purposes. Contact references for each Institution’s TTO will be posted on the web site. The members acknowledge that some TTOs’ are external legal entities to the participating members, therefore they agree in advance that members may assign IP to their respective TTO, provided that the TTO will be bound to the relevant instructions of the Consortium Agreement mutatis-mutandis.
· The subcontractor partner of the network, Science Park Raf Spa has a long experienced Technology Transfer Office, that can provide if needed (on a fee basis), consulting services to other members of the network regarding, IP matters and licensing activities. Under special circumstances such activities may be financially covered by the Consortium.
· Once patentable knowledge, developed within the network, has been protected, each member will disclose to the other members, under the confidentiality provisions of the CA, the new patent filed. This will favour the exchange of information regarding new results, between members even during the first eighteen months of secrecy of a new patent. The patent application will be available in the restricted area of the web site.
· Once patentable knowledge is made available to the members in the restricted area of the web site, the industrial members may commence negotiations with the academic member that owns the knowledge in order to obtain a license to such knowledge. In such case, the commercial member/s that wish/es to obtain a license will pay for the ongoing patent expenses. If no license agreement will be signed within a 3 months period from the date of disclosure, the member who owns the knowledge may commercialize it without any restrictions to third parties that are not members in the Consortium
· Joint-IP: we foresee the possibility of developing, through the intense exchange of information favoured by the network, new IP that reflects the contribution of more than one Party.
a. Ownership of Joint-IP shall be determined according to the given intellectual contribution. If the Parties will not agree on the level of contribution they might appeal to the Conciliation Committee (See below).
b. In order to facilitate the exploitation of jointly owned patented technology, we suggest the use of a co-ownership agreement defining the cost sharing and the identification of one party responsible for the commercialisation of the patent.
c. We suggest that the Institution that has made the greatest contribution will take primary responsibility for patenting and maintaining the patent and for marketing and licensing the patent, however special circumstances such as dominating pre-existing know-how should be considered.
· Accordingly to the main purpose of the network, all members will receive a non exclusive royalty-free license to use for academic research purposes, all research tools, biological materials and patent rights developed within the project.
· Access rights to pre-existing IP and to newly developed IP:
a. Knowledge will be accessible to all the members of the network through a royalty free license for research purposes within the scope of the network.
b. Access rights to Pre-existing Know-how, for research purposes within the scope of the network, must be granted to members of the network potentially interested, free of royalties, unless the contractors have defined, before the contract between the network and the European Commission is signed, a royalty based license agreement to be negotiated in good faith between the parties.
c. Access to pre-existing Know-how can be excluded, at the sole discretion of the owner, through a written agreement to be signed between the members BEFORE the finalisation of the contract bettheyen the network and the European Commission. As far as academic institutions are concerned, it is agreed that access rights to pre-existing Know-how will be limited to the pre-existing Know-how developed by the research group participating in this Consortium.
d. Access rights to Pre-existing Know-how for commercial exploitation, may be granted by the owners of these rights to members of the network potentially interested, if it is needed for the commercial exploitation of their own Knowledge, through a limited license agreement to be negotiated in good faith between the interested parties
e. Knowledge shall be accessible, through a commercial license, to all members of the network if it is needed for the commercial exploitation of their own technology. The parties involved shall negotiate in good faith the terms of such a “limited license” (limited in terms of field of application).
f. The same Knowledge or pre-existing Know-how can be granted as a “limited license” to more than one member if the fields of application are different.
g. If more than one member is interested in obtaining a limited license on the same field of application, the license will be granted to the member that will make the best offer.
h. Companies part of the network, will have a first right of negotiate a “quasi-exclusive license” (i.e. an exclusive license that is limited to certain fields of application on which other members might have obtained a limited license) on Knowledge.
i. If more than one company wants to exercise the first right of negotiation, the licensee company will be selected on the basis of the best offer.
j. We will define a time frame (potentially 3 months from the disclosure of the Knowledge, conducted by the owner, with third parties external to the network) within which the members will be allowed to exercise the first right of negotiation. If no license agreement will be signed within a 3 months period from the date of disclosure, the member who owns the knowledge may commercialize it without any restrictions to third parties that are not members in the Consortium.
k. Such a “quasi exclusive license” can be extended to a full exclusive license if none of the other members need the technology for the exploitation of their own technology.
The IP management expertise existing among the Consortium members will be offered as a support to amicably intend disputes on IP ownerships, therefore we will define, on a need basis, an internal “IP Conciliation Committee” headed by the coordinating scientist and by three tech transfer representatives of the network members not involved in the litigation and selected by drawing lots. This committee will try to solve amicably any IP dispute raised within the network.