Get your ticket to innovation!

Transcription

1 Get your ticket to innovation! Introduction to IP Rules in Clean Sky Joint Technology Initiative Jakub Ramocki EU Infeurope S.A., Luxembourg Brussels, 31 May 2013

2 Road Map What do I actually own? The concept of Intellectual Property Intellectual Property Rights Overview Soft IP Importance and Means of Protection Legal Framework / Agreements Specific Vocabulary and IP Rules Sample Cases Needed Assistance?

3 STOP What do I actually own? The concept of Intellectual Property

4 Knowledge Society Changing business environment in the knowledge society Business Assets Intellectual Capital Tangible Assets e. g. machinery, infrastructure, financial assets Intangible Assets e. g. know-how, human resources, business relationships, brands

5 5 Intellectual Property Rights (Overview) Ways to protect intangible assets Industrial Property Trademarks Patents Industrial Designs Literary & Artistic Works Copyrights Related rights Databases «Soft IP» (unprotectable intellectual capital) Secrets Know-How Ideas

6 6 Industrial Property Industrial Property Trademarks, Patents, Industrial Designs Literary & Artistic Works Copyrights Related rights Databases «Soft IP» Secrets Know-How Ideas

7 Literary & Artistic Works Literary & Artistic Works Industrial Property Trademarks Patents Industrial Designs Copyrights Related rights Databases «Soft IP» Secrets Know-How Ideas

8 Copyright Definition Unregistered IP Right applies to a wide range of creative, intellectual, or artistic forms, or "works, copyright protection is automatic Condition: Work, original, man made (intellectual effort) e. g. poems, plays, literary works, movies, dances, musics, photographies, software, computer programmes, paintings, Granted rights 1) Patrimonal rights : Commercial exploitation limited duration 2) Moral rights: Respect of the work and its author unlimited duration Specific use of copyrights For instance: working documents, handbooks, documents related to R&D activities, Internal/external publications, website, software, etc.

9 Copyright scope of protection Protection for original creative or artistic forms. Exists automatically protected are not the ideas per se but only the form of expression of the ideas represented in a physical embodiment. The creativity protected is the originality in the arrangement of words, musical notes, colours, shapes

10 Soft IP Industrial Property Trademarks Patents Industrial Designs Literary & Artistic Works Copyrights Related rights Databases «Soft IP» Secrets Know-How Ideas

11 STOP Soft IP Importance and Means of Protection

12 Soft IP Definition No specific definition, «Soft IP» are intellectual assets which are not included in industrial property or in literary and artistic works (unprotectable know-how), but have an important value for companies Soft IP components Know-how, confidential information, formulas, ideas, inventions, technologies, procedures, methods, accumulated skills and experience Protection of Soft IP Are not protected by specific IP legislation (but: trade secrets/unfair competition law) Will only be protected on the basis of a mutual legal relation created by agreements (non-disclosure/confidentiality agreements) signed with business partners, employees, contractors or licensees obliging them to keep the information confidential and not to use it for competition purposes Free of charge Do not involve long or complex registration-processes, BUT require internal management.

13 Trade secrets There is no harmonised system for the protection of trade secrets within the EU trade secrets are not generally viewed as intellectual property rights, but Art. 39 of the (TRIPS Agreement): a trade secret is information that: is secret in the sense that it is not ( ) generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; has commercial value because it is secret; and has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

14 Non - disclosure agreements (NDAs) legally binding contracts establishing the conditions under which one party (the disclosing party) discloses information in confidence to another party (the receiving party); All types of information can be transmitted in these agreements, such as ideas, know-how, description of inventions, chemical formulas, research or business information and negotiations, among other; The common characteristic: the disclosed information is valuable for the disclosing party to the extent that it must be kept away from the public; April May 31, 26, 2013 (2013)

15 Commonly used provisions in NDAs Definition of confidential information Permitted purpose Limitation of disclosure Information excluded from confidentiality Term Choice of law and jurisdiction

16 STOP Legal Framework / Agreements

17 IP Rules IP Rules in Clean Sky Joint Technology Initiative might be dealt with in the Council Regulation (EC) No 71/2008 of 20 December 2007 setting-up the Clean Sky Joint Undertaking; Grant Agreements for Members; ITD Consortium Agreements (governing internal rules of particular ITDs); corresponding calls for proposals for Research, Technological Development and Demonstration (RTD) activities together with their specifications (e.g. templates and guidelines for proposals); Grant Agreements for Partners; Implementation Agreement (between ITD Members and Partners); Additional contractual documents (Joint Ownership Agreements / Licensing Agreements / Material Transfer Agreements).

