IP in EU-funded projects

IP in EU-funded projects Jörg Scherer EU / Eurice GmbH (Saarbrücken) Brussels, 31 May 2013

2 STOP Need Assistance? The October 11, 2011 (2011)

3 Team infeurope S.A. (Project Coordinator; Website & Helpline) Centre de Veille Technologique Office de la PI (MECE) et CRP Henri Tudor (Publications & Training Activities) Eurice GmbH (Awareness Raising & Training Activities) October 11, 2011 (2011)

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Frequent concerns What are positive and negative background lists? Are the provisions drafted in the CA in line with the GA? How can we best handle joint ownership of foreground? How can we best protect/exploit our research results? How do I prepare a Non- Disclosure Agreement?

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Roadmap General Frame Rules and Agreements Specific Vocabulary in EU-funded coll. projects IP in Project Life Cycle CleanSky specificities

STOP General Frame

What are the characteristics of an EU funded project? (2013)

Collaborative Projects It is in the nature of collaborative projects that different partners with varying mindsets and interests come to sit at one table. ROs University SMEs Industry (2013)

Characteristics ROs University Industry SMEs Goal: publication Using results for future research and teaching activities Insufficient exploitation strategy Lacking legal/ expertise Goal: commercialisation of results Application-oriented approach Strong in-house legal/ expertise Goal: keeping control over own research results Protection of existing know-how, that is brought into the project Lacking legal/ expertise (2013)

STOP Rules and Agreements (2013)

Where do I find rules regarding IP in EU funded projects, and specifically the JTI CleanSky? (2013)

IP Rules Basis for CleanSky Article 15 of COUNCIL REGULATION (EC) No 71/2008 setting up the Clean Sky Joint Undertaking Intellectual property The Clean Sky Joint Undertaking shall adopt distinct rules governing the protection, use and dissemination of research results, based on the principles of Regulation (EC) No 1906/2006* as set out in Article 23 of the Statutes, which ensure that, where appropriate, intellectual property generated in research activities under this Regulation is protected, and that research results are used and disseminated * rules for the participation of undertakings, research centres and universities in actions under the Seventh Framework Programme and for the dissemination of research results (2007-2013) (2013)

IP Rules Protection of IP in CleanSky is dealt with in the Grant Agreement (GAP and GAM) Consortium Agreement of individual ITDs Implementation agreement Guide to Intellectual Property Rules for FP7 projects Patent Law (national / european) (2013)

Overview: Agreements under CleanSky calls (Partners) Option 1 P JU GAP P CA (4 ITDs) P P Option 2 JU GAP P ITD Topic Manager ITD add. Impl. Agreement P P P (2013)

Overview: Agreements under CleanSky calls (Members) M JU GAM M CA (4 ITDs) M M (2013)

What about the Grant Agreement? (2012)

Grant Agreement for Partners (GAP) Relation between Joint Undertaking and Partners Joint Undertaking P5 P4 P1 Grant Agreement P3 P2 (2013)

Grant Agreement for Partners Components of the Grant Agreement GAP Core agreement Annex I Annex II Annex III Annex IV Annex V Annex VI+VII Core with project specifics Description of the project General Conditions Form A: Entry of partners Form B: Entry of partners after project start Form C: Declaration of costs; specific for individual project types Forms D&E: Auditor s or Internal Assessor s report for certifying costs (CFS) (2013)

Grant Agreement for Members (GAM) Relation between Joint Undertaking and Members Joint Undertaking P5 P4 P1 Grant Agreement P3 P2 (2013)

Grant Agreement for Members Components of the Grant Agreement GAM Core agreement Annex I A Annex IB Annex II Annex III Annex IV Annex V Annex VI+VII Core with project specifics General Description of the Work of the Programme Description of the annual project and corresponding max. JU financial contribution General Conditions Form A: Entry of partners Form B: Entry of partners after project start Form C: Declaration of costs; specific for individual project types Forms D&E: Auditor s or Internal Assessor s report for certifying costs (CFS) (2013)

Grant Agreement relevant Annexes Annex II General Conditions Reference for EU regulations on project implementation (refundable costs, reporting, payment schedule ) Answers many questions that arise during the project Annex I Description of Work Project work plan, which is worked out during agreement negotiations Whatever is promised must be delivered (Deliverables) A well-structured, practical and realistic Description of Work is the basis for the successful implementation of a project (2013)

What does the Consortium Agreement encompass? (2013)

