ALONG THE PATH OF INNOVATION to market success Guide to Knowledge Transfer at the University of Ljubljana Knowledge Transfer Office University of Ljubljana ALONG THE PATH OF INNOVATION to market success Guide to Knowledge Transfer at the University of Ljubljana Knowledge Transfer Office University of Ljubljana Guide to Knowledge Transfer at the University of Ljubljana ALONG THE PATH OF INNOVATION TO MARKET SUCCESS Published by: University of Ljubljana Press, Kongresni trg 12, 1000 Ljubljana, Slovenia For the publisher: Igor Papič, The Rector of the University of Ljubljana Edited by: Knowledge Transfer Office, University of Ljubljana Written by: Urša Jerše, Marijan Leban, Nina Smerdu, Miha Rajh, Teja Stamać Foreword by: Prof Tanja Dmitrović, PhD Designed by: Zavod Lupa design Photographs by: Shutterstock, Pixabay Translated and proofread by: Amidas d. o. o. Printed by: Kubelj d. o. o. Print run: 500 copies First Edition, Ljubljana, April 2021 Publication is free of charge. First e-edition. Publication is available free of charge at: https://ppz.uni-lj.si/en/guide DOI: 10.51746/9789616410724 Kataložna zapisa o publikaciji (CIP) pripravili v Narodni in univerzitetni knjižnici v Ljubljani Tiskana knjiga/Printed book COBISS.SI-ID=57292803 ISBN 978-961-6410-73-1 E-knjiga/E-book COBISS.SI-ID=57191939 ISBN 978-961-6410-72-4 (PDF) 4 Table of contents 7 • Foreword C T 9 • Glossary of terms 11 • About the Knowledge Transfer Office ONTENTS ABLE OF 13 • What is knowledge transfer? 17 • ABC of intellectual property Types of intellectual property rights 18 • • • • • • • • • • • • • • • • • • • • 27 • Hand in hand with industry R&D agreements 28 • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • European projects 38 • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • Students’ final theses 41 • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • Protecting confidential information and materials 43 • • • • • • • What do I need to do … … when working with a business partner? 45 • • • • • • • • • • • • • • 47 • From idea to market 10 steps to commercialisation 47 • • • • • • • • • • • • • • • • • • • • • • • • • Everything starts with an idea 50 • • • • • • • • • • • • • • • • • • • • • • • • • The claim of a service invention 51 • • • • • • • • • • • • • • • • • • • • • • • • Legal protection of inventions 56 • • • • • • • • • • • • • • • • • • • • • • • • • Marketing of UL’s knowledge 62 • • • • • • • • • • • • • • • • • • • • • • • • • • Paths of knowledge transfer 63 • • • • • • • • • • • • • • • • • • • • • • • • • • • Agreements on the transfer of intellectual property rights 65 • • • Distribution of innovation revenue 69 • • • • • • • • • • • • • • • • • • • • • What do I need to do … … when I invent something new at the University of Ljubljana? 70 • • • • • • • • • • • • • • • • • • • • • • • • • 73 • Spin-out companies Towards starting a company 75 • • • • • • • • • • • • • • • • • • • • • • • • • • Tips on starting a company 76 • • • • • • • • • • • • • • • • • • • • • • • • • • • Regulating relations between the University of Ljubljana and a spin-out company 88 • • • • • • • • • • • • • • • • • • • What do I need to do … … before starting a spin-out company? 92 • • • • • • • • • • • • • • • • • 95 • Examples of good practice 97 • Useful links 5 ORD FOREW 6 FOREWORD Foreword Glossary The transfer of the knowledge created by staff and students of terms is part of the University of Ljubljana’s mission, and is woven into every aspect of the way UL relates to and operates within the world around it. Knowledge transfer takes many different About the forms and is carried out in many different ways. It encompasses Knowledge everything from research and development cooperation with companies, the transfer of innovations and other knowledge to Transfer Office companies via licensing agreements and IP transfer agreements, to the establishment of new companies owned by University of Ljubljana staff or students with the aim of further developing What is knowledge and commercialisation. knowledge These activities require considerable expertise and effort, as transfer? well as time—time that researchers would often prefer to de-vote to research work and students to meeting their course requirements. Nevertheless, we are al aware of the fact that knowledge transfer success stories enhance the University ABC of Ljubljana’s reputation and that of the individuals involved, of intellectual expand the opportunity to forge connections with business property partners, increase business opportunities and the possibility of acquiring even better projects, lead to academic publications in reputable journals and, not least, secure funds that can provide resources for new research. But none of the above can compare Hand in hand to the feeling of seeing a product or service that has been de-with industry veloped with the help of our knowledge reach the market. The University of Ljubljana has committed itself to developing this field in its strategic documents to accelerate and simplify From idea the process. It is our wish that, in the years to come, the transfer to market of knowledge to industry gains a value equal to UL’s scientific excellence. The aim of this Guide is to gather in one place as much useful information as possible about the knowledge transfer at the Spin-out University of Ljubljana. We would like to increase awareness of companies the importance of knowledge transfer and of collaboration with industry. The Guide will equip researchers with the necessary specific knowledge for collaboration with industry, legal protection of intellectual property and marketing of knowledge. Examples of We would also like to encourage researchers to put their knowl-good practice edge into practice. Prof Tanja Dmitrović, PhD Vice-Rector for Knowledge Transfer Useful links 7 Y SAR OS TERMS GL OF 8 Foreword Glossary GLOSSARY of terms OF TERMS • University of Ljubljana means all member institutions (23 fac-About the ulties and three academies) and the staff at these institutions Knowledge and at the Rectorate (hereinafter also: UL). Transfer Office • Member institution means a UL faculty or academy. • KTO means the University of Ljubljana’s Knowledge Transfer Office. What is • (University) knowledge means all the research results/fore-knowledge ground and other work in whatever form (invention, newly transfer? acquired knowledge, software, etc.) produced within the context of employment at UL. • Marketing or commercialisation of knowledge means the transfer of knowledge to a third party (usually a company) for ABC further development and the creation of value on the market. of intellectual • Research results (‘foreground’) means the items, reports, property software, inventions, etc. that result from a specific piece of research. • Prior knowledge (‘background’) means any data, knowledge Hand in hand or information regardless of form or type. It also includes in-with industry tellectual property rights that exist before entering an agreement, contract or other form of cooperation. Background is a precondition for implementing a project and/or deploying the project results. From idea • Rules means the Rules on the Management of Industrial Prop-to market erty Rights at the University of Ljubljana, which came into force on 1 April 2016. • Spin-out company means a company set up by UL staff with the aim of further developing and commercially exploiting Spin-out knowledge produced within the context of employment companies at UL. Knowledge is transferred to a new company, either through the granting of a licence or the assignment of intellectual property rights. A spin-out company is created be- cause the further development of a product or service is not Examples of an activity undertaken by the member institution in question. good practice • Start-up company is a newly established company with an innovative idea for a product or service and great growth potential. Useful links 9 WLEDGE THE KNO ABOUT TRANSFER OFFICE 10 Foreword About the Knowledge Glossary of terms Transfer Office ABOUT THE The Knowledge Transfer Office (KTO) has been active at the University KNOWLEDGE of Ljubljana since February 2018, when it replaced and upgraded the TRANSFER OFFICE University Research, Development and Intellectual Property Office. In addition to formal procedures of claiming and protecting service inventions, it provides substantive support to researchers to enable them to identify and legally protect their intellectual property. It What is strives to market UL knowledge, foster connections with enterprises knowledge and organisations, and set up spin-out companies, all with the aim of transfer? further developing and commercialising knowledge created at UL. The KTO’s main objective is to ease the burden for researchers in ABC the knowledge transfer process and to thereby promote activities of intellectual in the following areas: property • Collaboration with industry As well as creating opportunities to forge connections with business partners, the KTO will help you to prepare and review various types of agreement (mainly those in which an agreement Hand in hand on the granting of intellectual property rights arising from the with industry collaboration is the key component). • Legal protection of inventions and the commercialisation of knowledge The KTO manages the procedure, which is conducted in accord-From idea ance with the Rules on the Management of Industrial Property to market Rights at the University of LjubljanaB. It also provides substantive support to the process of reviewing the state of the art, evaluating the market potential of your knowledge and finding the right partnership. It is responsible for protecting intellectual property, Spin-out seeking out potential partners to help you develop your knowl-companies edge further, and negotiating and concluding licensing agreements and agreements on the transfer of intellectual property rights. • Starting a spin-out company Examples of The KTO will help you evaluate your business idea and assist you good practice through the process of setting up a spin-out company, which includes acquiring UL consent and concluding licensing agreements if UL knowledge is used. Useful links 11 WLEDGE T IS KNO WHA TRANSFER? 12 Foreword What is knowledge Glossary of terms transfer? About the Knowledge Transfer Office The University of Ljubljana transfers the knowledge it has, and the knowledge it acquires through its own research, in a variety of ways, thereby having an impact on the wid- WHAT IS er social environment. In the narrower sense, the transfer KNOWLEDGE of knowledge/technology means the process of granting TRANSFER? access to UL knowledge to third parties for the further development of knowledge into products and services for subsequent launch onto the market. This term is therefore most often used in connection with the establishment of ABC of intellectual spin-out companies and the granting of licences or the property transfer of intellectual property rights. Although these two areas are important, knowledge transfer also includes many wider activities, such as the employment of UL graduates and those who have com- Hand in hand pleted Master’s degrees and doctorates at UL, research with industry publications and events that foster networking between researchers and industry stakeholders, and project-based collaboration with business partners and other stakehold- From idea ers. to market Some forms of knowledge transfer involve more tangible and formal procedures, while others take place every day without anyone being aware of them. To illustrate this, the interconnections between al forms of knowledge transfer Spin-out are shown in the flowchart on the next page. companies When collaborating with industry, knowledge transfer occurs as individuals transfer their specific knowledge to the business partner when they give opinions, carry out Examples of research, organise educational events and so on. It is im- good practice portant to have a signed cooperation agreement, as set out in detail in this Guide, before this process takes place. Useful links 13 Foreword RESEARCH RESULTS Glossary of terms About the Knowledge Notice of service Transfer Office invention or other ‘Intangible’ creation knowledge WHAT IS KNOWLEDGE TRANSFER? • Scientific publications Legal protection • Collaboration with industry ABC of creation: • of intellectual • Spin-out companies Patent, industrial • Transfer of staff property design, trademark • to companies Copyright • • Networking Trade secret and conferences • Teaching Hand in hand with industry Innovation From idea on the market to market Spin-out companies BENEFITS • Social • Financial • Cultural Examples of good practice Useful links 14 As one of the most commonly used knowledge transfer mechanisms, the licensing or transfer of intellectual property rights means the right to use specific knowledge Foreword protected as intellectual property. As a method of knowledge transfer, the establishment of new companies is an appropriate way of proceeding in Glossary cases where an innovation has market or sales potential, of terms and when there is an individual or group of individuals with particular drive and the knowledge required to fur- ther develop the innovation themselves and bring it to market. About the Knowledge Intellectual property rights are the common denominator Transfer Office in all these modalities of knowledge transfer. They safe- guard university knowledge against unauthorised use by third parties, and enable us to maintain a competitive ad- vantage on the market. Identifying knowledge with mar- WHAT IS ket potential and the timely legal protection of intellectual KNOWLEDGE property rights are therefore vital to the success of the TRANSFER? knowledge transfer process. ABC of intellectual property Hand in hand with industry From idea to market Spin-out companies Examples of good practice Useful links 15 AL CTU PATENT • 20 INTELLE TY INDUSTRIAL DESIGN • 22 TRADEMARK • 22 COPYRIGHT AND RELATED RIGHTS • 23 KNOW-HOW AND TRADE SECRETS • 25 OPER ABC OF PR 16 Foreword ABC of intellectual Glossary of terms property About the Knowledge Intellectual property derives from the results of human creativ-Transfer Office ity in cases where those results can be protected in the form of intellectual property rights. Intellectual property rights are acquired, owned, managed and protected under a special area of law known as intellectual property law. This is divided What is into two sub-areas: industrial property and copyright.1 knowledge Industrial property covers the following rights: patents, trade-transfer? marks, designs, geographical indications, the topography of integrated circuits, and plant varieties. These rights can be obtained by registering with the competent national (or inter-ABC national) office. In Slovenia, the Slovenian Intellectual Property OF INTELLECTUAL Office, which is a body affiliated to the Ministry of Economic PROPERTY Development and Technology, is responsible for granting patents and registering trademarks and industrial designs. The procedure begins with an application from an interested party. It is important to note that no registration procedure is Hand in hand required to hold a copyright, as it is created when the copy-with industry right work itself is created. There are some other forms of intellectual property that are also the result of innovative thinking and creation, but are not (yet) expressed in a form appropriate for protection under any of the From idea above rights; these include trade secrets, know-how and rec-to market ipes. Although every path of research and creation starts with an idea, the idea itself does not constitute intellectual property. This means that it cannot be legally protected. In this section we will provide a basic overview of intellec-Spin-out tual property rights. The KTO is available to provide more companies detailed information, although there is a lot of informa- tion already on the websites of the Slovenian Intellectual Property OfficeB, and of various international organisations (WIPO Examples of B, EPOB, EUIPOB) and other relevant bodies (e. g. the IPR Helpdesk good practice B) active in the field. 1 Slovenia applies two overarching laws to regulate these sub-areas: the Industrial Property ActB and the Copyright and Related Rights ActB. Useful links 17 TYPES OF INTELLECTUAL PROPERTY RIGHTS Foreword INTELLECTUAL PROPERTY INDUSTRIAL PROPERTY Industrial property right What does it protect? Duration of right Glossary Up to 20 years of terms Invention - a product, procedure, Patent functionality or technology that solves (subject to the a certain technical problem. payment of fees to maintain the patent) Industrial 5 years (protection may be extended by a About the design Visual appearance of a product maximum of 25 years) Knowledge A sign or combination of signs 10 years Transfer Office Trademark comprising words, names, pictorial or (protection may be (goods or graphic elements, sound, colour, etc. extended without service mark) that serves to distinguish the goods or service of one company from that of its limitation, each competitors. time by 10 years) What is Indications that designate that goods originate from a particular knowledge Geographical In indications geographical area (in cases where the perpetuity transfer? characteristics of the goods depend heavily on their geographical origin). Plant variety right New plant varieties 20–25 years ABC OF INTELLECTUAL A device that performs an electronic PROPERTY Topography function and that, in its final or interim of integrated form, constitutes an indivisible whole 10–15 years circuits made from one or more fused layers featuring integrated circuit elements, at least one of which is active. Hand in hand with industry COPYRIGHT Examples of copyright What does it protect? Duration of right Works that are written, spoken The essence of or expressed through the media copyright is that From creation of of the fine arts, audio-visual it expresses the the copyrighted From idea production, art, as well as monopoly held work and for 70 to market databases, software, etc., and by the author on years after the that are the intellectual creation exploiting their author’s death of an individual own work. INFORMAL FORMS OF INTELLECTUAL PROPERTY Spin-out Type of informal intellectual property What does it protect? companies Know-how - hidden, intangible yet definite Recipes, procedures, technologies, and knowledge or technology, a other knowledge that may not be disclosed set of sources of information, to the public. experiences and skills Examples of A trade secret is any Information that must remain within an organisation good practice information resulting from is designated as a trade secret; this can include the activity of the entity procedures, technologies, recipes and other that created it which, upon knowledge that provides the company in question disclosure to the (general, with a competitive advantage on the market. In research or corporate) addition to an adequate system of designation, public, would cause keeping trade secrets requires appropriate handling Useful links pecuniary damage of such information by anyone with knowledge of it. 18 Moral rights always belong to the person who created the intellectual property. These rights cannot be transferred by means of an Foreword agreement, nor can they be designated in any other way as belonging to anyone other than the person who created the intellectual property. Moral rights are inalienable. Glossary Moral rights should be distinguished from material rights in relation of terms to intellectual or industrial property. Material rights can belong to the person who did not create the intellectual property themselves, but who is entitled to hold the rights associated with it under the law or agreement. For example, the rights to service inventions About the belong to the University of Ljubljana (the employer) by law, but Knowledge they may also belong to some other person if that person acqui-Transfer Office red material rights on the basis of an agreement on the transfer of rights. Material copyrights can be a right held by the author or by the organisation that funded the work subject to the copyright. What is While industrial property rights differ from each other in terms of knowledge what they protect, as the table on the left shows, they do have transfer? certain basic principles in common. You should be aware of these principles during procedures to acquire rights and when managing those rights after acquisition: a) Exclusivity of a right - The owner of the right acquires a legal ABC ‘monopoly’ on use of the item protected by the intellectual prop-OF INTELLECTUAL erty right. Intellectual property rights are ‘negative rights’, which PROPERTY means that their owners may bar any unauthorised person from making commercial use of the item. b) Territoriality - Intellectual property rights apply only in the terri-Hand in hand tory of the country in which or for which they were requested and with industry granted. c) Limitation of time of rights protection - With the exception of geographical indications and, under certain conditions, trademarks, intellectual property rights are limited in duration, meaning From idea that, after a certain amount of time, the items protected can be to market used freely by anyone. d) Pecuniary nature of intellectual property rights - All intellectual property rights have a pecuniary value that depends on the commercial exploitation of the item being protected and its success Spin-out on the market. companies Intellectual property rights are not mutually exclusive (i.e. simultaneous or double protection can be secured by means of industrial property rights and copyright) if the item or work being protected Examples of meets the conditions set down by the rules applying to protection good practice under a specific right. For example, if a certain product constitutes a ‘novelty’ and demonstrates individuality in terms of its appearance, the industrial design and the copyright of the item may be protected, along with the designated (and protected) trademark. Useful links 19 Patent Foreword »The patent system Glossary adds the fuel of interest of terms to the fire of genius« Abraham Lincoln About the Knowledge Transfer Office A patent is a right granted for an invention in any technical field. The invention must be new, inventive and industrially applicable.2 There are four basic requirements arising from this definition that must be in place in order to obtain a patent: What is knowledge a) the invention comes from the field of technology transfer? An invention is a solution to a technical problem, and may come in the form of a product or procedure. All area(s) of the technology are relevant. Discoveries, scientific theories, ABC mathematical models and other rules, plans, methods and OF INTELLECTUAL procedures for spiritual activities are not directly and as such PROPERTY regarded as inventions. This means that they cannot be protected by patent. For moral reasons, a patent may not be granted for: Hand in hand • an invention whose use is contrary to public order or morals; with industry • the invention of a surgical, diagnostic or therapeutic procedure used directly on living human or animal tissue. However, an invention relating to products, particularly substances and compounds, used in such procedures may From idea be regarded as an invention and can therefore be patent- to market ed. b) the invention is novel Spin-out An invention is considered to be new if it does not form part of companies the state of the art. The state of the art is defined as everything made available to the public by means of a written or oral description, by use or in any other way before the date the patent application is filed. The state of the art also comprises Examples of the content of other patent applications filed before the date good practice your or our patent application is filed. In other words, the first patent application filed is the first to be granted. 