Intellectual Property in EU funded research projects by Catarina D'Araujo

Intellectual Property in EU Funded Research Projects

CATARINA D’ARAUJO

[email protected]

27 January 2012 ENoLL, Brussels

January 2012 © European IPR Helpdesk 2012

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•  Funding sources •  IP Rules and Agreements in FP7 •  Specific Vocabulary in FP7 •  IP rules in CIP •  Need Assistance? The European IPR Helpdesk

Funding sources


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ICT (InformaQon and CommunicaQon Technologies)

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IP Rules and Agreements in FP7

© European IPR Helpdesk 2012

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January 2012

Where do I find rules regarding IP in FP7 projects?


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January 2012


Protec@on of IP in FP7 projects is dealt with in …

… Grant Agreement … ConsorQum Agreement … Guide to Intellectual Property Rules for FP7 projects (= not legally binding)

IP Rules in FP7 6

Note! The IPR Helpdesk has produced several fact sheets dedicated to IP management in FP7 projects

Who is involved in the main agreements?


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January 2012


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EC

PROJECT COORDINATOR BENEFICIARI

ES GRANT AGREEMENT

TIMELINE PROCESS

Overview: FP7 Agreements

EUROPEAN COMMISSION

CONSORTIUM AGREEMENT


Clauses & Issues 9

Document Signature Par@es Content IP relevant issues

Grant Agreement End of

negoQaQons phase

Beneficiaries & the European Commission

Establishes the rights and obligaQons of beneficiaries with regard to the EU IP rules are not negoQable

Annex I -‐ DoW and PUDF Annex II -‐ General condiQons applying to FP7 projects, including the management of IPR Annex III -‐ CondiQons specific to each FP7 programme

Consor@um Agreement

During negoQaQons

phase

Project Coordinator &

other Beneficiaries

Sets out the legal basis for the internal relaQonship and responsibiliQes among beneficiaries. IP rules need to be agreed upon by partners

All IP aspects related to the specific project (without contradicQng the Grant Agreement provisions on IP)

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Specific Vocabulary in FP7


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Key terms in the context of FP7 are:

•  Background •  Foreground •  Access rights •  Use •  DisseminaQon

Vocabulary in FP7 11


Background 12

•  Remains the property of the project partner that brings it into the project

•  Project partners have the right to define the background that each of them is going to make available to the project and / or exclude from their obligaQon to grant access rights

•  This can be done as “posiQve” or “negaQve” list – in wriQng and ajached to the ConsorQum Agreement

Protec@on of background before the project starts is very important!

IdenQficaQon DefiniQon CondiQons AuthorisaQons NDA


Foreground (I) 13

Ownership: •  Each beneficiary is the owner of the results it generates during the

project.

•  Employees rights have to be taken into consideraQon.

Joint ownership: •  Arises for foreground generated in common between two or more

partners while their respecQve parts cannot be determined.

•  Project partners must therefore conclude a joint ownership agreement to deal with allocaQon and exercise of the rights.

•  In absence of such an agreement, a default joint ownership regime applies.

Joint ownership may be

dealt with in the CA (as one-‐size-‐fits-‐all instrument) or in a separate agreement for

each specific joint ownership situa@on.


Foreground (II) 14

Transfer of Ownership: • A beneficiary may transfer ownership of its foreground. • The other project partners should be informed about the envisaged transfer – objecQon possible if their access rights are not preserved. Licensing: • A project partner may grant an exclusive license to foreground / background but the other parQcipants shall waive their access rights in wriQng.


Access Rights (I) 15

•  Each project partner has the right to request access rights to the other project partner‘s background and foreground as long as it needs them in order to carry out its work under the project or to use its own foreground.

•  Must be made in wri@ng.

•  Are to be granted throughout the duraQon and up to 1 year amer the end of the project for use needs (unless a different period is agreed).

•  Access rights do not confer the right to grant sub-‐licences.

•  Affiliated en@@es may get some access rights for use purposes. However they need foreground ownership (to be transferred on by parQcipants in whole or in part).