18 STOP Specific Vocabulary and IP Rules

19 Vocabulary present in IP regulations Key terms in the context of IP rules in Clean Sky Joint Technology Initiative are: Background Foreground Access rights Use Dissemination (2013)

20 Background / related rules Information, knowledge and intellectual property rights (granted or applied for) held by beneficiaries prior to their accession to the grant agreement (BE AWARE OF EXISTANCE OF 2 GRANT AGREEMENTS!), and which is needed for carrying out the project or for using foreground. Remains the property of the beneficiary that brings it into the project. Beneficiaries 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 a written agreement.

21 Foreground - definition Results which are generated within a given project, including pieces of information, materials and knowledge and whether or not they can be protected. Includes intellectual property rights (e.g. copyrights, industrial designs, patents, plant variety rights), similar forms of protection (e.g. rights for databases) and unprotected know how (e.g. confidential material, ideas, methods, formulas). Results generated outside a project (sideground) do not constitute foreground

22 Foreground - related rules 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 beneficiaries (partners/members) cannot be determined. Beneficiaries 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.

23 Ownership of Foreground (I) It is recommended that all the beneficiaries (partners/members) maintain evidence showing the development of the generation of their foreground in order to be able to prove the ownership and the date of its generation. It might be useful in order to avoid or resolve conflicts between partners/members about the origin of the results. You may use any means of recording data in order to be able to prove the work that has been done and its results. Keep hard copies or laboratory notebooks in order to maintain evidence about the dates of the experiments, obtainment of results, etc. If possible, use data management processes and/or systems.

24 Ownership of Foreground (II) Additionally, in order to be able to meet their contractual obligations resulting from grant agreements and further agreements (e.g. implementation agreements), partners/members should reach an agreement with their employees and other personnel as soon as the latter may be entitled to claim rights to foreground (subcontractors, researchers, end-users actively involved in the project etc.). Such agreements may include a formal transfer of ownership or granting of appropriate access rights with a right to sublicense (especially important in the case of the applicable laws of those countries which have a specific type of professor s privilege regime).

25 Joint Ownership The joint owners have the entire freedom to agree among themselves on alternative regimes of the allocation and terms of exercise of the joint ownership. Project partners may also agree not to continue with joint ownership and decide on an alternative regime (e.g. a single owner with access rights for the other project partners that transferred their ownership share).

26 Default Joint Ownership Default ownership is applicable in the absence of a specific agreement between the project partners: Where no joint ownership agreement has been concluded regarding the allocation and terms of exercising that joint ownership, each of the joint owners shall be entitled: to use the jointly owned foreground free of charge in its own business and for future business; to grant non-exclusive licences to third parties, without any right to sublicense subject to the following conditions: (a) prior notice must be given to the other joint owners; (b) fair and reasonable compensation must be provided to the other joint owners.

27 Transfer Of Foreground Transfers of ownership of foreground are allowed, and yet the obligations regarding that foreground must be passed on to the transferee. Prior notice about the intent of transfer must be given to the other beneficiaries/members together with sufficient information concerning the new owner of the foreground to permit them to exercise their access rights. Objections to the intended transfer may only be raised if such transfer would adversely affect the objecting beneficiary/member s access rights. Although foreground may be transferred to any legal entity, the Joint Undertaking may object it in case of third parties established in a third country not associated to the FP7, if it considers it not in accordance with the interests of developing competitiveness of the economy or is inconsistent with ethical principles or security considerations

28 Protection of Foreground valuable foreground (capable of industrial or commercial application) should be protected. Protection is not mandatory in all cases though the decision to leave foreground without protection should preferably be made in consultation with the other project partners, which may wish to overtake ownership. Foreground should be, furthermore, protected in an adequate and effective manner in conformity with the relevant legal provisions, having due regard to the legitimate interests of all project partners.

