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. www.FITT-for-Innovation.eu

1. Researchers’ Consulting Activities
FITT
– Fostering Interregional Exchange in ICT Technology Transfer –
www.FITT-for-Innovation.eu
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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 researcher
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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 company
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4. Evidence report
Consultancy 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 needed
Contract 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 policy
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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 CEO
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6. Measures taken by INRIA
Involvement 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 researcher
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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 2008
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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 activity
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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 SMEs
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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 consulting
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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 way
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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 researchers
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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
detection
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14. Suggested Readings
 Link to bibliography
 Links to code book
Consultancy
Know-how
Confidential information
Confidentiality
Intellectual property
Intellectual property protection
 Link to relevant websites
www.inria.fr
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