Materials of the MERLIN (https://merlin-ict.eu) workshop on IP. MERLIN will support market-oriented researchers, SMEs and startups across Europe, to consider the full potential of their research and to shape ideas and outputs into innovations to be ready for market validation and commercialisation, by using modern needs-first, market-led methodologies and offering free training workshops and meetup in 7 European countries.
More information in video https://bit.ly/merlin_video
1. H2020 GA #780460
Trainers
Locations
Date
Helping today’s researchers
create tomorrow’s enterprises
This project has received funding from the European Union’s Horizon 2020 research and innovation programme under grant agreement No 780460
Workshop 8- Building the right IP for your business
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Agenda
2
Introductions to MERLIN project and each other
Ice breaker
How to work within local and university regulations
Conclusions and info on next events
Spin off /Start up - what’s the difference?
Creating sustainable commercial partnerships
Intellectual Property – different types
Intellectual Property exercise
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Learning objectives
3
Understand the key
differences between
operating a spin-off
and a start-up
Understand how to
work within local and
university regulations
to launch a spin-out
Creating sustainable
commercial
partnerships
Dealing with IP issues
such as patents and
trademarks and
licensing
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Workshop Guidelines
No question is a
silly question
4
What is said in the room
stays in the room
Support and
challenge each other
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MERLIN partners
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3 Incubators
Universidad Politécnica de Cartagena
St John’s Innovation Centre
Poznan Science and Technology Park
2 Consultancy Companies
BluSpecs
CIVITTA
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About MERLIN project
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MERLIN project aims to stimulate the interest in the creation of startups, spin-offs, patents and licensing
agreements among ICT researchers, providing them with the business skills that would help them to
commercialize their research findings and successfully introduce them to the market, and introducing
them to their local and European entrepreneurial ecosystems
https://merlin-ict.eu
http://bit.ly/merlinVideoShort
Organization of more than 40
practical thematic workshops in
several European cities, including
Cambridge, Madrid, Poznan, Vilnius,
Berlin, Warsaw, Bucharest, Tallinn
Participation in 5
international
conferences, organizing
workshops and forums
Organization of 8
meetups with
potential customers,
commercial partners,
and investors
Preparation of 4
webinars on SME
growth and PPP
business models
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What is a Start-Up?
A start-up is a newly emerged business
venture that aims to meet a marketplace
need, want or problem by developing a
viable business model around products,
services, processes or platforms.
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What is a Spin-Off
A spin-off company can be
defined as a new, small,
company formed to exploit IP
developed during the course of
an individual's employment in a
larger organisation (e.g. a
university).
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14. H2020 GA #780460
Compare and contrast (1)
Spin-off
o Origin – takes place within the
academic/research institution
o University IP ownership stake
o University is a shareholder - shared
equity arrangements
o Impact – may be social as well as
financial
Start-up
o Origin – outside the
academic/research institution
o IP is self-owned for company benefit
o Owned by founders
o Shareholder agreement between
founders. Equity agreed by founders
and negotiated with any investors
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15. H2020 GA #780460
Compare and contrast (2)
Spin-off
o May allow flexible roles
o University contribution to IP costs
o Support with initial costs and
introductions to investors (sometimes!)
o Ongoing support with
commercialisation – access to
specialists i.e. IP, legal
o Access to facilities – lab space plus
technical input
o Access to University support
programmes e.g. iCure in UK
o May find potential commercial
partners
Start-up
o Likely to be full time in the business
o IP and initial costs usually self financed
or via fundraising -friends and family,
grants, investment
o Need to find ongoing support and
ensure sufficient resources to cover
costs
o Need to find own premises and
source specialist equipment
o Need to source own commercial
partners and any ongoing support
requirements
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Compare and contrast (3)
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Spin-off
o Process of agreeing Spin off with
parent may be lengthy, bureaucratic
and lacking in flexibility
o Possible obligation to include
university employees in team
o Exit- University will be looking for a
planned exit within agreed
timescales. Often seeking early
returns
o You might not get the terms you want
Start-up
o Can progress more quickly without
bureaucracy/decision making by
others outside the business
o Founders choose and build the team
o Exit is at the discretion of the founders
and any investors
o The Board is in control
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Start-up: A possible journey
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Idea to
solve a
problem
Competitor
analysis/
market and
IP research
Build MVP
Trial product
and verify
Commercialisation
Plan
Marketing
and
Customer
acquisition
Company
legal
structure
and IP
strategy
FundingBuild a team
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Spin-off: A possible journey
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R&D/research
project results
with potential
to
commercialise
University
personnel
agreed
Shareholder
agreement
Technology
Licensing
arrangements
agreed
Commercialisat
ion plan
Final approval
of terms and
completion
Raising
investment/
finance
Initial
discussion
with
University
University
permission and
ownership
arrangements
IP ownership
agreed with
University
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Copyright – what does it protect?
