Agriculture and Agri-Food Canada Intellectual Property Procedures (5 of 16)
Guidelines for Knowledge/Technology Transfer
Technologies developed by AAFC can be transferred by any of several accepted methods, ranging from broad dissemination, to licensing to a specific company, to facilitating the creation of a new start up company. AAFC technology transfer activities must achieve a right balance between disseminating the information for public good and support for commercialization.
In general, AAFC will follow the following principles with respect to technology transfer:
- Since time is of the essence, the most effective technology transfer mechanisms must be selected that are consistent with the goals and objectives of the department.
- Every effort should be made to facilitate and streamline the technology transfer process.
- AAFC must retain the right to use IP for further exploitation, including research and development, incorporating the IP into applications where necessary and feasible to address the goals of the Department.
- AAFC must strive to optimize the exploitation of its IP in all appropriate application fields and geographic territories. In order to achieve this goal, AAFC may, within each field of use and/or geographical territory, consider awarding a license to help assure the commercial success of the IP.
- Licensees must be selected based on their ability to exploit the technology, as evidenced by proposed IP investment plan, technical capability, skills, and financial resources.
- Licensing of IP must provide the licensee with direct benefits beyond those received by the general public to encourage exploitation.
- Licensing fees and royalties are an effective management tool for licensing as well as a means of ensuring a fair return for the Canadian public for access to the IP. Continuance, renewal or replacement of licenses awarded by AAFC will be conditional upon the licensee achieving predetermined performance milestones which are identified in the license agreements. Performance measurement (reporting) against these milestones will be required.
- In accordance with the AAFC IP Policy, all reasonable efforts will be made to ensure the security of the confidential information.
- All information relating to AAFC scientific projects must be managed in accordance with the Library and Archives of Canada Act (no disposal of non-transitory records without the consent of the National Archivist), the Privacy Act (protection of personal information and retention of personal information for at least two years following the last administrative use of that personal information), the Access to Information Act (protection for certain third party information), the Government Security Policy, and the Treasury Board Information Management Policy.
- AAFC will in no instance be liable to others for claims of indirect or consequential damages that may result from its technology transfer activities.
Procedures for Publications
Publication of study and/or research and development results can facilitate the dissemination and uptake of new technologies for the benefit of Canada. Care must be taken to prevent the premature disclosure of any information that can have any adverse impact on the value and potential commercial exploitation of IP. AAFC employees are responsible for:
- disclosing the research output to AAFC in accordance with the AAFC IP Policy and Procedures outlined in this Decision-Making Manual.
- obtaining guidance and direction from their supervisor and from the Director, OIPC regarding publication of research findings that are subject to an invention disclosure (PSIA).
- complying with the Treasury Board and AAFC Communication Policy when addressing third party audiences or publishing results of their work.
- complying with the Values and Ethics Code for the Public Service when invited to speak at conferences. Specifically, the Code prohibits public servants from soliciting or accepting economic benefits in most situations (such as travel expenses and honoraria). When any such offer is made to an AAFC employee, the employee must report the offer to his or her supervisor and consult with the AAFC Conflict of Interest Policy Centre.
- familiarizing themselves and conduct all of their research in compliance with the AAFC Science Ethics Policy Framework.
The publication of IP outputs that are deemed solely to contribute to knowledge are to be subject to !-- -->AAFC's Publishing Policies and Procedures.!-- (This link is not available to the extranet) -->
Procedures for Awarding Licenses
OIPC is responsible for the administration and support of all processes and procedures regarding the transfer of AAFC IP for commercialization.
Intellectual Property Resulting from Collaborative Research & Development Agreements (Collaborative Research and Development Agreements)
All IP resulting from collaborative research projects must be managed in accordance with the provisions of the CRDA. AAFC will ensure that the CRDA be subjected to the Risk Management Framework outlined in Annex F and includes clear and specific provisions on IP ownership and licensing options and mechanisms. In this context, AAFC will consider including an option in the agreement that would offer a private sector collaborator the first opportunity to negotiate a license to commercially exploit the Foreground IP. However, in exchange AAFC will retain the right to license or further exploit the Foreground IP for research purposes.
