IP-Transfer 3.0 – The Pocketknife Transfer

IP-Wahl-O-Meter for start-up teams

The IP-Wahl-O-Meter is aimed at start-up teams at universities and research institutions who are:

(1.)
seeking to endow their spin-off, which was created at the scientific institution, with intellectual property or ownership rights.

(2.)
starting the negotiation process with the technology transfer organization or patent management of their alma mater.

The Beta Version of the IP-Wahl-O-Meter was developed by Christoph Heynen, Assistant Head of S-Outreach and Head of the AG Gründungsberatung & Entrepreneurship at the Friedrich-Alexander-Universität Erlangen-Nürnberg, as well as with input and feedback from the IP Transfer 3.0 pilot group and start-up teams.
TARGETED AIMS
The aim of the IP-Wahl-O-Meter is to familiarize founders with the common types of IP rights granted, including the basic conditions, and thus to prepare them for potential discussions with their respective scientific institution. At the same time, based on a questionnaire, founders will be given an approximate assessment of which application models might be more suitable for their particular IP situation and which appear less suitable.
The reality of IP negotiations is multifaceted. The parties involved often agree on forms that deviate from the typical application models or combine the conditions of different models. The IP-Wahl-O-Meter intends to deal with this by providing an initial classification; however, it neither claims to be exhaustive nor can it reliably predict a specific negotiation result or application model. More likely than not, the respective scientific institutions have different IP application strategies and policies that might differ from the application models considered here.

Nevertheless, this tool provides start-up teams with an assessment based on the experience of a group of transfer professionals from different universities and research institutions, and so it can introduce and highlight a scope of designs and solutions for potential negotiations.

This tool deliberately only focuses on a basic assessment of the different application model types; however, it does not consider a precise evaluation of the conditions of IP and pricing. Although these are an essential subject of discussion for the continuation of IP negotiations, they heavily depend on the individual case as well as on the scientific institution and can hardly be covered by a single tool.
LINK: IP-Modell Wahl-O-Meter (Beta)

The following article by Extantia Capital provides information on structuring options and price components as well as potential quantitative framework conditions that could be significant when negotiating contract terms:
"Negotiating technology transfer agreements like a pro".

If you have questions or feedback on the IP-Wahl-O-Meter, please send an email to the Stifterverband.

Guideline for the standard market valuation of IP during the spin-off process with IP scorecard

The guideline is aimed at start-up teams and interested parties in Germany dealing with the topic of IP valuation to obtain a concrete proposal for a practice-oriented valuation model for determining marketability. The model presented here also offers scientific institutions a pragmatic approach to the valuation of IP so that they can positively influence and significantly accelerate negotiations on IP transfer.

For a market-driven, transparent, and universally applicable valuation of IP rights, it is necessary to illustrate the value-influencing factors in an easily understandable and standardized way. Based on factors influencing the patent value in accordance with DIN 77100 and considering the IP scoring model proposed by the European Patent and Trademark Office, an IP scorecard was developed that comprehensibly evaluates the influencing factors. The IP scorecard is supplemented by a questionnaire and process guideline. The IP scorecard here covers the start-up perspective. Another scorecard from a university perspective is currently being developed and will be included here as soon as version 1.0 is available.

This guideline does not constitute legal advice nor can it replace such advice.
Version 1.0 of the guideline for the market valuation of IP was developed by the project steering group of IP Transfer 3.0 with input and feedback from the project and pilot group (employees from the transfer offices of 17 universities and research institutions), start-up consultants, start-up teams, and experienced investors.

If you have questions or feedback on the guideline or IP scorecard, please send an email to Stifterverband.

International practice in dealing with IP-based spin-offs

SPIN-OFFS FROM SCIENTIFIC INSTITUTIONS AND A COMPARISON TO THE SITUATION IN GERMANY – PREPARATION OF CURRENT STUDIES AND DATABASES

The topic of IP-based spin-offs from scientific institutions (universities, universities of applied sciences, and other research institutions) has gained increasingly more attention. It has often been criticized that the potential for applying public-funded research results is underutilized. But start-ups with a high economic and social impact, like BioNTech with its corona vaccine development, have set a noticeable example to the contrary.

The following comprehensive documents, including research results from the Fraunhofer ISI, provide an overview of current studies and databases at the national and international level.

If you have questions or feedback on the research documents, please send an email to Stifterverband.

Model contracts for transfer models

To give better orientation for participation agreements in the context of IP transfer, practice-oriented sample agreements for different IP transfer scenarios have been created, which we are pleased to make available to you here.

The model contracts are intended as a balanced working aid for transfer offices, founding teams and investors. The law firms mazars and Norton Rose Fulbright will be happy to answer any questions or suggestions for improving the templates. Adaptations to specific individual cases can be discussed with the respective law firm. However, such a consultation is subject to a fee.

If you are interested in receiving the sample contract, please send your request to Stifterverband.

Further legal expertise and sample contracts are also available in the BMWK / BMBF IP Toolbox on the program website EXIST".