1 6th Framework Programme of the European Union - European Commission, DG Enterprise and Industry IPR aspects in the 7th Framework Programme Salvatore Amico Roxas IPR-Helpdesk Bari, 30 Ottobre 2007
2 Topics 2! Introduction! What is IPR?! Why is IPR important?! IPR in 7FP! Consortium Agreement & Common Mistakes! IPR-Helpdesk services
3 Why participating in European Framework Programmes 3 Benefits from participating in FP7: (to mention a few ) - Competitive funding - Targeted research within multi-partner transnational consortia (networking) - Funding of research and development projects outsourced to competent research partners - Incoming and Outgoing Fellowships (Industry-Academia Partnerships and Pathways action) - Conferences, studies and exchange of best practice (CSA)
4 What about the costs? 4 Issues to tackle: - Management of the proposal / project - Why should I share & disclose sensitive infos about my know-how? Which risks does it imply? Which rights do I have on the project results? (IPR issues) We will focus on the following issues: - Confidentiality aspects at the proposal stage - Access rights - Exclusion of pieces of background - Foreground and PUDF - IPR in SMEs specific actions - Consortium Agreement models
5 5 What is IPR? Why is IPR important?
6 Changing Business Environment 6 Business Assets Tangible Assets Land, building, machinery, financial assets, infrastructure Intangible Assets Human capital, know-how, business relationships, brand, etc. Traditional Knowledge-driven economy to underpin performance Intellectual Asset " Intellectual Property " Intellectual Capital
7 What is IPR? 7 Intellectual Property Rights = legal instruments to protect someone s intangible assets (non-physical assets) Converting Intellectual Assets into Property By granting a legal title which entitles the owner the right to prevent others from exploiting it (reward for the inventors!)
8 IP rights 8 Intellectual Property Rights Industrial Property Rights e.g. patents, utility models, industrial designs, trade marks, trade secrets etc. Copyright & related rights
9 9 Which rights are involved?
10 Which IP rights are involved? 10 Coca-Cola, Coke. Trade Mark (word) Trade Mark (figurative) Recipe Design and Trade Mark (3dimensinal) Patent Patent number:gb Trade Secret Copyright
11 Why is IPR important for SMEs? 11 Innovative and creative ideas are at the heart of most successful businesses ( knowledge-based economy) BUT: Ideas by themselves have little value. IPR offers : exclusive property rights To commercialise an invention To prevent others from using it To safeguard a strong market position To strengthen your negotiation power To attract investors To develop good reputation among consumers Moreover: # IPR serves as information source!
12 12 IPRs in the 7th Framework Programme
13 IPR a strategic factor in a successful FP7 project 13 Before Project During Project After Project! Proposal preparation, incl. potential impact! Defining projectrelated know-how! Defining IPprotected areas! Negotiating a CA! Negotiating with the EC! Strategy for protection & management of foreground! Granting of access rights AT ALL STAGES! Protection of generated IP! Exploitation of the results! Dissemination (PUDF)
14 Sources of provisions on FP7 IPR aspects 14 - Rules for participation (C.E.) - EC Grant Agreement (and related Annexes, Annex II in particular) - Consortium Agreement
15 Grant agreement and Consortium agreement 15 European Commission Grant agreement Participant Participant = Beneficiary Coordinator Consortium agreement Participant Participant Technical provisions Financial structure and Management structure Intellectual Property
16 Consortium Agreement 16 $ A private agreement, concluded between participants $ Mandatory under the FP7, unless otherwise provided in the call for proposals $ Compatible with the grant agreement, which prevails in case of contradiction
17 Consortium Agreement 17 $ The EC Contract (Grant Agreement) does not regulate everything and provides for the possibility of further specifications $ Participants shall ensure the good execution of the project $ Fundamental for Intellectual Property Management
18 Consortium Agreement Structure 18 Main structure # Preliminary clauses (title, preamble, definitions ) # Technical provisions # Financial structure and Management structure # Intellectual Property # Dispute resolution system # Final clauses (applicable law, termination)
19 Consortium Agreement Structure 19 Technical provisions: Technical contribution of each participant and coordination of the individual efforts Information on the resources, human and material, brought to the project by each participant Estimated work schedule Flexibility
20 Consortium Agreement Structure 20 Financial and management structure: Estimation of costs and financing plan Rules for the distribution of the EC contribution by the coordinator Creation of the bodies (committees, etc.) necessary for the coordination and the supervision of the work under the project Definition of scope, procedure and competences
21 Consortium Agreement Structure 21 Intellectual Property: Confidentiality Background Ownership of foreground Protection of foreground Use and dissemination Access rights..