2 Useful links Article 10 of the Intellectual Property Act (ZIL-1). 20 c) the invention displays an inventive step An invention is deemed to be inventive if, to a specialist, it Foreword does not clearly derive from the state of the art. This means that another specialist in the field would not be able to recreate the invention in question. Glossary of terms d) the invention is industrially applicable An invention can be applied in industry if it can be produced or used in any commercial activity, including agriculture. About the Knowledge If all the conditions laid down by law are met, patent pro-Transfer Office tection lasts 20 years from the date the application is filed. The inventor is the person who created the invention, What is while the applicant or patent-holder is the person who knowledge is referred to in the patent application and who becomes transfer? the owner of the patent (rights) after the patent is granted. While the inventor may also be the patent applicant, this is not a requirement. This is particularly applicable to service ABC inventions, where an institution such as the University of OF INTELLECTUAL Ljubljana decides to acquire the rights to an invention, and PROPERTY in cases where ownership of the rights to the invention is otherwise stipulated by law or a specific agreement. A patent may be granted to a person other than the inventor if the former is entitled to enjoy the rights derived from the Hand in hand patent (e.g. to UL as the inventor’s employer or to another with industry person under the terms of a special agreement). There is also such a thing as a short-term patent3, under From idea which it is possible to protect an invention that is new, is to market industrially applicable and has arisen as a result of creative work, but which is not (and is not required to be) ‘inventive’. A short-term patent cannot be used to protect an invention for a procedure, a plant variety or an animal breed. Spin-out companies A more detailed explanation of the acquisition and grant- ing of patents is given in the Process of claiming a service invention section. Examples of good practice 3 Article 16 of the ZIL-1. Useful links 21 Industrial design Foreword An industrial design is the right under which a product’s appearance is protected. The industrial design must be new Glossary and demonstrate individuality.4 The law prescribes a regis-of terms tration procedure, with protection of the registered industrial design lasting five years. This period may be extended to a maximum of 25 years from the date the industrial design application was filed. About the In addition to enjoying national legal protection, a Com- Knowledge munity design may also be registered with the European Transfer Office Union Intellectual Property Office (EUIPO), which means that it is protected across the whole of the European Union, or protected across the countries that have signed the Hague Agreement, on the basis of a single international applica- What is tion (procedure conducted by the International Bureau of knowledge WIPO). transfer? Trademark ABC OF INTELLECTUAL A trademark protects a sign that distinguishes goods or ser-PROPERTY vices from other goods or services. Any sign or combination of signs capable of distinguishing the goods or services of one company from the goods or services of another company, and of being graphically illustrated, may be registered Hand in hand as a trademark.5 These are, in particular, words (including with industry personal names), characters, numbers, figurative elements, three-dimensional images, including the form of the product or its packaging, and combinations of colours, as well as any combination of such signs. From idea to market Trademark protection lasts for ten years, but may be extended without limitation for subsequent ten-year periods. Protection may be obtained abroad in a number of different ways: Spin-out • by using several national trademarks; companies • by using a European Union trademark; • by means of an international application made to the International Bureau of WIPO for the registration of a trade-Examples of mark in member countries of the Madrid Union (countries good practice that have signed and ratified the Madrid Protocol). 4 Article 33 of the ZIL-1. 5 Useful links Article 42 of the ZIL-1. 22 A trademark may be acquired upon successful registration with the competent office, although you should be aware Foreword that a trademark only really ‘comes to life’ on the market when it is identified and recognised by consumers. Glossary Copyright and related rights of terms Copyright applies to the work of an author, i.e. an individual intellectual creation from the fields of literature, science and art that is expressed in any way.6. Examples of copy-About the right works: Knowledge Transfer Office • written works (articles, literary works, software, etc.); • musical works (with and without lyrics); • theatre works; • What is choreographic works; knowledge • works in the fields of photography, the applied arts and transfer? industrial design; • fine art works (e.g. paintings, graphic art, sculpture). ABC As technology, culture and art develop, copyright works OF INTELLECTUAL can and will arise in different forms and different areas. We PROPERTY have therefore listed only the more or less typical examples of such works above. It is by no means a closed system. It is also important to realise that when assessing whether a particular work is copyright work or not, the quality or Hand in hand artistic value of that work is not important. with industry The original owner of the copyright is the author of the work, who can be an individual or group of individuals From idea (co-authors). The author may also transfer part of their right to market to another person. Copyright covers several entitlements: under the law, these are the author’s moral, material and other rights. While moral rights, e.g. the right to recognition of authorship, are strictly connected to the person of Spin-out the author, which means that they cannot be transferred to companies another person, an author’s material rights, such as rights of reproduction, public performance and modification, as well as other rights, may be transferred (e.g. by sale). Examples of So that we can enjoy watching or listening to copyright work good practice in our everyday lives, the law lays down certain restrictions 6 Article 5 of the Copyright and Related Rights Act (ZASP). Useful links 23 on copyright and therefore enables free use of the work. A general principle applies here: that copyright works are used Foreword to an extent that is customary and that does not contravene the interests of the author, which includes respect for their authorship. Glossary of terms Copyright is time-limited in Slovenia as well, specifically for the duration of the author’s life and for 70 years after their death. After this period has elapsed, the work becomes free to use. About the Knowledge Transfer Office No formalised procedure is set out for the creation and existence of copyright. In order to secure proof of their creation or for other reasons, a copyright owner may en- ter or save the original, or a specimen of their work, in the What is register of protected works maintained by the Copyright knowledge Agency of Slovenia transfer? B. Related rights derive from copyright and belong to certain groups of people (e.g. performers and producers such as ABC actors, singers, dancers, music producers, film producers, OF INTELLECTUAL radio and TV broadcasters, publishers and database pro- PROPERTY ducers). Copyright work produced within the context of employ-Hand in hand ment, which is when a worker creates it in the course of with industry discharging their work duties or under the employer’s in- structions, the material copyrights and other rights of the author to that work are deemed to have been exclusively transferred to the employer for a period of ten years from From idea completion of the work, unless otherwise determined by to market agreement. After this ten-year period comes to an end, the rights to the copyright work pass to the worker, although the employer may request a renewal of the exclusive trans- Spin-out fer of rights upon payment of a suitable fee. Time limits companies do not apply to software developed within the context of employment. In this case, copyright is transferred to the employer exclusively and without limitation.7 Examples of good practice 7 Useful links Article 112 of the ZASP. 24 Know-how and trade secrets Foreword Know-how, which is a fairly well-established term for a cer-Glossary tain type of specialist knowledge and experience, means of terms the sum of practical information produced by experience and experiment. This information is confidential (it is not generally known or easily accessible), essential (important and useful to the manufacture of products under contract) About the and specific (described in sufficiently comprehensible Knowledge terms as to make it possible to verify whether the criteria Transfer Office of confidentiality and ‘essentialness’ are met). Knowledge of this type contributes to the creation of other forms of intel ectual property, thereby increasing the company’s What is competitive advantage on the market. This is not solely knowledge due to the fact that it is secret or at least confidential. transfer? Technical improvements should be mentioned here. These are technical and other novelties, or improvements there-ABC to, that help achieve better performance, better product OF INTELLECTUAL or service quality, savings in terms of materials or energy, PROPERTY better utilisation of machinery and devices, better supervision of production, greater occupational safety, and so on. While it is not possible, generally speaking, to protect technical improvements by means of intellectual proper- Hand in hand ty rights, the University of Ljubljana does encourage the with industry creation and further development of all types of innovation that could lead to creations of greater complexity. Under the Rules, the person who creates a technical improvement may also be rewarded. From idea to market Al knowledge and/or technology that perhaps has not yet taken tangible form and may constitute (or at least con- tribute to) a competitive advantage over the existing and Spin-out known state of the art and, not least, lead to the creation companies of a new invention, a new product appearance, etc., must be protected against premature disclosure. It is important that you secure legal protection for your (potential) intellectual property, that you keep it confidential, and that Examples of you safeguard and handle it as a trade secret using the good practice appropriate designations until you submit the application for legal protection. Useful links 25 Y STR R&D AGREEMENTS • 28 EUROPEAN PROJECTS • 38 STUDENTS’ FINAL THESES • 41 PROTECTING CONFIDENTIAL INFORMATION AND MATERIALS • 43 HAND IN HAND WITH INDU WHAT DO I NEED TO DO … … WHEN WORKING WITH A BUSINESS PARTNER? • 45 26 Foreword Hand in hand with industry Glossary of terms About the In this section, we focus on collaboration with industry, which Knowledge is the most direct and effective way of transferring knowl-Transfer Office edge from academia to industry, and vice versa. In fact, the transfer of knowledge from industry to academia is extremely important, as it enables researchers to expand their knowl-What is edge, identify needs on the market and, on this basis, create knowledge more useful and relevant results in their own research. transfer? The University of Ljubljana encourages such collaboration and, via the KTO, strives to put the necessary support in place and pass on its knowledge and experience in formu- lating and managing projects of this kind. When concluding ABC agreements with industry, it is important to pay due regard of intellectual to the legal restrictions and interests to which UL is subject property as a public research institution whose core task is to provide the public service of education and research. One should also pay attention to the interests of companies, who are keen to use research results for market purposes and, to this HAND IN HAND WITH INDUSTRY end, acquire as many rights as possible to the results of a project. Sometimes we have to invest slightly more energy in finding a solution that is acceptable to both sides. While UL member institutions are independent when per- From idea forming market-based activities such as the collaboration to market outlined above, this collaboration often also involves the transfer of pre-existing or newly created knowledge owned by UL. It is therefore recommended that the KTO be involved in the transfer of this knowledge, and in negotiations and le-Spin-out gal issues, as it has the necessary knowledge and experience companies in this area. Examples of good practice Useful links 27 R&D AGREEMENTS Foreword Main principles applying to the conclusion of R&D agreements with industry Glossary a) Written agreement - Before any type of collaboration of terms with a business partner, a written agreement must be signed. Among other things, an agreement will deter- mine the owner of the intellectual property, in line with the contributions and financial investments made by the About the respective contracting parties. Knowledge b) Market prices - When appearing on the market, the Transfer Office University of Ljubljana adheres to legal provisions, good business customs and established international practice. When determining the price, it takes into account market values, is careful to avoid granting indirect state aid and What is does not distort competition. knowledge transfer? c) Research standard - When carrying out their research, UL staff adhere to the ethical rules and standards that apply to a specific field of research, including the European Code of Conduct for Research Integrity. ABC d) Guarantee - In principle, UL does not guarantee research of intellectual results, but merely undertakes to conduct research in property accordance with the provisions of the agreement. UL transfers the research results as they stand at the time of transfer, without guarantees as to technical feasibility, commercial applicability or compliance with industrial HAND IN HAND standards, unless a specific case dictates otherwise. WITH INDUSTRY e) Liability for damages - UL assumes no liability for loss of profits, but only for ordinary damage. The amount to which it is liable under the agreement is limited to the From idea value of the contract itself or a multiple thereof.8 UL or a to market member institution assumes no liability for damage that a contracting party or third person suffers as a result of the use, production or sale of products and services created on the basis of UL knowledge. Spin-out f) Confidentiality - UL protects the trade secrets of business companies partners, and handles all the documentation and material it receives from the business partner for research purposes with the highest possible degree of care. UL is not permitted to disclose that it is working with a business partner, Examples of or in what areas, without the partner’s explicit permission. good practice 8 It should be noted that the amount to which liability is limited does not exceed the insured amount for general liability (according to the 2021 policy, this is EUR 200,000 for persons and EUR 50,000 for things). Useful links 28 g) Invention disclosure - UL staff must notify the KTO of any invention created on the basis of an R&D agreement even Foreword if the agreement specifies that the intellectual property rights belong to the business partner. The KTO is in charge of claiming a service invention and securing that the rights to the invention are formally transferred to the business Glossary partner. of terms h) Right to publish - The results of UL research must be accessible to the public if the research was publicly funded. While we endeavour to publish the results when we conduct research in collaboration with a business part- About the ner, we also have to take into account the obligation to Knowledge protect the partner’s trade secrets. If necessary, we delay Transfer Office publication until the results can be properly protected by securing the intellectual property rights. i) Minimal transfer of intellectual property rights - UL What is only transfers to a company the knowledge created at knowledge the company’s explicit request and, if possible, only in transfer? the field or industrial sector relevant to the company. In other fields, it reserves the intellectual property rights and attempts to transfer them to practical use itself. It is recommended that UL reserves the right to use the trans-ABC ferred knowledge in case the business partner does not of intellectual commence use within a certain specified period of time property (‘anti-shelving clause’). j) Further research - UL may not restrict the field of research and, in the case of collaboration with business partners as well, secures the possibility of using the results of the HAND IN HAND research for basic research and education. In so doing, it WITH INDUSTRY adheres to the requirement to protect the business part- ner’s trade secrets. k) Prohibition on the transfer of background - When con-From idea cluding R&D agreements with business partners, member to market institutions may not transfer ownership of the rights con- nected to pre-existing knowledge or background to those business partners.9 A business partner may only be given the opportunity to use background under a R&D agree- Spin-out ment for the purpose of utilising the research results. As companies agreements of this kind also entail the use of intellectual property, and may affect the subsequent marketing of the intellectual property, it is recommended that the KTO be involved in negotiations, particularly if the background Examples of involves an invention or patent. good practice 9 Article 4(3) of the RulesB. Useful links 29 Key elements of R&D agreements Foreword In every R&D col aboration agreement, certain elements must be defined. These include: Glossary • the subject and aim of the research; of terms • a precise description of the project; • the deadline for completion of the work; • the amount of the payment and the payment schedule; About the • access to intellectual property rights and the rules ap-Knowledge plying to the granting of those rights; Transfer Office • the right to publish the results of the research; • protection of confidentiality; • liability and guarantees. What is knowledge transfer? Types of R&D agreement ABC of intellectual property Contract Research Consultancy Service research collaboration HAND IN HAND agreement agreement agreement agreement WITH INDUSTRY From idea to market Spin-out companies Short period • • Long-term cooperation Result precisely defined • • Result not known Low value for UL • • UL interest in publication High value for company • • High risk for company Examples of good practice Useful links 30 Consultancy agreements and service agreements Foreword a) Definition: Consultancy agreements and service agreements are agreements in which a UL member institution agrees to provide services connected with specific Glossary research equipment, expertise or knowledge (e.g. of terms routine analyses, tools, expert opinions, consultancy, workshops or training sessions) and the business part- ner agrees to pay for these services. b) Main features: About the • Service costs are covered in full by the business Knowledge partner, which also owns the results (in the form Transfer Office of reports, results of analyses and test results). The member institution may not publish these results or use them in any other way without the prior written What is agreement of the business partner. knowledge • Under normal circumstances, this type of collabora-transfer? tion is not expected to yield new knowledge. If new analytical methods are developed or existing ones improved, this knowledge belongs to the member institution. ABC • It is preferable to acquire the right to refer to the of intellectual business partner as a reference in order to increase property the reputation of UL and acquire new partnerships. HAND IN HAND WITH INDUSTRY Contract research