Agreements in FP7 Projects Frequent Questions to the IPR-Helpdesk

Transcription

1 Agreements in FP7 Projects Frequent Questions to the IPR-Helpdesk: Contract Negotiations, Project Management, IP and Dispute Resolution Alicia Blaya Senior Legal Adviser Intellectual Property and Knowledge Transfer University of Alicante

2 IPR-HELPDESK Providing free of charge basic legal assistance on intellectual property (IP) related issues to participants, mainly SMEs and research institutions, in R&D&I EU funded projects. A bit of history 09/ /2001 Pilot phase 01/ /2004 First phase of IPR-Helpdesk 01/ /2007 Second phase of IPR- Helpdesk 11/ /2010 (11/ /2011) IP Awareness and Enforcement: Modular Based Actions for SMEs project IPeuropAware Coordinator: University of Alicante (UA) IPR-Helpdesk run in full by UA 2

3 EU Framework Programmes (FP) for R&D&I TFEU (ex EC Treaty) 3

4 FP M Budgets FP6 FP7 FP M but budget is not everything Making the most of the EU funding very much depends on participants knowledge of the (IP) related issues & rules. 4

5 1. Knowing the FP context PROPOSAL STAGE... END OF PROJECT HOW TO EXCHANGE OUR KNOWLEDGE? Confidentiality aspects Access rights (licences) OWNERSHIP OF THE PROJECT RESULTS Institutional ownership Personnel rights Joint ownership HOW TO EXPLOIT AND DISSEMINATE THE RESULTS? 2. Knowledge of the IP system Protection (IP rights) Use Dissemination 5

6 Legal and contractual framework FP7 FP7/EURATOM TFEU Decision 1982/2006 Regulation 1906/2006 Rules for Participation Other EU rules (Competition, financial ) GRANT AGREEMENT National Law Previous commitments CONSORTIUM AGREEMENT and any other necessary agreement Confidentiality agreements Joint ownership agreements Technology transfer (TT) agreements 6

7 Frequent Questions Helpline & Training 7

8 PROPOSAL NEGOTIATION AND MANAGEMENT OF BACKGROUND (i.e. prior info & IP rights to bring in the project) How to protect sensitive information at the proposal stage? Confidentiality agreements (Non-Disclosure Agreements NDA). Beware of Letters of Intent (LoI), Memoranda of Understanding (MoU), in particular where binding/non-binding effect is unclear. How to properly identify the background available? Handling positive and negative lists. Remembering the need-to premise for granting compulsory access rights. Other IP related issues at the proposal stage Clearance of rights (trade mark/state of the art searches, ownership of background). Defining a coherent IP strategy in line with the FP7 rules (ownership of results, clear ideas for the use and dissemination of the results). 8

9 CONSORTIUM AGREEMENT (CA) PREPARATION Our CA draft is based on X model, could you have a look at the IP related clauses? Knowledge of the CA role The CA supplements the grant agreement. It shall not contradict the latter. Being aware of the CA models and their differences with the grant agreement. Knowledge of the FP7 rules. CAs are international contracts. Preamble needed' or 'necessary Title, Parties, Language, Definitions (!) Consistency with the grant agreement. Preliminary clauses Central clauses Final clauses Project management Applicable Law Participants may choose the law they prefer but consistency with grant agreement is advisable. Dispute resolution systems Court litigation Alternative Dispute Resolution (ADR) systems (mediation, arbitration) 9

10 OWNERSHIP OF FOREGROUND (i.e. project results) As the project coordinator had the idea for the project it wants to take ownership of the results Knowledge of the FP7 rules knowing the rules means knowing our chances. In our national law, employees have the right to be named as inventors, is this in line with the FP7 grant agreement? Employees rights and right to the patent and other IP rights. Other personnel rights (invited researchers, scholarship holders, subcontractors ) How to deal with joint ownership of foreground? Should all joint owners have the same share of property? How to deal with exploitation? Being aware of the FP7 default rule (which only deals with licensing). Joint ownership: a matter for negotiation Importance of a sound joint ownership agreement. 10

11 PROTECTION & USE OF FOREGROUND Considerations for planning the protection and use of the results Protection (IP rights) Adequate Effective (flexibility) Beware of premature publications Use (commercial exploitation/ utilisation in new research activities) Direct use TT agreements Dissemination (seminars, websites, journals, etc) IP rights Confidentiality Plan for the use and dissemination of foreground Knowledge of the FP7 rules and IP practice. Protection, use and dissemination are part of the same strategy. Careful planning and timing is crucial. 11

12 PROTECTION & USE OF FOREGROUND Planning the right strategy 3 steps Confidentiality Evaluation Best option IP right Scope Joint decision participant(s) + IP expert 12

13 PROTECTION & USE OF FOREGROUND We want to sell/license our foreground. What to bear in mind? Knowledge of the FP7 rules and IP practice. 1 Transfer (assignment) 2 Exclusive licences - The participant that transfers foreground shall pass on all its obligations. - The other participants shall be notified and may object if their access rights are not preserved. - Exclusive licences to foreground / background may be granted but the other participants shall waive their access rights in writing. The Commission may object to transfers/exclusive licences to foreground towards third parties established in third countries if European interests are at stake. 13

14 PROTECTION & USE OF FOREGROUND Do you have a license agreement model?... What about preparation & negotiation? Challenges: Participants may lack expertise. Underestimation of expert assistance. Good faith ( win-win agreements ) Know your partner (due diligence) Skills ( we don t have the agreement that we deserve but that we negotiate ) 14

15 PROTECTION & USE OF FOREGROUND Very helpful to start with technology licensing Written in an easy-to-read style. Practical manual to enhance knowledge and skills on all the major issues to be addressed while negotiating licensing agreements. It also has annexes with additional materials, such as a number of case studies and other helpful information. A pdf version is available on WIPO s website: 15

16 CONCLUDING THOUGHTS In transnational R&D projects, IP issues play a key role. better awareness of the applicable rules & the IP system, informed & skilled decision-making are necessary. Are participants on their own? 16

17 Some useful resources European IPR-Helpdesk ( European Commission s Guide to IP Rules for FP7 Projects (ftp://ftp.cordis.europa.eu/pub/fp7/docs/ipr_en.pdf) CORDIS Community Research and Development Information Service: ( DOCUMENTS SUPPORT WIPO - SME resources ( ProTon Europe ( 17

18 TransKnowlia Transnational Knowledge UA Thank you for your attention alicia.blaya@ua.es 18