22 Negotiation and signature of the CA - Confidentiality 22 Preserve confidentiality of data related to background and foreground (before protection) Especially when concluding agreements with third parties (access rights, subcontracts, etc.) and in dissemination activities Trade secrets Confidentiality plays an important role throughtout the project stages CA signature CA negotiation Grant Agreement Preliminary agreement (Memorandum of Understanding, Letter of intent) confidentiality information exchange for the drafting of the project proposal drafting of the Consortium Agreement
23 Main Definitions 1/2 23 Background: information and IPR (granted or applied) before signature of the EC grant agreement ( sideground is not included) Foreground: Results generated by the project and any IPR attached to these results Use: Direct or indirect utilisation of foreground in further research or commercial activities Dissemination: Making foreground available to the public Access rights: Licences and user rights to foreground and background
24 Main Definitions 2/2 24 Background = each participant s contribution at the starting stage of the project Background + Research efforts + A bit of luck = Foreground Access rights = allow the exchange information and knowhow (software, patents, work methods, etc.) in order to benefit from each other s resources and carry out their tasks or their exploitation efforts. The information beneficiaries exchange is either background or foreground (apart from sideground )
25 Diagram of the project developments 25 Participant B Participant C Notification (if no protection plans) Notification Access rights Access rights Background Participant A Foreground Protection Dissemination Use
26 Access rights (art. II.32 II.34) 26 Participant B Access rights Access rights Participant D Compulsory access rights on background and foreground are granted when needed by a participant (for implementation or use purposes) Background Access rights Participant A Foreground Participant C Access rights requests shall be made in writing; info on restricting commitments In case of access rights to third parties, preservation of participants rights Exclusive licenses (allowed) Objection of the Commission in case of granting to non-eu (or Associated) third parties
27 Access rights : Example 27 Aim of the Overall project: development of a new instrument for the sequencing of proteins (purification kit; chromatographic column; mass spectrometer; software) Participant A Has to develop (together with other 2 partners: B and C) a purification kit, mainly made up of: columns, a specific resin, membranes, solvents Participant B Background: know-how and patent on suitable type of column Participant C Background: know-how and development of new type of resins and solvents. Participant B Access rights Participant A Access rights Participant C
28 Access rights (minimal) economic conditions 28 Implementation purposes Access rights to background: royalty-free, unless otherwise agreed before signature of the grant agreement Access rights to foreground: royalty-free If you leave the project, you still have to grant access rights until its end Use purposes Access rights to background: fair and reasonable conditions or royalty-free Access rights to foreground: fair and reasonable conditions or royalty-free Request until 1 year after the end of the project or withdrawing of a participant, unless otherwise agreed
29 Management of the background 29 Defines the needed background for the project implementation (positive list) Consortium If necessary, excludes specific pieces of background (negative list) Access rights Implementation purposes Royalty-free, unless otherwise agreed before signature of the grant agreement Use purposes Fair and reasonable conditions or royalty-free Need to inform the other participants about any restriction for the granting of the compulsory access rights
30 Exclusion of pieces of background 30 Participant s background X Positive list Negative list Background available for the project
31 Ownership of foreground (art. II.26) 31 Foreground shall be the property of the participant carrying out the work generating that foreground Employees rights consider employees and other personnel consider interference with the grant agreement Joint ownership (art. II.26.2) reach agreements with other joint owners if not, default regime: % free non-exclusive licenses to 3rd parties % prior notice to joint owners % fair and reasonable compensation Transfer ownership (art. II.27) Pass on obligations to the assignee Notify the participants (they can waive their right) Notify the Commission, if the grant agreement so requires
32 Joint Ownership of foreground: Example 32 Participant B Participant A Participant C Purification kit Joint ownership: patent on the whole purification kit, jointly developed by the three partners. Patent application includes: # columns " developed by partners A and B # specific resin " developed by partners C and B # membranes " developed by partners A and C # solvents " developed by partners A and C A joint ownership agreement is required!
33 Protection of foreground (art. II.28) 33 The owner shall protect foreground capable of industrial or commercial application Taking into account the legitimate interests (particularly commercial) of the other participants and highlighting Community support Participant If not: transfer foreground to another participant that wishes to protect it if no other participant is interested, inform the Commission before disseminating it Foreground Protection
34 Protection of foreground: Example 34 Participant B Participant A Participant C Decide not to protect the kit! Purification kit # Responsible of the development of the mass spectrometer Participant D # Interested in a commercial exploitation of the project results Risk of impairing its legitimate interest!
