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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

IPR and IP Rules in FP7 projects: background and foreground · IPR and IP Rules in FP7 projects: background and foreground Catarina d Araujo Training day sobre Direitos de Propriedade

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Page 1: IPR and IP Rules in FP7 projects: background and foreground · IPR and IP Rules in FP7 projects: background and foreground Catarina d Araujo Training day sobre Direitos de Propriedade

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

Page 2: IPR and IP Rules in FP7 projects: background and foreground · IPR and IP Rules in FP7 projects: background and foreground Catarina d Araujo Training day sobre Direitos de Propriedade

Services

Services

Website

Bulletin

Newsletter

Training

Helpline

Awareness

Raising Activities

Publications

2

2 © European IPR Helpdesk (2011) 18 April 2012 © European IPR Helpdesk (2012)

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Portugal in FP7

18 April 2012 © European IPR Helpdesk (2012)

3

Participants until 2011 EU contribution until 2011

Take

n f

rom

Eu

rop

ean

Co

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issi

on

’s w

ebsi

te a

t ec

.eu

rop

a.eu

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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

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STOP

18 April 2012 © European IPR Helpdesk (2012)

Collaborative Research Projects

5

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18 April 2012 © European IPR Helpdesk (2012)

6

What are the characteristics of a collaborative research project?

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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

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18 April 2012 © European IPR Helpdesk (2012)

Innovation Circle 8

Generation of new knowledge

EU funded collaborative RTD projects

Marketable assets/innovation

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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

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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

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18 April 2012 © European IPR Helpdesk (2012)

11

How should the overall management of a collaborative FP7 project look like?

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18 April 2012 © European IPR Helpdesk (2012)

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

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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

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STOP

What does intellectual property mean and comprise?

18 April 2012 © European IPR Helpdesk (2012)

14

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Intangible Assets

18 April 2012 © European IPR Helpdesk (2012)

15

Such creations cannot be materially measured

Results of creative efforts from the human intellect

INTANGIBLE ASSETS

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Business Assets

18 April 2012 © European IPR Helpdesk (2012)

16

Business Assets

Tangible Assets e. g. buildings,

machinery, infrastructures ...

Intangible Assets e. g. know-how, human

resources, business relationships, brands …

Intellectual Property

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Intellectual Property (IP)

18 April 2012 © European IPR Helpdesk (2012)

17

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

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STOP

18 April 2012 © European IPR Helpdesk (2012)

IP Rules and Agreements in FP7

18

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19

Where do I find rules regarding IP in FP7 projects?

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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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18 April 2012 © European IPR Helpdesk (2012)

21

Who is involved in the agreements?

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18 April 2012 © European IPR Helpdesk (2012)

Overview: FP7 Agreements 22

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18 April 2012 © European IPR Helpdesk (2012)

23

What does the Grant Agreement encompass/regulate?

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18 April 2012 © European IPR Helpdesk (2012)

Grant Agreement 24

Relation between European Commission and Consortium

EU Commission

P1

P2 P3

P5

P4

Grant Agreement

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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

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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

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18 April 2012 © European IPR Helpdesk (2012)

27

What does the Consortium Agreement encompass?

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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

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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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18 April 2012 © European IPR Helpdesk (2012)

30

How is the Consortium structured?

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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

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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 …

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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!

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18 April 2012 © European IPR Helpdesk (2012)

As any contract, the CA should contain:

Clauses & Issues 34

Preliminary Clauses

Central Clauses

Final Clauses

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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

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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

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STOP

18 April 2012 © European IPR Helpdesk (2012)

Specific Vocabulary in FP7

37

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18 April 2012 © European IPR Helpdesk (2012)

38

Is there a specific vocabulary used in FP7?

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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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18 April 2012 © European IPR Helpdesk (2012)

40

Let‘s take a closer look!

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18 April 2012 © European IPR Helpdesk (2012)

Background & Foreground 41

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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.

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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.

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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.

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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).

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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

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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).

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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.

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Means of Dissemination 49

Examples • Press releases • Meetings • Newsletters • Homepage/project website • Scientific publications • Workshops • Exhibitions & conferences • Audiovisual media

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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)

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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

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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.

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© European IPR Helpdesk (2012)

53

Thank you for your attention.

For questions on the presentation, please contact:

[email protected]

www.iprhelpdesk.eu

Phone +352 25 22 33-333 (Helpline)

Fax + 352 25 22 33-334 (Helpline)

18 April 2012

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54

Photo credits

istockphoto.com © istockphoto.com/Maridav © istockphoto.com/Zeffss1 © istockphoto.com/Christian Baitg © istockphoto.com/jfelton © istockphoto.com/rzdeb © istockphoto.com/Agata Malchrowicz © istockphoto.com/Joseph Weber © istockphoto.com/Danijela Pavlovic Markovic © istockphoto.com/Yuri_Arcurs © istockphoto.com/Sean Locke © istockphoto.com/José Carlos Pires Pereira

© istockphoto.com/Pavel Bolotov

© istockphoto.com/Marek Ulias

© istockphoto.com/Daniel Laflor

© istockphoto.com/Lise Gagne

© istockphoto.com/Alex Slobodkin

© istockphoto.com/Andrew Johnson

© istockphoto.com/YanC

© istockphoto.com/Rtimages

© istockphoto.com/Dave White

Others

© Boggie, ScoutMedia

© clker.com

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.

18 April 2012 © European IPR Helpdesk (2012)