agreements a) Definition: A contract research agreement is an agreement in which a member institution agrees to conduct research for a business partner on an issue relevant to From idea that partner, with the latter undertaking to pay for this to market service and therefore assuming all risk regarding its success. b) Main features: Spin-out • The results belong to the business partner in their en-companies tirety if it has provided all the funding for the research (for an example of how prices are set, see p. 34). • The partner has the right to legally protect the results of the research, and UL is obliged to provide techni-Examples of cal and substantive assistance. good practice • UL endeavours to secure the right to publish the results. A business partner will occasionally delay publication until the results have been legally pro- Useful links 31 tected (not more than six months), or review the publication in advance and request that certain Foreword parts be removed if publication could disclose a trade secret. If the business partner does not wish the results to be published, a higher price should be Glossary charged for the research. of terms • UL always reserves the right to further use of the results for in-house and basic research purposes. • Under agreements of this kind, background may not be transferred to the client. If the research is About the based on pre-existing knowledge or background, it Knowledge is recommended that such knowledge be defined Transfer Office in the agreement, together with the rights to use such knowledge. This is also important to ensure that no dispute arises regarding the ownership of background, and that the agreement does not What is prevent you from using background in your deal- knowledge ings with other clients. If background consists of an transfer? invention owned by the University of Ljubljana, the KTO must be informed before any rights concerning the invention are granted. ABC • UL should endeavour to acquire the right to refer to of intellectual the business partner as a reference in order to in- property crease its reputation and acquire new partnerships. HAND IN HAND If the agreement does not explicitly per- WITH INDUSTRY mit the business partner to be given as a reference, you must obtain the business partner’s consent to do so. In particular, you must be careful when referring to the From idea content of the research, as this could lead to to market the disclosure of a trade secret. Spin-out companies Examples of good practice Useful links 32 c) Setting of price Price is usually a matter of negotiation with the business part-Foreword ner, and always depends on the specific circumstances of the case. We will merely provide guidelines and frameworks below that should help researchers and specialist departments when setting prices. Glossary UL should always endeavour to receive adequate payment of terms for the services it provides. This is important not only because the member institution should receive adequate reward or compensation for its work, but also because it is part of UL’s About the obligation as a public research organisation financed predom-Knowledge inantly from public funds. When doing business of this type, Transfer Office UL must ensure that it charges market prices for its services, does not distort competition and does not indirectly distribute unlawful state aid. The European Commission has given more precise instructions What is in relation to this in the Community framework for state aid for knowledge research and development and innovationB (2014/C 198/01). transfer? The Commission has taken the view that commissioned re- search and research services do not constitute indirect state aid if the organisation charges a market price for its services.10 In such projects, business partners assume all of the risk re-ABC garding the success of the project, and are bound to pay full of intellectual price regardless of whether the research produces results. In property order to lessen the risk at least in part, it is recommended that agreement be reached on the following: • The division of the project into phases. The business partner HAND IN HAND pays for the phase upon completion, and decides whether WITH INDUSTRY to enter the next phase depending on the success of the previous phases. • The setting of the research price using a lower margin, with agreement also being reached on remuneration in the event From idea that the research results have features of an invention and to market the partner decides to file a patent or a patent has been granted (this approach is also recommended because it provides additional motivation to researchers to make the project a success). Spin-out companies • The setting of the research price using a lower margin, or even without a specified margin, if UL retains a non-exclusive right to use the research, or an exclusive right of use in certain industrial sectors or in certain territories. Of course, Examples of this is only the case if this is in UL’s interests from the point of good practice view of the further transfer of knowledge. 10 For more on this, see Section 2.2.1 of the Community framework for sta- te aid for research and development and innovationB (2014/C 198/01). Useful links 33 d) Example of price setting Foreword The following items are taken into account when calculating the final price (depending on the specificities of the case): Glossary Type of cost Explanation of terms The price of an ARRS (Slovenian Re- search Agency) research hour or the Labour costs full-time equivalent for the current year may be taken as the basis. The About the cost includes consumables and the Knowledge depreciation of equipment. Transfer Office They are charged when they involve Costs of material costs that are not included in the overheads (e.g. the purchase of spe- cific material). What is knowledge Software licence purchase costs, transfer? Other direct costs equipment leasing costs, travel ex- penses, etc. Fee for the exclusive transfer of intellec- ABC tual property of intellectual (if UL cedes all 10-30% of direct costs property intellectual property rights to a company in advance) Final amount HAND IN HAND (sum total of the Determined in EUR (excluding VAT). WITH INDUSTRY above items) It is recommended that advance pay- ment be requested, particularly for From idea Advance payment the purchase of specific material for to market research purposes or for the engage- ment of outside services. Spin-out companies Examples of good practice Useful links 34 Research collaboration agreement a) Definition: Under an agreement of this type, partners Foreword (two or more) with a common objective undertake to carry out a specific piece of research. To this end, partners pool pre-existing knowledge/background, staff and financial resources, and share the risk of suc- Glossary cess. of terms b) Main features: • Such projects are mostly, but not necessarily, financed from public funds (Horizon 2020, Horizon About the Europe, applied ARRS (Slovenian Research Agency) Knowledge projects, etc.). Transfer Office • It is important for the agreement to provide a clear description of the background and other inputs (financial, material, human resources) that the part- What is ners are bringing to the project. An appropriate knowledge system of access to background, the granting of transfer? ownership and access to newly created knowl- edge is determined on this basis. • The University of Ljubljana reserves the right to publish the results. A partner will occasionally de-ABC lay publication until the results have been legally of intellectual protected (not more than six months), or review property the publication in advance and request that certain parts be removed if publication could disclose a trade secret. • UL reserves the right to further use the results for HAND IN HAND WITH INDUSTRY in-house and basic research and education pur- poses regardless of how the intellectual property rights have been assigned. From idea to market As a researcher, you must always consider whether the project results have commercial value on the market before publishing them, Spin-out and whether it would be sensible or possible to companies secure the intellectual property rights before you make the findings public. It is frequently the case that an invention is Examples of unpatentable because it has been publicly di- good practice sclosed beforehand (as one of the conditions for successfully securing an invention by patent is the fact that it constitutes a novelty). Useful links 35 c) Granting of intellectual property rights These kinds of agreement can also lead to distortion of Foreword competition and the granting of unlawful indirect state aid to a business partner, which is why the Community framework for state aid for research and development and innovation (2014/C 198/01) must be adhered to11. Glossary of terms The business partner may become the full owner of intel- lectual property rights, or have the right to their exclusive use, if they pay the full costs of the research. If each party covers its own costs, the results of the re- About the search belong to the contracting party that created them. Knowledge The rights are held jointly if several partners contributed Transfer Office to the results. Intellectual property rights must be allocated between the individual partners so as to reflect their area of work, their contributions and their interests. UL may, under market conditions,12 transfer the intellectual What is property rights it holds to these results to the business knowledge partner, while the price can be reduced for any potential transfer? contribution by the business partner to the research. ABC The belief sometimes arises that research results can of intellectual belong entirely to the business partner, without the property appropriate compensation being paid, if UL’s work is financed or part-financed from public funds. The most typical examples of this are applied research projects (Slovenian Research Agency – ARRS), where this belief HAND IN HAND becomes even more firmly entrenched when a business WITH INDUSTRY partner makes a contribution to the project. We should point out here that the same applies to projects of this type as would apply had UL financed the research from its own funds. The general rule applies here as well: that From idea every partner holds the rights to the results it produces. to market If partners produce the results together, the contribu- tions, areas of work and interests of the partners in the project are taken into account when determining the shares of ownership. If a business partner wishes to Spin-out hold intellectual property rights to the results that par- companies tly or wholly belong to UL, they must purchase these rights at the market price, less the financial or in-kind contributions it has made to the creation of the results. Examples of good practice 11 For more on this, see Section 2.2.2 of the Community framework for sta- te aid for research and development and innovationB (2014/C 198/01). 12 For more on this, see Section 2.2.2 (point 29) of the Community fra- mework for state aid for research and development and innovationB (2014/C 198/01). Useful links 36 Practical negotiating tips Foreword a) Listening and understanding It is important that you converse openly with the business partner, listen to them and attempt to understand where their interests lie. Glossary b) Get to know who you are negotiating with of terms It is useful to get to know how the business partner operates, who its competitors on the market are, what its long- and short-term goals are, how it is organised, and so on. About the c) Your motive Knowledge You must know why you are seeking collaboration (revenue, Transfer Office academic or scientific publication, long-term partnership, etc.). d) Your contribution You must know what you are bringing to the project and to What is set this out clearly (background, reputable specialists, repu-knowledge tation, research equipment, etc.). transfer? e) Intellectual property The arrangements regarding access to and the granting of intellectual property rights must correspond to the areas of ABC work, contributions (financial, human and other resources) of intellectual and interests of the partners. property f) Working with the KTO To increase the chances of success in negotiations, close cooperation between the KTO and the researcher is recom- mended. The researcher knows the content of the project, HAND IN HAND while the KTO knows the law and has negotiating experience. WITH INDUSTRY Working closely with the KTO makes it easier to draw up a good agreement. The researcher must be familiar with the agreement, as they are responsible for its implementation. From idea g) Protecting confidentiality to market If the need arises in the course of negotiations for the disclosure of confidential information by the business partner or by UL staff, it is recommended that a confidentiality agreement be drawn up in advance. Spin-out companies The KTO is your partner in the design and review of R&D collaboration agreements with industry. It is recommen- Examples of ded that you contact us in the early stages of negotiation good practice so that we have as much information as possible on the project, and can protect your interests to the greatest possible extent. Useful links 37 EUROPEAN PROJECTS Foreword Consortium agreements signed as part of European pro- jects13 are by their nature research collaboration agree- ments to which the frameworks we have described apply. Glossary However, because of the frequency of European projects of terms and the fact that researchers have raised a large number of questions in the course of such collaboration, we have decided to describe in detail the entire process of man- aging intellectual property rights in these projects. About the Knowledge Transfer Office European projects place great emphasis on managing intellectual property rights as a tool that enables research results to be exploited. The purpose of these projects, like the obligation of partners within them, is to make sure What is that, at the end of a project, the results are protected knowledge by intellectual property rights when this is reasonable, transfer? justified and possible. A partner must also ensure that the results can be used in further research, for standardisa-tion activities, or for the development of new products, services or knowledge, or that they can be put to prac- ABC tical use through the granting of a licence, the transfer of of intellectual intellectual property rights or the establishment of spin- property out companies. The successful application and implementation of a HAND IN HAND project, and the practical application of the project re- WITH INDUSTRY sults, depend on careful planning and a definition of the intellectual property policy and strategy during the early preparatory stages. The various stages through which a project passes are shown on the next page through the From idea prism of the management of intellectual property rights. to market Spin-out companies Examples of good practice 13 At the time of writing this Guide, the Horizon 2020 EU research and innovation programme was in force, therefore all the information is linked to that specific programme. Useful links 38 PROJECT STAGES THROUGH THE PRISM OF THE MANAGEMENT OF INTELLECTUAL PROPERTY RIGHTS Foreword Evaluating You should check whether the idea is new, and wheth- an idea er the research results can be protected and marketed. If you have uncovered an innovative idea in the course Collecting of a project, it is recommended that you sign an agree- Glossary partners and ment or memorandum of understanding with your of terms holding initial future partners at the project application stage that discussions commits them to protecting trade secrets and taking part in the project if the application is successful. During the application stage, you should think about About the Writing the results you expect from the project, and how you Knowledge a project will protect, apply and disseminate them. A clear and Transfer Office proposal concrete plan for this is also important when the quali- ty of the application is being judged. The basic relations between partners are regulated by means of a Grant AgreementB, which provides, among other things that: What is knowledge • The results are owned by the beneficiary that generated them (point 26.1). transfer? • If the results are generated by several beneficiaries together, ownership of these results is shared between them (joint ownership, point 26.2). • The beneficiary must ensure that the rights of third ABC parties (subcontractors) are transferred to them of intellectual (point 26.3.). In relation to this, you must be careful property to ensure that you sign an agreement with any Regulating persons not employed at UL, such as students and relations visiting professors, that transfer the rights to UL. between The rights of each partner are defined in more detail HAND IN HAND partners with in the consortium agreement. The DESCAB template WITH INDUSTRY respect to assists you when it comes to most projects. intellectual A consortium agreement defines in detail the pre-exist- property rights ing knowledge/background that each partner brings to the project,14 as well as the system of access to this From idea knowledge, the granting of ownership, and access to the to market project results. The table below describes the usual system of access to background and results: Background Results Spin-out Project implementation Royalty-free Royalty-free companies Under Under Exploitation of own fair and fair and project results reasonable reasonable conditions conditions Examples of good practice 14 Define as background the knowledge created prior to the project on which you are embarking and important for implementation of the project. Useful links 39 After the project is completed, it is important to Foreword identify those results that are suitable for protection and further exploitation. If you believe the results to be suitable for legal protection and marketing, you should notify the KTO. The assistance that the KTO can give you to protect and market the results is set Glossary out in the next section. of terms Completion of the project It is important that you do not make the results pub- lic until you have filed a patent application or taken other appropriate steps, or until you are sure that they are not suitable for protection. About the In the case of joint ownership of the results, the KTO Knowledge takes care of the process of signing the joint invention Transfer Office agreement. You can find more details on this in the section on acquiring a service invention. What is knowledge transfer? ABC of intellectual property HAND IN HAND WITH INDUSTRY From idea to market Spin-out companies Examples of good practice Useful links 40 STUDENTS’ FINAL THESES Foreword Collaboration between University of Ljubljana and business partners frequently takes the form of collaboration based Glossary on students’ final theses. One particular feature of this of terms collaboration is that it involves a student, who has certain rights and obligations. We provide more details on these rights below, and set out how relations can be arranged so as to ensure proper compliance with the purpose of the About the collaboration. For the student, this is primarily the produc-Knowledge tion of a written final thesis and the completion of studies Transfer Office in accordance with UL rules. This information may also help you with any other activities that are part of your study obligations, such as seminar papers and competitions. Prior to any such collaboration, it is recommended that a What is tripartite agreement be signed by UL, the business partner knowledge and the student. The KTO can help with this. Among other transfer? things, tripartite agreements are based on the following requirements: • The material and moral rights to the final thesis are ABC held by the student of intellectual The obligation of undergraduate, Master’s and doctoral property students to produce a final thesis is set out in the University of Ljubljana Statutes.15 By producing a final written thesis, the student creates a copyright work for which they also acquire the moral and material copyright and HAND IN HAND other rights by law.16 WITH INDUSTRY • The final thesis must be published in its entirety The business partner is informed in advance that a certain student has, in a specific case, produced a fi- From idea nal thesis that will be made available in printed form in to market the UL member institution’s library (and in the Nation- al and University Library (NUK) in the case of doctoral and academic Master’s theses), as well as in electronic form in the UL Repository. They are also informed that Spin-out permission to make the thesis temporarily inaccessible companies (see below) is only exceptionally granted for a limited 15 Articles 132-135 of the Statutes of the University of Ljubljana. 