NU-ROOF BARBERINO DEL MUGELLO 30M GENERAL ASSEMBLY JUNE 26th-27th 2012
Our NU ROOF technical challenge is almost complete PATENTED GREEN (BASED ON RECYCLED MATERIALS) REFLECTIVE DURABLE AND RELIABLE THANKS TO THE TOP LAYER TECHNOLOGY EASY TO INSTALL: SELFADHESIVE AND COMPATIBLE TO LIQUID MEMBRANE COMPETITIVE PRICE THE NEXT CHALLENGE IS NOW TO REACH A FRIENDLY EXPLOITATION AGREEMENT AND START DISSEMINATION
Current status of the project WP1: concept WP2: research WP3: application guidelines and thermal modeling WP4: knowledge management system WP5: demo WP6: business models WP7: training WP8: management Duration: 36 Months Start: January 2010 End: December 2012
Advancement on Product Development STILL SOME MINOR TECHNICAL ISSUES TO SOLVE (low production speed, paintagglomerates,..) LAB TESTS START: ok (24/6/12) START: TODAY! NATURAL AGEING TESTS 6 MONTHS APPLICATION TESTS AND TRAINING ARTIFICIAL AGEING TESTS 6 MONTHS UNYA OK, BUT ANOTHER ROUND IS NEEDED FOR PVB NEXT ONE IN COLD SEASON(NOVEMBER) ONE OR TWO FINAL PRODUCTS: DEMO
Advancement on the Knowledge Base Module 1: DOCUMENTS SEARCH Module2: COLLABORATIVE TOOLS Module 3: CUSTOMIZATION SUPPORT SYSTEM Module 4: E LEARNING AND APPLICATION GUIDELINES OK, TO BE TESTED WITH ASSOCIATIONS OK, TO BE TESTED WITH ASSOCIATIONS 80% READY, TO BE TESTED WITH ASSOCIATIONS OK, BUT STILL EMPTY!
Objectives of this meeting • Wehaveto start the applicationtrials and havea feed back fromprofessionalroofers • Wehavetofilm and upload the applicationmanual in the KM • Wehaveto decide aboutresidualteststoperform • Redhada and DAPP need a final feedback for the KM platform • Wehavetounderstand the logicof the first Draft Exploitation Agreement and start approvalprocess
Day 1: DISSEMINATION ACTIVITIES DETLEF, FIORENZO, JACUB, MEHMET
IFD DISSEMINATION PLAN (DETLEF) IFD congress in November 2012 in Lucerne There are upcoming meetings in August in Estonia, in autumn in Poland, Rumania, Slovakia and Slovenia. We are also in contact with some other countries. Germany is on the list also. We have to clarify which results we can present and IFD can decide afterwards. Without to many problems we can organize a lot of dissemination events in existing events or with national organizations.
LEGA COOP TOSCANA DISSEMINATION PLAN (FIORENZO) • 28/30 september 2012 : EDILTEK – MILANO -MALPENSA FIERA • 18/21 october 2012 : SIAEnergia - BOLOGNA – BOLOGNA FIERE SPA • 7/10 november 2012 : COOPERAMBIENTE / ECOMONDO – RIMINI (BO) RIMINI FIERA • Otherinitiatives: • Advertisement on magazines • Specificpresentationsduring the Lega Coop Network assemblies
AMSP DISSEMINATION PLAN (JACUB) • Den podnikatelů / Entrepreneurs Day20. 11. 2012, Hotel Ambassador • This is official anniversary event for members of Association. As every year, we expect the participation of our members - small and medium-sized businesses, entrepreneurs, member associations and guilds - as well as the participation of representatives of government, both chambers of Parliament, representatives of the banking sector and other major institutions. We expect the participation as about 350 people annually. We plan as each year to inform our members about progress in project and in this case also about results of project NU-ROOF. • Right now we are in stage of negotiations with representative of Roofers Guild (which has right now "observer" membership in our Association) regarding participation and presentation of project outputs at following main builders' event - trade fair ForArch, which will take a place in upcoming period till the end of year in Czech Republic – see bellow. Association isn’t directly planning participation at any builders' event unfortunately, because this is not in the center of its interest. • 23rd International Building Trade Fair • The 23rd year's fair will be held from 18 to 22 September 2012 in Prague - Letňany. Last year the fair was visited by 78 000 visitors, making it the most visited building exhibition in the country. At the moment it is entered for the presentation of about 12 % more exhibitors than last year. The increases are mainly in the field of building materials, heating and swimming pools. From our experience the fair visitors plan to seek construction work and construction of appropriate technology, as well as construction companies and specialists in the field. As an exhibitor you will have a unique opportunity to reach these visitors and offer them your services. • Simultaneously organized fairs with ForARCH: • 3rd Trade Fair of Heating, Alternative Sources, of Energy and Air Conditioning • 5th Trade Fair of Electrotechnics, Iluminating Engineering and Alarm Systems
