|
1- Introduction
1.1 Background information on the mission entrusted to the Working Group
The Medicen Paris Region cluster decided to present a Collaborative Charter to its members in order to facilitate the organization and performance of ambitious, multipartner projects linking academic research centers, small businesses and multinational companies. Endorsement of a common set of rules is a guarantee of success in the cluster's goal of boosting the international competitiveness of its companies and contributing to the attractiveness of the Paris Region.
The drafting of the organizational guidelines set out below was driven by the need for efficiency (since the objective is to facilitate and accelerate the achievement of results which could be exploited by a project's industrial partners) and simplicity (favoring flexible decision-making whilst having regard for each partner's own obligations).
The Working Group's members are perfectly conscious of the great variety of projects and consortia likely to be established and selected for funding as part of the Medicen Paris Region cluster and have thus decided to base their recommendations on internationally accepted conduct in private-public sector partnerships.
1.2 Guidelines and general principles
During the project preparation and contractualization phase, the importance of keeping to tight timelines (so as not to penalize small businesses) and transparency in managing conflicts or interests was emphasized. The role of the industrial coordinator in the preparation phase is primordial. The coordinator is particularly advised to ensure that project leaders' superiors have been consulted in terms of both scientific and material contributions and aspects linked to intellectual property.
In order to meet appropriate and non-constrictive deadlines, it is advisable to involve academic technology transfer offices and company IP specialists/lawyers as early as possible and in close collaboration with operational teams. Lastly, it is advisable that the academic partners consult each other and designate an experienced representative for all negotiations (in compliance, of course, with existing inter-organization agreements) and equally that industrial partners be represented by a single project leader (the coordinator).
Once a project has been accepted for funding (i.e. a defined scientific work program & budget and an agreed term sheet), the establishment and signature of the contract between the partners shall take place within the following 4 months.
For project governance and management, the prime factors in the choice of an organizational structure will be project manageability and flexible decision-making, whilst maintaining fair representation of each of the partners.
In terms of intellectual property and exploitation, the definition of common rules will aim at reinforcing industrial competitiveness whilst guaranteeing the rights of non-exploiting partners (public sector institutions and national institutes of research, the Paris Public Hospitals Group, universities and other higher education establishments, etc.) to recognition of their capacity as inventors and reasonable financial compensation in the event of direct or indirect exploitation by another partner.
The present charter may undergo changes according to member feedback on its operational suitability.
2- Project Financial Management
For the avoidance of doubt, it should be borne in mind that each project's governance structure is autonomous and independent of the Medicen Paris Region cluster's governance structure. Interaction with the cluster will occur through the coordinator.
2.1 Structure
The project's governance structure will generally feature an executive level (represented by a Steering Committee and the Coordinator) and an operational level, constituted by one or more Task Forces. For certain projects, the partners may decide to convene a general assembly.
2.2 Coordinator
The Coordinator is the industrial leader identified as such in the proposal submitted to the cluster. He or she is responsible for project management and will interface with the cluster's Executive Board, funding bodies and project partners.
2.3 Steering Committee
The Steering Committee is formed by the Task Force moderators and the Coordinator. The Steering Committee may vary in its composition according to the scale of the project (for projects with less than 6 partners, the Steering Committee is constituted by just one representative of each partner). The Steering Committee has a decision-making role within the bounds of the contract (budget and initial plan) and on the understanding that no additional responsibilities or costs may be imposed on a partner without its consent. The Steering Committee's scope of action includes:
- the project's orientation or reorientation if proposed by the Task Forces
- the preparation of decisions (to be submitted to the partners if the said decisions imply amendment of the contract)
- coordination of Task Force activities
- the coordination of research exploitation activities (publications, protection, commercial development and exploitation)
- validation of the information produced by the Task Forces prior to submission to the funding authorities via the Coordinator
- suggestion of solutions in the event of dysfunction or breach, including the issuance of formal notifications and warnings to the party in breach.