16 Examples of In accordance with the general rule under Article 10 of the Copyright and Related Rights Act (ZASP), the author is the natural person (individual) good practice who created the work. However, we should point out that, under Article 133 of the UL Statutes, the student transfers to UL the right to reproduce the work and make it available to the public via the UL Repository after submitting the final thesis. Useful links 41 period of time, and that defences of written final theses at UL are public. It is therefore not recommended that Foreword a final thesis contain any information or data that could constitute a trade secret (otherwise the student could be liable for damages, or even criminally liable, for dis- Glossary closing trade secrets). of terms • Ownership of the research results described in the final thesis and the person with the right to manage those rights The final thesis must be separated from the research About the results described in the thesis, which may be subject to Knowledge the protection of a variety of intellectual property rights Transfer Office that could belong to someone else fully or in part. For example, a final thesis may include an invention that the student, business partner (e.g. an idea, data from prac- tical application), mentor or other member of UL staff What is helped to create. Moreover, any of these parties may knowledge have contributed financially (in the form of material) or transfer? made their equipment available. The parties involved as- sess all these contributions and agree on how ownership of the invention is to be shared. The parties agree on the ABC right to manage and use the invention by means of a of intellectual special agreement. If the research results are not legally property protected and are made public, the business partner, as well as third parties, have the right to use these results without any restrictions. • Obligation to legally protect rights before publication HAND IN HAND of the final thesis (defence) WITH INDUSTRY It is important to ensure that the invention is legally protected prior to defence of the final thesis. In such cases, it is also recommended that you inform the KTO From idea beforehand so that it has enough time to secure legal to market protection of the invention. If legal protection cannot be provided, one may, in exceptional circumstances, request that the final thesis be made temporarily unavail- able, in accordance with the internal rules (see Rules on Spin-out Detecting the Similarity of Content and Making Content companies Temporarily Unavailable). Examples of good practice Useful links 42 PROTECTING CONFIDENTIAL INFORMATION AND MATERIALS Foreword Non-disclosure agreements Glossary A non-disclosure agreement (NDA) enables us to share our of terms unprotected knowledge/ideas with others in order to assess their interest in working with us. An NDA prohibits the other party from using our knowledge/idea without our consent, or from disclosing it to unauthorised persons. It is recom-About the mended that a non-disclosure agreement be signed before Knowledge any information is shared with a third party, the disclosure Transfer Office of which would cause economic damage to University of Ljubljana and its member institutions or business partners, or which could endanger the protection of intellectual property rights at a later date. It is important not to use this agree-What is ment to assign intellectual property rights relating to the knowledge disclosed information. transfer? Practical tips for information protection ABC a) Information protection of intellectual You must take the appropriate steps to protect confiden- property tial information and make it inaccessible to unauthorised persons. Do not leave confidential information on office desks, and do not remove it from the office unless this is HAND IN HAND a necessary part of the work process. Protect sensitive WITH INDUSTRY electronic documents with a password. b) Non-disclosure of information Make sure that an NDA (Non-disclosure Agreement) is signed before any meeting at which confidential information could From idea be disclosed. If this is not done before the meeting, try to to market ensure that it is done afterwards and that the NDA is given retroactive effect (i.e. from the time of the meeting on). c) Minutes Spin-out Minutes should be taken at the meeting that set out pre- companies cisely which confidential information was provided to the other party. d) Marking documents as ‘CONFIDENTIAL’ If possible, confidential documents should be marked as Examples of ‘CONFIDENTIAL’ or ‘TRADE SECRET’. good practice e) ‘Need to know’ Never disclose more information than is strictly necessary. For example, instead of disclosing all the details of your Useful links 43 invention or know-how, focus on a description of the benefits that it could bring to your business partner. If the Foreword business partner wishes to know more, ask them to sign an NDA before continuing the discussions. In the case of a group of people working together, confidential informa- Glossary tion should also be kept to the narrowest circle of people of terms necessary for implementation of the research or project. About the Material transfer agreements Knowledge A material transfer agreement (MTA) enables us to securely Transfer Office exchange material, such as cells, antibodies and chemicals, in order to carry out research, estimate the interest in collaboration, test material and create new intellectual property. An MTA allows us to prevent the use of material for other purpos-What is es without our permission, or the disclosure of material and knowledge of confidential information on the properties of such material transfer? to unauthorised persons or the public. The agreement must be signed before material or other creations developed by UL and owned by it at the time the agreement is signed are sent to the third party. Agreements of this kind are usually ABC signed between research organisations, and occasionally of intellectual with a company charged, during the knowledge transfer pro- property cess, with assessing material already secured by intellectual property rights. UL should not transfer intellectual property rights under this agreement, but merely permit use of the results for research purposes or for assessing the possibility HAND IN HAND WITH INDUSTRY of collaboration or the transfer of intellectual property rights to the company. UL assumes no liability for damage that could arise from the use of material transferred. From idea to market Tips on handling business partners’ material a) As any such material could constitute a trade secret, it is imperative that it be handled appropriately. Spin-out b) The recipient of the material must clearly indicate, in the companies appropriate place, that the material is a trade secret, and state to whom it belongs. c) The recipient may not conduct research and analyses on Examples of the material without explicit permission, or may only do so good practice to the extent to which they have authorisation. d) Without the business partner’s explicit permission, staff may not disclose any information relating to the material to third parties or in publications. Useful links 44 What do I need to do … Foreword … when working with a business partner? Glossary of terms X BEFORE COMMENCING COLLABORATION: X I have signed a written collaboration agreement with the business partner. About the X If confidential information was exchanged prior to the signing of the Knowledge agreement, I signed an NDA during negotiations. Transfer Office X I contacted the KTO for help in conducting negotiations and drafting a collaboration agreement. X The collaboration agreement sets out the purpose of the collaboration, and defines both sides’ rights and obligations clearly. What is X The price specified in the agreement reflects the market value of my knowledge service. transfer? X I have detailed my background in the agreement. X If possible, UL reserves the right to publish the results. ABC X DURING COLLABORATION: of intellectual XI ensure the agreement is implemented in line with the agreed deadlines (reports, issuing of invoices, etc.). property XI inform the partner immediately if there are any unforeseen complications or if I am unable to carry out the project. XI protect the partner’s trade secrets and only share them with the colleagues HAND IN HAND that need such information for the purposes of the project. I frequently draw WITH INDUSTRY my colleagues’ attention to the need to protect trade secrets. XI have regulated relations with external colleagues and students taking part in my project, thereby ensuring that any intellectual property rights are transferred to UL. From idea to market X AFTER COMPLETION OF COLLABORATION: X I return confidential documents and material to the partner. X I protect the partner’s trade secrets in line with the agreement, even after collaboration has come to an end. Spin-out companies X I state the partner as a reference only if they have agreed in writing that I may do so. X Before the project results are published, I consider whether they have commercial value on the market and, if they do, I inform the KTO, which sees to the legal protection of intellectual property, before the results are Examples of published. I inform the partner of my intention to publish, as set out in the good practice agreement. X I notify the KTO of an invention created on the basis of the collaboration, even if the invention belongs to the partner. Useful links 45 10 STEPS TO COMMERCIALISATION • 47 EVERYTHING STARTS WITH AN IDEA • 50 THE CLAIM OF A SERVICE INVENTION • 51 LEGAL PROTECTION OF INVENTIONS • 56 MARKETING OF UL’S KNOWLEDGE • 62 OM IDEA PATHS OF KNOWLEDGE TRANSFER • 63 AGREEMENTS ON THE TRANSFER OF INTELLECTUAL PROPERTY RIGHTS • 65 DISTRIBUTION OF INNOVATION REVENUE • 69 FR TO MARKET WHAT DO I NEED TO DO … … WHEN I INVENT SOMETHING NEW AT THE UNIVERSITY OF LJUBLJANA? • 70 46 Foreword From idea to market Glossary of terms About the Knowledge 10 STEPS TO COMMERCIALISATION Transfer Office What is 1 Idea knowledge transfer? 2 Service invention 10 Future R&D disclosure ABC of intellectual 9 Innovation 3 The claim of a property revenue service invention Hand in hand 8 Commercialisation 4 Legal protection with industry 7 Contractual transfer or spin-out company 5 Prototype FROM IDEA TO MARKET 6 Seeking partners and marketing Spin-out companies 1IdeaAll research starts with an idea, and can often lead to dis-Examples of coveries and inventions. When embarking on the path to good practice realisation of an idea, researchers must check the state of the art, and conduct market research to make sure that their idea is genuinely new and innovative. Useful links 47 2Service invention disclosure Foreword Disclosing your service invention to the KTO is the first step in the knowledge transfer process. The KTO will help evaluate the market potential of your idea, discuss the invention with you, advise on the disclosure of the service invention, and Glossary explain the legal protection process. of terms Present your invention in full using the Invention Disclosure FormB so that we can evaluate its potential and commercialisation possibilities. You should then submit the form to the KTO. About the Knowledge Transfer Office 3The claim of a service invention Working from the completed Invention Disclosure Form, the KTO evaluates the invention’s potential from the aspect of legal protection under industrial property rights and that of its market potential. The invention is given an expert evaluation What is by the member institution, after which it is discussed by the knowledge University of Ljubljana Innovation Committee. If the invention transfer? shows potential, the Rector issues a decision on claiming the service invention. ABC of intellectual 4Legal protection The legal protection of intellectual property by means of a property patent or other intellectual property rights is essential when it comes to transferring innovations to the market and encourag-ing further innovation. At the Innovation Committee’s proposal and in collaboration with the patent attorney, the KTO forms a Hand in hand legal protection strategy. The selected patent attorney works with industry with the inventor to prepare a patent application, and makes sure it is submitted to the relevant patent office. Important: Do not disclose the invention to the public before FROM IDEA filing the patent application (i.e. do not publish an article, defend TO MARKET a thesis, deliver a presentation at a conference or lecture, etc.). If you do so, the invention will no longer meet the requirement of novelty, which is a precondition for obtaining a patent. Spin-out companies 5Prototype and proof of concept An idea must undergo certain tests to confirm that the technology actually works. This confirmation may also be provided by means of a working prototype. Only then does the Examples of invention become truly interesting to business partners, which good practice greatly increases the chances of the invention being marketed successfully. Useful links 48 6Seeking a business partner The KTO will do its very best to bring every new invention to life. Foreword For a product or technology secured by intellectual property rights, we try to find the right business partner to create adequate market leverage for the invention and added value on the market. The search for a business partner can sometimes take several months or even years, depending on the market situation and Glossary companies’ willingness to invest. of terms About the 7Contractual transfer or spin-out company When we identify a business partner interested in putting Knowledge the invention to practical use, we agree on a form of transfer satisfactory to both partners, either through a licensing Transfer Office agreement or the transfer of intellectual property rights. If your product or service represents a business opportunity and you are ready to embark on your journey as an entrepreneur, you might also consider starting a spin-out company. What is knowledge transfer? 8Further development and commercialisation University technologies and inventions are often in the initial stages of development. The chosen partner or newly established spin-out company will ensure that the technology ABC is developed further, and contribute the key ingredients to of intellectual success: time, money and people. property Hand in hand 9Innovation revenue Licensing revenue or revenue from an agreement on the transfer of intellectual property rights is first used to cover the with industry costs of intellectual property protection; the rest is distributed between the inventors, the member institution and UL. UL allocates a share of its revenue to the development and expansion of activities relating to the transfer of UL knowledge to industry. FROM IDEA TO MARKET 10Future research and development There is always enough room for technological advance- Spin-out ment, so it is not a matter of restarting the same process over companies and over. Successful market performance, and the financial inflows it ensures, also encourages continuing research and development of new and/or better solutions (we are talking here of technical improvements), both for new and existing technical challenges. Examples of good practice The active involvement of researchers in the knowledge transfer process is key to successful commercialisation. The KTO therefore works closely with you every step of the way. Useful links 49 EVERYTHING STARTS WITH AN IDEA Foreword Every innovation, business idea or research project starts with a challenge and the search for a potential solution. A good idea solves a specific problem, so it is better to start Glossary from an environment you know well or the environment in of terms which you work. By observing that environment, talking to colleagues and company representatives, studying the legislation, and reading academic and scientific publica- tions, you can define the challenge or problem and then About the start creating a solution in the form of an idea or hypotheKnowledge sis. You then evaluate this idea by asking yourself three key Transfer Office questions: 1) Who are the potential users of the solution? 2) Which existing alternative solutions do we know about What is (‘the competition known to us’)? knowledge 3) What is the situation on the market (market growth, mar-transfer? ket readiness for the product or service)? After you have given consideration to the key elements of ABC your idea or research, it is time to check the ‘state of the of intellectual art’. You do this by searching through patent databases, property industry reports and ‘freedom to operate’ reports. This will familiarise you with the market situation and tell you whether the same or a similar solution has already been patented or secured by another type of intellectual property right. A Hand in hand ‘freedom to operate’ analysis involves searching patent da-with industry tabases to check whether your product, process or service infringes on an existing patent. How do you do that? FROM IDEA You can make initial enquiries using publicly accessible and TO MARKET free-of-charge databases yourself or with the help of the KTO. • Patents: EspaceNetB, How to search patent databases (instructionsB); Spin-out • Designs: DesignViewB, companies How to search industrial design databases (instructionsB); • Trademarks: TMViewB, How to search trademark databases (instructionsB); • Examples of Other databases: Google Scholar, Google patents, good practice Linknovate etc. Useful links 50 THE CLAIM OF A SERVICE INVENTION Foreword The University of Ljubljana provides a stimulating environment for innovation and the generation of new knowledge, takes care of the legal protection process, and strives to be as successful as possible in transferring knowledge to Glossary industry and the wider social environment. of terms The legal basis for regulating the process of claiming service inventions is the Job-Related Inventions ActB. At UL, the process is regulated in detail by the Rules on the Man- About the agement of Industrial Property Rights at the University of Knowledge LjubljanaB. Transfer Office Although we focus on inventions in this section, the Rules require you to provide notice of any other work that could be protected under intellectual property rights (industrial designs, trademarks, the topography of integrated circuits, What is plant varieties). All the elements set out below apply to knowledge knowledge, technology, products and know-how that can transfer? be protected as intellectual property. ABC Service invention disclosure of intellectual property Disclosing your service invention to the KTO is the first step in the knowledge transfer process. You can find the Invention Disclosure FormB on the KTO’s website. The in-Hand in hand ventor completes it and sends it to the KTO. Working from with industry the form submitted, the KTO tries to evaluate the inven- tion’s potential, from the aspect of legal protection under industrial property rights and that of its market potential. FROM IDEA When do I disclose a service invention to the KTO? TO MARKET When a UL employee or student develops an idea or cre- ates a tangible product that they consider exceptional and innovative, they should immediately inform the KTO of the Spin-out invention or potential innovation. If the inventor is uncertain companies whether their creation is a potential innovation, we encourage them to consult KTO staff, either before or after they submit the form. Examples of good practice Useful links 51 Who is obliged to disclose a service invention Foreword or other intellectual property to the KTO? The KTO must be informed of every invention to which the following have contributed: • a person employed by UL; Glossary • of terms a person in a different contractual relationship with UL (a visiting teacher, project associates, etc.); • a student, if the invention results from work undertaken to meet academic obligations at UL or if the student used UL About the resources in the process. Knowledge Transfer Office In this case, the inventor may not protect or market the invention or potential innovation themselves. This is because it is owned by UL. It is also important that the results not be disclosed to the public (through lectures, articles or dis-What is cussions) or to unauthorised persons before the results have knowledge been legally protected. transfer? What is a service invention? A service invention is an invention: ABC • of intellectual that was created by an inventor while they were employed at property UL as part of the fulfilment of the terms of their employment contract, in the course of completing assignments required by UL or on the basis of a special contract entered into by the inventor and UL or a member institution (direct service Hand in hand invention); with industry • that was created in the course of performing one’s job, if the chief contribution to the creation of the invention came from the experience acquired by the inventor in their job or from the use of resources made available to them by UL (indirect FROM IDEA service invention). TO MARKET How do I disclose a service invention to the KTO? The inventor should inform the KTO by completing the Invention Spin-out Disclosure Form and: companies • sending it to the KTO by registered post (Knowledge Transfer Office, University of Ljubljana, Kongresni trg 12, 1000 Ljubljana) marked with the words CONFIDENTIAL - DO NOT OPEN; • Examples of delivering it to the KTO in person; good practice • sending it by email to 📧 ipr@uni-lj.si (in this case, the form must subsequently be sent by ordinary post, as it must contain the handwritten signatures of all the inventors/ researchers). Useful links 52 Process of claiming a service invention Foreword KTO MEMBER INSTITUTION Drafting and filing RESEARCHERS Assessment of patent of invention Glossary Invention disclosure application and proposal INNOVATION of terms KTO to claim COMMITTEE Formal Decision to review and Yes claim the evaluation invention About the Knowledge No Transfer Office (free invention) After receiving a completed Invention Disclosure Form, the KTO checks to see whether it is complete and, if necessary, What is invites the inventor to provide additional details. The KTO knowledge then issues confirmation within five days of receiving a transfer? complete form, and invites the UL member institution to draft an expert opinion on the invention. Based on this assessment, the KTO compiles the material for discussion of the invention at the UL Innovation Committee. This material ABC includes the opinion of experts, employed at the KTO re- of intellectual garding the method of legal protection to be used and the property market potential of the innovation. When drafting a proposal on whether or not the UL should claim the invention, the UL Innovation Committee refers to criteria such as novelty, inventiveness and industrial appli-Hand in hand cability, whether the invention solves an existing problem, with industry the advantages the invention has over existing solutions to the problem, the ethical and safety dimensions of the invention, and so on. A decision by which the Committee FROM