CATIDER DISSEMINATION PLAN (MEHMET) September 20. 2012 September 23. 2012 International Construction Fair Ankara 2012 October 11. 2012 October 14. 2012 18. International Construction Fair İzmir 2012 October 18. 2012 October 21. 2012 20. International YapexConstructionMaterials and Technologies Fair Antalya
Day 2: BASIC ABOUT PATENTING Antonio
Why we have chosen to file a patent Advantage: • we can do dissemination immediately after filing without fearing that competitors block any future exploitation, • costs and efforts increase gradually • final results of NU ROOF will be more convincing to the eye of the commission • Even if patent is fully abandoned, nobody can file a similar one and monopoly is prevented Disadvantage: • some additional work, • costs after 30 months (for pct) or after 22 months (for epo) will rise for those who decide to maintain the patent
Where to apply for a patent • National patent offices • National patent valid only in the country where it is granted • Non-residents can also apply for a patent • One year of "priority" for subsequent applications • European Patent Office (EPO) • A European patent is equivalent to national patents in the countries where it is granted (the applicant chooses the countries) • Via the Patent Cooperation Treaty (PCT) • Just one application for up to 141 countries • After the initial application phase, the international application leads to multiple national patent examination procedures • Decisions with cost implications can be delayed until 30-31 months after filing (e.g. choice of countries to file in)
Optional The patent procedures: EPO vs WIPO (PCT) Publication of Grant & National Registrations: ~ 1,7k€ each Examination (month 24): ~10k€ Opposition period expires Application:~3000€ Publication (month 18) 24 months Approx. 1-2 years 9 months 12 months to decide for non EPO applications Publication of application (18 months) Choice Application: ~4200€ EPO: Germany, Italy, Turkey, Czech Republic Direct Entry: USA 30 months 8 months OPTIONAL Pre Examination:
Day 2: TOWARDS AN AGREEMENT ON EXPLOITATION RULES Antonio
Last meeting in Mayen: different needs, different views The industrial intellectual property is to be delivered completely to the SMEs and the Associations (consortium agreement) Some partners insisted on equal conditions Others required a gradual engagement (costs and decisions to take) Thosehaving worked hard on technical development wanted to minimize the risks in loosing know-how The RTDs would like to access the know how at “fair and reasonable conditions”
What we have done, what is left to do We have reached an agreement on the patent technical text, as it is We have a DRAFT Exploitation Agreement trying to find the best compromise for each one of us We have time until November to sign it
Main Logic of the Draft Exploitation Agreement (v June2012) • CO-OWNERSHIP OF THE NUROOF PATENT ON EQUAL BASIS (10%) • EACH ASSIGNEE CAN PRODUCE AND SELL THE MEMBRANES WITHOUT FEES TO PAY TO THE CO-OWNERS • EACH ASSIGNEE CAN SELL PATENT LICENSES, BUT: • 50% ROYALTIES GOES TO CO-ASSIGNEES • NEED OF UNANIMOUS CONSENT OF THE CO-ASSIGNEES • OWNERSHIP OF THE KNOWLEDGE BASE SOFTWARE AND CONTENT. INSTALLATION IN THE SERVER OF THE ASSOCIATION • RIGHT TO USE THE NUROOF KNOW HOW TO MAKE FURTHER RESEARCH, BUT ONLY AFTER UNANIMOUS CONSENT OF THE CO-ASSIGNEES
Day 2: THE MAIN POINTS TO AGREE AND DISCUSS IN THE EXPLOITATION AGREEMENT Antonio
