EIC Board proposes targeted changes to intellectual property rules to ease technology transfer

Brussels, May 3rd 2023

Summary

›The EIC Board met with university and knowledge transfer associations after a joint statement raised concerns about new EIC IP provisions.
›The Board accepts many existing rules but recommends six targeted changes to clarify inventorship, allow institutions time to commit to commercialization support, and protect inventors if institutions do not act.
›Key recommendations include aligning the definition of 'EIC Inventor' with standard IP law, giving host institutions three to six months to commit support, and providing royalty free access to inventors if institutions decline.
›The Board also calls for guidance and common metrics developed with stakeholder associations and supports standard spin-off deal terms to ease transitions to startups.
›Implementation will require careful drafting to avoid conflicts with national rules and to define what constitutes fair and proportionate returns.

EIC Board proposes targeted changes to intellectual property rules to ease technology transfer

On 3 May 2023 the European Innovation Council Board published recommendations to revise the EIC intellectual property provisions that apply to Pathfinder and Transition projects. The recommendations follow stakeholder pushback, most notably a joint statement from nine associations of universities and knowledge transfer organisations on 5 December 2022. The EIC Board convened a working group and met the associations on 6 February 2023 to better understand the practical frictions reported by research organisations and their technology transfer offices.

Why the provisions prompted debate

Since introducing additional IP clauses in recent EIC work programmes the Commission has given certain access rights to what the rules term 'EIC Inventors' while leaving formal ownership to be determined under national and contractual rules. University and technology transfer stakeholders warned that the language and mechanics could create uncertainty and weaken established knowledge transfer pathways. Their concerns focused on ambiguity about who qualifies as an inventor, potential clashes with institutional or national rules, and the operational and financial burden of patenting and spin off formation.

Inventorship versus authorship:Stakeholders pointed out that the draft EIC wording did not clearly distinguish inventorship in the patent law sense from academic authorship. Inventorship for patent purposes is a legal concept tied to contribution to the inventive step. Authors are credited for scholarly contributions but may not meet legal tests for inventorship. Conflating the two can produce disputes over rights to exploit an invention and complicate university technology transfer.

Knowledge transfer offices and technology transfer:Knowledge transfer offices or TTOs are the units in research organisations that manage patenting, licensing and spin-off formation. TTOs negotiate terms that balance institutional stake, inventor incentives, and investor needs. Associations warned that broad access rights for individual inventors could undermine TTO processes and commercial negotiation leverage.

EIC Board assessment and summary of recommendations

The EIC Board concluded that many elements of the current provisions are fit for purpose. However the Board recommended targeted changes to reduce ambiguity and to ensure that inventions with commercial potential are supported and exploited. The Board set six core recommendations for incorporation into the next update of the EIC work programme.

Recommendation	Proposed change	Intended effect and caveats
1	Align the definition of 'EIC Inventor' with standard international IP definitions	Reduce ambiguity by using legal standards for inventorship rather than academic authorship. Caveat is that national law differences will still need careful mapping.
2	Allow host institutions three to six months to commit to support for protection and commercialization	Gives TTOs time to assess, fund and plan patenting and other actions. Risk is delay in spin-off timelines or mismatched expectations if commitments are vague.
3	Require EIC inventors to work diligently to realise commercial potential	Creates an obligation on inventor engagement and cooperation with TTOs. Enforcement and monitoring of 'diligence' may be difficult in practice.
4	Permit host institutions that provide financial and expert support to receive fair returns such as royalties or equity stakes	Aligns incentives so institutions that invest in IP protection are compensated. 'Fair and proportionate' needs clear guidance to avoid blocking commercialisation.
5	If an institution will not commit, grant the EIC inventor full and royalty free access rights to exploit the IP with ownership remaining institutionally determined or assigned depending on circumstances	Ensures inventors can proceed to commercialise when institutions abstain. Potential conflicts with national ownership rules could arise and will need resolution.
6	Work with stakeholder associations and TTOs to produce guidance, FAQs and performance metrics and establish standard spin-off deal terms	Aims to harmonise practice and reduce negotiation friction. Success depends on stakeholder buy in and whether recommended terms are accepted by investors and institutions.

Detailed explanation of each recommendation

Recommendation 1 - Align 'EIC Inventor' with patent law definitions:The Board wants the term to reflect established legal criteria used in patent systems. That means limiting the label to those who have contributed to the inventive concept and not to everyone who contributed to an academic publication. The effect is to reduce disputes over who holds rights under patent law. The practical challenge is that the patentability and inventorship tests vary slightly between jurisdictions and must be reconciled with national rules where the research organisation is located.