IDEA proposes claiming the invention also includes a proposal TO MARKET regarding the method by which it should be protected and on the possibilities and method of commercialisation. The final step in the service invention claiming process is the issuing of a decision to claim/not to claim the invention Spin-out by the University of Ljubljana Rector. If UL claims an inven-companies tion, the KTO makes sure that it is adequately legally protected, takes part in negotiations and drafts a joint invention agreement (if inventors from more than one institution were responsible for creating the invention). It also begins Examples of the search for a suitable industry partner, in line with the good practice marketing strategy, and reaches agreement on the transfer of the invention for commercial exploitation purposes. Useful links 53 If UL decides not to claim an invention, the Rector issues a decision to this effect. After such a decision, the invention Foreword becomes a free invention, which means that all further decisions regarding the protection, management and marketing of the invention are in the hands of the inventors or Glossary researchers. of terms Both decisions (to claim and not to claim) are sent by registered post to all inventors/researchers involved. About the Know-how Knowledge and software Transfer Office As defined above, know-how is also intellectual property with a certain economic value. It can arise in tandem with other forms of intellectual property, such as an invention or What is copyright, or can be a free-standing object expressed in knowledge the form of ideas, data, information, knowledge and skills. transfer? Similar to other intellectual property or intellectual property rights, know-how can also be part of knowledge transfer, whether through the purchase of a licensing agreement or by being subject to a licensing agreement. However, ABC it is recommended that it be protected as a trade secret of intellectual before transfer. property Software can also be copyright work (Article 5 of the ZASP) that is accompanied by specific know-how. In these cases, it is therefore also intellectual property. Today, with information technology being one of the most important Hand in hand commercial sectors, the proper management of intellectual with industry property is vital. The KTO must be informed when a software and know- how show industrial or market applicability. The Software FROM IDEA Disclosure FormB (in Slovene) and Innovation/Know How TO MARKET Disclosure FormB (in Slovene) are available on the KTO's website. Spin-out companies Managing joint inventions Joint invention or innovation agreement Examples of An agreement of this type is normally signed after com- good practice pletion of a project in which more than one partner has contributed to the creation of results suitable for patent protection, or of results that should be protected as a trade secret and that demonstrate market value. Useful links 54 In the agreement, the parties lay out the fol owing basic terms in particular: Foreword a) ownership shares (individual shares are determined with respect to the material, financial, and innovative contributions of each partner) and the ratio of revenue shares from intellectual property rights; Glossary b) the method and scope of legal protection (types of legal of terms protection, geographical scope of protection); c) nomination of a partner who will coordinate and manage legal protection procedures, and determine the sharing About the of costs relating to the protection and exercise of intel- Knowledge lectual property rights; Transfer Office d) the rights to exploit the invention (further development, assignment or licensing, etc.). What is The partners may agree on different arrangements that knowledge take account of the interests of the companies that have transfer? participated in the project: 1. Option: If one of the owners wishes to have an exclusive right to use the results, they must obtain the consent of all the owners. In return, they are obliged to pay com- ABC pensation to the other owners, determined under fair of intellectual and reasonable conditions (this can be in the form of a property one-off payment or a licence fee linked to revenue from the sale of the products/services created on the basis of the results). Hand in hand 2. Option: Each owner has the right to non-exclusive use with industry of the results or to grant non-exclusive licences to third parties. When only one owner benefits from such use, we recommend that a specific share of this benefit be transferred to the other partners (e.g. to cover the costs FROM IDEA incurred by legally protecting the invention). TO MARKET 3. Option: Owners may share exclusive rights to use the results by specific field of use. Spin-out companies Examples of good practice Useful links 55 LEGAL PROTECTION OF INVENTIONS Foreword A new, inventive and industrially applicable invention may be protected by patent. The key element is the novelty of the invention, which is why it is vital to file a patent application with one of the patent offices before any information on the Glossary invention is made public. The defence of an undergraduate of terms or doctoral thesis also constitutes disclosure of an invention even if no external person is present at the defence. You should therefore file a patent application with the patent of-About the fice before the defence. Disclosing an invention to the KTO Knowledge does not mean the filing of a patent application. Without a Transfer Office patent application filed with the patent office, the invention remains unprotected. Another important element that an invention must display, in addition to novelty, is an inventive step, which means that the What is invention is not obvious to a specialist in the field covered by knowledge the invention, but relied on the inventor’s intellectual and in-transfer? ventive deliberation for its creation. The problems that arise in relation to this inventive step are most often the fault of the inventors themselves, who might publish articles in which they do not disclose the invention itself, but refer to the methods ABC and procedures required to arrive at the invention, thereby re-of intellectual moving inventiveness from consideration. It is important that property researchers think long and hard before publication so as not to remove the inventive step from their otherwise undisclosed invention. Hand in hand A well-written patent application is the key to successful with industry patent protection. As the writing of patent applications differs considerably from the writing of academic papers, it is not recommended that the inventors do it themselves. After invention disclosure and acquiring an evaluation, the KTO FROM IDEA invites the inventors to a meeting at which they discuss the TO MARKET invention, its market potential and the need for adequate patent protection, and agree on the appropriate form of legal protection. Prior to the decision on where and how to protect the invention by patent, the KTO looks for a suitable patent Spin-out attorney in Slovenia or abroad, and connects them with the companies inventors. All communication and agreements with the patent attorney are managed by the KTO, which relays information to the inventors, while any technical communication relating to the invention takes place directly between the inventors and Examples of the patent attorney, with the knowledge of the KTO. good practice The University of Ljubljana (rather than a university member) is the applicant for patent applications for inventions acquired from its employees. The persons who created the invention Useful links 56 are always listed in the application as the inventors (including those not employed by UL). Foreword There may be more than one applicant. If the inventors come from different institutions, all the institutions are, as a rule, listed as applicants. Mutual rights and obligations between the applicants in relation to the joint invention must be regulated Glossary under a special joint invention agreement. of terms Legal protection strategy About the Knowledge To ensure cost-effectiveness and the effective protection Transfer Office of an invention, a strategy to legally protect the invention is drawn up prior to the patent-application process. The KTO manages procedures for obtaining legal protection and What is maintaining industrial property rights. It starts by looking knowledge for a suitable patent attorney and, following the Innovation transfer? Committee’s proposal, forms a legal protection strategy. The selected patent attorney works with the inventor to prepare a patent application, and makes sure it is submitted to the relevant patent office. As a patent is only valid in those coun-ABC tries in which it has been granted (territoriality principle), it is of intellectual important to consider the countries or regions in which the property innovation might achieve the greatest market success. It is in those territories that your invention should be protected first. A decision on legal protection of the invention in specific countries is therefore produced to reflect the market potential Hand in hand of the invention and in line with the funds available (as legal with industry protection is quite an expensive process). While a patent is usually granted after three to five years, the invention is patent-protected from the date the application is filed. FROM IDEA TO MARKET Example of a strategy: • definition of the subject of patent/industrial design/ trademark protection (this includes a decision on the geographical scope of the protection and, accordingly, Spin-out whether a national, regional or international application companies should be filed); • what should be protected as know-how, how this should be done and how it should be protected as a trade se-Examples of cret; good practice • full consideration given to the available funds, the commercial exploitation plan (marketing of the invention), etc. when the strategy is being drawn up. Useful links 57 Industrial property rights only apply to the territory of the country in which they have been granted or registered. This Foreword means, for example, that a Slovenian patent granted by the Slovenian Intellectual Property Office is only valid in the territory of Slovenia. There are three possible approaches for an Glossary inventor or researcher to take if they wish to acquire patent of terms protection elsewhere as well: a) National application About the By filing a series of individual national applications, an Knowledge inventor may request patent protection in each country Transfer Office separately. This route is not only time-consuming (because multiple applications have to be submitted), it is financially less favourable and more complicated because of the need to use different official languages in the application. The What is initial costs of filing a patent application with the Sloveni-knowledge an Intellectual Property Office is around EUR 1,200. This transfer? includes the application fee, protection for the first three years, and a fee for acquiring information or an opinion for the purposes of issuing a declaratory decision. This sum does not include the costs of engaging the services of a ABC patent attorney. of intellectual property b) European application (EPO) The European Patent Office (EPO), which is part of the Munich-based European Patent Organisation, is the patent Hand in hand office competent to receive European patent applications. with industry The European Patent Convention (EPC), which provides the legal basis for the European patent, was adopted in 1973. By filing a European patent application, the applicant re- quests protection in the contracting states of the European FROM IDEA Patent Organisation (which is not itself a European Union TO MARKET institution). After a European patent has been granted, it still needs to be validated (certified) and translations of the patent claims submitted in the official languages of the selected countries (if the national law of a specific country Spin-out requires this). It costs around EUR 3,500 to file a European companies application. This includes an application fee, a search fee and a fee for substantive examination of the application, but not the costs of engaging the services of a patent attorney. Examples of A European patent does not constitute a single legal title good practice that is automatical y valid in certain European countries after the patent has been granted. Rather, it is the standardised initial step in the process of acquiring patent protection. Useful links 58 c) International application (PCT) The Patent Cooperation Treaty (PCT) is an international Foreword agreement under which the International Bureau (under the auspices of WIPO in Geneva) conducts a patent pro- tection procedure on the basis of a single international application or PCT patent application. This has the same Glossary effect as an applicant filing a series of national patent of terms applications simultaneously, but the advantage of this approach is that only one application is made in one lan- guage (the language in which the procedure is conduct- ed) and the costs are standardised in a single currency About the (Swiss francs) for 150 contracting states within the PCT Knowledge system. Transfer Office The procedure usually starts with the filing of a patent application at a national patent office. A decision must then be taken within 12 months on any possible extension What is of patent protection. An international (PCT) application knowledge is usually filed at the same time. This gives the applicant transfer? a further 18 months in which to decide whether to seek protection in specific countries. A PCT application does not lead to a patent; rather, it is merely a single international application and search that makes it easier to assess ABC whether a patent will be granted in specific individual of intellectual countries. If you wish to acquire an opinion on patentabil-property ity in the first year, you should first file a PCT or European application with the EPO, or an application at another foreign office that carries out a search report of an invention/application (e.g. Austria, Germany, EPO). The basic Hand in hand cost of an international application is around EUR 3,000. with industry This includes an application fee, a search fee and a fee for intermediary services (but not the fees charged by patent attorneys).17 FROM IDEA TO MARKET Spin-out companies Examples of good practice 17 All these costs of applying for patent protection depend on a number of factors, such as the scope of the patent application, the geographical scope of protection, the costs charged by a patent attorney, etc. This means that the actual costs differ from case to case. Useful links 59 Process of legally protecting an invention (patent) Foreword Priority national application Glossary INTERNATIONAL STAGE of terms Deadlines (in months) About the Filing of PCT or EPO application 12 Knowledge Transfer Office 16 International Search Report and What is Written opinion of the International knowledge Search Authority transfer? 18 Publication of patent APPLICATION ABC of intellectual 30 property Hand in hand with industry NATIONAL or REGIONAL STAGES FROM IDEA EP application TO MARKET US application CN application CA application Spin-out companies JP application … Examples of good practice Useful links 60 Drafting of the patent application Foreword Before the patent attorney begins drafting the patent application, the inventors must provide an adequate description of the invention, most often in English (unless the services of a Slovenian patent attorney have been engaged). The description must comply Glossary with the form taken by a patent application as closely as possible of terms (i.e. it should not be written in the form of a scientific paper). The invention may be a new product, a new part of an existing product or a procedure or device for manufacture of the product, refer to the use of the product or be a combination of the above. It is About the important for the invention to constitute a unified whole, even Knowledge though the claims in the patent application will also address man-Transfer Office ufacture of the product, the manufacturing procedure, use and so on. If the invention is not a unified whole but involves two or more independent inventions, the application will have to be divided into several applications later on in the patent procedure. What is An invention must have a concise title that should not disclose knowledge its essence. The description of the invention must be clear, un-transfer? ambiguous and precise, but should not contain unnecessary descriptions of matters that do not belong in a description of the invention. The same expressions must always be used for the same things (e.g. a ‘hole’ is always a ‘hole’, not a ‘hole’ on one occasion ABC and an ‘opening’ on another). Everything must be described in of intellectual words. Figures may be included in the patent application, but property should only be used as a supplement or for further clarification. Figures cannot be used as part of the description of the invention if this part is not also described in words. Hand in hand Start out by describing the field to which the invention belongs with industry and what it is used for. Existing solutions must be described by citing the appropriate patent and other literature. A good description of the field and of the existing solutions shows that the inventors are fully conversant with the scientific field in question. FROM IDEA A description of the field is followed by a description of a prob-TO MARKET lem that has not been satisfactorily solved and that the proposed invention intends to solve in a better way. This is followed by the most important part of the description: the description of the invention that the inventors wish to protect by a patent. The Spin-out proposed invention (product, procedure, device, use) should companies be described thoroughly in words. Care must be taken not to forget to describe anything and not to include existing solutions in the description (because they are not part of your invention). The description is followed by the patent claims. While the best Examples of approach is to entrust the drawing-up of the patent claims to a good practice patent attorney, the inventor should nevertheless set out those claims they believe constitute the novelty of the invention and that they wish to protect. To ensure that patent claims are formulated Useful links 61 as well as they can be, the inventor may refer for help to examples of patents granted in the same field as their invention. It is Foreword vital that the patent claims do not contain anything not set out in words in the description of the invention. The description is therefore the most important part of the patent application. Glossary A patent application must also contain a summary and, in ad-of terms dition, figures. However, figures may not be used to describe the invention, but only as a further aid to understanding the textual description of the invention. The patent application must be written in the form required by the patent office to About the which the application is made. Knowledge Transfer Office Amending a patent application What is After a patent application has been filed with any patent office, knowledge the invention is assigned a priority date, which is referred to in transfer? subsequent patent procedures. However the description con- tained in the patent application may no longer be changed. A patent application that has deficiencies in its description of the invention cannot be amended during patent acquisition ABC procedure. During the procedure of granting a patent, patent of intellectual claims may be reformulated and amended, but only in such property a way that the description of the invention remains as it was when the patent application was filed. In other words, if the patent claims are deficient and the invention is sufficiently well described in the patent application, the patent claims may Hand in hand be reformulated as required and solid patent protection ob-with industry tained for the invention at the end of the procedure (provided, of course, that the patent constitutes a novelty). On the other hand, a poor or deficient description cannot be amended, which means either that the patent will not be granted or will FROM IDEA be granted with less effective protection in place. TO MARKET MARKETING OF UL’S KNOWLEDGE Spin-out companies The KTO strives to bring every new invention to life. Our aim is therefore to support research and to transfer that research to the market. When research has been conducted to such an extent that a particular product or technology can be protect-Examples of ed by intellectual property rights, it is crucial to find the right good practice business partner to create adequate market leverage for the invention and added value on the market. Our aim is therefore to find the best possible partner for use of the invention on the market. This partner will contribute the three most important Useful links ingredients of success: time, money and people. 