29 Access Rights (I) Each beneficiary/member/partner has the right to request access rights to the other beneficiary s/member s/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. Requests 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 (unless a different period - shorter or longer - is agreed). Access rights do not confer the right to grant sub-licences. Affiliated entities may get some access rights for use purposes. (2013)

30 Access Rights (II) Granting of Access Rights Beneficiaries have to grant other beneficiaries access to their know-how, if those 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 implementation Use of results Royalty-free, unless otherwise agreed by all beneficiaries before their accession to grant agreement Royalty-free, or on fair and reasonable conditions Royalty-free Royalty-free, or on fair and reasonable conditions

31 Access Rights (III) The provisions of GAs concerning access rights to foreground and background form the minimal rules that cannot be restricted or set aside. In your Implementation Agreement/Consortium Agreement, however, you may establish additional access rights (e.g. to sideground, to all foreground and not only to that which is needed to implement the project/use your own foreground) or access rights on more favourable conditions than foreseen in GAs

32 Use Utilisation (direct/indirect) of foreground in research or commercial activities, which are not part of the project (utilisation for further development, creation and marketing of a product or process)

33 Dissemination (I) 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. (2013)

34 Dissemination (II) Beneficiaries are obliged to disseminate the results swiftly. But: No dissemination of foreground may take place before decision is made regarding its possible protection. (2013)

35 Material transfer agreement contract governing the transfer of one or more materials, such as tangible research property (TRP), from the owner or authorized licensee to a recipient; ordinarily signed for research purposes only; MTAs usually prohibit the recipient from using the transferred materials for commercial purposes or outside of the agreement purposes; some MTAs state that modifications to the material transferred to the recipient shall be treated as still being property by the provider of the materials;\ the transfer of physical samples of materials (such as cell lines, plasmids, transgenic animals, chemicals etc.) does not mean the transfer of ownership of the materials or intellectual property rights.

36 STOP Sample Cases

37 Doubts concerning the transfer of ownership: is a sale of foreground considered a transfer of its ownership? Question: If a beneficiary wants to transfer the ownership of foreground to a third party, according to the GA, other beneficiaries can object unless the beneficiary has explicitly identified the third party in a written agreement. However, in the GA it is written that the JU may object to the transfer of ownership of foreground if the foreground is transferred to a third party established in a third country not associated to FP7. Is selling the ownership of foreground to a third party (selling the ownership of a patent) considered as transfer of ownership and thus the aforementioned regulation applies or can it be considered as use generating business (as profit is generated by the beneficiary) and thus the possibility of objection by JU would not apply?

38 Doubts concerning the transfer of ownership: is a sale of foreground considered a transfer of its ownership? Answer: If a beneficiary wants to transfer the ownership of foreground to a third party, other beneficiaries can object if such transfer would adversely affect their access rights. The beneficiaries may, furthermore, agree in advance that no prior notification is required with regard to specially identified third parties (e.g. mother companies, affiliates, etc.). Once such a global authorisation has been provided, the authorised beneficiary no longer has to give prior notice to the other beneficiaries of each individual transfer and therefore the latter will no longer have the possibility to object. It is also true that although foreground may be transferred by a beneficiary to any legal entity, the JU may object to intended transfers to the third parties established in a third country (not associated with FP7), if it considers that it is: detrimental to competitiveness, inconsistent with ethical principles, inconsistent with security considerations. The selling the ownership of foreground (e.g. patent) to a third party shall always be considered as a transfer of ownership. possibility of objection by JU will, thus, always apply in such case (irrespective the profit generated in this action).

39 Rules applicable in case of the take-over of the participant by a third party established in a third country Question: If a beneficiary is acquired through a purchase by a company in a third country, can the JU i) object to this acquisition? ii) accept only under certain conditions (e.g. define conditions regarding the use rights of the project results)?

40 Rules applicable in case of the take-over of the participant by a third party established in a third country Answer: Transfer of ownership of foreground can take place explicitly (e.g. while selling foreground) but may also arise in the aftermath of a take-over, the merger of two companies, etc. (e.g. in case a beneficiary is acquired through a purchase by a company established in a third country not associated to the Seventh Framework Programme). Also in the latter case the same provisions concerning the possibility of objection by JU apply. The JU can object the acquisition, provided that it considers that it would be detrimental to competitiveness, inconsistent with ethical principles or inconsistent with security considerations. The JU may also accept the acquisition under certain conditions in case when a beneficiary is acquired through a purchase by a company in a third country. You can deduce it from the wording of Art II.27.4 GAP, which states explicitly that in such cases, the transfer of ownership shall not take place unless the JU is satisfied that appropriate safeguards will be put in place and has authorized the transfer in writing.