Books, technical reports, manuals, databases
Engineering, technical or architectural plans
Paintings, sculptures, photographs
Music, songs, plays, dramatic works
Promotional literature, advertising
Films, videos, cable or radio broadcasts
Computer software
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• Usually the first creator or author... …or
their employer if produced in the
ordinary course of their employment
• However, a contractor will retain
ownership unless their contract is
explicit to the contrary
• Even if the creator sells their rights, they
have ‘moral rights’ over how their work
is used
Who owns the
copyright?!
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Any sign which is capable of being represented graphically
Any sign which is capable of distinguishing the goods or services of one
undertaking from another
A Badge of Origin
Trademarks
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TM
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Benefits of registering a trade mark
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Protects your brand value
Builds an asset
Defends against rival marks
Defines your rights
Prevents counterfeiting and fraud
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Trademarks (2)
Name
Logo
Domain Name
What can be registered?
Slogan
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Colour theme
Shape theme
Music
Smell!
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Unacceptable Trademarks
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• They have become customary
in your line of trade
• describe your goods or services
or any characteristics of them
• are not distinctive
• are offensive
• are against the law
• are deceptive
Marks will not be
accepted if;
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How to register a Trademark
International
registration via
WIPO
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EU-wide protection
(all EU Member
States) via EU IPO
National level, via national EU IP
offices
Regional level registration in
Belgium, the Netherlands
and/or Luxembourg, via BOIP.
Benelux Office of International
Property
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Registered Designs
Protects shape or configuration ( ) and/or pattern or ornamentation (2-D)
No protection for function, materials or technology of manufacture
No protection when form is dictated by function (ie: no design freedom)
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How to register a Design
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Doing business in one country only
Register design with that
country
gives exclusive rights but won’t
be able to prevent anyone
from copying in other EU
countries
…consider a Registered Community design (RCD)
Do business in more than one country
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Dealing with big companies?
What are the Pros and Cons?
5 mins in small groups
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Pros and cons of dealing with big
companies?
56
Pros
Experience
Competitive
advantage
Transition to scaling
company
Stronger supply chain
Better leverage of
resources
Distribution routes
Increased revenue
Cons
Decision making can
be slow
Pricing
Payments may be slow
Can de dropped
without warning
Over reliance on one
company
59. H2020 GA #780460
Round-Table Q&A
60
Spin Out
company
Start-Up
Company
IP Lawyer
Tech Transfer
Officer
Facilitator
60. H2020 GA #780460
If you want to go deeper
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Useful Links
https://euipo.europa.eu/ohimportal/en Intellectual Property Office for
Europe
http://www.wipo.int/portal/en/index.html - World Intellectual Property
Organisation
https://www.eucopyright.com/
https://euipo.europa.eu/ohimportal/en/image-search-design
https://www.tmdn.org/tmdsview-web/welcome Design View Centralized
access point to view the registered design information held by any of the
participating National Offices,
https://www.gov.uk/search-registered-design - Find a registered design in
UK
https://euipo.europa.eu/eSearch/ Search trademarks, designs, owners in
the EU
https://www.tmdn.org/tmview/welcome - Trademark database plus
details for national offices
https://www.epo.org/applying/basics.html Applying for a European
patent
https://www.epo.org/searching-for-
patents/technical/espacenet.html#tab-1 Patent search tool