Intellectual Property in FP7 projects

Transcription

1 Intellectual Property in P7 projects IGLO training, russels, 25 th ebruary 2010 Stéphane eslier IPR Helpdesk - University of Alicante IPR-Helpdesk is a constituent part of the IP Awareness and Enforcement: Modular ased Actions for SMEs (IPeuropAware) project which is financed by the CIP Programme, DG Enterprise and Industry of the European Commission IP in P7 P7 IP related rules (General conditions of the grant agreement) Specific actions Consortium agreement (Rules adopted by the project participants) IPR-Helpdesk support services 2 1

2 IP in P7 Under which conditions are they going to exchange their existing knowledge? Who will be the owner of the new results? Who will exploit the new results (and how)? 3 IP in P7 Under which conditions can the participants exchange their knowledge? Access rights Confidentiality Who owns the results generated under the project? Ownership Joint ownership How to exploit the results? Protection Use and Dissemination 4 2

3 IP in P7 The Seventh ramework Programme (P7) of the European Community for research, technological development and demonstration activities legal base is the Decision No 1982/2006/EC. Intellectual Property (IP) rules are mainly stated in: the Regulation (EC) No 1906/2006 (Rules for participation) and the relevant grant agreement and its annexes. 5 IP in P7 Grant agreement Consortium agreement Public funding contract concluded between the participants and the European Commission largely based on standard provisions. - Core agreement - Annex I (Technical Annex) - Annex II (General conditions) - Annex III (Specific actions) - [Special clauses] Private contract concluded between the participants to specify or supplement the provisions of the grant agreement. - Preliminary clauses - Central clauses (governance, financial provisions, IPR) - inal clauses 6 3

4 P7 Definitions ackground: information which is held by beneficiaries prior to their accession to the agreement, as well as copyrights or other intellectual property rights pertaining to such information, the application for which has been filed before their accession to the agreement, and which is needed for carrying out the project or for using foreground. oreground: the results, including information, whether or not they can be protected, which are generated under the project. Such results include rights related to copyright; design rights; patent rights; plant variety rights; or similar forms of protection. 7 P7 Definitions Access rights: licences and user rights to foreground or background. Use: direct or indirect utilisation of foreground in further research activities other than those covered by the project, or for developing, creating and marketing a product or process, or for creating and providing a service. Dissemination: 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. 8 4

5 P7 ackground ackground refers to information, including IP rights, needed for the project. ackground remains the property of the participant that brings it into the project. Participants shall inform each other of any limitations to access background. The consortium agreement may clarify what is to be defined as necessary and identify which background is made available to the project. 9 P7 oreground Ownership of foreground: Each participant is the owner of the results it generates during the project. Participants may modify the ownership regime. Personnel rights to be taken into consideration. 10 5

6 P7 oreground Joint Ownership of foreground: If foreground is generated in common and respective parts of the participants cannot be determined: joint ownership. Participants may modify the ownership regime. Participants must conclude a joint ownership agreement to deal with allocation and exercise of the joint ownership. Default transitional regime until agreement is signed: non-exclusive licences to third parties prior notice to the other participants fair and reasonable compensation. 11 P7 oreground Transfer of ownership: A participant may transfer ownership of its foreground (it shall pass on all its obligations to the new owner). The envisaged transfer should be notified to the other participants which may object if their access rights are not preserved. No notification for transfers towards specifically identified third parties may be agreed Licensing: A participant may grant an exclusive licence to foreground (or background) but the other participants shall waive their access rights in writing. 12 6

7 P7 oreground Transfer and licensing of foreground: The European Commission may object to transfer/exclusive licensing to third parties established in third countries to safeguard European interests. 13 P7 oreground 14 7

8 P7 Access rights Access rights to background and foreground shall be granted when a participant needs another participant s background or foreground in order to carry out its project work or to use its own foreground. Access rights requests shall be made in writing. Access rights are to be granted throughout the duration of the project for implementation needs and up to 1 year after the end of the project fot use needs. Access rights do not confer the right to grant sub-licences. 15 P7 Access rights 16 8