41 Access rights regime in FP7 projects - use of a patent owned by a natural person as a background in a project Question: The titular/inventor of a patent (physical person) has offered for use without costs the patent to his company (he is the only owner) to let the company take part in a FP7 project in benefit of, which R&D activities are based on the patent contents. Has the company acquired rights on the patent? With whom shall negotiate the beneficiaries - with the original titular inventor o with the company which used the patent and financed the further investigation?

42 Access rights regime in FP7 projects - use of a patent owned by a natural person as a background in a project Answer: Background means information, knowledge and intellectual property rights held by participants prior to their accession to the grant agreement and which are needed for carrying out the project or using its results. In addition, it should be noted that the background of a given participant does not need to be its ownership, but it extends to any which it holds e.g. through licensing agreements. Bearing in mind the foregoing, the company participating in the project must held the patent at issue in order to be able to bring it as a background. Furthermore, it must be entitled to grant access rights to the patent to the remaining beneficiaries. Therefore, the company must ensure that it reached sufficient licensing agreement with the patent s real owner in order to be able to meet subsequent contractual obligations resulting from the grant agreement and the consortium agreement. In replay to your first question we would like to point at the necessity of concluding an adequate licensing agreement between the patent owner and his company as the future project partner. The company shall obtain suitable access rights in order to able to bring and use the patent as background in the project. As to your second question, the company holding the access rights to the patent is the beneficiary and brought the patent as its background to the project. The remaining beneficiaries shall, therefore, negotiate with the company and not with the patent owner.

43 Author's rights on a project report (7FP) I am writing to you to ask advice on a copyrighting issue. I enclose herein the report called Work Package 5 (WP5) of our 7FP project XXX. I am afraid that there are some problems with this document and I would like to have your opinion on this. In pages 8-37 of WP5, there has been copied and pasted a previous report of the same 7FP project XXX - Work Package 1 (WP1), of which I am co-author. Despite of the fact that WP1 has been entirely copied and pasted in WP5, there is no clear indication of this: no italics, brackets or any other relevant symbol indicate this. There is, however, a reference made to the older document (WP1) in footnote 1, in which we read: "This part of the report has been drafted by XY. In my opinion, this reference is misleading since it is not made explicit that the text quoted is, indeed, WP1. In addition, the reference made in footnote 1 seems to refer only to the first paragraph of the text and not to the 30 pages that follow immediately after. Could you please kindly confirm if the issues I have mentioned above are indeed problematic? In my opinion, apart from the ethical questions raised, infringement of my rights took place. If this is the case, what is normally done in this kind of situation?

44 Author's rights on a project report (7FP) This is a common practice of participants of FP7 actions to construct periodic reports on the later stage of a project (including a final report) on the basis of the earlier reports within the same project, since continuity and consequence of actions are typical of collaborative projects. Irrespective of the aforementioned, you should be informed about existence of so-called author s moral rights to the literary works. Moral rights protect the link between the author and his/her work to be named as an author of the work or to sign the work with the author's name or pseudonym. This right is unlimited in time, cannot be waived or transferred, however, the author may abstain from execution of his/her moral right. Generally in the EU, the author of literary works such as books/scientific articles (also reports) is the natural person who creates them. Even though the ownership would not belong to the author, the authorship generally remains untouchable. In other words, authors of works, even in a situation where they do not own the copyright, generally keep the moral rights attached to the work, in particular, the right to attribution, i.e., to be named as the author. Bearing in mind the aforementioned it seems that the authors of the WP1 report have right to be mentioned as co-authors of the WP5 report, since the former has been entirely or partly incorporated in the latter. For the avoidance of doubt, the reference shall be made in such a fashion so that it can be clearly specified which fragment has been drafted by which particular author.

45 Economic rights versus moral rights in relation to foreground Question: Our University is participating in an FP7 project. We've been confronted with an assumption that our University s subcontractors (even if they are single natural persons/scientists/authors) working under a civil law contract "for a piece of work" may not hold any to their works, even author's moral rights they are entitled to under Polish national law. Beneficiaries must ensure that, where necessary, they reach an agreement with their employees and other personnel if the latter are entitled to claim rights to foreground (including third parties such as subcontractors, students, etc.), in order for the beneficiaries to be able to meet its contractual obligations. This is particularly important for the granting of access rights to foreground to other beneficiaries. Such agreements msy for instance involve a formal transfer of ownership, or at least the granting of appropriate access rights. To comply with the FP7 rules on and subcontracting, the University is going to take over all the author's economic rights from the subcontracted scientists and assure access rights to intangible IP generated but have no means to enforce transfer of authors' moral rights to their work without violation of the Polish law. What is the common practice in such cases?

