IPR and CDE

CDE Defence Research Event 12 May 2011

Defence Intellectual Property Rights, MOD Crown Copyright 2011

DSTL/PUB55950

Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

What are Intellectual Property Rights?

Legally enforceable rights through the possession of Patents Copyright Design rights Trade marks Database rights But also Trade secrets/know-how Generally the protection provided is territorial in scope
Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

What forms of IP do you come across in defence research?

Processes and formulations Methods, services and demonstrations Prototypes Reports Internal records Designs Inventions Databases Software Images Films

These may be owned by Government (e.g. Dstl), Contractors or Third Parties. These may be the direct result of research, or a valuable by-product (such as inventions).
Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

Defence Research Contracts who owns the IPR in the Results?

MOD policy is normally to leave ownership with industry/academia (the contractor) Because
The contractor is normally best placed to exploit those results The contractor may have (and own the rights in) pre-existing technology forming the basis for the contract

But there are some exceptions, where MOD may need to take ownership of the results
MOD uses standard contract condition DEFCON 703 (IPR Vesting in the Authority) for this purpose
Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

CONTRACTOR-OWNERSHIP IP CONDITION DEFCON 705

INTELLECTUAL PROPERTY RIGHTS - RESEARCH AND TECHNOLOGY

The standard IPR condition for all fully-funded MoD research contracts, including those placed by the CDE. Establishes
contractor ownership of IPR in the results grant of licence right to MOD and other HMG Departments emphasises contractors responsibility to exploit the results

An omnibus IPR condition. ..but primarily, addresses the Governments licence rights in Contract Technical Information Deliverables (reports etc)

Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

DEFCON 705 Full Rights Version

Contractor must provide a coherent Full Rights Version of technical information deliverables, incorporating the results of the Contract (Foreground Technical Information). MoD/HMG is granted wide free user rights in this Version, e.g.
right to disclose/use for competitive tendering purposes right of disclosure/use under international arrangements, such as Memoranda of Understanding, with governments of other nations.

Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

DEFCON 705 Limited Rights Version

The Contractor may be asked to provide a more comprehensive Limited Rights Version where he wishes to deliver proprietary background information MOD is granted more restricted free user rights in this Version limited to internal use/disclosure, plus disclosure to/use by named technical support contractors. Both the Limited and Full Rights Versions may contain the same technical information but the Full Rights Version must exclude the Contractors information of a proprietary nature.
Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

DEFCON 705 - OTHER PROVISIONS

Technical assistance is to be provided by the Contractor on request to assist MOD in its licensed use of the results. The Contractor is obliged to keep records, and if asked provide for additional access to Foreground Technical Information. MOD may publish a contract summary, also an abstract of the results after consultation with the Contractor. The Contractor may publish its results, after seeking MoDs consent through a 45 day silence procedure. MoD is granted free use of patents and registered design obtained on inventions and designs made under the Contract. MoD is to pay for any use it may wish to make of the Contractors background patents and registered designs. The Contractor is encouraged to exploit its results, and must disclose plans for doing so on request
no commercial exploitation levy is payable MOD may assist in granting licenses in its own IPR necessary to help the Contractor exploit its results but the Contractor must pay for use of this IPR Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

IP and Pull-through Mechanisms for Defence

1. Follow-on research contractor through PV funding or by the same/another MOD customer with the same contractor
No IPR implications, contractor continues to develop its research

2. Selection though programme competition

No IPR implications, except by setting the bar Research results are developed and subsumed into the programme

3. Directed sub-contracting/ prime contracting

minimal IP implications Co-ordination needed between technology and programme IPR

4. Exercise of MoD DEFCON 705 rights to compete

Significant IP implications MoD assumes the risk of this licensed-through IP Potentially some IP restrictions on programme exploitation

5. Technology licensing into a programme supply chain

Major IP implications Licence determines the licensees user rights (could be MOD or another MOD contractor
Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

Technology Pull-through Licensing Example

Security of supply licence for TDP1 to manufacture

Technology Owner
Licence for TDP1 to manufacture Independent Technology Assessor

MOD

Licence for TDP2 to assess technology

Manufacturer
Technical information exchange Contract for integration

DSTL MOD

Directed sub-contract for integration, design, development & supply

Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

Defence Research Priorities for CDE 2011-12 Platform 12 May 2011 Integrator UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

Contract/Licence

IPR, the CDE and SMEs

Much innovation is at SME level, according to recent European studies Under CDE our contracting route is well established and (hopefully) understood. SMEs will need to engage with larger companies in many cases, if the results of their CDE work is to be drawn into new/upgraded defence equipment SMEs need to balance to risk disclosing their valuable IPR against potential loss of business, especially when dealing with larger companies Protecting SMEs from larger companies isnt something MOD can do for them although we can impose requirements on our prime contractors We are aware that the acquisition of SME by larger companies can sometimes kill SME innovation by imposing ROI Constraints etc. SMEs can nevertheless take some basic low cost steps to protect their interests such using simple confidentiality agreements, keeping agreed records of disclosures. Some expenditure on lawyers may be inevitable! Consider protecting SME innovation with patent applications before making any disclosure relatively low cost in the first year Consider licensing the replication/manufacture of SME innovation to others in return for royalties/licence fees especially where manufacture is beyond the realistic capability of the SME concerned.
Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011

QUESTIONS?

Defence Research Priorities for CDE 2011-12 12 May 2011 UNCLASSIFIED / FOR PUBLIC RELEASE Crown Copyright (c) 2011