9 P7 Access rights for affiliates Affiliated entities are recognised some access rights for use purposes In order to enjoy access rights for use, the affiliate needs to have (in whole or in part) ownership of foreground The participants may complement the provision in their consortium agreement 17 P7 Access rights Needed to carry out the project (implementation) ackground Royalty-free unless otherwise agreed before the grant agreement is signed oreground Royalty-free Needed to exploit own foreground (use) Royalty-free or on fair and reasonable conditions 18 9

10 P7 Protection When the foreground can be industrially or commercially applied, its owner shall protect it (taking into account the legitimate interests of the participants). This may be done by means of IP rights and may imply that the participants themselves or third parties are subject to certain confidentiality obligations until the protection is effective. If no interest, a participant may transfer it to another entity that is willing to protect it. If no protection, information of the European Commission before dissemination takes place. 19 IP protection Inventions Patents / utility models up to 20 years / 10 years Appearance of a product Industrial designs up to 25 years Distinctive signs for goods/services Trade marks 10 years renewable Written/audio-visual works, computer programs, etc. Copyright and related rights + 70 years Know-how, commercial information, etc. Trade secrets until disclosed 20 10

11 IP protection IPR-Helpdesk IP protection IPR-Helpdesk

12 P7 Confidentiality Confidentiality obligation on all information exchanged during the project and 5 years after the project end. Crucial issue until decisions on protection and use are implemented. 23 P7 Use of the foreground The participants shall use the foreground, or ensure that it is used. Participants may use the foreground, together or individually, directly or indirectly (e.g. further research or commercial activities)

13 P7 Dissemination of foreground The participants shall also disseminate the foreground as swiftly as possible by any means (publication of a patent application is not considered as a dissemination). Dissemination activities shall be compatible with IP protection, confidentiality obligations and, the legitimate interests of the owner(s) of the foreground (45-day prior notice of any dissemination activity to the other participants). The participants shall ensure the visibility of the EU funding. 25 P7 SME actions Research for the benefit of SME: specific actions to strengthen the innovation capacity of the SME participants or SME associations. RTD performers carry out the research for the benefit of these participants. IP provisions for SME actions are mainly stated in the: Rules for participation and Annex II and Annex III (SME actions) of the standard grant agreement model

14 P7 SMEs actions RTD Performer: a participant that is paid to carry out research and technological development activities for the benefit of Small and Medium-Sized Enterprises (SMEs). SMEs: defined in the Recommendation 2003/361/EC according to the number of employees and turnover or balance sheet totals. Transaction: part of the grant agreement in SMEs actions where the participants agree on the ownership of results and the remuneration of RTD performers. 27 P7 SME actions RTD performers SME participants or SME associations The transaction details IP management (ownership and access rights issues) and the remuneration of the RTD performers. The European Commission approves the transaction (and any modification) as part of the Annex I to the grant agreement

15 P7 SME actions RTD performers SME participants or SME associations The transaction Default regime: The SME participants/sme associations retain ownership of all foreground, in exchange the RTD performers are reimbursed for all their costs for generating this foreground. The participants may modify this regime, as long as the interests of the SME participants/sme associations are preserved (at least by access rights). 29 P7 SME actions RTD performers SME associations SME association members The SME associations shall use and disseminate the results for the profit of their members The SME associations have the right to sublicense the foreground to their members 30 15

16 P7 SME actions RTD performers SME participants or SME associations The SME participants/sme associations may need access rights to the RTD performers background to be able to use the foreground: shall be granted on royalty free or fair and reasonable conditions if agreed before grant agreement is signed. 31 P7 Marie Curie Marie Curie: specific actions to allow researchers to develop skills at all stages of their careers by promoting their mobility. IP provisions for Marie Curie are mainly stated in the: Rules for participation Annex II (Mono-beneficiary or Multi-beneficiary) and Annex III (relevant action) to the People grant agreement model. These provisions are equivalent to the general IP provisions of the standard grant agreement. However, the Annex III introduces the legal basis for the relationship with partner institutions, where appropriate, and provides the basic rules applicable to the researchers

