European IPR Helpdesk IP in EU-funded collaborative projects European IPR Helpdesk Dr Sabine Albrecht EU IPR Helpdesk / Eurice GmbH (Saarbrcken) European.

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IP in EU-funded collaborative projects European IPR HelpdeskDr Sabine AlbrechtEU IPR Helpdesk / Eurice GmbH (Saarbrcken)

European Spallation Source ESS AB /Lund, 08 May 2013

European IPR HelpdeskRoadmapGeneral Frame Rules and AgreementsSpecific Vocabulary in EU-funded coll. projectsIP in Project Life CycleIPR regime for IP exploitation in FP7In a Nutshell

European IPR HelpdeskGeneral Frame

European IPR HelpdeskSTOPKnowledge SocietyChanging business environment in the knowledge society

Business AssetsTangible Assetse. g. machinery, infrastructure, financial assetsIntangible Assetse. g. know-how, human resources, business relationships, brandsIntellectual CapitalEuropean IPR HelpdeskSABINE

1. Tangible assets / intangible assetsIn the past the value of enterprises was based on its physical capital.However, in recent years there has been an increased awareness of the existence of another type of property asset: the intangible asset: human creativity, thoughts, inventiveness. Creations of human mind

2 . Part of intangible assets in enterpriseIntangible assets = Assets which doesnt have a tangible form.Today intangible assets represents the major value of an enterprise and the most valuable assets of an organisation.(Reprendre la prsentation IPR Helpdesk qui montre limportance aujourdhui des actifs immatriels des entreprises.Today it represents more than the half of the enterprises value.

3. Intangibel assets = Intellectual capitalIntellectual capital components: Human capital: knowledge that the employee takes with him when he leaves the organisationEx. Knowledge, Know how, Competences, Skills, education, experiences and training Structural capital: Everything that remains in your organisation at the end of the workdayEx. Intellectual proerty (patents, trademarks, designs, copyreights), Trade secrets, Licences and franchises, inventions made by an organisation, in-house databases, software in-house developped, Work documents (manual processes, procedures, etc.) external publications. Market capital: external relationships of your organisationEx. Collaboration, partnerships and networks, customs list, product certificates, brand and goodwill= knowledge, know-how and innovativeness are the essence of your intellectual capital.

3. Intangible assets and intellectual propertyIntellectual property is one of the means that provide the opportunities to protect some intangible assets especially the structual capital.

4Innovation CircleGeneration of new knowledgeEU funded collaborativeRTD projectsMarketable assets/innovationEuropean IPR HelpdeskJRG / Sabine5What are the characteristics of an EU funded project?European IPR Helpdesk6Collaborative ProjectsIt is in the nature of collaborative projects that different partners with varying mindsets and interests come to sit at one table.UniversityIndustrySMEsROsEuropean IPR Helpdesk7Characteristics Goal: publicationUsing results for future research andteaching activitiesInsufficient exploitation strategyLacking legal/IPR expertise

Goal: commercialisation of resultsApplication-oriented approachStrong in-house legal/IPR expertise

Goal: keeping control over own research resultsProtection of existing know-how, that is brought into the projectLacking legal/IPR expertise

UniversityIndustrySMEsROsEuropean IPR HelpdeskStrategic Guide to Successful Use and Dissemination of the Results of R&D Projects

The very nature of a collaborative R&D project is that you will be working with other project beneficiaries or project partners. Its good to become familiar with the other participants and to understand their motivations for joining the project, their role and what their expectations are. In this way you can be sure that they are the right partners for you.8What does intellectual property mean and comprise?European IPR Helpdesk9Intellectual Property (IP) Intellectual PropertyIndustrial Property

TrademarksPatentsIndustrial DesignsLiterary & Artistic Works

CopyrightsRelated rights Databases Soft IP SecretsKnow-HowContractsEuropean IPR HelpdeskOverview and Vocabulary......

Overview on the IP CapitalIts important to keep in mind this classification:- it will allows you a better understanding of the course,- it will allows you to analyse and classify your own IP Capital

Industrial property: Technical, industrial, commercial creations

2. Literary and artistic works: esthetical and art creations,

3. Soft IP: Specific IP which is not included in the Literrary and Artistic Works and not included in industria Property, but soft IP is composed of intangible assets which have an important value for the company, and thus are important to know

10Rules and Agreements

European IPR HelpdeskSTOP11Where do I find rules regarding IP in EU funded collaborative projects?European IPR HelpdeskJRG12IP RulesProtection of IP in EU-funded collaborative projects is dealtwith in the

Grant Agreement Consortium Agreement Guide to Intellectual Property Rules for FP7 projects

Patent Law (national / european)

European IPR HelpdeskProtection of research results (when they are innovative)13Overview: Agreements

European IPR HelpdeskProtection of research results (when they are innovative)14What about the Grant Agreement? European IPR Helpdesk (2012) European IPR HelpdeskJRG15Grant Agreement (I)Relation between European Commission and ConsortiumEU CommissionP1P2P3P5P4Grant AgreementEuropean IPR Helpdesk16Grant Agreement (II) Components of the Grant Agreement

Core agreement Standard with project specifics Annex I Technical Annex/work plan Annex IIGeneral Conditions (applies to all measures) Annex IIISpecific conditions for each type of measure Annex IVForm A: Entry of partners Annex VForm B: Entry of partners after project start Annex VIForm C: Declaration of costs; specific for individual project types Annex VIIForms D&E: Auditors or Internal Assessors report for certifying costs (Certificate on Financial Statement)