AAFC may consider a cross licensing agreement with a potential licensee where AAFC can, in exchange, receive a license to a technology owned by the licensee as consideration for the license of AAFC technology. AAFC must conduct stringent due diligence in valuation before giving any consideration to a potential agreement.
Request for Proposal for Technologies
Licensing opportunities for unencumbered technologies can be made competitively available on the AAFC website. The listing typically indicates a fixed time (e.g., 30 days) from first posting to receive an expression of interest from potential licensees. If more than one company responds, then a
"Request for Proposal" (RFP) is solicited. OIPC is responsible for the administration of the RFP process.
A check must first be done to determine if there are any prior commitments made to external parties such as collaborators or funding agencies. Prior commitments could include such things as an option to license, prior notification of an emerging technology, sharing of revenues, etc. If prior commitments exist, then a RFP may not be the appropriate method of deploying the technology.
An information package for the RFP must be assembled containing the following:
- A mailing list of key companies identified that could be interested in the technology;
- Notice for RFP;
- Description of technology;
- Key scientist biographies, when appropriate;
- Criteria to base evaluation of proposals;
- Guidelines for submitting proposals;
- Template Confidentiality Agreement (A confidentiality agreement may need to be executed with companies who request to discuss the technology at a level that would involve the exchange of confidential information);
- Template License (including list of non-negotiable clauses);
- License negotiation timeline, with notation to the effect that if an Agreement cannot be reached within the timeline, the opportunity to license will be extended to the next qualified applicant;
- Any relevant economic or market analysis that might have been done on the technology; and
- Web site for further information/contact information.
A Selection Committee is responsible for reviewing and rating each proposal. The proposals are rated based on the predetermined criteria (which have been provided to the companies in the RFP package.) The proposals are ranked in order of preference.
A license (which can also be preceded by a Letter of Interest) is then negotiated with the successful candidate based on the template that was provided in the RFP process. A deadline for the completion of the negotiations will have been predetermined in the RFP Guidelines. An appropriate amount of negotiation time must be allowed, however, a situation where negotiations extend interminably must be avoided, as this situation delays deployment and diminishes the realizable value of the technology. Long drawn-out negotiations that effectively shelve the technology must not be allowed. If both parties are truly negotiating in good faith, then the deadline can be extended.
Examples of RFPs, along with Guidelines for Submitting Proposals, Evaluation Criteria, and sample agreements are posted in AAFC's website.
Request for Proposals (RFP) for Plant Varieties
Plant Variety Licenses are generally awarded through an open, RFP process each year. Plant Variety Licenses are standard, they are renewable every five years, and are sole in nature. The choice of the licensee will depend on the same principles used to select a collaborator, namely financial stability, market and distribution capabilities, management acumen and scientific expertise. The only conditions that vary are the royalty rates which are predetermined depending of the type of crop: cereal, oilseed, legume, or developed for a specialty market.
The RFP process for varieties is generally the same as the process described in Section 6.3.2. There are a few differences that apply to the varieties that must be recommended by a Recommending Committee early each calendar year. It is also possible for varieties that have been recommended from previous years to be included in the current year's RFP (i.e., increase of breeder seed).
In order to ensure that no varieties are excluded from the process, a notice is sent to all AAFC breeders outlining the process and requesting information on varieties that may be released through the RFP process. The breeders are asked to provide both a short and long description, any encumbrances, and other related information on the line to be marketed through the RFP.
Companies are e-mailed and faxed to inform them that the information is available on the AAFC web site.
Two committees are set up to evaluate the proposals based on the predetermined evaluation criteria (East and West). A license is then negotiated with the successful proponent.
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