17 P7 Marie Curie In all types of actions, the beneficiaries shall sign an agreement with the researcher to detail his/her participation in the project (including the necessary IP related provisions). In any case, the beneficiaries shall ensure that the researcher enjoy access rights to background and foreground needed for his/her activities under the project (on a royalty-free basis). The beneficiaries must inform the researchers of any restriction affecting the granting of access rights as early as possible. The beneficiaries shall ensure that confidentiality obligations regulating the project are extended to the researchers. In this respect, the beneficiaries should try as much as possible to reconcile their interest on the protection of foreground with the researchers activities. 33 P7 Marie Curie In multi-beneficiary projects, beneficiaries may also (have to) sign a consortium agreement among themselves. Where foreseen in the relevant actions, the beneficiaries and the partner institutions should sign a (partnership) agreement to deal with the activities of the researcher during its secondment

18 P7 Marie Curie 35 IP in P7 P7 rules on Ownership of results, Access rights, Protection of results, Use and Dissemination and Confidentiality are interrelated. The applicable rules may need to be adapted/supplemented in a consortium agreement in light of the specificities of the project and the needs of the participants, provided it remains consistent with the applicable rules and compatible with other relevant agreements

19 IP in P7 Negotiation and proposal preparation Project implementation Exploitation of results confidentiality agreement access rights consortium agreement joint ownership agreements partnership agreement agreement with researcher licensing assignment EU grant agreement 37 Consortium agreement Is it mandatory to sign one? YES, where provided for in the grant agreement the participants shall make appropriate internal arrangements in the form of a written consortium agreement. SME actions: consortium agreement always mandatory, has to be sent to the European Commission, at the latest 2 months after the start date of the project. When to sign it? Deemed to be concluded before accessing the grant agreement est as early as possible

20 Consortium agreement (CA) Is there an official consortium agreement model? No, however the European Commission provides a checklist of topics which may be included in a consortium agreement. Private organisations propose consortium agreement models, for P7 collaborative research projects (no specific template in relation to SME or Marie Curie actions), that can be used, provided that they are closely adapted to the characteristics of the action and the specific needs of the participants, in coherency with the applicable rules. 39 CA Preliminary clauses Preamble: may provide basic information about the context of the project (e.g. the legal basis, the reference of the relevant call, the name of the project, the reference of the related grant agreement). Parties: the beneficiaries of the EU grant will identify themselves (i.e. the signatories of the contract). SME actions: participants should also indicate their position in the consortium (i.e. SME participant, SME association, RTD performer). Definitions: not advisable to repeat, or modify, the definitions of the grant agreement, but inclusion of additional definitions where appropriate (e.g. needed ). Technical provisions: e.g. responsability and liability

21 CA Preliminary clauses e.g. definition of needed in DESCA: or the implementation of the Project: Access Rights are Needed if, without the grant of such Access Rights, carrying out the tasks assigned to the recipient Party would be impossible, significantly delayed, or require significant additional financial or human resources. or Use of own oreground: Access Rights are Needed if, without the grant of such Access Rights, the Use of own oreground would be technically or legally impossible. 41 CA Central clauses Clauses setting up the internal organisation of the consortium: Depending on the number of participants and the size of the projects, different bodies, with defined competences, may be set up. Clauses setting up the management procedures for the project: Representation in the meeting, schedule of meetings, voting procedures, etc.. SME actions: all consortium decisions shall be voted upon by the majority of SME participants/sme associations