35 Use and dissemination of foreground (art. II.29-II.30) 35 Use Participants shall use the foreground that they own, in further research or commercial activities Foreground may also be used by other participants or third parties, following transfer or license grant Dissemination (including publications) Disseminate as swiftly as possible (if not, the Commission might do it) Consider protection of foreground (IPR) and confidentiality (use) Notify the other participants of all dissemination activities (objection in case legitimate interests are impaired) Dissemination Participant Foreground Protection Use
36 Use and dissemination of foreground PUDF (1/4) 36 Plan for the use and the dissemination of foreground (PUDF) It summarises the strategy and the concrete actions of a consortium for the protection, exploitation and dissemination of the results. It must contain information on: Exploitable foreground and its use Dissemination of foreground Publishable results Participant Foreground Protection Dissemination Use
37 Use and dissemination of foreground PUDF (2/4) 37 Plan for the use and the dissemination of foreground (PUDF) Exploitable foreground and its use - Needs for further R&D activity and/or collaboration needs for exploitation (and which risks are implied) - IP-related aspects - Customer detection (focus on factors that affect purchasing decisions) - Features of the target market (size, growth rate, share that the technology/product could reach, driving factors likely to change the market, legal, technical and commercial barriers, other technologies likely to emerge in the near future ) - Positioning (how the company entitled to the technology exploitation is positioned (or should be positioned) in the market)
38 Use and dissemination of foreground PUDF (3/4) 38 Plan for the use and the dissemination of foreground (PUDF) Dissemination of foreground - It should describe how participants intend to disseminate the generated foreground (i.e. how to reaching the target audience, the proposed communication strategy and a specific set of actions) - Methods: press releases, conferences, scientific publications, exhibitions, workshops, newsletters, websites, etc Publishable results Summary of each exploitable result in order to allow the EC to promote the results of European research for market exploitation
39 Use and dissemination of foreground PUDF (4/4) 39 The collaboration between ensures a concrete support in drafting and implementing the PUDF
40 Diagram of the project developments 40 Participant B Participant C Notification (if no protection plans) Notification Access rights Access rights Background Participant A Foreground Protection Dissemination Use
41 Actions in favour of specific groups 41 SMEs and SME associations Specific groups are the owners of foreground generated by such actions, but they may decide otherwise The default ownership regime (art. II.26.2) applies RTD performers shall always grant access rights to background on a royalty-free basis (exception: use purpose) RTD performers are entitled to access rights to foreground for further research purposes, granted on fair and reasonable conditions If the owner of the results is a legal entity representing the benificiaries, sublicensing is expressly accepted Relationships with Other enterprises and end-users Transaction (art. III.1)
42 42 Which support participants need to tackle IPR issues in a FP7 project
43 At a proposal stage 43 IDEA DECISION TO INNOVATE Confidentiality issues Define the state of the art Search in patent documents Protection of technical drawings by trade secrets & / or copyright Protection of all information linked to the idea
44 Before Project 44 NEGOTIATE Background & foreground Access Rights Consortium Agreement
45 During Project 45 RESEARCH: - basic - applied Make use of confidentiality agreements (patents, third parties ) Make use of patent documents ( freedom to operate ): - as a source of information - as a source of competitive intelligence
46 During Project 46 MANAGEMENT Research results Question of ownership Access rights regime
47 Toward Project Conclusion 47 PROTECTION, USE & DISSEMINATION Protection of results Publication as a means of dissemination activities Use of results Enhanced visibility of EC support Continuous update of dissemination and use plan (PUDF)
48 Toward Project Conclusion 48 RESEARCH OUTPUT Invention, improved product or service protected by patent, utility model or industrial design Possible need of further technical development Setting up strategic alliances to facilitate the successful completion of an innovation
49 After Project: Product Commercialisation 49 MARKETING OF INNOVATION Attracting investments, business angels, VC, etc. Trade mark and industrial design are key in a successful marketing strategy Careful management of IP portfolio
50 Consortium Agreement Models 50 Please do not just copy!!! % Not official, not drafted by the Commission % Participants may use them as examples and adjust them to their specific wishes and needs -IPCA: - DESCA: - EUCAR:
51 Consortium Agreement Models 51 Comparison between the DESCA and IPCA models % Management of the background (DESCA: positive/negative list; IPCA: sideground) % Management of the foreground (DESCA: no objection right to transfer; IPCA:facilitation of transfer towards transferees) % Joint Ownership (DESCA: default regime; IPCTA: individual exploitation) % Access rights (IPCA: broader access rights for affiliates) % Affiliated companies % Open source software For further infos, see IPR-HD publication on the matter!