46 Economic rights versus moral rights in relation to foreground The issue of authorship has not been entirely harmonised in the EU (with a few exceptions concerning films and software) and therefore one of the first tasks that should be performed is to get acquainted with the copyright regime within a framework of the law applicable to the legal relationships between your University and their subcontractors (Polish civil law). Generally in the EU, the author of literary works such as books/scientific articles is the natural person who creates it (for example, the researcher who wrote the book). In most EU members, the author or co-authors of a work are the first owners or co-owners of the copyright. There are in many countries some exceptions to this principle, in particular with regard to employees. In fact, in many countries the employer is the first owner of the copyright (for example, a university would be regarded as the owner of the copyright under the applicable national law, since the researcher is paid to perform such task). Even though the ownership would belong to the employer, the authorship generally remains untouchable: the researcher/employee would be the author of a literary work, where the University/employer would be the owner of the copyright. Authors of works, even in a situation where they do not own the copyright (for example, the employees as exemplified before) generally keep the moral rights attached to the work, in particular, the right to attribution, i.e., to be named as the author. Even in the countries where such right can be waived (for example in many Common Law countries) it cannot be transferred. Thus, when identifying a person as an author, that person must be the real individual considered as author under the applicable national law, even if the person is an employee and the copyright belongs to the employer. The owner of the work is usually mentioned in the copyright notice. Beneficiaries must ensure that, when necessary, they reach an agreement with their employees and/or other personnel, such as subcontractors, independent researchers, etc., if the latter are entitled to claim rights to the project results. Such agreements may for instance involve a transfer of rights to such results (e.g. copyrights) or at least the granting of appropriate access rights with a right to sub-license. The aforementioned rule under FP7 does not affect the question of authorship, which should be analysed under the applicable national law. In this way it is perfectly natural to have the researchers/sub-contactors named as the authors and the respective participants (e.g. your university) as the owners of the copyright. In case the primary owner of the work is not your university but e.g. an independent researcher acting on the basis of a contract for a piece of work then it is imperative that the concerned university becomes the ownership of the copyright transferred or, at least, becomes access rights (with possibility to sub-license) from the author in order to comply with the principle of ownership of foreground under FP7 grant agreement and the obligations to grant access rights. It is, thus, natural that you reach the conclusion that certain researchers are the authors and, because they are third parties to the project subcontracted by your university, the copyright would go to the latter. We think that you are generally not able to exclude individuals from authorship in case the applicable law considers them as authors. Differently, ownership of copyright may be transferred and consequently changed by contractual arrangements.

47 How shall SMEs protect their Foreground against activities of other participants - larger research centers Let's assume that a SME (partner A) and a large industry or a large research center (partner B) will perform joint research work leading to a given foreground. Partner B does not perform any other work in the project, and so it is not supposed to produce and thus own any other foreground. Partners A and B agree, before starting the project that the jointly-produced foreground shall be owned by partner A, under the following conditions: Partner A will file the patent(s), taking care of the relative expenses, and be the single patent assignee. The patent(s) will contain a first group of claim, which concerns the foreground /per se/, and a second group of claims, which concerns the usage of such foreground for the specific application of interest of partner A. Notably, the foreground has indeed many other applications, of interest for partner B. Partner A agrees to guarantee free access rights to partner B for use of the foreground (the component invention) only in respect to the first group of claims, but does not provide any access for what described in the second group, being this the core-business of partner A. While this agreement is perceived as fair from both parties, I'm afraid that its validity is rather limited since it seems to contradict the provisions of the Grant Agreement. In fact, partner B waives non only the ownership (which is foreseen as possible) but also (part of) its access right to the foreground (and actually to the foreground that he is going to develop) before such foreground has been generated. Partner B will not own any other foreground. Therefore the condition for the "access needed" is not fulfilled (in other terms, B does not need the access to the background of foreground of other partners in order to use its own foreground, since it will not own any foreground, the "ownership" of its own foreground having been entirely waived to partner A). Could you kindly comment about that?

