Intellectual Property Rules in Horizon 2020

Transcription

1 Intellectual Property Rules in Horizon 2020 Luxinnovation training in Horizon 2020 Inna Dimova 24 September 2014 Luxembourg

2 Roadmap Rules and Agreements in Horizon 2020 Specific Vocabulary Focus on the IP Rules in Horizon 2020

3 STOP IP Rules and Agreements in Horizon 2020

4 Intellectual Property rules The IP rules in Horizon 2020 can be found in: the Rules for Participation the (model) Grant Agreement - an annotated version of the Grant Agreement is also available the applicable work programme Horizon 2020 Online Manual: IP section is a work in progress How to find them: Participant Portal- Reference documents

5 Grant Agreement (GA) Relation between Commission and Consortium EU Commission P5 P4 P1 Grant Agreement P3 P2

6 Consortium Agreement (CA) Regulates the relation between consortium partners (= beneficiaries) P5 P1 P4 Consortium Agreement P2 P3

7 General IP issues Every project starts with an idea Protect all information linked to the idea: Make use of Confidentiality Agreements Beware of Third Parties Intellectual Property Rights - search in patent databases & documents (i.e. Espacenet); check acronyms against registered Trade Marks Seek help from EEN, Chambers of Commerce, PATLIB centers Contact your legal department as early as possible!

8 STOP Horizon 2020 Specific Vocabulary

9 Vocabulary Key terms in the context of Horizon 2020 projects are: Background Results Exploitation Dissemination Access rights

10 Definitions (I) Background Tangible or intangible input (data, knowhow, information) which is held by the project partners prior to their accession to the GA. Includes IP as copyright, patents/ patent applications (filed prior to access to GA). Examples: prototypes; cell lines; database rights, licences with the right to sublicense Project partners must identify their background in writing Best practice: do so before the Grant Agreement is signed! Results All results which are generated under the project whether or not protectable. Such results may include copyrights, industrial design rights, trademarks, patent rights, know-how or others, and belong to the partners who have generated them.

11 Definitions (II) Access rights User rights (incl. licences) to results or background of project partners. Exploitation Utilisation (direct/indirect) of results in research activities, which are not part of the project, as well as utilisation for further development, creation and marketing of a product or process. Dissemination Means through which research results are presented to the public. Official publications (e.g. patent applications) are not considered as dissemination.

12 Access Rights (I) Each project partner has the right to request access rights to the other project partners background and results as long as it needs them in order to carry out its work under the project or to use its own results (these are minimum access rights). Shall be requested in writing. Can be granted in any form. Best practice: to avoid misunderstandings, it is recommended that beneficiaries agree (e.g. in the consortium agreement) on a common interpretation of what is needed. Are to be requested/granted throughout the duration and up to 1 year (or as otherwise agreed in the CA) after the end of the project for exploitation needs. Once requested, access rights may be exercised as long as they are needed for exploiting the results (e.g. until the background patent expires). Access rights do not confer the right to grant sub-licences!

13 Access Rights (II) Granting of Access Rights Access to background Access to results Project implementation Use of results Royalty-free Royalty-free, or on fair and reasonable conditions Royalty-free Royalty-free, or on fair and reasonable conditions

14 Access Rights of Affiliated Entities Granted unless otherwise agreed in the consortium agreement Access rights to background and to results Granted to affiliated entities established in an EU Member State or associated country, if this is needed to exploit the results generated by the beneficiaries to which they are affiliated Under fair and reasonable conditions

15 STOP Focus on the IP rules in Horizon 2020

16 Ownership of results Ownership rules can be found in the GA (default regime) and in the CA Principle - results belong to the beneficiary generating them. If results have been generated by several partners jointly - joint ownership. GA = default joint ownership regime. Best practice: agree on a tailored joint ownership agreement adapted to each jointly owned result. It is always advisable to clarify the ownership of results within the consortium once they have been created, in line with your CA, before the partners start setting up exploitation strategies!

17 Protection of results Each beneficiary must examine the possibility of protecting its results and must adequately protect them for an appropriate period and with appropriate territorial coverage if: the results can reasonably be expected to be commercially or industrially exploited and protecting them is possible, reasonable and justified (given the circumstances). When deciding on protection, the beneficiary must consider its own interests and the interests (especially commercial) of the other beneficiaries.

18 Protection by What for? Registration? Patent New inventions Registration is required Utility model New inventions Registration is required, but conditions are less stringent than for patentability Trade Marks Distinctive signs Registration is required Industrial Design Copyright Appearance of products Literary, artistic and scientific works Registration is usually required, but it is possible to acquire an unregistered design right Not required, but it can be registered in some countries Always use symbols, such as for copyright, and for trademarks, or any other equivalent indicating that it is protected by one or more different

19 Exploitation of results Each beneficiary must up to four years after the project completion take measures aiming to ensure exploitation of its results (either directly or indirectly, in particular through transfer or licensing by: using them in further research activities (outside the action) developing, creating or marketing a product or process creating and providing a service, or using them in standardisation activities

20 Exploitation and Dissemination Plan Beneficiaries have an obligation to define the expected results and their strategy for exploitation and dissemination. Hence the following information must be included: A list of expected results that might be exploited (i.e. with commercial or industrial applicability) including their: description sector of application, and protection measures A list of all the means through which they intend to bring the results to the public knowledge A potential/expected impact quantifiable in terms of marketability and research advancement

21 Transfer/Licensing of results (I) Each beneficiary may transfer ownership of its results. Remember: obligation to notify the other interested partners A beneficiary that intends to transfer ownership of results must give at least 45 days advance notice to the other beneficiaries that still have (or may still request) access rights to the results. Unless otherwise agreed (in writing), any other beneficiary may object within 30 days of receiving notification, if it can show that the transfer would adversely affect its access rights. In this case, the transfer may not take place until an agreement has been reached between the beneficiaries concerned. Remember: obligation to pass on all obligations over the results (protection, dissemination, access rights ) to the transferee and any subsequent transferee.