62 Business partners can be acquired by: Foreword • preparing suitable promotional material • identifying partners and investors • preparing presentations and pitches for potential partners and investors Glossary of terms • preparing technology offers • approaching potential business partners directly at conferences, trade fairs, and B2B and R2B meetings • publishing research findings and inventions on our About the website Knowledge Transfer Office The cooperation of both sides is crucial here. The search for a suitable business partner is also made easier if you have good connections with the academic world and What is the business sector, although it is rarely a straightforward knowledge or quick process. Indeed, it can sometimes take several transfer? months or even years, depending on the market situation and companies’ willingness to invest. Patience, persever- ance and determination are all required. ABC of intellectual property PATHS OF KNOWLEDGE TRANSFER Innovations are transferred into practice in two ways. The Hand in hand first is by licensing/transferring intellectual property rights, with industry and the second is by setting up a new company. In the first (more common) case, we are talking about the right to use specific knowledge protected by intellectual property rights. You can find more details on the licensing procedure FROM IDEA in the Licensing agreements section. TO MARKET If your new product or service constitutes a complete novel-ty and you are ready to embark on your journey as an entrepreneur, you might also consider starting a company. Such companies are called ‘spin-off’ or ‘spin-out’ companies. Spin-out companies You can find more details on how to set up a spin-out com- pany in the Spin-out companies section. Examples of good practice Useful links 63 HOW KNOWLEDGE IS TRANSFERRED Foreword INVENTION RESEARCHER Glossary Wish to of terms set up LUI company Business plan and founding capital UL About the KTO Consent to establish Knowledge Search for company Transfer Office buyers / New investors company (spin-out company) What is MEMBER knowledge INSTITUTION transfer? Production of prototype ABC KTO of intellectual Commercialisation property Interested existing Hand in hand company with industry KTO Negotiations FROM IDEA TO MARKET UL GOVERNING BOARD Consent to agreement Spin-out UL companies Assignment or licensing agreement Examples of RESEARCHERS good practice 40% participation in commercial exploitation revenue Useful links 64 AGREEMENTS ON THE TRANSFER OF INTELLECTUAL PROPERTY RIGHTS Foreword When agreements by which UL transfers knowledge or technology for exploitation by the business sector are being signed, the KTO acts as a specialist body by drafting and re-Glossary viewing agreements from the legal and substantive aspects. of terms It also coordinates those internal procedures at UL required for such agreements to be signed. These include obtaining the consent of member institutions and the UL Governing Board. The course that the coordination and approval of About the agreements takes is shown below. Knowledge Transfer Office What is knowledge transfer? KTO: Negotiations and drafting of agreement ABC of intellectual property Acquisition of consent fr om UL member institution Hand in hand with industry FROM IDEA TO MARKET Acquisition of consent from UL Governing Board Spin-out companies RECTOR: Signing of agreement Examples of good practice Useful links 65 Licensing agreements Foreword A licence is the most general form of technology transfer. A licensing agreement entails ceding the right to use an industrial property right, knowledge or know-how without also transfer-Glossary ring ownership. The owner of the right (the licensor) remains of terms the owner, while the other party (the licensee) is only granted the right to use the property set out in the licensing agreement. Licensing agreements are regulated by the Obligations CodeB. A licensing agreement confers the right to commercial ex- About the ploitation of the licensed property to a third party that would Knowledge otherwise not be entitled to exploit it (for more on the exclu-Transfer Office sive nature of intellectual property rights, see the Types of intellectual property rights section). The scope of authorisation is negotiated by both parties and defined in the agreement. The subject of a licensing agreement may include industrial What is property rights (patents, trademarks, industrial designs), the knowledge registration of these rights (patent applications), software and transfer? know-how. When a licensing agreement is being drawn up, simple language and clear wording are used in order to avoid any subsequent disagreement. The subject of the agreement must be set out very precisely, as must those things that the licensee ABC is permitted to use and exploit for commercial purposes. Due of intellectual regard should be paid to the accompanying knowledge or tech-property nology (know-how)18 so that the licensee is able to make full use of the property secured by means of a right (such as a patent). We should stress that every licensing agreement presents a different case and set of circumstances, and involves a dif er-Hand in hand ent subject or a different licensor or licensee. Other conditions with industry also dif er depending on the business objectives of each of the parties (territory of licence, limitations of time, exclusivity or non-exclusivity, etc.). Although some clauses might be similar, every agreement should be tailored to the specific cir-FROM IDEA cumstances of the case. That said, you should ensure that the TO MARKET following essential components are included in any agreement: 1. Details of the contracting parties (licensor and licensee) Spin-out 2. Subject of the licence The subject of the licence must be precisely defined, and companies all accompanying knowledge and technology (know-how) included, as this generally enables the subject of the licence to be used fully and correctly. Examples of 3. Territorial restrictions and restrictions on field of use good practice A licence may be restricted in terms of territory (i.e. geographically) to a specific country or region, or specific coun-18 If know-how itself is not the subject of the licensing agreement. Useful links 66 tries or regions, or may be unrestricted in terms of territory (i.e. it applies worldwide). It may occasionally make sense to Foreword restrict a licence to a specific field of use or specific industry. 4. Duration of licence A licence may last for a definite or indefinite period of time. If an agreement is signed for an indefinite period of time, it Glossary is nevertheless limited to the period of duration of the right of terms itself (as such rights are limited in time). 5. Scope of authorisation The agreement should set out the entitlements that the About the licensee will receive. A licence is normally granted for use, Knowledge manufacture and sale, although there are also separate Transfer Office licences for manufacture or sale. Again, this depends on who the licensee is, where the licensor is able to be active themselves, and so on. 6. Exclusivity or non-exclusivity What is A distinction is made between an exclusive and non-exclu- knowledge sive licence. An exclusive licence means that only the licen-transfer? see is entitled to exploit the subject of the licence in the area for which the licensor has granted authorisation, and that the licensor may not grant a licence to anyone else in this area, nor may it exploit the subject of the licence in this ABC area itself. A non-exclusive (ordinary) licence enables the li-of intellectual censor to continue to exploit the subject of the licence itself property and to grant further licences (although territorial restrictions must again be taken into account). The law proceeds from the assumption that a non-exclusive licence has been grant-Hand in hand ed, unless an agreement provides otherwise. There is also the ‘solo licence’, a type of exclusive licence, under which with industry the licensee and licensor may both exploit the subject of the licence, although the latter is not permitted to grant any further licences. FROM IDEA 7. Payment (licence fee) TO MARKET A licence fee is usually determined in the form of a pre- agreed lump-sum payment or payment by instalments. If payment is to be made by instalments, the parties agree on whether the amount is fixed or whether it changes de- Spin-out pending on sales achieved under the licence. The payment companies intervals, along with any advance lump-sum payments, must be determined before the subject of the licence begins to be marketed. Agreement may also be reached on a mini- mum licence, i.e. the minimum sum that the licensor wishes Examples of to receive in specific years (if this sum is not achieved, it good practice may terminate the licensing agreement). Another important element in the licensing of patents is the question of who Useful links 67 covers the costs of securing patent protection. These costs are usually paid by the licensee. Foreword 8. Dispute resolution If a dispute arises, the contracting parties agree on the dispute-resolution method to be used (whether the dispute is Glossary to be resolved in the courts or using an alternative dispute of terms resolution method, such as arbitration), and the law under which the agreement is to be assessed. About the Knowledge Agreements on the transfer Transfer Office of intellectual property rights In contrast to the licensing agreement described above, agreements on the transfer of intellectual property rights What is involve the transfer of the ownership of industrial property knowledge rights or knowledge/technology from one party to another. transfer? An assignment agreement is a typical example of a transfer agreement. The contracting parties are the transferor (e.g. the assignor) and the acquirer (e.g. the assignee), who becomes the new owner of the rights or the owner of another subject ABC included in the transfer agreement. The parties often sign a of intellectual reverse licence agreement, whereby the previous owner property (transferor or assignor) acquires a licence to use the subject of the agreement. UL usually opts for this type of agreement when it does not Hand in hand intend to market the knowledge or the right on its own using with industry its own channels and resources. This type of transfer provides UL with an immediate financial return. The key elements that must be defined in a transfer agreement are: FROM IDEA TO MARKET 1. Determination of the subject of the agreement The industrial property right, knowledge or know-how being transferred must be clearly and precisely defined, and the accompanying rights or knowledge required for Spin-out complete transfer of the subject of the agreement and its companies commercial exploitation must be included and taken into consideration. 2. Payment Examples of The amount, method (one-off lump-sum payment or pay- good practice ment by instalments) and other payment terms. 3. Liability of the respective parties On the transferor’s side: that the subject of the agreement is not encumbered by the rights of third parties. On the Useful links 68 acquirer’s side: assumes liability for any warranty claims relating to the subject of the agreement. Foreword 4. Dispute resolution The law to be applied in the event of a dispute must be defined, along with the dispute-resolution method (whether through the ordinary judicial system or by using an alterna-Glossary tive method such as arbitration). of terms Following the successful contractual transfer of rights or knowledge, the new owner is registered at the Intellectual Property About the Office, when this is required by law. Knowledge Transfer Office DISTRIBUTION OF INNOVATION REVENUE What is knowledge The Rules also lay down how the ratios of revenue from the transfer? exploitation of industrial property are to be calculated.19 The costs connected with the protection of industrial property are covered first (fee for application and maintenance, costs of patent attorneys’ services), with the remainder being shared ABC between the inventors or researchers, the member institution of intellectual and UL. How the money is shared depends on who bore the property costs of protecting the industrial property and, among the inventors (if there is more than one), on their respective contributions to the creation of the invention or other innovation. The share of revenue received by UL is allocated to the further Hand in hand development of activities for the transfer of UL knowledge to with industry industry. FROM IDEA TO MARKET MEMBER INVENTORS INSTITUTION 30–50% 40% Spin-out companies UL Examples of 10–30% good practice 19 Article 19 of the RulesB. Useful links 69 What do I need to do … Foreword … when I invent something new at the Glossary of terms University of Ljubljana? About the Knowledge X INVENTION: Transfer Office X Does my idea for the solution to a technical problem already have a concrete form (product or procedure)? What is X Does my solution meet all the criteria for acquiring a patent (novelty, inventive step, industrial applicability)? knowledge transfer? X Have I identified the industrial or commercial utility of the solution (WHERE - industrial or agricultural sector, WHO - potential users, WHY)? X Have I researched the existing state of the art (i.e. what is already ABC known in this field and what makes my invention distinctive)? of intellectual property X Do I need to carry out a ‘freedom to operate’ analysis? X Does competition exist on the target market? What is this competition? Hand in hand X Have I already revealed my solution (or how I arrived at it) to with industry anyone? If so, where? Am I planning to publish a description of my solution and how I arrived at it? FROM IDEA X DISCLOSURE: TO MARKET X Have I completed an invention/innovation/know-how/software disclosure form? Spin-out X Has the form been signed by all inventors (if there is more than one)? companies X Does the form need to be supplemented (as instructed by the KTO)? Examples of good practice Useful links 70 Foreword Glossary of terms About the Knowledge X DURING THE PROCES OF CLAIMING THE SERVICE INVENTION: Transfer Office X I am working with the KTO co-inventors from other institutions (in the case of a joint invention) and a patent attorney (preparation of a patent application). What is X I am engaged in ongoing market research (national and knowledge international). transfer? X I am identifying and searching for potential investors/business partners (see also the What do I need to do … when working with a business partner? section). ABC X Do I need to produce a prototype? Do I have sufficient funds and the right working conditions for this? If not, what can I do to acquire of intellectual or create them? property X AFTER THE CLAIM OF THE SERVICE INVENTION: Hand in hand X I am working with the KTO to prepare a legal protection strategy with industry and a plan for the commercial exploitation/commercialisation of the invention. X I am taking part in negotiations with interested partners from FROM IDEA industry. TO MARKET X I am taking part in the drafting and signing of agreements on the transfer of intellectual property (rights) or licensing agreements. X I am working with a patent attorney (drafting and filing of a Spin-out patent application: description of the invention, draft patent companies claims). X I am preparing promotional material and presenting my invention. Examples of X I am helping to draft a technology offer. good practice X Do I intend to set up a spin-out company (see the What do I need to do … before starting a spin-out company? section)? Useful links 71 ANIES TOWARDS STARTING A COMPANY • 75 TIPS ON STARTING A COMPANY • 76 REGULATING RELATIONS BETWEEN THE UNIVERSITY OF LJUBLJANA AND A SPIN-OUT COMPANY • 88 WHAT DO I NEED TO DO … … BEFORE STARTING OMP A SPIN-OUT COMPANY? • 92 SPIN-OUT C 72 Foreword Spin-out companies Glossary of terms About the Knowledge Transfer Office The term ‘spin-out company’ is used for a company founded by one or several employees of the University of Ljubljana. A spin-out company is designed to further develop and market knowledge created within the context of employment at UL, What is and to transfer that knowledge to a new company, either by knowledge granting a licence or by selling the intellectual property rights. transfer? UL encourages the setting-up of new spin-out companies as one of the forms of knowledge transfer to the business sector. The setting-up of a new company often proves to ABC be the best (or even the only) solution for the transfer of of intellectual knowledge to commercial use. The setting-up of spin-off property companies as they are known abroad, with a research insti- tution investing its intellectual property and initial capital in a start-up in the form of an ownership share, is not permitted in Slovenia, which is why the establishment of a company Hand in hand by an employee is the most sensible way to proceed. As we with industry realise that this is a very risky and demanding enterprise for many employees, UL tries to ease the way using a variety of methods, and to reduce the risk and provide additional incentives to employees, mainly by presiding over a culture From idea of innovation, openness, interconnection and willingness to to market take risks. Swift, clear and transparent procedures for granting consent to employees to start their own companies and signing licensing agreements or agreements on the transfer of intellectual property rights are part of these efforts. SPIN-OUT COMPANIES UL provides the following support to employees who wish to set up a spin-out company: • putting in place certain instruments that enable researchers to reduce the risk if they wish to become em- Examples of ployed in the new company, for example by suspending good practice employment-related rights (for more on this, see the Regulating relations between the University of Ljubljana and a spin-out company section); Useful links 73 • providing mentoring opportunities, premises, help in applying to calls for applications and finding investors, Foreword and support to newly established companies during the incubation phase via the Ljubljana University Incubator; • fostering an entrepreneurial mindset and awarding Glossary small-scale initial capital via the Rector’s Award, and giv-of terms ing employees the chance to present their work to the general public and potential investors; • providing help in protecting and further developing intellectual property and finding partnerships via the KTO About the (in the initial stages, before the company is established); Knowledge ensuring swift and transparent procedures for granting Transfer Office consent and signing licensing agreements or agree- ments on the transfer of intellectual property rights; • granting licences to use UL knowledge under market What is terms, with consideration given to the specific charac- knowledge teristics of high-tech start-ups (e.g. payment holidays); transfer? • organising education and training in entrepreneurship, and incorporating enterprise-related subjects into the curriculum; • enabling newly established companies to reach written ABC agreement on the leasing of premises and the joint use of intellectual of research equipment and other services in accordance property with a price list that reflects the market price for the use of resources and premises, and all other service-related costs (where funds allow). Hand in hand with industry From idea to market SPIN-OUT COMPANIES Examples of good practice Useful links 74 TOWARDS STARTING A COMPANY Foreword The chart below shows the procedure of setting up a spin- out company at the University of Ljubljana: Glossary of terms • Wish to set up company TEAM • Disclosure to Knowledge Transfer Office About the Knowledge Transfer Office • Review of proposal to set up company KTO • Drafting of consents to set up company • Meetings with researchers What is knowledge transfer? MEMBER INSTITUTION • Granting of consents to set up company AND UL ABC of intellectual property • Preparation of business plan TEAM • Establishment of company (s. p., d. o. o.) Hand in hand with industry • Drafting of licensing agreement KTO • Negotiations between company and UL From idea to market • Granting of consent to licensing SPIN-OUT UL agreement (Governing Board) COMPANIES Examples of • Mentoring assistance (pre-incubation, incubation) good practice LUI • Rector’s Award, Falling Walls, etc. Useful links 75 TIPS ON STARTING A COMPANY Foreword I would like to market my knowledge/invention Glossary of terms via a spin-out company. What now? If you are thinking of starting your own company, you should be aware that enterprise activity differs significantly About the from academic activity, and that it will redirect your efforts Knowledge from research to commerce. To start a company, you need Transfer Office knowledge of the fields of enterprise and management. It is important to note that not all research provides a suita-What is ble basis for a new business, nor are all good business ideas knowledge necessarily good business opportunities. Before beginning to transfer? put your business plan into action, you should check the feasibility and market potential of your idea. Your business idea will become a business opportunity if you have determined that: • it could achieve long-term market success; ABC • it can be realised; of intellectual property • the competition cannot easily imitate it. You should invest time in developing and researching your idea so that it becomes a proper business opportunity. You Hand in hand can do this by conducting market research, analysing ex- with industry isting providers, presenting your idea to other researchers (but under conditions of confidentiality), and consulting people with expertise and an unbiased outlook (again un- From idea der conditions of confidentiality). to market If you have a business idea or opportunity, the next sec- tions will give you a few pointers to help you set up your SPIN-OUT new company and turn your research work to practical COMPANIES commercial use. In al cases, you must inform the KTO of your intention to start a spin-out company. Examples of good practice Useful links 76 The KTO and the Ljubljana University Incubator (LUI) will help you start your entrepreneurial journey. Foreword Role of the KTO Role of LUI Consultation on a business idea Advice on drawing up a business plan Preparing consents for Education and training in finance, Glossary setting up a company marketing and management of terms Preparation of licensing and other agreements Mentoring Legal protection of Leasing of premises, intellectual property offices and conference rooms About the Connecting Networking with other entrepreneurs, Knowledge with industry investors and developers Transfer Office The KTO has links with international investors and investment funds specialised in various fields. We can bring them face to face with researchers who offer potential innovations, and What is establish connections for potential