Consortium Agreement (CA) Regulates the relation between consortium partners P5 P1 P4 Consortium Agreement P2 P3 (2013)

Consortium Agreement A legal document that regulates the internal work of the Consortium Implements the provisions of the Grant Agreement/programme rules Legal basics: Grant agreement (+ Annexes)/ Participation regulations The CA may in no way contradict the prerequisites laid out in the EU Agreement; the latter always takes precedence! The CA is the main instrument to lay down the basis for efficient IP management (2013)

Consortium Agreement CleanSky specific case Consortium agreements are available for four of the six ITDs: ITD Smart Fixed Wing Aircraft (SFWA) ITD Green Regional Aircraft (GRA) ITD Green Rotorcraft ITD Sustainable and Green Engines ITD System for green operations ITD Eco-Design Partners have the choice between acceding to the specific CA or using the implementation agreement (2013)

Clauses & Issues Preliminary Clauses Preamble : Summary of project framework Title Parties Language Definitions Central Clauses Financial and adminstrative management: Consortium bodies Decision-making procedures Financial organisation Technical provisions Intellectual property issues Dissemination Liability Final Clauses Applicable Law Dispute resolution = Jurisdiction Other: e.g. Confidentiality, Duration, Severability, assignment (2013)

STOP Specific Vocabulary (2013)

Vocabulary Key terms in the context of EU-funded projects are: Background Foreground Access rights Use Dissemination (2013)

Definitions (I) Background Information which is held by the project partners prior to their accession to the agreement. Includes IP as copyright, patents/ patent applications (filed prior to access to agreement). Foreground All results which are generated under the project whether or not protectable. Such results may include copyrights, design or patent rights, trademarks or others. (2013)

Definitions (II) Access rights User rights (incl. licenses) to foreground or background of project partners. Use Utilisation (direct/indirect) of foreground in research activities, which are not part of the ITD. As well as utilisation for further development, creation and marketing of a product or process. Dissemination Means trough which research results are presented to the public. Official publications (e.g. patent applications) are not considered as dissemination. (2013)

Definitions in Detail Let s take a closer look! (2013)

Background & Foreground (2013)

Background Information which is needed for the project (includes IP rights). Remains the property of the project partner that brings it into the project. Project partners 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 and to withdraw background defined This can be done as positive (Art 9.1 implementation agreement) or negative list in writing and attached to the Consortium agreement (2013)

Foreground (I) 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 partners can not be determined. Project partners 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. (2013)

Foreground (II) Joint ownership: Each of the joint owners may use their joinlty used Foreground free of charge, and without requiring the prior consent of the other joint owner(s) for direct use Default rule for licensing - Non-exclusive licenses - No right for sub-licensing - 45-days prior notice - Fair and reasonable compensation might mean free of charge (2013)

Foreground (III) Transfer of Ownership: A beneficiary may transfer ownership of its foreground. The other project partners should be informed about the envisaged transfer objection possible if their access rights are not preserved. Facilitated through List of Third parties in annex to IA Licensing: A project partner may grant non-exclusive license to third parties to exploit the jointly owned results (without any right to sublicence), subject to: - the other participants shall waive their access rights - fair and reasonable compensation to the other joint owners (2013)

Access Rights (I) Each project partner has the right to request access rights to the other project 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. Shall be made in writing. Are to be granted throughout the duration and up to 1 year* after the end of the project for use needs (* or as otherwise agreed IA: 2 years) Access rights generally do not confer the right to grant sub-licences. BUT: SWFA/SAGE Additional clause: sub-licensing of background/foreground to other ITD partners (in other subprojects) if needed Affiliated entities may get some access rights for use purposes. Therefore they need ownership of foreground (in whole or in part). (2013)

Access Rights (II) Granting of Access Rights Project participants have to grant other partners 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 Project implementation Use of results Access to background Royalty-free Royalty-free, or on fair and reasonable conditions Access to foreground Royalty-free Royalty-free, or on fair and reasonable conditions (2013)

Dissemination Annex II of the Grant Agreement = 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)

Means of Dissemination Examples Press releases Meetings Newsletters Homepage/project website Scientific publications Workshops Exhibitions & conferences Audiovisual media (2013)

Obligation Project partners are obliged to disseminate the results swiftly. But: No dissemination of foreground may take place before decision is made regarding its possible protection. Notify the Topic Manager before! (2013)