48 How shall SMEs protect their Foreground against activities of other participants - larger research centers There are in GA two general principles concerning ownership of foreground: (1) Foreground resulting from the project is owned by the project partner generating it. (2) Where several beneficiaries have jointly carried out generating foreground they shall have joint ownership of such foreground, unless they concerned agree on a different solution. Irrespective of the aforementioned, if it be beneficiary s will, it is free to transfer the part of its ownership of project results to its co-owner, and consequently, convert in it the sole owner. Ownership regime may be, thus, modified/adapted in order to suit specific parties necessities / interests by means of transfer mechanisms, since transfers of ownership of foreground are allowed, though the obligations regarding that foreground must be passed on to the transferee (e.g. if other project partners need that foreground to use their own project results, Partner A will be obliged to grant them). In our opinion, commitment to such transfer of results could be created in a bilateral agreement between the parties at issue (potential future co-owners of the relevant piece of foreground) already at the beginning of the project. In your particular case, partner B that transfers its part of ownership to the co-owning SME will, by default, have no access rights to such piece of foreground. However, access rights (extent, financial conditions, etc.) to may be freely negotiated between its new owner and partner B interested in having such access after the transfer. In our opinion, commitment to grant of such access to the future project results could be created in a bilateral agreement between the parties at issue already at the beginning of the project. From the legal point of view, the aforementioned solutions seem to be consistent with the FP7 IP rules. However, at the same time, we have to inform you that we are not able to asses the strategic suitability of such solutions for your specific project. Such plan should be compatible with the respective goals of the project and constitute integral part of the project s complex strategy.

49 Independent researcher's participation in a joint ownership of project results An Italian University is beneficiary in an FP7 Project. A researcher from another Italian University (which is not a beneficiary) is going to be involved for a scientific collaboration. No formal assignment or contract has been signed yet and the researcher would not be paid. An invention may be filed as patent application and my University would be a joint owner. The invention may include some work of the external researcher. My questions are: 1) can the external researcher be claimed as inventor in the patent application? 2) according to EC rules, a formal agreement between my University and the external researcher is necessary for this purpose (to be claimed as inventor) or in general, even if the researcher is not paid and thus his cost would not affect the budget?

50 Independent researcher's participation in a joint ownership of project results First of all, you should bear in mind that inventorship of a patent is not always equivalent to, and shall not be confused with, the ownership of a patent. The question as to who is the owner/co-owner of the patent is closely related to the question to who is entitled to be granted a patent. In most legal regimes the right to be granted a patent is primarily given to the inventor/joint inventors. This assumption can be, however, overridden in many situations (e.g. employee inventions). Such relationship between inventorship and ownership of a patent will vary depending on the specific national regimes, therefore, in case of doubts, we advise you to check the respective provisions of a country/ies where the patent protection will be requested (please consider the fact of applicability of, so called, professor s privilege in Italian law). As to both your questions, all physical persons which have actively participated in the creation of a new invention are generally entitled to be mentioned as inventors/co-inventors in the patent application, providing that their contribution has been inventive. Inventorship/co-inventorship arises, furthermore, irrespective of the form of collaboration, concluded agreements or assigned posts. This means, therefore, that the inventor at issue shall be claimed as a co-inventor in the patent application resulting from your project, provided that he have contributed to the inventive concept. No further agreement would be in this case necessary in order to obtain the co-inventorhip by the researcher. As mentioned before, the inventorship/co-inventorship does not, however, mean automatically an entitlement of an inventor to be granted a patent (inventor does not mean automatically owner of a patent). Therefore, we strongly recommend you to establish a contractual relationship between the beneficiry/ies and the independent researcher to allow the former to be able to meet their contractual obligations arising from the grant agreement and further applicable agreements (such as granting of access rights to foreground to other beneficiaries). Such contractual relationship may for instance involve a formal transfer of ownership, or at least the granting of appropriate access rights. Please bear in mind that in case the researcher is considered an employee of a university, it might be necessary to conclude an agreement with such university since in most EU jurisdictions employees inventions are owned by their employers.

