Grants and IP

Grants and IP

Intellectual Property (IP) can play a key part in securing grant funding by demonstrating progress to date, and by serving as a key component of the proposed project outputs. Here we highlight the main considerations, challenges and opportunities to be aware of when handling existing IP and creating new assets during the course of grant-funded projects.

CURRENT IP: EVIDENCING INNOVATION

Funders want to see a big ‘game-changing’ idea, but how do you convincingly ‘sell’ the novel merits of your innovation without giving away crucial IP details? In general, the grant application does not require full details of the IP strategy, so giving a summary of the key points will suffice. When addressing IP in your grant application, bear in mind the following:

• Where possible, share details of a patent application (pending) or patent (granted) that underpins the innovation you are seeking funding for. State the patent application reference number early in your application – this evidence could be very powerful in persuading the evaluators right from the outset that this is a serious application

• Assessors need to be excited when reading your grant application that your innovation is making an impact. Motivating the reader can result in a few extra points that could make the difference between the project being funded and it not being approved

• Contrast your product / solution with those already available in the marketplace to demonstrate your point of difference. Clearly articulate your value proposition by focusing on the benefits of applying your technology and the unmet needs of the marketplace so that assessors understand its full potential. This avoids getting into very technical details where you might over-share information from an IP perspective 

• If you don’t yet have an IP application underway, think about what other supporting information you can provide. For example, can you reference research papers, have you already published other patents, and can you include data and customer / end-user testimonials to convincingly build your case? 

• Supporting IP evidence can be included in the appendices, and can take the form of diagrams, tables, pictures and text. This format is much more flexible than the text-only answers required in the core grant application questions

PROTECTING IP ARISING FROM THE GRANT PROJECT

Ownership of the IP generated during a project can be a complex issue, especially when multiple project partners are involved. Ignoring important IP considerations risks dilution of your commercial position in any collaboration you enter into. IP-related requirements will vary slightly from call-to-call, but as a guide you may need to consider and anticipate the following:

• When you’re engaging with prospective partners, make sure you have a good NDA in place before you get into the detail, to protect yourself at the outset

• You may be required to demonstrate your ability to commercialise the innovative product, process or service being developed during the R&D grant-funded project (known as “Freedom to Operate”). This requires providing assurance that no existing patents are being breached in the development of the novel technology and that no pre-existing third-party patent can block your planned commercialisation

• Be very clear about exactly which outputs from the R&D grant-funded project you intend to protect and through which methods, and how this relates to the overall commercialisation plan. The grant application may ask you to specify this

• Timing is key. It’s best to get the agreement on IP sorted out with parties as early as possible, and take advice from IP lawyers to help navigate the complexities between partners. Your grant collaboration agreement should set out what each party brings in terms of existing IP, exactly how your existing IP will be used by your collaborator(s) and how the potential IP to be created will be handled in terms of ownership, usage rights, commercialisation, payment of royalties etc