future collaboration. knowledge transfer? Your team ABC of intellectual 'As soon as you have two people, you property have cooperation, collaboration, and twice as much potential as you would have on your own. You also have politics, decision-making, blaming, Hand in hand and supporting one another’ with industry Tim Berry Tim Berry’s words reveal the essence of teamwork. By in- From idea creasing the number of participants in your project, you can to market significantly increase the chances of your idea succeeding. However, if you do not choose the right people, they can become an obstacle. The number of members in your team is extremely important. Ideally, a good start-up team consists SPIN-OUT of four to five members on average. Later on, you can expand COMPANIES the team to reflect the growth of your company. You can still continue working with external colleagues who possess the skills you need. All successful directors agree that a precise division of work Examples of and tasks between individual team members is essential if the good practice team is to function well. Specialisation and the division of roles differ so greatly from team to team that it is very difficult to draw parallels between start-ups in different fields. The key Useful links 77 to achieving the best results and teamwork is common to all good teams: collaboration, adequate communication and the Foreword constant flow of information. In the opinion of investors and mentors, the team is the most important thing for ensuring that an idea is realised success-Glossary fully. A large number of factors need to be taken into consid-of terms eration if a company is to be successful. These include the situation on the market, the competition, financial capacity, the product and the network of acquaintances. If an enterprise idea is to be turned into a successful business opportunity, the About the most important thing is the team. It is the team that will build Knowledge the overall image around the product or service, and construct the story that it wishes to offer to the market. Business angels Transfer Office and other investors are well aware of the importance of a good team, which is why they most often only work with companies whose team inspires their confidence. What is After setting up a spin-out company, we advise you to choose knowledge a project/team leader at the earliest possible stage. This can transfer? be a researcher, one of the inventors or an appointed director. ABC Support environment, Ljubljana University Incuba- of intellectual torB property The mission of the Ljubljana University Incubator (LUI) is to act as a ‘personal enterprise coach’ that helps entrepreneurs and potential entrepreneurs to test and realise their ideas on the Hand in hand market. Since its inception, LUI has focused on increasing the with industry spirit of entrepreneurship and knowledge of enterprise within UL and more broadly. LUI organises business breakfasts with well-known Slovenian entrepreneurs, expands knowledge within the enterprise From idea community via the ‘Ideas Mixer’ mechanism, and organises to market enterprise lectures, the Rector’s Award for the best innovation at UL, and the Falling Walls Lab Ljubljana. It also provides tailored assistance to entrepreneurs in the form of one-to-one consultations and coaching, and an informal mentoring system SPIN-OUT involving experienced business figures. COMPANIES They can provide: • CONSULTATIONS on an enterprise idea, on its market potential and on your options; Examples of • ADVICE and help in preparing a business plan; good practice • EDUCATION AND TRAINING in finance, marketing, management and the legal protection of intel ectual property rights; • MENTORING with experienced mentors who can help your company develop and grow; Useful links 78 • NETWORKING with other entrepreneurs, investors, managers and developers; Foreword • LEASING OF PREMISES, offices and conference rooms. Support for enterprise through consultations, training and other Glossary forms of assistance is also offered by: of terms • Chamber of Commerce and Industry of SloveniaB; • Chamber of Crafts and Small Business of SloveniaB; • Erasmus for Young EntrepreneursB; About the • Technology Park LjubljanaB; Knowledge • Start:up Slovenija InitiativeB; Transfer Office • Slovenia Business Point (SPOT, one-stop shop)B. What is Acquiring start-up capital knowledge transfer? As far as funding is concerned, you can also apply for various forms of state aid in Slovenia granted through public calls for applications. The conditions of the call for applications must be checked in every case: ABC • what the state aid is and what preconditions are attached; of intellectual • which companies are eligible to apply; property • which investments are eligible for state aid; • which countries are excluded from participating by the rules; • the period of eligibility of the operation. Hand in hand with industry The Slovenian Ministry of Economic Development and Tech- nology designs policies and carries out programmes and measures to promote entrepreneurship, the development of From idea SMEs and the enterprise support environment, and measures to market to promote technological development and the development of key competencies (creativity, entrepreneurship, innovation) among young people. Among other things, it also organises voucher-based incentives for the growth and development of SPIN-OUT companies. The Slovene Enterprise Fund (SEF) also carries out COMPANIES specific measures alongside those of the Ministry of Economic Development and Technology. The enterprise support systems provide two types of support: Examples of • financial support through calls for applications or under more good practice favourable terms, the provision of access to business premises; • support in the form of information-provision, guidance, consultancy and training. Useful links 79 Slovene Enterprise FundB Foreword The SEF is a state-level financial institution set up to allocate financial support and incentives to the enterprise sector in Slovenia. Every year, the SEF invites applications for state aid for development and expansion investments aimed at small and Glossary micro enterprises in Slovenia. of terms The financial incentives are aimed at two target groups: • enterprises that are less than five years old (programme ‘Young enterprises’); • enterprises that are over five years old (programme ‘SME5+’). About the Knowledge Transfer Office As part of the programme ‘Young enterprises’, the SEF has devised a range of products for young, innovative enterprises. These products accompany the enterprise from start-up (or the start of product development), through verification of market potential, and onwards towards entry onto the market and ex-What is pansion to new markets. It therefore helps young enterprises knowledge through the following stages of development: transfer? 1. development stage - product development and start-up incentives in the form of grants: • P2 incentives for the start-up of innovative enterprises (subsidies of up to EUR 54,000), ABC • P2R incentives for the start-up of enterprises in problem of intellectual areas with high unemployment (subsidies of up to EUR property 40,000), • P2L incentives for the start-up of wood-using enterprises (subsidies of up to EUR 40,000); Hand in hand 2. development stage - entry onto the market and seed capital: with industry • SK75 convertible loans (up to EUR 75,000), • direct capital for growth of innovative enterprises (minimum investment EUR 100,000, up to EUR 2,400,000); 3. development stage - rapid global growth and venture cap-From idea ital: to market • entry into the ownership structure and management of the enterprise in cooperation with capital investments from private investors (venture capital and mezzanine capital). SPIN-OUT Under the programme ‘SME5+’, the SEF helps enterprises via the COMPANIES following products: 4. development stage, aimed at further growth: • P7 micro-credits for micro and small enterprises at the na-Examples of tional level (up to EUR 25,000), good practice • P7R micro-credits for micro, small and medium-sized enterprises in problem areas (up to EUR 25,000), • P1 plus guarantees for bank loans with interest rate subsidy, in cooperation with participating banks in Slovenia, and Useful links 80 guarantees and interest rate subsidies given for loans of up to EUR 1.25 million. Foreword As young enterprises are often exposed to considerable risks that compromise their success on the market, it is vital that these enterprises have access to a support environment in the form of advisers and mentors who can help them through the critical Glossary points of company growth. The SEF also runs the ‘SEF TWIN’ scheme, which pairs financial incentives with access to the rele-of terms vant knowledge and experience of mentors20. Silicon GardensB About the Knowledge Silicon Gardens is designed to help founders of start-ups to Transfer Office build a team, an idea and a company at the start of their journey, thereby equipping them to become competitive on international markets. The Silicon Gardens angel fund invests between EUR 20,000 and 40,000 in five to ten companies in their first year of operation. The chief aim is to enable teams with great potential What is to research international markets, affirm their ideas and make knowledge those ideas ready for further funding. In exchange for investment, transfer? the fund acquires a 5-15% share in the company. The company is also allocated a mentor (one of the members of the investors’ fund). ABC RSG CapitalB of intellectual property RSG Capital is a venture capital firm whose mission is to fill the capital gap or make up the funding shortfall for enterprises during their early stages of development. It invests in enterprises in early stages of development that are already generating rev-Hand in hand enue or are just about to commercialise their products, and in with industry enterprises that require capital in order to drive an expansion of their business operations. With its experience of managing companies and its network of partners in Slovenia and abroad, it provides entrepreneurs not only with financial assistance but also with more efficient business operations, and helps them to From idea optimise their business model and financial plan, open up sales to market channels more quickly and make connections with research institutions. SPIN-OUT ABC AcceleratorB COMPANIES The ABC Accelerator brings new enterprises face to face with industry partners, investors and mentors. Its aim is to enable individuals from Eastern Europe to realise their good ideas through Examples of a three-month programme. Over the course of the programme, good practice the new enterprise affirms and develops its product, builds a good business model, gathers funding, and makes initial links 20 The most recent product and incentives are presented on SEF‘s web siteB. Useful links 81 with customers. The initial investment is worth between EUR 15,000 and 25,000 per start-up. This ensures that all the costs Foreword are covered for the duration of the programme. In addition, the accelerator also offers premises, an IBM Cloud, a Microsoft licence and the mentoring services of more than 120 business angels and professionals from industry and enterprise. The Glossary highlight of the mentoring programme is ‘Demo Day’, where of terms enterprises present themselves to an audience of strategic and financial investors. This can lead to increased investment for the enterprise. About the Business Angels of Slovenia Knowledge B Transfer Office The Business Angels of Slovenia was the first formal organisation of business angels to be established in the country. It brings together top Slovenian businessmen and women prepared to invest in companies in their initial phase of growth. Business an-What is gels become part-owners of the company. In addition to capital, knowledge they also provide a realistic assessment of your business plan, transfer? education and training in business, knowledge of how to build a business, a swift and effective investment process, and quicker access to venture capital. The organisation also works with other business angel and investor groups at home, in Europe and ABC worldwide. of intellectual property In addition to the capital-raising possibilities outlined above, there are also subsidies and other forms of financial assistance available from the following organisations and institutions: • Hand in hand Agency of the Republic of Slovenia for Agricultural Markets and Rural Development with industry B (support for the establishment and development of micro enterprises); • Employment Service of SloveniaB (subsidies for self-employment and the occasional provision of grants for self-employment); From idea to market • Slovenian Regional Development FundB (repayable funds for initial investments in the fields of enterprise, agriculture and regional development); • SID BankB (provision of favourable funds for companies and SPIN-OUT insurance for export operations); COMPANIES • Eco FundB (provision of favourable funds for investments in environmentally minded projects and energy efficiency); • Spirit SloveniaB (provision of project grants). Examples of good practice There are also various awards and incentives that enable you to verify the value of your idea and business plan, such as the Rector's award for the best innovation of the University of Ljubljana, the Falling Walls Lab Ljubljana, the Climate-KIC and so on. Useful links 82 Business plan Foreword A business plan is most often the first thing we are faced with when setting up a new company. It is the foundation of a good business. It sets out the main business policies, along with any risks and short-comings associated with realisation of an enterprise idea. A business Glossary plan enables you to check whether your enterprise idea has traction, of terms define your company’s vision, mission and goals, and determine the operational strategy. Business plans used to be significantly more extensive than they are today, although this obviously depends on the target audience. About the There are several sets of instructions available on the internet on how Knowledge best to formulate a business plan. If we examine closely all the sec-Transfer Office tions of the business plan as set out below, we can see that writing is a question of good organisation, the establishment of plans and their insertion into the templates provided. The templates are described precisely in each section: what should be inserted, how the details What is are to be written and when each section should be addressed. knowledge To write a business plan, you must have good knowledge of the transfer? problem you are trying to solve with your business idea, of the solution itself, and of the fields of finance and marketing. ‘Business models’ can help you in this process, enabling a mechanism to be established through which your company can obtain finance. Once ABC our business model is set out, the writing of the business plan is of intellectual merely a case of formally putting it into words. property ‘Lean Canvas’ is the latest business model. It is tailored to start-up companies and is distinguished by the fact that it is not too extensive in scope— indeed, it comprises only one page and can be adapted as you go along. It is used to summarise the essence of your prod-Hand in hand uct, and also distributes all the key points evenly, thereby forcing a with industry start-up to examine all of them closely. The biggest problem faced by newly established companies is that they focus too heavily on the product, to the detriment of other issues. New companies are tasked not only with managing the product, but also with ensuring From idea transfer to the market and commercial realisation. to market The key issues to be considered when writing a business plan are: • the problem itself (outline between one and three problems that have to be resolved for a potential customer); SPIN-OUT • the customer segment (the target customers whose problem is COMPANIES solved by your idea); • unique value proposition (why you are different from the competition and worthy of attention); • the solution (outline all the existing solutions on the market that Examples of solve the problem); good practice • channels (who your customers are and how you can reach them); • revenue streams (how you will create revenue on the market through your product, service, etc.); Useful links 83 • cost structure (list of all operating costs); • Foreword key indicators (key numbers that you will measure to get an idea of how well you are progressing); • unfair advantage (the ways in which you are better than the others, the advantages that will keep you on the market). Glossary of terms PROBLEM SOLUTION UNIQUE VALUE UNFAIR CUSTOMER Top 3 Top 3 PROPOSITION ADVANTAGE SEGMENTS problems characteristics A single clear Not possible Target and convincing to easily copy customers About the message on how or buy Knowledge you are different and KEY INDICATORS CHANNELS Transfer Office why your product is Key measurable worth buying Path to activities customers COST STRUCTURE REVENUE STREAMS Costs of attracting customers Revenue model What is Distribution costs Total value knowledge Hosting Income transfer? Staff, etc. Gross margin The Lean Canvas is taken from a business framework (http://www.businessmodelgener- ation.comB) and is registered under a Creative Commons Attribution-Share Alike 3.0 Unported licence. ABC of intellectual These points are described in detail in an e-book titled Running property Lean. This one-page business model is quicker to complete than a business plan (you can write it in an afternoon), more concise Hand in hand (because it only comprises one page, with only the really impor-with industry tant information included) and easier to read. From idea Setting up a new company to market and acquiring founding capital Once you have conducted market research and verified that your enterprise idea can be realised, you must then start setting up SPIN-OUT the company. The procedures for doing this have been simplified COMPANIES significantly and made more beneficial in recent years. The first question you have to ask yourself when setting up a company is what form that company will take. You have a choice between Examples of sole trader (‘samostojni podjetnik’ or s. p.) and limited liability good practice company (‘družba z omejeno odgovornostjo’ or d. o. o.), although there are also unlimited liability companies, limited partnerships, publicly limited companies, social enterprises, institutes and the like. However, we will only address limited liability companies Useful links 84 and sole traders below, simply because these are the forms most commonly used. Foreword A company, whether an s. p. or a simple d. o. o., may be set up at a physical ‘one-stop shop’ SPOT (VEM) OfficeBor online via SPOT portalB (only in Slovene)21 . You wil need a digital certificate if you decide to register your business online at the SPOT portal. If Glossary you would like to set up a multi-member d. o. o., the services of a of terms notary-public must be engaged. Before setting up a company, it makes sense to learn about the differences between the various organisational forms taken by About the companies in Slovenia. Knowledge s. p. d. o. o. Transfer Office Personal YES (liable with your NO (liable only with the liability personal assets) capital of the company) EUR 7,500 (may be Initial capital Not required in cash, assets or a What is combination thereof) knowledge Simple procedure (free transfer? of charge) Set-up costs Free of charge Complex procedure (using a notary-public in accordance with the ABC tariff of notarial fees) of intellectual Progressive taxation in line with the level of profit and the system property of income tax bands (* upon fulfilment of certain conditions, profit Taxation Corporate income tax, may be taxed at a fixed rate of 20%, of profit always at the same rate taking into account normalised expenditure). (19%) Hand in hand Progressive taxation in accordance with industry with the system of income tax bands (16%, 27%, 34%, 39% and 50%). Simple bookkeeping Keeping Double-entry bookkeeping A sole trader claiming Double-entry From idea books of normalised tax expenses bookkeeping to market account does not need to keep books of account. Business The freedom to freely You can freely dispose of dispose of cash in the SPIN-OUT account - cash in the account. account is significantly COMPANIES cash restricted. The profit registered by an A d .o. o. pays the s. p. is also the sole trader’s company owner’s Salary salary, which means that salary, which means Examples of salary cannot be claimed as that it is counted as an an expense. expense. good practice 21 Non-residents of the Republic of Slovenia have to obtain a Slovenian tax number before starting to set up a company in Slovenia. Useful links 85 Arranging a bank loan Loans - Arranging a bank loan is easier, which means Foreword funds from is more difficult and the that a d. o. o. is a more calls for options for applying appropriate form if you applications for funds from calls for applications are limited. wish to apply to a call for applications. Glossary SOURCE (SLOVENIAN BUSINESS POINT) of terms When you have decided which business form best corre- sponds to the kind of business you will be doing, you have About the to provide the following information: Knowledge Transfer Office a) Company/business name Every company must have a name under which it oper- ates. Every company name must incorporate an indica- What is tion of the company’s activity, the legal organisational knowledge form of the company (d. o. o. or s. p.) and an additional transfer? element that describes the company in more detail. In the case of an s. p., the name and surname of the sole trader must be included. An abbreviated company name may also be registered ABC and used alongside the full company name (at the least of intellectual it should contain an element that distinguishes the name property from the names of other companies, and an indication