22 Transfer/Licensing of results (II) Each beneficiary may grant licences to its results. Exclusive licences for results may be granted only if all the other beneficiaries concerned have waived their access rights. If you intend to transfer results (or grant exclusive licences) to a third party established in a non-eu country non-associated to Horizon 2020: If a clause to this effect is included in the GA, a beneficiary that intends to transfer ownership or grant an exclusive licence to third parties established in non-eu, nonassociated countries must formally notify the EC before the intended transfer or licensing takes place and: identify the specific results concerned; describe in detail the new owner or licensee and the planned or potential exploitation of the results, and include a reasoned assessment of the likely impact of the transfer or licence on EU competitiveness and its consistency with ethical principles and security considerations. Remember that the EC may object to such transfers for up to 4 years after completion!

23 Obligation to disseminate Project partners are obliged to disseminate the results swiftly (i.e. to scientific community/broader public) by any appropriate means other than that resulting from the formalities for protecting it or exploiting the results, and including the publication of results in any medium. But: no dissemination of results may take place before decision is made regarding their possible protection, and all patent applications and publications or any other type of dissemination (also in electronic form) shall include a statement that the action received financial support from the Union The same applies to results incorporated in standardisation activities.

24 Dissemination checklist Take a decision about the protection of results and all required steps Inform the other consortium partners in writing 45 days before the planned dissemination activities and include enough information to allow them to analyse whether their interests are affected or not. Note that this time limit can be changed (for more or less days) in the CA. Wait 30 days for any objection to the dissemination (unless otherwise agreed in the CA). Beware not to infringe third parties' intellectual property rights Open access as a general principle of scientific dissemination List the dissemination activities in the Exploitation and Dissemination Plan

25 Open Access (I) OA = online access at no charge to the end-user (plus further distribution and proper archiving). In H2020: General rule = OA to peer-reviewed scientific publications. Open Research Data Pilot optional. May be required in certain areas. However, open access: is not an obligation to publish: only if publishing is the chosen dissemination route does not interfere with the decision to exploit research results commercially e.g. patenting: discussion on open access comes after the decision to protect publications are not of a lower quality: they go through the same peer review process as other publications

26 Not open access Dissemination: Research results publication 'Green' open access Research results Decision on IP protection (patenting or other forms of protection) Open access 'Gold' open access Exploitation: Research results commercialisation

27 Open Access (II) The Commission has published a fact sheet and guidelines on Open Access to Scientific Publications and Research Data in Horizon 2020, that can be downloaded at: n2020/files/factsheet_open_access.pdf ants_manual/hi/oa_pilot/h2020-hi-oa-pilot-guide_en.pdf For more guidance and support on Open Access: the OpenAIRE initiative aims to support the implementation of the Open Access policies of the Commission and the Research Council.

28 Costs reimbursements Costs of intellectual property rights (), including protecting results (e.g. fees paid to the patent office for patent registration) and royalties on access rights are eligible costs Cost for open access publications are also considered eligible by the GA, e.g. Author Processing Charges (APCs) For more information on costs eligible for reimbursement in H2020: contact your Legal & Financial National Contact Point!

29 Further information Fact sheets IP management in Horizon 2020: at the proposal stage IP management in Horizon 2020: at the grant preparation stage IP management in Horizon 2020: at the implementation stage Open access in Horizon 2020 Publishing v. patenting Exploitation channels for public research results, and series on Commercialising IP Check

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

32 Union 2014 Photo credits istockphoto.com istockphoto.com/maridav istockphoto.com/bliznetsov istockphoto.com/zeffss1 istockphoto.com/agata Malchrowicz istockphoto.com/joseph Weber istockphoto.com/danijela Pavlovic Markovic istockphoto.com/yuri_arcurs istockphoto.com/rzdeb istockphoto.com/sean Locke istockphoto.com/artsem Martysiuk istockphoto.com/josé Carlos Pires Pereira istockphoto.com/rtimages istockphoto.com/daniel Laflor istockphoto.com/pavel Bolotov istockphoto.com/lise Gagne istockphoto.com/alex Slobodkin istockphoto.com/yanc istockphoto.com/hudiemm istockphoto.com/dave White Others Boggie, ScoutMedia 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 is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained in this presentation for non-commercial purposes is authorised and free of charge, provided the source is acknowledged. The use of images other than in the mere reproduction of this presentation is prohibited. The 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 is managed by the Commission s Executive Agency for Small and Medium-sized Enterprises(EASME), with policy guidance provided by the Commission s Enterprise & Industry Directorate-General. Even though this presentation has been developed with EU funding, the positions expressed are those of the authors and do not necessarily reflect the views of the Commission or of the EASME.