FITT Toolbox: Researchers' Consulting Activities


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Researchers can make use of their specific competencies and knowledge to provide consultancy to companies. These activities may generate or transfer some intellectual property, as well as enable potential projects and partnerships for researchers’ employer. Therefore, it is important for the technology transfer offices and management of a public research organization to be aware of those activities in order to protect the IP assets and exploit the transfer opportunities. The scheme of actions presented in this practice allows to monitor and follow-up consulting contracts signed by researchers.

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FITT Toolbox: Researchers' Consulting Activities

  1. 1. Researchers’ Consulting Activities FITT – Fostering Interregional Exchange in ICT Technology Transfer – Except where otherwise noted, this work is licensed under a Creative Commons Attribution 3.0 License.
  2. 2. Researchers’ Consulting Activities in general  Researchers being experts in some domains, they can perform consulting activities on demand of industrial companies  This can be an additional source of revenue for the researcher and of scientific expertise for the company  These activities can generate intellectual property, which risks to stay out of control of a TT office  They can also give birth to projects and partnerships interesting for the research organisation which employs the researcher2 | March 2010 Researchers’ Consulting Activities
  3. 3. Researchers’ Consulting Activities in practice Internal definition • Purely intellectual activity • Not more than 20% of working time, not on a continuous basis • Expertise, analysis, evaluation, technology intelligence • Does not include any development or transfer of assets • Not a research activity inside a private company • Authorised by the director • No hierarchical relation between the researcher and any person from the company3 | March 2010 Researchers’ Consulting Activities
  4. 4. Evidence reportConsultancy contract signed between a company and a researcher • This relation doesn’t involve INRIA • Activities carried out by researchers may in fact involve software development, technology and know-how transfer, or potentially generate conflict of interests between the company and the researcher • Some measures of guidance and control are neededContract signed between a company and INRIA • This contract is subsequently followed up by INRIA • The scope of activities and conditions of IPR protection set up in the contract are clear and coherent with INRIA’s IP policy4 | March 2010 Researchers’ Consulting Activities
  5. 5. Measures taken by INRIA Researchers being civil servants, they ask authorisation to perform extra activity They fill in a form which gives details about consulting agreement negotiated with a company Researcher’s responsible give opinion on:  compatibility of this extra activity with main activities of the PRO (research director)  researcher’s engagement in consulting being only his secondary activity (human resources)  risk of conflict of interests (TT officer)  opinion of regional centre director, optionally opinion of Transfer and Innovation Department  final authorisation is given by INRIA’s CEO5 | March 2010 Researchers’ Consulting Activities
  6. 6. Measures taken by INRIAInvolvement of TT officer in every request for authorisation of consulting allows to: • do not concern purely intellectual activity re-qualify the • the content goes above the existing elements and state-of-the- contracts if they: art • can be considered as a technology or know-how transfer • first for researcher, private consulting activity negotiate two • second for INRIA research team, technology transfer or contracts if transfer research collaboration activity is detected: • or two INRIA contracts: 1- technology transfer to the company, 2- expertise related to this transfer, provided by researcher6 | March 2010 Researchers’ Consulting Activities
  7. 7. When? Timing  The new legislation on civil servants extra activity (giving some precise regulation of working time and salary) appeared in July 2007  The question was raised in INRIA in September 2008  The new procedure was put in place in October 20087 | March 2010 Researchers’ Consulting Activities
  8. 8. Who? Stakeholders  INRIA headquarters, in particular Transfer and Innovation Department – set up the new policy, follow-up some part of requests  INRIA regional centres: TT officers, research and administrative directors, human resources – evaluate researcher’s requests, try to detect transfer potential or possible risks behind this activity8 | March 2010 Researchers’ Consulting Activities
  9. 9. Pros & Cons PRO’s CON’s  Building researchers awareness of IP protection issues and of the consequences they have for their work as consultants  Clear rules are set up concerning  The necessity to make this new process researcher’s financial benefits, amount of time understandable for researchers, who can dedicated to consulting and potential use of have the impression that “everything is INRIA software and other IP (guidelines for becoming bureaucratic” researchers)  The validation procedure should not be too  Possibility to have a view on researchers’ long and complicated, which would contacts with companies; TT officers stay in discourage researchers (in INRIA: 15 days to the loop give an answer)  Researchers can still provide private consultancy, which brings them financial benefits and meets the needs of SMEs9 | March 2010 Researchers’ Consulting Activities
  10. 10. Why ?  Rationale: Researchers at PROs are an important source of expertise for the private sector; INRIA’s mission includes sharing these competencies, SMEs being the privileged partners  Some cases showed that:  Consulting may involve transfer, which is not taken into account by researchers when they negotiate contract on their own  Researchers’ personal contacts with industry can be interesting for INRIA TT office, if only there is an information flow  Consulting services are sometimes an occasion to bring the company closer to INRIA and to initiate a collaboration  There was a need for a procedure which allows to manage all those aspects of consulting10 | March 2010 Researchers’ Consulting Activities
  11. 11. Why ?  Impact:  The number and the nature of actors involved in authorisation procedure guarantee a thorough examination of each case  Researchers become more conscious of limits and opportunities of the activity they engage in and pay more attention to INRIA IPR; if a problem arise it can be solved together with TT office  A way to avoid the situation when an effective transfer is done by researcher as a consultant and the TT office, as well as the management, learn about it post factum  TT office gets a mean to seize the opportunities of partnerships that arise from contacts with companies  The benefits of all the parties (researcher, company, INRIA) should be preserved in an optimal way11 | March 2010 Researchers’ Consulting Activities
  12. 12. Outcome  The process has been formalised and implemented in INRIA activities; every contract concerning researcher’s consulting services for company or other organisation passes through TTO and is examined before being signed  Effective follow-up  No negative feedback from researchers12 | March 2010 Researchers’ Consulting Activities
  13. 13. Lessons Learned  Looking back now, what would you …  ... do different? – The practice seems to be on the right track  ... improve? – There is an ongoing reflection towards facilitating the consulting activities, especially for SMEs, usage of a specific structure, know-how transfer contract with INRIA and other mechanisms in addition to the consultancy provided by researchers  … recommend to others? – Setting up a process to follow-up consulting activities is worth some efforts, as it increases both researchers awareness and opportunities detection13 | March 2010 Researchers’ Consulting Activities
  14. 14. Suggested Readings Link to bibliography Links to code bookConsultancyKnow-howConfidential informationConfidentialityIntellectual propertyIntellectual property protection Link to relevant websiteswww.inria.fr14 | March 2010 Researchers’ Consulting Activities