of the form the company has taken). The company name must differ clearly from the names of all other compa- nies. You may check the name in the AJPES Hand in hand B Business Register before you set up the company. with industry b) Date of entry or establishment of the company From idea If you are setting up an s. p., you may designate the to market date of entry in the Business Register of Slovenia. When setting up a d. o. o., you may not designate the date of entry yourself. SPIN-OUT c) Company business address COMPANIES For the company’s business address, choose the town, street and house number at which you will perform the activity or from which you will generally operate Examples of the business. If you are not the owner of the building good practice at the business address, you must enclose a certified declaration from the owner of the buildingB (in Slovene) in which they state that they allow you to operate the business from this address. Useful links 86 d) Contact details Foreword e) List of company representatives Ob registraciji d. o. o. je treba v podjetju določiti vsaj enega poslovodjo oziroma direktorja. Samostojni pod-Glossary jetnik lahko imenuje zastopnika oziroma prokurista, ni pa of terms nujno. Če zastopnika ne imenujete, pomeni, da ste kot s. p. hkrati tudi zastopnik. About the f) Company activity Knowledge You need to select a core activity when setting up a Transfer Office company. The core activity is the one that delivers the main bulk of income. It is also recommended that you select other activities that you intend to pursue. There is no limit to the number of activities you may choose. What is All of them are entered in the company’s articles of as- knowledge sociation. transfer? If you set up an s. p., you should choose only those activities you will actually pursue or that will provide the bulk of your income. ABC In both cases of company establishment, the activities of intellectual are chosen from the code list contained in the Standard property Classification of Activities (SKD)B (in Slovene). Hand in hand with industry From idea to market SPIN-OUT COMPANIES Examples of good practice Useful links 87 REGULATING RELATIONS BETWEEN THE Foreword UNIVERSITY OF LJUBLJANA AND A SPIN- OUT COMPANY Glossary of terms The University of Ljubljana strives to nurture a culture of innovation, openness, interconnection and willingness to take risk. With measures to promote entrepreneurship and a function- ing enterprise support environment in place, it encourages About the staff and students to embark on their own enterprise journey. Knowledge Before establishing a company, an employee must obtain the Transfer Office consent of UL and the newly established company must ob- tain authorisation to use UL knowledge by signing a licensing agreement or an agreement on the transfer of intellectual property rights. What is knowledge Consent to the establishment of a spin-out transfer? company, the performance of work within it, and conflicts of interest22 ABC Every employee who plans to set up a spin-out company, and of intellectual assume a managerial position or act as a procurator within it, property must go through the KTO to obtain consent from UL and the member institution at which they work.23 The consent-granting procedure begins with completion of the Spin-Out Company Establishment FormB (in Slovene), which can be found on the Hand in hand KTO’s website. with industry Owing to a potential conflict of interest, it is not desirable for an employee to simultaneously perform work for a spin-out company that is, by its nature or content, similar to the work they perform at UL (e.g. research work or expert consultancy From idea on topics similar to those in which are engaged as part of their to market employment at UL). If an employee wishes to work for and be employed by a spin-out company, they have the option of signing an agreement SPIN-OUT COMPANIES 22 The recommendations below are based on legal provisions and internal UL regulations (chiefly the Rules on Avoiding Conflicts of Interest and on the Conditions for Performing Work Outside the University of Ljubljana), and take into account the specific characteristics of spin-out companies. Examples of 23 Article 39 of the Employment Relationships Act (ZDR-1, The Official Gazette RS, good practice No 21/13, with subsequent amendments) provides as follows: ‘For the duration of the employment relationship an employee may not, without the employer‘s written consent, perform work or conclude business on their own or another‘s behalf which falls under the business activities actually carried out by the employer and constitutes or could constitute competition for the employer.’ Useful links 88 with UL suspending their employment contract.24 The employee remains employed, but their employment-related rights are sus-Foreword pended for the agreed period of time. This lowers the risk for the employee, as they then have the option of returning to their job at UL once the period determined in the agreement expires. In this way, UL reduces the personal risk of an employee who opts Glossary to embark on an enterprise path. of terms An employee who wishes to retain their employment at UL and is at the same time the owner of a company and occupies a managerial position within it must, under the terms of the Rules on Avoiding Conflicts of Interest and on the Conditions for Per-About the forming Work Outside the University of Ljubljana, and of other Knowledge laws and rules, adhere to the rules set out below. Transfer Office 1. R&D collaboration with a spin-out company Research and development collaboration between a spin- What is out company and a UL employee may only take place via knowledge the relevant member institution. It is therefore the member transfer? institution that signs the written R&D collaboration agreement with the company. The price determined for collab- oration must be the market price, must cover all the costs relevant to the research, and may not enable a company ABC to obtain a material benefit because of its connection with of intellectual an employee. An employee may not take part directly in property negotiations between UL and the company. 2. Protecting trade secrets Employees must protect all trade secrets and other con-Hand in hand fidential information of UL, its member institutions and with industry external partners, and may not use them to carry out spin- out company activities, nor make them available to third parties without the written permission of UL or the member institution. From idea to market 3. Use of premises and other property Employees may not, without the written permission of UL or a member institution in the form of a compensation SPIN-OUT agreement signed in accordance with the published price COMPANIES list which reflects market conditions, use premises, soft- 24 Article 11 of the Rules on Avoiding Conflicts of Interest and on the Conditions for Examples of Performing Work Outside the University of Ljubljana provides that an employee may, for the purpose of performing an economic activity, request the sus-good practice pension of their employment contract for a period of up to two years, during which time their contractual and other rights are placed on hold, along with the obligations deriving from employment, and they receive no remuneration from UL. A period of suspension may not last longer than four years in total. Useful links 89 ware, research equipment and other resources of UL or a member institution for the purposes of spin-out company Foreword business. When using physical assets, a spin-out company must act in line with the Physical Assets of the State and Local Government Act and its implementing regulations (intention to let property, public collection of tenders, Glossary etc.). of terms 4. Outflow of intellectual property Employees may not ascribe or transfer to a spin-out About the company inventions and other knowledge created with- Knowledge in the context of their employment at UL, or enable the Transfer Office use of inventions and other knowledge without a prior written agreement signed between UL and the spin-out company. What is 5. Notice of a potential conflict of interest knowledge transfer? Employees must avoid all circumstances that could lead to a conflict of interest, and inform their superior at once should such circumstances arise. ABC 6. Non-compete obligation of intellectual property Employees must inform the KTO before embarking on business or carrying out an activity that could constitute competition to UL. Hand in hand 7. Separation of roles with industry Employees must strictly separate their activities for a spin-out company, and may not use the UL trademark for these activities without the written permission of UL. From idea to market SPIN-OUT COMPANIES Examples of good practice Useful links 90 Granting a licence or transferring intellectual property rights Foreword A spin-out company must, before embarking on the com- mercial exploitation of knowledge created at UL, sign an agreement by which the rights to the knowledge it wishes Glossary to acquire are transferred for the purposes of commercial of terms exploitation. The knowledge may be transferred in full by means of an assignment agreement or a right to use that knowledge granted by means of a licensing agreement. More details on the signing of these types of agreement may About the be found in the Agreements on the transfer of intellectual Knowledge property rights section. Transfer Office Under the terms of state aid rules and by adherence to es- tablished international frameworks, UL is obliged to grant rights to commercial exploitation to a spin-out company What is under market conditions. This chiefly means that UL may not knowledge transfer rights under more favourable conditions than those transfer? it would apply to other entities on the market. Neverthe- less, as UL is aware of the vulnerability of newly established companies and the importance of generating revenue in the first few years, it has various instruments in place that are de-ABC signed to support spin-out companies, such as an introduc- of intellectual tory payment grace period, and the option of purchasing property knowledge in the event of the entry of an investor). Using the name and logo of the University of Ljubljana Hand in hand The rights to use the name of the University of Ljubljana are with industry usually set out in the intellectual property transfer agreement. A spin-out company may not make use of the University From idea of Ljubljana’s name or logo, although these may be used to market as a reference for the purposes of calls for applications to obtain financial subsidies. A spin-out company must request written permission every time it intends to use UL as a reference in order to acquire business.25 SPIN-OUT COMPANIES We much encourage spin-out companies to state explicitly that they are a ‘University of Ljubljana spin-out company’. UL may prohibit the use of its name in the event of abuse or any potential damage to its reputation. Examples of good practice 25 General Recommendations of the University of Ljubljana Governing Board for the Transfer of Knowledge into Practice, adopted on 18 De-cember 2014. Useful links 91 What do I need to do … Foreword … before starting a spin-out company? Glossary of terms About the Knowledge Transfer Office X BUSINESS MODEL: X I have studied my business idea closely. What is X I have an innovative product or service. knowledge X I have looked into where the product will be developed, transfer? manufactured and sold. X I have studied the competition, the size of the market and the customer segment. X I have prepared a business model (‘Lean Canvas’). ABC of intellectual property X TEAM: X I have an enterprise team whose skills complement each other. X Individuals’ roles have been clearly defined. Hand in hand X Individuals have the appropriate knowledge and skills. with industry X Ownership shares in the company have been adequately defined. X The team has good contacts who will assist it along its enterprise path. From idea X I know a mentor who will be able to help us on our enterprise to market journey. SPIN-OUT COMPANIES Examples of good practice Useful links 92 Foreword Glossary of terms About the Knowledge Transfer Office X FUNDING: X I have formulated a financial plan for the next three years (revenue, expenditure). What is X I have secured funding for the first three years. knowledge X I have reviewed the options for applying to calls for transfer? applications. X I have looked into how to gather funds for research and development. X I have prepared a pitch and a proposal for investors in case I ABC wish to acquire investment. of intellectual X I have prepared substantive proposals for the signing of a property licensing agreement. X SUPPORT ENVIRONMENT: Hand in hand with industry X I have presented the idea to the KTO. X I have reviewed the options for legally protecting intellectual property. X I have notified the KTO of a service invention. From idea to market X I have enquired at the KTO regarding the signing of a licensing agreement. X I have looked into the mentoring opportunities at LUI. X I have checked the calls for applications published by the SPIN-OUT Slovene Enterprise Fund. COMPANIES X I am familiar with the Rector’s Award. X I have defined relations with the UL member institution at which I currently work. Examples of good practice Useful links 93 CTICE EXAMPLES OF GOOD PRA 94 Foreword Examples of good practice Glossary of terms About the Knowledge Transfer Office ACIES BIOB Founded as a start-up in 2006, Acies Bio is an example of good practice in biotechnology. The company develops What is new microbial strains, bioprocesses and bioactive com- knowledge pounds that improve people’s lives, and fosters sustain- able solutions for the pharmaceutical, food and chemical transfer? industries. Its business model is based on two pillars: contractual research for industry and in-house research. It is a research-oriented company that develops solutions for ABC the biotechnological production of high-added-value mol- of intellectual ecules, while seeking partners to market its products. In property 2018 they entered a partnership with the Chinese biotech- nology company Desano. This former start-up employs 37 people, and has a total workforce of between 50 and 60 if external contractors are included. They generated reve- Hand in hand nues of more than EUR 3.15 million in 2018. with industry KINESTICAB Kinestica is a spin-out company that engineers biomed- From idea ical rehabilitation technology. It was established at the to market UL Faculty of Electrical Engineering’s Laboratory for Ro- botics. The company develops and produces medical devices for neurological post-stroke recovery, traumatic brain injury, multiple sclerosis and other conditions. The Spin-out company is presently active in Europe and Asia. companies Its first product is Bimeo, a sensor-based system for neu- rological rehabilitation using virtual reality. The system allows patients to perform therapeutic tasks in a virtual reality environment by moving their arms. Using various EXAMPLES OF modes, the therapy can be adapted to patients at differ- GOOD PRACTICE ent stages of rehabilitation. Useful links 95 VITABITSB Foreword Vitabits is a platform developed by the Laboratory for Data Technologies at the Faculty of Computer and Infor- mation Science, and enables the remote monitoring and telemedical treatment of patients. In 2018 the potential Glossary of Vitabits was recognised by Ipmit d. o. o., which went of terms on to purchase the intellectual property rights related to the product. Ipmit will upgrade the platform in coop- eration with the faculty as part of the SOSTOP project, co-financed by the Ministry of Economic Development About the and Technology, with the aim of developing a compre- Knowledge hensive system for remote monitoring and the telemed- Transfer Office ical treatment of patients. Telemedicine is experiencing significant growth glob- ally. The remote monitoring of patients with chronic What is diseases can substantially reduce treatment costs, since knowledge a virtual doctor’s consultation can be up to three times transfer? cheaper than a physical one. The telemedicine market is projected to grow to EUR 33 billion by 2022, with a potential customer base that includes health insurance companies, pharmaceutical companies, health resorts, ABC healthcare IT solution providers and telecommunications of intellectual operators. property ISKRATEL AND THE FACULTY OF ELECTRICAL ENGINEERING The Laboratory for Telecommunications, which operates Hand in hand within the Faculty of Electrical Engineering at UL, has with industry been collaborating with Iskratel, d. o. o., Kranj for several years in the fields of research and analysis, prototype development, development tasks, and the maintenance of solutions, as well as in the monitoring and proposal of From idea strategic policies. For each joint project, the client and to market provider agree on the topic, exact content and planned inputs, as well as the method of implementation and the financial estimates, all of which they define using a spe- cial form attached to the cooperation agreement. The Spin-out agreed collaboration forms the basis for joint applica- companies tions for major national and European R&D tenders. The collaboration results and solutions, such as Signalizacija Številka 7, Sigtran, Diameter and Radius, are also part of Iskratel’s product portfolio. EXAMPLES OF GOOD PRACTICE Useful links 96 Foreword Useful links Glossary • University of Ljubljana Knowledge Transfer Office: of terms https://ppz.uni-lj.si/en/B • European IPR Helpdesk: About the https://intellectual-property-helpdesk.ec.europa.eu/ Knowledge index_en/B Transfer Office • World Intellectual Property Organization: https://www.wipo.int/portal/en/B What is • European Patent Office: knowledge https://www.epo.org/index.htmlB transfer? • European Union Intellectual Property Office: https://euipo.europa.eu/ohimportal/enB ABC • Slovenian Intellectual Property Office: of intellectual http://www.uil-sipo.si/sipo/office/tools/home/B property • Copyright Agency of Slovenia: https://aas.si/en/home/B Hand in hand • EspaceNet (patent search): with industry https://worldwide.espacenet.com/B • Design view (database of industrial designs): https://www.tmdn.org/tmdsview-web/welcome#/ From idea dsviewB to market • TMView (database of trademarks): https://www.tmdn.org/tmview/B Spin-out • Ljubljana University Incubator: companies https://lui.si/english/B • Slovenia Business Point: http://eugo.gov.si/en/B Examples of good practice USEFUL LINKS 97 The University of Ljubljana Knowledge Transfer Of- fice is predominantly financed under the terms of the Consortium for Technology Transfer from Public Research Organisations to the Economy Sector (1 September 2017-30 June 2022)B.The investment is co-financed by the Republic of Slovenia and the European Union from the European Regional Devel- opment Fund. The aim of the project is to promote connections and cooperation between public re- search organisations and the business sector, and to bolster the competencies of technology transfer offices, researchers and companies. The Consorti- um includes the technology transfer offices of Jožef Stefan Institute, the University of Ljubljana, the Uni- versity of Maribor, the University of Primorska, the National Institute of Biology, the National Institute of Chemistry, the Agricultural Institute of Slovenia and the Faculty of Information Studies in Novo Mesto. 98 Our goals Cooperation with industry The Knowledge Transfer Office promotes collaboration between researchers and industry by creating opportunities for the two sides to make contact with each other. In cooperation with companies, it announces and publicises research challenges, and is also available to help researchers draft and review various types of contracts. Legal protection of inventions All forms of knowledge transfer are closely tied to the concept of ‘intellectual property’. The Knowledge Transfer Office takes the lead in formal procedures for claiming service inventions at the University of Ljubljana, and for securing legal protection for inventions and other forms of UL knowledge. Commercialisation of intellectual property The KTO strives to ensure that every new invention is brought to life by practical application. It supports researchers when reviewing the state of the art and evaluating the market potential of their knowledge. For every product or technology, they try to locate a suitable business partner capable of exploiting the invention on the market and creating added value. Establishing spin-out companies Establishing spin-out companies and start-ups is an important form of knowledge transfer to the commercial sector. The Knowledge Transfer Office helps researchers assess their business idea, and walks them through the procedure of starting a spin-out company. Knowledge Transfer Office University of Ljubljana Kongresni trg 12 1000 Ljubljana ipr@uni-lj.si  +386 1 2418 528  ppz.uni-lj.si/en/  Follow us on  www.linkedin.com/school/university-of-ljubljana Document Outline Foreword Glossary of terms About theKnowledge Transfer Office What is knowledge transfer? ABC of intellectual property Types of intellectual property rights Hand in hand with industry R&D agreements European projects Students’ final theses Protecting confidential information and materials What do I need to do … … when working with a business partner? From idea to market 10 steps to commercialisation Everything starts with an idea The claim of a service invention Legal protection of inventions Marketing of UL’s knowledge Paths of knowledge transfer Agreements on the transfer of intellectual property rights Distribution of innovation revenue What do I need to do … … when I invent something new at theUniversity of Ljubljana? Spin-out companies Towards starting a company Tips on starting a company Regulating relations between the University of Ljubljana and a spin-out company What do I need to do … … before starting a spin-out company? Examples of good practice Useful links