Recommendation 2 - Three to six month commitment window for institutions:The Board proposes that host institutions be given a fixed period, typically three to six months, to decide whether they will support protection and commercialization. Support should include full or partial patenting costs and may include market and technology assessments, business planning and other expert assistance. This window recognises that TTOs need time to evaluate novelty, commercial potential and resource implications. The risk is that fixed windows will not suit all technologies or administrative cycles and therefore need flexibility and clear procedural rules.

Recommendation 3 - Inventor diligence obligation:If EIC funding generates a potentially commercially exploitable invention the inventor must engage diligently in exploitation activities. This includes cooperating with organisational TTOs, participating in commercialization planning, and where appropriate taking an active role in a spin-off. The Board expects close collaboration between inventors and TTOs to maximise impact. This recommendation raises enforceability questions since measuring diligence is subjective and may require proportionate monitoring mechanisms.

Recommendation 4 - Fair returns for institutions that invest:When an institution commits resources to patenting and commercialization it may receive returns such as royalties or equity stakes. The Board emphasises that returns must be proportionate to the level of support. That approach aligns incentives for institutions to invest in early stage protection. The key implementation issue is defining what is fair and proportionate. If terms are set too high they could deter private investment or make spin-offs unattractive to entrepreneurs.

Recommendation 5 - Rights for inventors when institutions decline to support commercialization:If an institution cannot or will not provide the required protection and commercialisation support within the allowed time the EIC inventor should receive full and royalty free access rights to exploit the IP. Ownership may nonetheless remain with the institution where national rules prescribe this, or the institution and inventor may agree assignment on terms that consider who bore patent costs. The Board intends this as a safeguard so that promising technologies do not languish because an institution lacks capacity or appetite to exploit them.

Recommendation 6 - Joint guidance, KPIs and standard spin-off terms:The Board asked for collaborative drafting of practical guidance and frequently asked questions with university associations and TTOs. It also supports developing performance metrics that reward result based exploitation and standardised spin-off deal templates. The goal is to reduce transaction costs and speed negotiations. The effectiveness of templates depends on acceptance by investors and national authorities and will require iteration and testing in real transactions.

Implementation challenges and what to watch for

The Board recommended these changes be included in the next EIC work programme update. Translating recommendations into enforceable rules will require careful drafting to avoid conflicts with national property law and institutional statutes. Notable implementation risks include gaming of the commitment window, disputes over what counts as fair returns, and the administrative overhead for TTOs to assess each case within a short timeframe. Monitoring and clear reporting metrics will be essential to determine if the revisions actually improve knowledge transfer and the formation of viable spin-offs.

From the perspective of the wider innovation ecosystem the measures aim to strike a balance between protecting institutional interests and removing bottlenecks that can stall commercialisation. For investors and the EIC Fund that co-invests alongside private capital, clarity on ownership, licensing terms and inventor access is critical. Ill defined or unevenly applied rules increase transaction risk and can reduce the willingness of private partners to co-invest.

Practical next steps for stakeholders

Stakeholders should track the text of the next EIC work programme for the precise legal wording. Universities and TTOs can participate in the joint drafting of guidance and standard templates. Inventors and applicants should be prepared to engage with their TTOs promptly when an application has commercial potential. Investors and the EIC Fund should press for transparent templates that protect downside while leaving upside incentives for entrepreneurs and institutions.

The EIC Board also signalled its intention to set up performance metrics to encourage result based exploitation. Whether those metrics are robust, measurable and resistant to reporting bias will determine if the changes yield practical improvements in technology transfer.

Sources and further reading

The EIC Board recommendations were published on 3 May 2023 and follow a joint statement by nine university and knowledge transfer associations on 5 December 2022. The Board met the associations on 6 February 2023. The EIC Board document and the joint statement are primary sources for the recommendations and stakeholder positions.

EIC Board proposes targeted changes to intellectual property rules to ease technology transfer

EIC Board proposes targeted changes to intellectual property rules to ease technology transfer

Why the provisions prompted debate

EIC Board assessment and summary of recommendations

Detailed explanation of each recommendation

Implementation challenges and what to watch for

Practical next steps for stakeholders

Sources and further reading

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