STOP The Plan for the Use and Dissemination of Foreground (PUDF) (2013)

PUDF what is it? Dissemination and exploitation activities must be reported in detail by project participants in the PUDF. This report, whis is a contractual deliverable, describes the activities that beneficiaries have already carried out during the project implementation and still expect to develop with the purpose of allowing the dissemination and use of the foreground at the end of the project in support of an optimal exploitation. Within this document beneficiaries should also envisage the strategy for the management of intellectual property rights, an essential step for an effective exploitation of foreground. (2013)

PUDF structure Part A: dissemination activities List of publications List of dissemination measures: Website Information on materials produced for specific target groups Overview of conferences attended Own workshops.. (2013)

PUDF structure Part B: exploitation (A) a list of all the intellectual property rights (patents, trade marks, registered designs, utility models and others) applied for (and which are under examination or have been granted) from the beginning until after the end of the project; (B) a list of foreground that might be exploited (i.e. that might have commercial or industrial applicability) including its description, sector of application and IP protection; (B.1) in addition, it is necessary to describe the strategic plans for the future exploitation of foreground, including the following elements: i. the purpose of the foreground; ii. how it might be exploited, when and by whom; iii. exploitable measures taken or intended; iv. further research required, if any; v. potential/expected impact (quantifiable). (2013)

PUDF how to deal with it Use the PUDF as a tool for monitoring strategies for dissemination and exploitation during the course of the project Agree on PUDF structure at the start of the Project (although this is not a contractual obligation) Collect relevant information regularly, both for dissemination as well as exploitation parts Provide templates to partners, such as innovation sheets in order to obtain data in a consistent format (2013)

STOP IP in Project Life Cycle (2013)

At which stages of my project does IP matter? (2013)

IP in Project Life Cycle Before Project Start Proposal preparation, incl. outlining dissemination and exploitation strategies Defining project-related know-how/ip protected areas Defining state-of-the-art/ patent search Negotiating a CA/NDA During Implementation Strategy for securing and managing research results Granting of access rights After Project End Disseminating and securing generated IP Exploitation of the results Valorisation of intangible values Commercialisation issues are relevant at all stages of the project (2013)

IP in Project Life Cycle Before Project Start Proposal preparation, incl. plan for the use and dissemination of research results Defining project-related know-how Defining IP protected areas Negotiating a CA/NDA During Implementation Strategy: Protecting and managing research results (Updating PUDF) Granting of access rights Managing Ownership Dissemination After Project End Disseminating and securing generated IP Exploitation of the results Valorisation of intangible values Commercialisation issues are relevant at all stages of the project (2013)

During Implementation Ownership of results All know-how gained in the project belongs to the project partner, who generated it If project partners generate knowledge jointly without being able to identify the single contribution of each partner joint ownership Handling of ownership has to be clearly regulated by the project partners ( Consortium Agreement) (2013)

IP in Project Life Cycle Before Project Start Proposal preparation, incl. plan for the use and dissemination of research results Defining project-related know-how Defining IP protected areas Negotiating a CA/NDA During Implementation Strategy for securing and managing research results Granting of access rights After Project End Disseminating and securing generated IP Exploitation of the results Valorisation of intangible values Commercialisation issues are relevant at all stages of the project (2013)

Exploitation - many options Valorisation of intangible assets: basic options Developing and selling own products/services Developing and selling products/services by starting up a spin-off company Making a cooperation agreement Selling IP rights Selling the (IP based) business Licensing IP rights (out-licensing) (2013)

STOP CleanSky specificities and implications

CleanSky specifities The specifities of the CleanSky concept and environment turn management into a central and challenging task Area concerned (aviation sector) Specific conceptual characteristics of PPPs TRL of expected outcomes Specific partner setting

EU aviation sector - characteristics Strong competition High impact sector in terms of financial and societal aspects Innovation requires mid- to long-term strategies

CleanSky funding instrument - conceptual characteristics Type of instrument Characteristic Collaborative research (FP7) Public private partnership Funding body EU COM Industrial members / EU COM Contract research Industry Common cooperation basis Multilateral partnership (average 6 partners +) Legal framework FP7 GA + Annexes Individual Consortium Agreement Contractual partners with specific rights ownership of results status of partners Beneficiaries + subcontractors Beneficiaries: equal Subcontractors: No Multilateral partnership (low average number; frequently bilateral) GAM + GAP implementation agreement or Consortium agreement Members, Partners and subcontractors Members & partners: equal Subcontractors: No Bilateral Individual Industry + Contract Research organisation or SME Contracted organisation: No (2013)