52 52 Common mistakes in drafting the Consortium Agreement
53 EXAMPLES for discussion 1/5 53 SECTION: Definition Background means exclusively the information which is held by the Party specific research group, research department or research institute carrying out the project work prior to the conclusion of the Contract, as well as copyrights or rights pertaining to such information following applications for, or the issue of, patents, designs, supplementary protection certificates or similar forms of protection..what s wrong with that definition?
54 EXAMPLES for discussion 2/5 54 SECTION: Provisions on Access Rights (IPR macro section) Where research is carried out in collaboration with and/or for a third party and it appears to the researching Party that the third party will require direct access to the Foreground of another Party, Access Rights to the said Foreground of another Party shall be granted to the third party on written request subject to the following: [ ] If despite reasonable efforts on behalf of the researching Party, the owner cannot be so informed, the researching Party may carry out the research without prejudice to the owner's rights to enforce its rights in any way it deems fit against such third party..what s wrong with that provision?
55 EXAMPLES for discussion 3/5 55 SECTION: Dissemination of Foreground According to the Contract, a Party may publish or allow the publication of data, on whatever medium, concerning Foreground it owns provided that this does not affect the protection of that Foreground. A Party shall provide the other Parties and the Commission with a 45 days prior notice and another Party may object to the publication. Such objection shall be duly justified and shall unless resolved between the Parties concerned be reported to Management Team. An intended publication can normally be delayed no longer than what is needed for the Parties concerned to obtain adequate legal protection of Foreground and, eventually, of the Background, in any event not more than sixty days after first notification..what s wrong with that provision?
56 EXAMPLES for discussion 4/5 56 SECTION: Dissemination For the avoidance of doubt it is stated that unless otherwise agreed between the Parties concerned no Party shall have the right to publish or allow the publication of data which includes Foreground of another Party, Background of another Party or confidential information of another Party [..] This Section shall not prevent the submission, examination, publication and defence of any dissertation or thesis for a degree which includes incidental and minor elements of Foreground of another Party, Background of another Party or confidential information of another Party in case the intention to make such dissertation or thesis has been notified to the other Parties in writing promptly as soon as such intention is foreseen..what s wrong with that provision?
57 EXAMPLES for discussion 5/5 57 SECTION: General principle on Access rights All Access Rights granted in accordance with this Section are deemed to be granted on a non-exclusive basis, to expressly exclude any rights to sub-license unless otherwise agreed herein, and, save in exceptional circumstances, shall be made free of any transfer costs..what s wrong with that provision?
58 Other useful tools for collaborative R&D projects 58 % CREST Collaboration Decision Guide, designed to help potential R&D collaborators, such as businesses (in particular SMEs) and public research organisations (PROs), to decide the best way to arrange matters in their collaboration agreement. % UK s Lambert Agreements % Danks Industri - Contacts, contracts and codices % EC Voluntary guidelines for universities and other research institutions to improve their links with industry across Europe
59 Sources of information and support 59 Information and support: # Directory of Intellectual Property Offices (http://www.wipo.int/directory/en/urls.jsp) # IPR-Helpdesk FP7 documents and Helpline (http://www.ipr-helpdesk.org) # National Contact Points (http://cordis.europa.eu/fp7/ncp_en.html) # FP7 Enquiry Service (http://ec.europa.eu/research/enquiries) # IGLO - Informal Group of RTD Liaison Offices (http://www.iglortd.org) # Innovation Relay Centres Network (http://www.innovationrelay.net) # Finance Helpdesk (http://www.finance-helpdesk.org) Information only: # CORDIS FP7 (http://cordis.europa.eu/fp7) # EC Investing in European Research (http://ec.europa.eu/invest-in-research) # SME Tech Web (http://ec.europa.eu/research/sme-techweb/) # SME Portal (http://ec.europa.eu/enterprise/sme/index_en.htm)
60 About us 60 IPR-Helpdesk - Assisting on IPR issues in RTD projects (Communitarian and International) - Raising the awareness of and training the research community on IPR
61 IPR-Helpdesk: Target Audience 61 Target Audience: Current and potential participants in Community-funded R&D projects, and in particular: SMEs, academia, research centres and individual researchers
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63 Helpline 63 Expert & personalised advice in three working days per in the following 6 languages: English, Spanish, French, Polish, German, Italian and free of charge
64 Services of the IPR-Helpdesk: Helpline 64 In a consortium made up of several SMEs involved in a software-developing CRAFT project, RTD developers of most of the software modules wanted to retain the rights. One of the SMEs sent us a question via the HELPLINE. In a simple way we explained: % The basics about software copyright % The ownership rules of the CRAFT contract RESULT: % The participants better understood their basic rights & obligations % Positions were re-negotiated in a consortium meeting
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70 70 Thank you for your attention! ad maiora semper!