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The Enterprise Europe Network IP Working Group WIPO Forum Intellectual Property & SMEs October 2010, Rome. Jane Watters Dave Morgan Enterprise Europe Scotland Enterprise Europe South West Scottish Enterprise GWE Business West. EEN and IP – the challenges. Background

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The Enterprise Europe Network IP Working GroupWIPO ForumIntellectual Property & SMEs October 2010, Rome

Jane Watters Dave Morgan

Enterprise Europe Scotland Enterprise Europe South West

Scottish Enterprise GWE Business West

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EEN and IP – the challenges


Initiative from EACI

Agreement of SAG of EEN

Call to Arms 2009 for IP WG

Aims – IP vital element of EEN Advisors

Objectives – Tools, resources, sign post

Composition – National Experts project management EACI

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Addressing the IP challenges

The EEN IP Working Group has designed and developed:

  • EEN IP training, June 2010 – planned annually

  • Signposting directory - organisations such as NPOs, and other regional IP intermediaries

  • IP toolkit with glossary of terms – questions and resources e.g. tools, e-modules, questions for businesses

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Objectives of the IP Toolkit

At each stage in an EEN Adviser’s daily work with companies we need to bear in mind some questions about Intellectual Assets/Property, to give better advice and increase the quality of business agreements companies achieve

Even if you are not an IP specialist, you should know who/how and when to signpost clients for further IA/IP related information

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The IP toolkit includes:

  • Guidance on how and when to discuss IP with clients, with suggested questions to help

  • A toolkit of available resources, including

    • Organisations to signpost clients for further support (e.g. IP Specialist support organisations, other colleagues in host organisations, or IPR conference on Firstclass)

    • A variety of tools to assess IA/IP etc

    • Example agreements which can help clients to ensure they cover the relevant issues during negotiations

      Here are some examples…..

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First company visit

  • Is the product or service novel or innovative?

  • Has it been protected (formally through IP registrations or less formally e.g. has the company documented a process and kept it secret)?

  • Is the client aware of how IA/IP can be used as a business tool?

  • Is signposting to a specific expert required for further detail?

  • Innovaccess tool - Why IP is relevant for you

  • IP4inno - E-learning modules

  • Identify the IP skills in your consortium, host organisation or region to signpost clients for an IP review

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Business agreement – check list

  • Field of use / period of time covered/market/countries concerned

  • Check validity of IPR – renewal fees paid up

  • Exclusivity/sole etc – included in glossary

  • Royalty (need an IPR expert to calculate the %)?

  • Grant clause e.g. if license is based on an application, which is then not granted, what happens?

  • Who can own/register foreground IPR (linked to improvements etc)

  • Who is responsible for acting against counterfeiting?

  • By the end of the agreement, which partner(s) retain(s) IPR?

  • Settlement on improvements of products, services,....

  • Termination clauses

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Tools and tips: business agreements


  • WIPO introduction to IA/IP

  • UK IPO Licensing booklet

  • UK IPO checklist for licensing

    Example agreements from intermediaries

  • Sample agreements (Scotland only)

  • WIPO Guidance on IP licensing and sample agreements

    Find Professional IP advisers and attorneys

  • Law Society Scotland database


    Framework 7 IP issues

  • Model agreements for FP7

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Next steps

  • Final review of the toolkit

  • Check and approval of IP toolkit by EACI

  • IP toolkit published on Network intranet

  • Discuss follow up activity

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Thank you!

….if you have any suggestions for practical resources we should include, or others who would benefit from this toolkit… let us know!

[email protected]