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IPR and IP Rules in FP7 projects:
background and foreground
Catarina d’ Araujo Training day sobre Direitos de Propriedade Intelectual no
7.PQ
Porto, 18 April 2012
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2
2 © European IPR Helpdesk (2011) 18 April 2012 © European IPR Helpdesk (2012)
Portugal in FP7
18 April 2012 © European IPR Helpdesk (2012)
3
Participants until 2011 EU contribution until 2011
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18 April 2012 © European IPR Helpdesk (2012)
4
• Collaborative Research Projects
• Intellectual Property (IP)
• IP Rules and Agreements in FP7
• Specific Vocabulary in FP7
STOP
18 April 2012 © European IPR Helpdesk (2012)
Collaborative Research Projects
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What are the characteristics of a collaborative research project?
18 April 2012 © European IPR Helpdesk (2012)
• Cooperation fosters innovation
• Collaborative research projects bring together individual know-how and turn it into one „big“ idea
Cooperation Innovation 7
18 April 2012 © European IPR Helpdesk (2012)
Innovation Circle 8
Generation of new knowledge
EU funded collaborative RTD projects
Marketable assets/innovation
18 April 2012 © European IPR Helpdesk (2012)
It is in the nature of collaborative projects that different partners with varying mindsets and interests come to sit at one table.
Collaborative Projects 9
University
Industry SMEs
ROs
18 April 2012 © European IPR Helpdesk (2012)
• Goal: publication
• Using results for future research and teaching activities
• Insufficient exploitation strategy
• Lacking legal/ IPR expertise
Characteristics 10
• Goal: commercialisation of results
• Application-oriented approach
• Strong in-house legal/IPR expertise
• Goal: keeping control over own research results
• Protection of existing know-how, that is brought into the project
• Lacking legal/IPR expertise
University Industry SMEs ROs
18 April 2012 © European IPR Helpdesk (2012)
11
How should the overall management of a collaborative FP7 project look like?
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FP7 Management 12
Managerial Areas
Project Management Project Administration
Innovation Management Communication
Monitoring
Controlling
Risk Management
Quality Management
Knowledge Management
IP Management
Business Plan
Technology Watch
Exploitation and Dissemination Plan
Technology Marketing
Evaluation/Studies
Corporate Identity
Promotional Material
Internet
Reports
Finance
Contracts
Subcontracts
18 April 2012 © European IPR Helpdesk (2012)
FP7 Management 13
Managerial Areas
Project Management Project Administration
Communication
Monitoring
Controlling
Risk Management
Quality Management
Knowledge Management
Evaluation/Studies
Corporate Identity
Promotional Material
Internet
Reports
Finance
Contracts
Subcontracts
IP Management
STOP
What does intellectual property mean and comprise?
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14
Intangible Assets
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Such creations cannot be materially measured
Results of creative efforts from the human intellect
INTANGIBLE ASSETS
Business Assets
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Business Assets
Tangible Assets e. g. buildings,
machinery, infrastructures ...
Intangible Assets e. g. know-how, human
resources, business relationships, brands …
Intellectual Property
Intellectual Property (IP)
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INDUSTRIAL PROPERTY Trade Marks
Patents Industrial Designs…
COPYRIGHT & related rights
Literary & Artistic Works Related rights Databases …
IP
‘SOFT IP’ Trade Secrets
Know-How Confidential Information
STOP
18 April 2012 © European IPR Helpdesk (2012)
IP Rules and Agreements in FP7
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Where do I find rules regarding IP in FP7 projects?
18 April 2012 © European IPR Helpdesk (2012)
Protection of IP in FP7 projects is dealt with in …
… Grant Agreement
… Consortium Agreement
… Guide to Intellectual Property Rules for FP7 projects (= not legally binding)
IP Rules in FP7 20
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21
Who is involved in the agreements?
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Overview: FP7 Agreements 22
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23
What does the Grant Agreement encompass/regulate?
