Intellectual Property Protection and Technology Transfer Processes at FCE CTU in Prague

 

The main contact person for consultancy in technology transfer is the Technology Scout, who can be addressed by researchers in any phase of the technology transfer process. The technology transfer processes at FCE CTU in Prague are internally managed by the Methodology, which can be found here. The Methodology regulates all steps and explains the roles of all participating parties at FCE CTU. A shared file with all existing documents is always created for the Originators/Authors. All employees have access to the file containing model documents. These are, in particular, the following documents:

• Licence Agreement model for contract research purposes
• Internal Agreement model
• Joint Ownership Agreement model
• Licence Agreement model
• NDA model – non-disclosure agreement

 

A list of typical situations for Originators:

1. I have an achievement that seems to have a potential
2. I have an achievement that I want to, or I have obligated myself to protect
3. I have an achievement which is a subject of interest
4. I am negotiating a licence agreement for a patent / utility model
5. I have concluded a licence agreement and need to check fulfilment (CTU fulfilment and remuneration payment to CTU staff)
6. I am concluding a performance contract with a potential for the rise of industrial rights
7. I am considering whether to extend the licence agreement validity and / or extend protection
8. None of the options offered: contact the Technology Scout

 

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1. I have an achievement that seems to have a potential

1. I contact the Technology Scout, who will guide me through the whole commercialization process.
2. The following steps typically take place:
   1. evaluation of the achievement potential (originator + TT professional guarantor for the respective branch + Technology Scout)
   2. notice of the achievement to DPMTT (and Rector´s decision on exercise of CTU rights to the achievement)
   3. conclusion of an internal agreement, which specifies the roles of individual participating parties and basic commercialization parameters
   4. intellectual property protection (if relevant)
   5. trade discussions (e.g. licence agreement) and conclusion of a business relationship
   6. remuneration payment according to receipts from commercialization
3. Originators/Authors are provided access to a shared file in which they find all relevant documents related to their commercialization case.

Necessary enclosures – models:

• Licence Agreement model for contract research purposes
• Internal Agreement model
• Joint Ownership Agreement model
• Licence Agreement model
• NDA model – non-disclosure agreement

 

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2. I have an achievement that I want to, or I have obligated myself to protect

1. I contact the Technology Scout, who will check which processes were carried out and which must be complemented.
2. The notice of an R&D achievement will typically be filled in to be successively handed over to DPMTT to start the process of the achievement acceptance to be administered by CTU. Without this notice, no patent / utility model can be registered on behalf of CTU.
3. After taking administrative steps, the Technology Scout supplies a contact to a patent representative. The registration of a patent or another application is performed by the CTU patent representative or another patent representative who has been authorized by the Rector.
4. If the achievement is accepted to be administered by CTU, the next commercialization steps follow (if they are desirable). The first step is the conclusion of the Internal Agreement, which regulates the roles of all participating parties (originator/author – department/workplace – FCE – DPMTT).
5. Originators/Authors are provided access to a shared file in which they find all relevant documents related to their commercialization case.

Necessary enclosures – models:

• Licence Agreement model for contract research purposes
• Internal Agreement model
• Joint Ownership Agreement model
• Licence Agreement model
• NDA model – non-disclosure agreement

 

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3. I have an achievement which is a subject of interest

1. I contact the Technology Scout, who will check if all necessary administrative steps have been taken (if not, these steps will be complemented).
2. The Internal Agreement will be drafted (if it does not already exist) and intellectual property protection considered (if it has not already been considered).
3. The Technology Scout will serve as the main contact person for commercialization. After complementing all administrative steps, drafting the Internal Agreement and, potentially, ensuring intellectual property protection, the Technology Scout will supply a licence agreement or another agreement model and assist in trade discussions if the originators/authors are interested.
4. The Technology Scout sees to the signature of the licence or another agreement by the Dean, or sends it to DPMTT to obtain the Rector´s signature.
5. Originators/Authors are provided access to a shared file in which they find all relevant documents related to their commercialization case.

Necessary enclosures – models:

• Licence Agreement model for contract research purposes
• Internal Agreement model
• Joint Ownership Agreement model
• Licence Agreement model
• NDA model – non-disclosure agreement

 

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4. I am negotiating a licence agreement for a patent / utility model

1. I contact the Technology Scout, who will check if all necessary administrative steps have been taken (if not, these steps will be complemented).
2. The Technology Scout will supply a licence agreement model and will intermediate discussions with the FCE CTU Lawyer, who will regulate the legal issues in the licence or another agreement.
3. The Technology Scout may assist in trade discussions with a business partner.
4. Originators/Authors are provided access to a shared file in which they find all relevant documents related to their commercialization case.

Necessary enclosures – models:

• Licence Agreement for contract research purposes
• Internal Agreement
• Joint Ownership Agreement

Models necessary for subsequent steps:

• Licence Agreement model
• NDA model – non-disclosure agreement

 

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5. I have concluded a licence agreement and need to check fulfilment (CTU fulfilment and remuneration payment to CTU staff)

1. I contact the Technology Scout, who will check if all necessary administrative steps have been taken (if not, these steps will be complemented).
2. The Technology Scout will see to the shared file in which all relevant documents will be available for originators´/authors´ use.
3. The Technology Scout will communicate information from the Economic Department, which has the licence agreement and the Internal Agreement in the register.

Necessary enclosures:

• licence agreement for contract research purposes
• Internal Agreement
• Joint Ownership Agreement
• Licence Agreement

 

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6. I am concluding a performance contract with a potential for the rise of industrial rights

1. I will incorporate a licence agreement in the performance contract pursuant to the Methodology.
2. If I do not agree with such an agreement or if it forms an obstacle to the conclusion of an agreement, I contact the Technology Scout. The licence agreement terms are laid down by the FCE Commercialization Committee by previous agreement.

Necessary enclosures:

• Licence Agreement for contract research purposes
• Internal Agreement
• Joint Ownership Agreement

Models of other enclosures:

• Licence Agreement model
• NDA model – non-disclosure agreement

 

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7. I am considering whether to extend the licence agreement validity and / or extend protection

1. I contact the Technology Scout, and we prepare background materials for the Commercialization Committee.

Necessary enclosures:

• licence agreement for contract research purposes
• Internal Agreement
• Joint Ownership Agreement
• Licence Agreement
• Marketing study