22 CA Central clauses inancial provisions: Details on how to manage the consortium budget (e.g. role of the coordinator, management of of the Community grant, financial contribution by the participants themselves). SMEs actions: the deal made in the transaction for the reimbursement of RTD performers by the SME participants/sme associations should be respected. 43 CA IP related clauses ackground: The participants should identify all the information, including IPR, that they own and/or hold before the project starts and which may be necessary for the project. If making use of third parties rights, the participants should verify that any necessary authorisations are obtained in due time. The participants should agree on the conditions to exchange background (access rights) among themselves. (To choose the non royalty-free option for access rights to ackground needed for implementation they have to agree before the grant agreement is signed)

23 CA ackground Attachments to the consortium agreement may be used to define which information/ipr are open to access rights: List of background included (positive list) and/or List of excluded background (negative list). 45 CA Access rights The participants may consider and agree on conditions related to access rights for background or leave it for the interested participants to discuss on a bilateral basis. They may also include specific conditions in relation to third parties (including affiliates) and/or additional access rights

24 CA IP related clauses Ownership of foreground: Participants may adapt the ownership regime. The consortium agreement may regulate the procedure related to the prior notification/right of objection in case of an intended transfer to specifically identified third parties. Joint Ownership of foreground: The consortium agreement may be used to deal with ownership/joint ownership issues or to give the basis for specific agreements: e.g joint ownership agreement. 47 CA IP related clauses Use of foreground: The participants may detail how to implement this obligation in the consortium agreement in relation to different manners of using the foreground at stake. (e.g. use for commercial applications, use for internal research and the possible implications for example in relation to confidentiality)

25 CA IP related clauses Dissemination of foreground: Dissemination activities shall be compatible with IP protection, confidentiality obligations and the legitimate interests of the owner(s) of the foreground. The grant agreement contains a default procedure to facilitate coherent dissemination (45-day prior notice among participants before any dissemination activity) which may be adapted to the specificities of the project in the consortium agreement (e.g. different time limits or waive the prior notice). 49 CA inal clauses Entry into force, duration and termination: the date on which the consortium agreement enters into force, as well as its duration and reasons for early termination. Applicable law: up to the participants. Settlement of disputes: provisions on the competent jurisdiction and/or alternative dispute resolution mechanism to solve conflicts. Confidentiality: safe exchange of sensitive information, the participants can extend the 5-year term, facilitate the identification (e.g. public, restricted, confidential). Amendments: mechanism to enable to modify the consortium agreement (usually by common agreement of all participants)

26 CA models Remember: Consortium agreement models can be utilised as examples to prepare negotiations or the drafting of an agreement provided that the model is always closely adapted to the characteristics of the action and the specific needs of a project. N: Non official documents, examples hereinafter for information purposes only, always check last version and related documentation. 51 CA models Which are the general conditions applicable for access rights? written request deemed granted, notification in some cases deemed granted access rights for use up to 1 year after the project access rights for use up to (2) years after the project access rights for use up to 2 years after the project no time-limit for access rights requests 52 26

27 CA models How are affiliated entities defined? no specific definition specific definition, enlarges the list of affiliates specific definition, enlarges the list of affiliates 53 CA models Are affiliates' access rights linked to parent's access rights? Subject to the continuation of the access rights to which it is affiliated Subject to the continuation of the access rights to which it is affiliated 54 27

28 CA models How is transfer of foreground regulated? no objection, but notification for transfers to specifically identified third parties no objection or notification for transfers to specifically identified third parties, affiliates no objection or notification for transfers to specifically identified third parties 55 28

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30 Useful links Rules for participation P7 grant agreement models Guide to Intellectual Property Rules for P7 projects ftp://ftp.cordis.europa.eu/pub/fp7/docs/ipr_en.pdf Checklist for the Consortium Agreement ftp://ftp.cordis.europa.eu/pub/fp7/docs/checklist_en.pdf and 59 Thank you for your attention IPR-Helpdesk is a constituent part of the IP Awareness and Enforcement: Modular ased Actions for SMEs (IPeuropAware) project which is financed by the CIP Programme, DG Enterprise and Industry of the European Commission 30