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Grant Agreement 24
Relation between European Commission and Consortium
EU Commission
P1
P2 P3
P5
P4
Grant Agreement
18 April 2012 © European IPR Helpdesk (2012)
Grant Agreement 25
Components of the Grant Agreement Core agreement Standard with project specifics
Annex I Technical Annex/work plan
Annex II General Conditions for all projects
Annex III Specific conditions
Annex IV to VII Forms
18 April 2012 © European IPR Helpdesk (2012)
Grant Agreement 26
Annex I – Technical Annex • Project work plan, which is
worked out during agreement negotiations
• Whatever is promised must be
delivered (Deliverables)
• A well-structured, practical and realistic Technical Annex is the basis for the successful implementation of a project
Annex II – General Conditions
• Reference for EU regulations
on project implementation (refundable costs, reporting, payment schedule…)
• Answers many questions that
arise during the project
• The Commission must also observe these conditions
18 April 2012 © European IPR Helpdesk (2012)
27
What does the Consortium Agreement encompass?
18 April 2012 © European IPR Helpdesk (2012)
Consortium Agreement (CA) 28
Regulates the relation between consortium partners (= beneficiaries)
Consortium Agreement
P1
P2
P3
P5
P4
18 April 2012 © European IPR Helpdesk (2012)
Consortium Agreement 29
• A legal document that regulates the internal workings of the consortium
• Implements the provisions of the Grant Agreement/programme rules
• Mandatory for the majority of projects
• Legal basis: Grant Agreement (+ Annexes)/Participation regulations
• The CA may in no way contradict the prerequisites laid out in the Grant Agreement; the latter always takes precedence!
• The CA should be worked out during Grant Agreement negotiations at the latest
• Consortia are responsible for defining the regulations; the Commission has no binding model
• The coordinator works on the template
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30
How is the Consortium structured?
18 April 2012 © European IPR Helpdesk (2012)
Internal Structure 31
Decision making bodies: - General Assembly (or Governing Board) - Executive Committee (or Steering Committee) - Sub-project Committees
Consulting bodies: - Scientific council - IPR Committee
Executive bodies: - Head of Executive Committee - Coordinator - Management Team
18 April 2012 © European IPR Helpdesk (2012)
Governing Bodies 32
General Assembly: All partners; the consortium in the General Assembly Executive Committee (= Management Board) Coordinator + Workpackage leaders
Sub Workpackage Management Board: All partners or Workpackage leaders Other specific boards: Intellectual Property; Gender; Ethical aspects …
18 April 2012 © European IPR Helpdesk (2012)
The Coordinator 33
• Coordinator = only contact point between the commission and the consortium
• Is the one who signs the Grant Agreement with the Commission
• The coordinator can centralize the general responsibilities (in different forms and extents): presentation of reports and deliverables to the Commission, transmission of all documents and information related to the project to and between the workpackage leaders and other beneficiaries, holding pre-financing & transfer of the contribution to the beneficiaries...
• It has to monitor the compliance by participants with their obligations under the grant agreement (Article II.2.3.e of GA), which includes the participants' obligations regarding IPR!
18 April 2012 © European IPR Helpdesk (2012)
As any contract, the CA should contain:
Clauses & Issues 34
Preliminary Clauses
Central Clauses
Final Clauses
18 April 2012 © European IPR Helpdesk (2012)
Clauses & Issues 35
Central clauses • Financial and
adminstrative management: • Consortium bodies • Decision-making
procedures • Financial organisation
• Technical provisions
• Intellectual property issues (!)
• Liability
Final Clauses • Applicable Law
• Dispute resolution = Jurisdiction
• Other: e.g. confidentiality, duration, severability, assignment
Preliminary Clauses • Preamble :
• Summary of project framework
• Title
• Parties
• Language
• Definitions
18 April 2012 © European IPR Helpdesk (2012)
Model Agreements 36
DESCA
European Initiative from all F&D actors
→ www.DESCA-FP7.eu
IMG4
ASD-IMG4 - European aerospace companies → www.aerosme.com
EUCAR
European Council for Automotive R&D → www.eucar.be
STOP
18 April 2012 © European IPR Helpdesk (2012)
Specific Vocabulary in FP7
37
18 April 2012 © European IPR Helpdesk (2012)
38
Is there a specific vocabulary used in FP7?
18 April 2012 © European IPR Helpdesk (2012)
Key terms in the context of FP7 are:
• Background
• Foreground
• Access rights
• Use
• Dissemination
Vocabulary in FP7 39
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40
Let‘s take a closer look!