List of the Assignees, list of the Inventors, list of the Susbcribers to the Exploitation Agreement Mainlogic: The Assignees are the SMEs and the SME Agsof the project The Inventors are the personshavinggiven a relevantcontributionto the technical development The Subscribers are allpartnersof the NU ROOF project THE ONLY COMMENT RECEIVED SO FAR IS FROM STFI (NAMES OF THE INVENTORS HAVE BEEN CLEARLY DESCRIBED)
Rule 1: PCT FILING (INSTEAD OF EPO) REFERENCE: PAG. 8 “FILING OF THE PCT APPLICATION” ADVANTAGE OF PCT FILING: NO DECISIONS TO TAKE FOR 30 MONTHS, POSSIBILITY TO APPLY WORLDWIDE WITHOUT RISK TO LOOSE THIS OPTION DISADVANTAGE OF PCT FILING: SMALL ADDITIONAL COST (1200€)
Rule 2: CO-OWNERSHIP MECHANISM During the first 30 months: equal transfer of ownership to each SME and SMEs AG (ref: PAG. 8 “TRANSFER OF OWNERSHIP IN FAVOUR OF THE CO-OWNERS”) When entering each regional / national phase: a new co-ownership is established with all partners belonging to the regional / national phase (ref. PAG. 9 “CO-OWNERS’ RIGHTS”) EXAMPLE: Month1: 10 partners (A,B,C,D,E,F,G,H,I,L) are given equal shares (10% of co-ownership of the pending application) Before month 30: Partner F,G,H,I,L decide to quit → shares are redistributed to A,B,C,D,E (20% each) Month 30: (entering of the national / regional phase): EPO Germany + Italy + Czech Republic + Spain: partners A, B, C (33% co-ownership of the EPO patent in that region). After few months partner C sells his shares to partner A → the new configuration is partner A = 66%, partner B=33% in this region United States : partners A, B (50% co-ownership of the USPTO patent in this region) Arabic Emirates: partners C (100% ownership of the Arabian patent in this region)
Rule 3: PRODUCTION AND SALES RIGHTS After that the patent application is filed (June 2012) each one of the co-owners has the right to produce and sell the NU ROOF based products anywhere and without paying nothing to co-owners, until the grant of the regional / national patents. After the beginning of the regional / national phases (30 months approximately) each one of the co-owners has the right to produce and/or sell the NU ROOF based products only in the region / nations where he applied, without paying nothing to anybody. EXAMPLE: Month1: 10 partners (A,B,C,D,E,F,G,H,I,L) are given equal shares (10% of co-ownership of the pending application). Each one can produce and sell everywhere. Month 30: (entering of the national / regional phase): EPO Germany + Italy + Czech Republic + Spain: only partners A, B, C have the right to produce and/or sell in Germany, Italy, Czech republic, Spain United States : only partners A, B have the right to produce and/or sell in the United States Arabic Emirates: only partners C have the right to produce and/ or sell in the Arabic Emirates
Rule 4: LICENSE RIGHTS • After that a patent is granted in one region / nation, each co-owner can sell licenses to any company operating in the area (ref. LICENSES, pag 12) • The co-owner who has successfully sold a license has a right to a 50% premium fee out of the overall revenues deriving from the license agreement, the remaining fees from the license being divided among the others co-owners pro quota (ref. LICENSES, pag 12) • Moreover, be entitled to sell licenses only if he reaches unanimous consent from the other co-assignees in the region / nation (ref. LICENSES, pag 12) • EXAMPLE: • Year 3: • a USPTO is granted to partners A (20%), B (20%), C (20%), D (40%). • Partner A finds a company X interested in the NU ROOF technology and wants to grant a license for the production and sales of NU ROOF based membranes in the United States. • A Common Decision Procedure is organized. Unanimous consent is reached: A is authorized to sell a license to X. • 50% of the yearly royaties will be transferred to the co-owners proportionally to the shares owned by each one of them: for example if 80000$ of royalties are generated, 40000$ will be distributed according to the proportion of shares of the remaining co-owners (B=10000$, C=10000$, D=20000$).
