How to protect IP generated from a grant-funded project

October 10, 2023

At Venturenomix our primary task is to secure our clients’ R&D grant funding.

We know a lot about grant funding, but we also know when to bring in one of our expert partners. In this series of six blogs, we’ve teamed up with IP Attorney Jason Teng at Potter Clarkson to take a look at some of the IP-specific challenges we often come across in our R&D funding applications.

What options do I have when considering how to protect IP generated from a grant-funded project?

It is a common requirement in an R&D grant application to highlight what outputs from the project can be protected and how this relates to the commercialisation of the project outputs. There are many ways to protect the IP derived from R&D grant projects.

From a grant writer’s perspective

Alex says: “Be very clear about exactly which outputs from the R&D grant-funded project you intend to protect. Specify a ‘deliverable’ for each of the outputs – 1 or 2 is generally enough. State the deliverables early in the application: ‘Key outputs of this R&D project that will be protected by IP rights are XXXX (Deliverable 1.1 in Work Package 1) and XXXX (Deliverable 3.2 in Work Package 3).’

These deliverables should then be the focus of your critical path in questions relating to the project plan, and cornerstones of your commercialisation plan in questions relating to the route to market plan.

Finally, consider how you might retain critical IP within your company by incentivising key staff members to stick with your company for the long-term. The less likely key staff are to leave, the more likely your company is to retain its ‘know-how.’”

From a patent attorney’s perspective

Jason says: “A whole host of IP rights are available to protect different types of IP. This include – but are not limited to – patents, designs, trade marks, copyright and trade secrets.

In addition, the protection you obtain from these IP rights can be complemented by the right contractual provisions, particularly when there is significant know-how in the R&D project or when IP ownership questions arise due to the involvement of multiple project partners.

It is crucial you understand which IP rights you need and how you go about securing them. In addition, timing is key – IP protection should be sought as early as possible as soon as the innovation is identified and before disclosing it to third parties.”

For more IP-led insights, check out our collaborative white paper.