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Background & Foreground 41
18 April 2012 © European IPR Helpdesk (2012)
Background 42
• Information which is needed for the project (includes IP rights).
• 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 obligation to grant access rights.
• This can be done as „positive“ or „negative“ list – in writing and attached to the Consortium Agreement.
18 April 2012 © European IPR Helpdesk (2012)
Foreground 43
Ownership: • Each beneficiary is the owner of the results it generates during
the project.
• Personnel rights have to be taken into consideration.
Joint ownership: • Appears for Foreground generated in common while respective
parts of the partners cannot be determinded.
• Project partners must therefore conclude a joint ownership agreement to deal with allocation and exercise.
• In absence of such an agreement, a default joint ownership regime applies.
18 April 2012 © European IPR Helpdesk (2012)
Foreground 44
Transfer of Ownership: • A beneficiary may transfer ownership of its foreground.
• The other project partners should be informed about the envisaged
transfer – objection possible if their access rights are not preserved.
Licensing: • A project partner may grant an exclusive license to foreground /
background but the other participants shall waive their access rights in writing.
18 April 2012 © European IPR Helpdesk (2012)
Access Rights 45
• 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.
• Shall be made in writing.
• Are to be granted troughout the duration and up to 1 year after the end of the project for use needs.
• Access rights do not confer the right to grant sub-licences.
• Affiliated entities may get some access rights for use purposes. Therefore they need ownership of foreground (in whole or in part).
18 April 2012 © European IPR Helpdesk (2012)
Access Rights 46
Granting of Access Rights
Project participants have to grant other partners access to their backgrund and foreground if needed to implement the project or to use the results of the project
Access to background
Access to foreground
Project implementation
Royalty-free Royalty-free
Use of results Royalty-free, or on fair and reasonable conditions
Royalty-free, or on fair and reasonable conditions
18 April 2012 © European IPR Helpdesk (2012)
Use 47
Beneficiaries shall use the foreground which they own or ensure that it is used, essentially through two routes: • for use in commercial activities, such as marketing a
product; • for use in further research activities. This use of foreground can be direct (by the owner itself), or carried out by other parties (through licensing, for example).
18 April 2012 © European IPR Helpdesk (2012)
Dissemination 48
Annex II of the Grant Agreement = the disclosure of foreground by any appropriate means other than that resulting from the formalities for protecting it, and including the publication of foreground in any medium.
18 April 2012 © European IPR Helpdesk (2012)
Means of Dissemination 49
Examples • Press releases • Meetings • Newsletters • Homepage/project website • Scientific publications • Workshops • Exhibitions & conferences • Audiovisual media
18 April 2012 © European IPR Helpdesk (2012)
Obligation 50
Project partners are obliged to disseminate the results swiftly.
But: • No dissemination of foreground may take place before
decision is made regarding its possible protection. • In case project partners fail to disseminate the results
without any justification, the Commission may disseminate the foreground without seeking permission from the project partners who own it (Art II.30.2 of GA)
18 April 2012 © European IPR Helpdesk (2012)
Requirements 51
Information of project partners and Commission: • At least 45 days prior notice in writing • Commission only needs to be notified (ex-ante) when the
foreground to be disseminated is capable of industrial and commercial application and has not been formally protected
• Statement that research results have received funding from the EU FP7 Programme
18 April 2012 © European IPR Helpdesk (2012)
What is not covered….. 52
Official publications in connection with the protection of rights → Applications for patents are not covered because they are made public not until 18 months after the filing date.
© European IPR Helpdesk (2012)
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Thank you for your attention.
For questions on the presentation, please contact:
www.iprhelpdesk.eu
Phone +352 25 22 33-333 (Helpline)
Fax + 352 25 22 33-334 (Helpline)
18 April 2012
54
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Disclaimer/Legal Notice The information and advice contained in this presentation is not intended to be comprehensive and attendants are advised to seek independent professional advice before acting upon them. The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained in this presenation 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 parties connected with the use or re-use made of the information contained in this presentation The European IPR Helpdesk is managed by the European Commission’s Executive Agency for Competitiveness and Innovation (EACI), with policy guidance provided by the European Commission’s Enterprise & Industry Directorate-General. The positions expressed are those of the authors and do not necessarily reflect the views of the European Commission.
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