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June 19, 2019

Every company is – or should be – deeply concerned about protecting its intellectual property. Controlling the fate of a company’s IP is vital to success, especially amid the disruption caused by digital technologies ripping through traditional industries.


So it’s little surprise that questions about how to protect IP has emerged as a core issue for Supercluster projects, especially because all projects require collaboration between private sector companies. One source of information is NGen’s Intellectual Property Strategy, now available online.

The other way to get answers is to contact NGen’s VP of IP and Contracts Rhonda O’Keefe. In the following short interview, Rhonda explains how IP is treated in Supercluster projects, and why IP is so important in the digital economy.   

Who owns the foreground IP that comes out of Supercluster projects?
Legally, IP is owned by the person, company or organization that invented it. But alternative arrangements, such as sharing IP within certain markets or by technology, are always an option. IP developed during NGen funded projects will be owned and controlled by the company that creates it unless you and your partners agree to something different. Any arrangement should be negotiated in the Collaboration Agreement that governs the roles and responsibilities of each project participant.

How do I protect IP while meeting with potential partners?
You should never discuss sensitive or proprietary information without having protections in place. The best way is to file for any patents before entering into any discussions, and never discuss trade secrets. If you want to proceed with discussions that involve intellectual property, you should ensure you have a robust Non-Disclosure Agreement (NDA) or IP ownership agreement in place ahead of time.

Do I have to share my background IP with partners in the project consortium?
Project participants negotiate their own ownership rules and incorporate them into the collaboration agreement required for every project. Project participants who bring IP into a Supercluster project will likely need to grant a royalty-free, non-exclusive limited license to other partners for the project’s duration. The license can be limited to a specific use of the IP, such as for testing purposes or other uses needed to complete work on the project.  Any licensing of the IP after or outside of the project is up to you. 

Does every project need an IP plan and what does it look like?
Yes.  Every project requires an IP strategy, and NGen will be putting together guidance on how to do so.  In the meantime, feel free to contact me with any questions about building a plan. 

Do other members of the Supercluster get access to my IP?
Companies are encouraged to share the foreground IP developed in projects whenever possible – although no company is obligated to do so. NGen will be creating an IP registry of foreground IP created from projects that will be available to all members. Companies decide whether to post the foreground IP on the registry.

Here’s how it works. In conjunction with NGen, companies would provide a description of the IP, and provide a list of members they would consider negotiating a license with.  Companies retain the right of final approval to ensure they are comfortable with what’s being listed in the registry.

How can NGen help me with IP issues?
Ownership and control of intellectual property should be a priority consideration from the outset of every project application. NGen will help consortiums negotiate and mediate IP issues that arise as part of a project, as well as advise the companies on how to protect any IP that comes out of the projects.

NGen is also available to provide information on IP and help companies develop an IP strategy. We also plan to host workshops focused on IP issues in the near future.

Rhonda-2Rhonda O’Keefe is NGen’s VP of IP and Contracts. She has 15 years experience working for manufacturing organizations in both R&D and Intellectual Property positions.