2.4 Task Forces
The Task Forces are constituted as necessary and according to each project's organizational structure (in terms of project tasks) and the size of the consortium. Each Task Force is formed by (scientific) representatives of the partners participating in the task. The Task Forces serve as forums for dialogue and exchange (of information, results, equipment and materials, etc.) and task monitoring (validation of the results obtained, revision of task work packages, etc.).
The Task Force's role is to:
- guarantee correct task operation
- alert the Steering Committee (via the Coordinator) in the event of delays in performance or technical problems
- suggest any necessary project adjustments to the Steering Committee
- examine, validate or make recommendations concerning planned publications and the protection of project results
- implement decisions/recommendations made by the Steering Committee
2.5 Decision-making rules
It is recommended that decisions be made unanimously in a spirit of collaborative research and mutual consideration.
3- Intellectual property
3.1 Pre-existing know-how, management of contributions, resource sharing
Project partners are advised to define their respective main contributions at the start of the project. This should include all types of contributions (intellectual contributions, know-how, patents, licenses, industrial capacity, technical facilities, equipment and materials, tools, finance, etc.).
It is also advisable to track the exchange or transfer of materials within the consortium (using a materials transfer agreement (MTA), for example). In order to facilitate these exchanges, a standard MTA can be developed by the consortium. The partners can also use their own MTAs as long as the provisions of the latter do not conflict with the intellectual property provisions of the consortium agreement established by the project partners.
Each partner's pre-existing know-how shall remain the exclusive property of the said partner.
With the exception of particular circumstances (third party obligations), each partner shall make its pre-existing know-how (which will have already been identified in an inclusive list) available on a cost-free basis for the needs of the project.
Any subsequent use (after the end of the project) of pre-existing know-how shall be subject to a separate agreement between the partners in question. The said agreement shall define the terms and conditions of use and/or commercial exploitation.
3.2 Results/patents
Patent filing and intellectual property protection (IPP) will be considered as a priority in all projects. Accordingly, IPP will be considered as a deliverable. The consortium must ensure that adequate resources are assigned to this priority.
3.2.1. Ownership
The partners shall be owners or joint-owners of the results and the corresponding intellectual property rights (IPR) in proportion to their inventive contributions (as understood by IP law) and their financial contributions.
In the event where the project aims to create a new legal entity to which ownership of all results will be granted, it is advisable to plan reassignment of the rights to their initial owners (grant back) if the exploitation of the said results is abandoned or ineffective.
3.2.2 Protection
Decisions concerning protection of inventions made within the project shall be taken by the owners of the said inventions, following advice from the Coordinator/Steering Committee. The applicants undertake to take account of the Steering Committee's opinion and, if applicable, that of the designated exploiting parties.
In the case of joint IP, it is advisable to establish rules for joint ownership which notably grants one of the joint owners a management mandate and defines exploitation rules, if applicable.
Patent costs shall be shared by the joint owners in proportion to their ownership share, on the understanding that in the event of exploitation, the exploiting party shall bear all said costs. Exclusive or non-exclusive licenses to joint IP will be signed by all the joint owners, in all territories.
3.2.3 Publication
Draft publications shall be submitted for consideration to all partners (via the Coordinator). The Steering Committee shall be able to set up a review committee (with a reasonable deadline for giving its decision - generally 30 days) in order to check that the planned publication does not contain any confidential information and/or project results capable of IP protection. It is important that any such publication review procedure must guarantee maintenance of the publication's scientific value.
The names of the authors listed on any such publication shall be jointly decided by the project partners.
3.2.4 Use and commercial exploitation of the results
It is recommended that:
- the grant of exclusive exploitation rights be combined with a performance clause.
- access to non-patented results be granted on an easy-access, cost-free basis to all project partners for the purposes of their own in-house research, subject to the legitimate interests (and notably the commercial interests) of the partner(s) owning the said results.
- In the event of exploitation of the result (whether patented or not), reasonable financial compensation must be made to the joint owner or owners not able to exploit the said results (public sector institutions, national institutes of research, the Paris Public Hospitals Group, cancer centers and universities & other higher education establishments, etc.)
|
