Policy on the Management of Intellectual Property in Technology Transfer Activities at CERN CERN/FC/5434/RA Technology Transfer Network Meeting – 10 th & 11 th June 2010

11th June 2010B. Denis2

Content  Introduction  IP generated through CERN’s scientific programme  TT through technology transfer partnerships  TT through exploitation  Incentives  Approval and arbitration  Reporting 11th June 2010B. Denis3 Definitions and general principles TT and related IP management principles Redistribution of TT revenues General rules for TT activities

TT and related IP management 11th June 2010B. Denis4 R&D in the framework of CERN’s scientific programme Collaborative R&D Contract research Service and consultancy IP identification, ownership, protection and access right IP disclosure, ownership and protection Licensing Spin-off companies Technology transfer Research & development Intellectual Property management Section #2: IP generated through CERN’s Scientific program Section #3: TT through TT partnerships Section #4: TT through exploitation IP

Definitions  The term “technology” means know-how, inventions, hardware, software, reports, drawings, design documents, processes and protocols having a potential for research and/or industrial application.  The term “technology transfer” means the intentional transfer of a CERN technology to a third party and/or its use to create technological results, for application in a research area other than Particle Physics and/or for commercial exploitation.  The term “technology transfer partnership” means technology transfer through services, consultancy, collaborative R&D and/or contract research. 11th June 2010B. Denis5

Definitions  The term “collaborative R&D” means research and development where the research goals are agreed by the partners, who all contribute technologies and/or resources to generate technological results having a potential for commercial exploitation.  The term “contract research” means research and development based on CERN technology, mainly executed by CERN, financed by a commercial partner and where the technological results are targeted to a specific market. 11th June 2010B. Denis6

General principles 1. Use of technology transfer practices that maximise the dissemination and visibility of technologies. In cases where revenue generation and dissemination conflict, the priority is given to dissemination. 2. Use of IP management and technology transfer practices compatible with collaborative and open research. 3. Priority given to CERN’s scientific programme. In this context, CERN does not normally accept commitment for deadlines, time constraints, volume, or meeting specifications. 4. Equal opportunities for industry in all CERN Member States through e.g. wide promotion of available technologies. 11th June 2010B. Denis7

General principles 5. Preference for technology transfer to industry established in CERN Member States. 6. Adoption of appropriate measures to avoid that technology transfer to industry impairs the application of the principle of fair competition in future procurements. 7. No technology transfer for military applications. 8. No competition with industry. 9. No commercial role or responsibilities for CERN. 10. CERN normally transfers technologies on an “as-is” basis and does not provide guarantees or accept liability for the use and commercial exploitation of the transferred technologies. 11th June 2010B. Denis8

TT and related IP management extracts Use of technology transfer practices that maximise the dissemination and visibility of technologies. In cases where revenue generation and dissemination conflict, the priority is given to dissemination. 2.3 Protection Patents CERN considers patent protection for its inventions when the following conditions are met: [...] - the invention has an established potential for commercial exploitation; - the patent protection facilitates the transfer or the patent makes the invention more attractive to companies; [...] 4.1 Licensing Exclusivity In some cases a technology can only be disseminated through a license having some form of exclusivity. [...] Exclusive licenses shall include provisions: - conditioning the exclusivity to the actual commercial exploitation of the technology; [...] 11th June 2010B. Denis9

TT and related IP management extracts Use of IP management and technology transfer practices compatible with collaborative and open research. 3.1 Collaborative R&D Access rights Free access to all technological results necessary for the execution of CERN’s scientific programme shall be ensured. CERN shall have free access to the pre-existing technology owned by partners and necessary for the use of the technological results in the framework of its scientific programme. [...] 3.2 Contract research Access rights Free access to all technological results necessary for the execution of CERN’s scientific programme shall be ensured. [...] 11th June 2010B. Denis10

TT and related IP management extracts Use of IP management and technology transfer practices compatible with collaborative and open research. 4.1 Licensing Exclusivity Exclusive licenses shall include provisions: - [...] - ensuring free use of the technology as necessary for the execution of CERN’s scientific programme; [...] 4.3 Pricing CERN normally grants favourable financial conditions for non-commercial licenses to academic institutions, [...] 11th June 2010B. Denis11

TT and related IP management extracts Priority given to CERN’s scientific programme. 3.1 Collaborative R&D CERN considers entering in collaborative R&D when the following conditions are met: - the resources and key personnel required from CERN are available for the duration of the collaborative R&D; [...] 3.2 Contract research CERN considers executing contract research when the following conditions are met: - the resources and key personnel required from CERN are available for the duration of the contract research; [...] 3.3 Service and consultancy CERN considers executing a service when the following conditions are met: - the resources and key personnel required from CERN are available for the duration of the service; [...] CERN considers executing a consultancy when the following conditions are met: - the consultancy requires expertise available at CERN; [...] 11th June 2010B. Denis12

TT and related IP management extracts Adoption of appropriate measures to avoid that technology transfer to industry impairs the application of the principle of fair competition in future procurements. 3.1 Collaborative R&D Access rights [...] CERN shall have free access to the pre-existing technology owned by partners and necessary for the use of the technological results in the framework of its scientific programme. This shall include the right to give access to the pre-existing technology owned by partners where such access is necessary to have the technological results manufactured by a third party. [...] 11th June 2010B. Denis13

TT and related IP management extracts No competition with industry. 3.2 Contract research CERN considers executing contract research when the following conditions are met: - no commercial entity in the Member States possesses the required technology to execute the contract research ; [...] 3.3 Service and consultancy CERN considers executing a service when the following conditions are met: - the service requires CERN specific equipment or facility not readily available on the market in the Member States; [...] CERN considers executing a consultancy when the following conditions are met: - No commercial entity in the Member States possesses the required expertise to provide the consultancy; [...] 11th June 2010B. Denis14

Incentives Net revenues from the commercial exploitation of technologies are normally redistributed according the following scheme: - One third to the Section or team where the technology has been developed, [...]; - One third to the Department where the technology has been developed, [...] - One third to the KTT fund or the remainder of the revenues [...]. The overhead charged [...] is redistributed according to the following scheme: - One half to the Section or team executing the technology transfer partnership or in charge of the supply; - One half to the KTT fund. The redistributed revenues are allocated to the annual operational budgets of the year following the receipt of these revenues. [...] 11th June 2010B. Denis15

Thank you 11th June 2010B. Denis16