Rule 5: D’APPOLONIA RIGHTS AND OBLIGATIONS • Filing (ref. TRANSFER OF OWNERSHIP IN FAVOUR OF THE CO-OWNERS pag 8): D’Appolonia will file the patent and, within 6 months, will transfer all shares to the SME and SME AGs on equal basis. This step is suggested since some countries stop the filing procedure for military reasons. A transfer of recordal, instead, cannot be stopped; • Once having completed the deposit, D’Appolonia will invoice to the Co-owners the application fee, that is approx. 4200€ divided by ten (ref. FILING OF THE PCT APPLICATION pag. 7); • D’Appolonia, will informally act as Administrator in charge (ref. D’APPOLONIA OBLIGATIONS pag. 7), until the ownership transfer. Nothing will be due for this activity to D’Appolonia. • The role of the Administrator (ref. PATENT ADMINISTRATOR, pag. 9) will be to become the only reference vis-à-vis the Co-Owners and keep them updated, in a suitable form, of the progress of the PCT Application and to forward them any formal communication received either from the PTO or from the Patent Attorney Firm-in–charge; • Before withdrawing from the role of Administrator, the assembly will vote a new Administrator following the Common Decision Procedure (50% vote + 1, by email or letter). Ref. APPOINTMENT OF THE PATENT ADMINISTRATOR, pag 10.
Rule 6: TERMINATION OF A CO-OWNERSHIP • Ref. TERMINATION OF A CO-OWNER FROM ITS POSITION, pag. 10 • A Co-Owner may terminate from its position by its own will if one of the following circumstances occur: • the Co-Owner renounces to its share. The share shall be assigned to the remaining Co-Owners in equal shares; • the Co-Owner accept a buy-out offer from another Co-Owner and therefore assigns its share to this latter. • Further to the above, a Co-Owner may be terminated from its position by effect of a Common Decision Procedure, should one of the following circumstances occur: • change of controlling shareholders of one of the Co-Owner, its merger, acquisition, transfer or change, or • the Co-Owner becomes or is declared insolvent or bankrupt, or however subject to any other bankruptcy or receivership proceeding. • the Co-Owner becomes a Defaulting Co-Owner (ref. DEFAULTING CO OWNER, pag 10): • it has not complied with the required payments for the Necessary Patent Costs in due time; • it has violated the obligations related to Production, License, Confidentiality
Rule 7: RTD’S REQUESTS • Ref. SECTION 3, pag. 13 • The RTD’s will be allowed to make further research based on the NU ROOF patent (it is the logic of the patent system!) • BUT • If they want to use the NU-ROOF technology for commercial exploitation in the field of bituminous waterproofing systems, they must reach unanimous consent from the co-owners • “The concerned RTD shall be entitled, without the previous consent of the original PCT Co-Owners, to enter into relations with third parties which are not active in the Market of Interest / to pursue economical benefits from the Further Results with reference to products and/or services falling without the Market of Interest, • The concerned RTD shall not be entitled, without the previous unanimous consent of the original PCT Co-Owners, to enter into relations with third parties which are active in the Market of Interest / to pursue economical benefits from the Further Results with reference to products and/or services related to the Market of Interest”
RECAP OF Day 1: APPLICATION (OK) SELFADHESIVE VIDEO (OK) APPLICATION VIDEO (OK) AGREEMENT ON FINAL TESTS TO DO (OK) TRAINING VIDEO ON REFURBISHMENT (OK) AGREEMENT ON VIDEO DUBBING (OK) DEBRIEFING OF APPLICATION TRIALS (OK) T MEASUREMENTS (ON GOING) DEMO OF THE KNOWLEDGE BASE (NO)
APPLICATION FILMS: ROLES AND RESPONSIBILITIES • SESSIONS 1: INSTALLATION OF NU ROOF MEMBRANE (ENGLISH, GERMAN, GREEK, ITALIAN, TURKISH) • SESSIONS 2: INSTALLATION OF LIQUID MEMBRANE (ENGLISH, GERMAN, GREEK, ITALIAN, TURKISH) • DUBBING COORDINATORS: ENGLISH (DETLEF), GERMAN (GERHARD), ITALIAN (ANTONIO), TURKISH (MEHMET), GREEK (ANNA)