Access Rights (II) 16

Gran@ng of Access Rights Project parQcipants have an obligaQon to grant other partners access to their know-‐how, if the lajer need the know-‐how in order to be able to implement the project or to use the results of the project

Access to background

Access to foreground

Project implementaQon

Royalty-‐free (unless otherwise agreed before the GA)

Royalty-‐free

Use of results Royalty-‐free, or on fair and reasonable condiQons

Royalty-‐free, or on fair and reasonable condiQons

•  Choice of the most suitable IP protec@on tools (e.g. patent or confidenQal informaQon?)

•  Adequate and effec@ve considering the results characterisQcs •  In accordance with the other partners’ legi@mate interests •  No mandatory, but good prac@ce to consult with other

partners before protecQng •  Where foreground capable of industrial or commercial

applicaQon has not been protected, no dissemina@on ac@vi@es may take place

•  Once foreground has been protected, then you can start planning how to use and disseminate the project results

ProtecQon


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It is important to remember

that many IPR demand novelty as a requirement for

acquiring protec@on. Keeping confiden@ality is

therefore essen@al.


Use 18

Beneficiaries shall use the foreground which they own or ensure that it is used, essenQally through two routes: •  for use in commercial ac@vi@es, such as markeQng a

product; •  for use in further research ac@vi@es. This use of foreground can be direct (by the owner itself), or carried out by other parQes (through licensing, for example).


DisseminaQon (I) 19

Annex II of the Grant Agreement = the disclosure of foreground by any appropriate means other than that resulQng from the formaliQes for protecQng it, and including the publicaQon of foreground in any medium.


DisseminaQon (II) 20

Project partners are obliged to disseminate the results swi\ly (having due regard the other partners’ interests, IP rights and confidenQality)

But: •  No disseminaQon of foreground may take place before

decision is made regarding its possible protecQon. •  In case project partners fail to disseminate the results

without any jusQficaQon, the Commission may disseminate the foreground without seeking permission from the project partners who own it (Art II.30.2 of GA)

At which stages of my project does IP maCer?


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January 2012

IP in FP7 Project Life Cycle


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The IPR Helpdesk has recently produced three fact sheets which provide you with a general overview of the enQre FP7 process, from the proposal stage unQl the end of the project. All these fact sheets are strictly interconnected so that a thoroughgoing reading of the three is strongly advisable for a bejer understanding of the issues at stake.

Amer Project End ?


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Exploita@on of IP

•  Make direct revenues (exploitaQon conceded to third parQes) -  Licensing -  Franchising -  Sale

•  Valorise IP = to increase IP value, intangible assets

•  Safeguard intangible values/capital of the company by enforcing IP rights

Increase oragniza@onal business value!

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IP rules in CIP


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IP rules in CIP


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•  The IP rules can be found in the concrete work programme, model grant agreement and informaQon within the call documenta@on.

•  The rules follow the general scheme of FP7, but have important specificiQes. ParQcipants must be familiar with these specificiQes and be aware that they differ from programme to programme.

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Need Assistance? The European IPR Helpdesk

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Photo credits

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Disclaimer/Legal No@ce The informaQon and advice contained in this presentaQon is not intended to be comprehensive and ajendants are advised to seek independent professional advice before acQng upon them. The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-‐use of informaQon contained in this presentaQon for non-‐commercial purposes is authorised and free of charge, provided the source is acknowledged. The European IPR Helpdesk is not responsible for any impact or adverse effects on third parQes connected with the use or re-‐use made of the informaQon contained in this presentaQon The European IPR Helpdesk is managed by the European Commission’s ExecuQve Agency for CompeQQveness and InnovaQon (EACI), with policy guidance provided by the European Commission’s Enterprise & Industry Directorate-‐General. The posiQons expressed are those of the authors and do not necessarily reflect the views of the European Commission.

Documents

Intellectual Property in EU funded research projects by Catarina D'Araujo