CleanSky in the EU funding framework with a view to TRL Source: Presentation ACARE Workshop, Torino, May 17 2012; Presenter: Roberto Bojeri, Selex Galileo (2013)

TRLs influence direct commercialisation potential and criticality of issues Level 3 Level 0 Basic research Breakthrough technologies Conceptual work Level 1 Basic research Validation of concepts at component or sub-system level Level 2 RTD to higher TRLs Technology integration and validation Demonstration at system level Precompetitive technology readiness Combination of integrated system Final demonstration in operational environment Fully integrated system of systems TRLs (2013)

Partner setting ROs University Industry SMEs Goal: publication Using results for future research and teaching activities Insufficient exploitation strategy Lacking legal/ expertise Goal: commercialisation of results Application-oriented approach Strong in-house legal/ expertise Goal: keeping control over own research results Protection of existing know-how, that is brought into the project Lacking legal/ expertise (2013)

STOP Challenges of a large-scale multisectoral funding initiative

Challenges Problems regarding IP management and exploitation of project results that occur (according to our experience) in projects in which partners from different segments collaborate: Conflicts between partners regarding the handling and exploitation of project results Delays in the fulfillment of planned activities due to such conflicts Sub-optimal use of results/foreground

Challenges Managerial Reasons for such problems: issues are not taken into account from the very start of the proposal preparation, so that the projects start with unsolved issues Lack of a detailed dissemination and exploitation strategy, that is set up and closely monitored from the very start of the project Lack of understanding regarding the importance of dissemination and societal aspects Reporting and reviewing procedures are not efficient, because they are not streamlined and/or not consequently implemented For SMEs: Lack of resources to invest into the negotiation of contracts and efficient innovation policies

Challenges Strategic and knowledge-related reasons: Partners are not aware of the specific rules in general Partners are involved in different funding instruments and mix up rules Partners see their economic interests at stake and prefer not to disclose relevant information regarding exploitation plans

Optimisation Approach and solutions: Review implementation rules and workflows across ITDs and levels If necessary and possible, increase resources for grant implementation procedures including monitoring and quality assurance Improve information policy with regard to IP rules towards partners Put emphasis on IP issues Adapt communication and reporting procedures at all levels as necessary

STOP Ownership and handling of deliverables

Project example MAGNASENSE (Source: http://cordis.europa.eu/projects/rcn/103045_en.html) Title: Magnetostrictive sensor applications for self-sensing of composite structures Research area: JTI-CS-2011-1-GRA-01-035 Smart maintenance technologies Project start date: [2012-04-01] Coordinator: GMI AERO SAS Participants: NATIONAL TECHNICAL UNIVERSITY OF ATHENS INNOVATIVE TECHNOLOGY AND SCIENCE LIMITED -

Project example MAGNASENSE aim MAGNASENSE will produce a complete operational chain of prototype equipment, software and sensors that will revolutionise the technology for structural health monitoring of CFRP structures. It is expected that, by integrating self-sensing capabilities to CFRP structures, a direct reduction of maintenance requirements and costs will be achieved, while increasing structural reliability

Project example MAGNASENSE detailed objectives A five step development and demonstration process is proposed, comprising of: (a) Identification of appropriate strain sensitive magnetic wires (Magnetostrictive Sensor MsS) to be applied to composite structures; (b) Development of a non-contact magnetic flux sensor arrays for quick scanning and strain mapping of the composite structures; (c) Numerical simulation of arrays of sensing elements, to couple mechanical to magnetic readings; (d) Development of appropriate algorithms and software supporting the magnetic flux sensing; (e) Manufacturing of component scale demonstrator.

Project example MAGNASENSE It is assumed that the following items will represent the main outcome and main deliverables: Sensors Software Prototype comprising sensors, software and further potentially IP relevant foreground

Combined deliverables / demonstrators Typical for higher TRLs Demonstrators comprise different types of components IP strategies relating to individual components (software / sensor) or the demonstrator as a whole can vary widely

Combined deliverables / demonstrators IP management is highly critical: All partners need to provide detailed information about background to be used, expected outcome in terms of IP and intended use before project start This information needs to be included in the CA/implementation agreement, the Description of Work Demonstrator Deliverables usually consist of the demonstrator itself and a report containing technical details include IP status if appropriate

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