51 Modifications of the ownership regime: Is it possible to establish one and only foreground owner I am working now on the Consortium Agreement structure. I have some doubts in modifying the model consortium agreement according our Company needs. In practice, my company is the holder of an orphan drug designation released by Medicine Agency (EMA) and this was the starting point because we have put together different Partners for developing this drug up to clinical phase and beyond. The CA will establish responsibilities and roles of the Partners in carrying out the project as well as access right and financial provisions related the EC grant and intellectual property as well. In my opinion, there is no doubt that foreground arising from the future experimental work has to be property of my company due to the rights we received from EMA designation for our drug. Partners are agreed. May we adapt CA to this fundamental raison d'etre for my company?

52 Modifications of the ownership regime: Is it possible to establish one and only foreground owner The Consortium Agreement is an agreement made between project partners (consortium members) in a project financed under FP7 to govern a number of legal issues that might arise during and after the implementation of such project. The Commission leaves the drafting of the Consortium Agreement to project consortia. Consortium members freely decide on its content which cannot, however, conflict with the provisions of the Grant Agreement (GA) which in case of doubt always prevail. In accordance with the provisions of GA (1) the Foreground resulting from the project is owned by the participant generating it. (2) When foreground is generated jointly it will be jointly owned, unless the participants concerned agree on a different solution. These minimal rules concerning foreground ownership cannot be restricted or set aside, even if one of the project partners claims to have exclusive ownership rights to the future foreground resulting from other legal titles. In case of joint ownership of the results, as the joint owners are free to agree among themselves on alternative regimes - they may agree not to continue with joint ownership but transfer their ownership shares to a single owner e.g. the company at issue (conclusion of an additional joint ownership agreement will be needed). In case, some results are generated by a single participant, in accordance with GA they will belong exclusively to such participant. However, rightful owner(s) of foreground may commit themselves in further agreement(s) to transfer corresponding ownerships to the company at issue, even if the latter did not participate in its generation. Transfers of ownership of foreground are allowed within FP7 projects. Such solution would enable the company to maintain the ownership, and consequently, market exclusivity over the results of the experimental work and at the same time act in accordance with the IP regime created for the FP7 projects.

53 Licensing of open source software A company has a software, internally developed and not published anywhere to the public. The software has been (for whatever reason) licensed using an open source license (GPL or Apache 2.0) An employee gains access to the source code of the software (without obtaining a licence). Is the employee free to modify the source code and do whatever he wants with it, provided that he follows what is stated in the licence (i.e. no modification to the copyright and no changes to the license itself)?

54 Licensing of open source software It is true that the licences like GNU General Public License or Apache License grant licensees the right to copy, modify and redistribute the software through the availability of its source code. Such licenses usually also impose obligations - all such redistribution (of the software, its additions and modifications) shall be further licensed under the same conditions. In order to be able to exercise permissions (and obligations) contained in an open source licence, an individual or legal entity must be in the position of a licensee. In this case, a term licence is used to describe the legal way a copyright owner grants permission to others to use his intellectual property (software). In practice, a software licence is typically a written document that is agreed to by the owner of the licenced software (licensor) and by the receiver of the grant (licensee). Such permission of the copyright owner can be expressed by posting the software on some Internet portal or on public website in such way that all prospective licensees will be able to retrieve the software under the terms of the license. Open source distributors offer licences to everyone (Lawrence Rosen Open Source Licensing 2005). Bearing in mind the aforementioned, we would like to raise your general awareness of the following issues: the software at issue has been kept secret towards the public, and consequently, no express permission to others to copy, modify and/or redistribute the software has been granted; without express permission to others (including employees acting as individuals) to copy, modify and/or redistribute the software no licence exists, and consequently, no-one except the copyright owner (the company) is entitled to exercise rights the software; as a matter of course, some employees must have gained access to the source code of the software in scope of their duties (creators, IT support, etc.), it does not mean, however, they have a position of licensees of the software; modifying of source code by an employee acting without licence would be considered copyright infringement, unless he acts in the course of employment and in scope of an employee s duties (these issues, however, shall be concluded between the employer and its employees e.g. in provisions of employment agreements).

55 STOP Need Assistance?

56 Helpline First-line support User-friendly service provided in English Personalised answers to individual questions within three working days Wide range of IP topics: IP protection, IP management and exploitation, revision of agreements, etc. Understandable for non-legal experts and business oriented

57 Thank you. We look forward to getting in touch with you! For questions and general IP advice, please contact our Helpline team: Phone (Helpline) Fax (Helpline) For questions related to our training activities, please send an tot: training@iprhelpdesk.eu