European IPR Helpdesk17Grant Agreement (II)Annex II General Conditions

Reference for EU regulations on project implementation (refundable costs, reporting, payment schedule)

Answers many questions that arise during the project

The Commission must also observe these conditions

Annex I Technical Annex

Project work plan, which is worked out during agreement negotiations

Whatever is promised must be delivered (Deliverables)

A well-structured, practical and realistic Technical Annex is the basis for the successful implementation of a project

European IPR Helpdesk= Main annexes18What does the Consortium Agreement encompass? European IPR Helpdesk (2012) European IPR Helpdesk19Consortium Agreement (CA) Regulates the relation between consortium partners (= beneficiaries)

Consortium AgreementP1P2P3P5P4European IPR Helpdesk20Consortium Agreement II A legal document that regulates the internal work of the Consortium

Implements the provisions of the Grant Agreement/programme rules

Mandatory for the majority of projects

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 should be worked out during Grant Agreement negotiations at the latest

Consortia are responsible for defining the regulations; the Commission has no binding model

The coordinator works on the template

European IPR Helpdesk21Clauses & Issues Central Clauses

Financial and adminstrative management:Consortium bodiesDecision-making proceduresFinancial organisation

Technical provisions

Intellectual property issues

Liability

Final Clauses

Applicable Law

Dispute resolution = Jurisdiction

Other: e.g. Confidentiality, Duration, Severability, assignment

Preliminary Clauses

Preamble :Summary of project frameworkTitle

Parties

Language

DefinitionsEuropean IPR HelpdeskTechnical provisions: resources provided (human resources, durable equipment, IP resources)Work packages; measures in case of non-compliance with timetable

IP issues: very important: = access rights, use and dissemination provisions,

Liability: for damage caused; actions for non-compliance (incl. force majeure)

Applicable Law : Project partners can choose the law they prefer, mostly belgium law is chosen (for the EC is in Brussels)

Dispute resolution: Jurisdiction (= competent tribunals in case of conflict). Alternative Dispute resolution systems may be choosen, like e.g. mediation, arbitration 22Specific VocabularyEuropean IPR HelpdeskSTOP23VocabularyKey terms in the context of EU-funded collaborative projects are:

BackgroundForegroundAccess rightsUseDissemination

European IPR Helpdesk24Definitions (I)BackgroundInformation 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).ForegroundAll results which are generated under the project whether or not protectable. Such results mayinclude copyrights, design or patent rights, trademarks or others.

European IPR Helpdesk25Definitions (II)Access rightsUser rights (incl. licenses) to foreground or background of project partners.

UseUtilisation (direct/indirect) of foreground 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.

DisseminationMeans trough which research results are presented to the public. Official publications (e.g. patent applications) are not considered as dissemination.

European IPR HelpdeskDirect Use = done by the owner (e.g. further research / commercial or industrial exploitation in own activities). Indirect Use = done by other parties (e.g. via licensing).

26Definitions in DetailLets take a closer look!

European IPR Helpdesk27Background & Foreground

European IPR HelpdeskBeneficiary = project partner28BackgroundInformation 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.

This can be done as positive or negative list in writing and attached to the Consortium agreement.

European IPR HelpdeskDirect Use = done by the owner (e.g. further research / commercial or industrial exploitation in own activities). Indirect Use = done by other parties (e.g. via licensing).

29Foreground (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.

European IPR HelpdeskOwnership / Joint ownership = project partners may modify the ownership regime. default joint ownership = each joint owner will be free to grant non-exclusive licences to third parties, provided that it notifies the ogher joint owners and grants them fair and reasonable compensation. 30Foreground (II)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. Licensing: A project partner may grant non-exclusive license to third parties to exploit the jointly owned results (without any right to sub-licence), subject to: - the other participants shall waive their access rights - fair and reasonable compensation to the other joint owners

European IPR HelpdeskTransfer of Ownership = no notification for transfers specially identified third parties may be agreed.

31Access Rights (I)Each project partner has the right to request access rights to the other project partners 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)

Access rights do not confer the right to grant sub-licences.

Affiliated entities may get some access rights for use purposes. Therefore they need ownership of foreground (in whole or in part).

European IPR HelpdeskProject partners may complement the provision concerning affiliates in their consortium agreeement.32Access Rights (II)Granting of Access RightsProject 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 projectAccess to backgroundAccess toforegroundProject implementationRoyalty-freeRoyalty-freeUse of resultsRoyalty-free, or on fair and reasonable conditionsRoyalty-free, or on fair and reasonable conditionsEuropean IPR HelpdeskProject partners may complement the provision concerning affiliates in their consortium agreeement.33DisseminationAnnex 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.

European IPR HelpdeskDissemination = the means through which research results are presented to the public.

Depending on project contentsUser workshop

34Means of DisseminationExamples

Press releasesMeetingsNewslettersHomepage/project websiteScientific publicationsWorkshopsExhibitions & conferencesAudiovisual media

European IPR HelpdeskDissemination = the means through which research results are presented to the public.

Depending on project contentsUser workshop

35ObligationProject partners are obliged to disseminate the results swiftly.

But: No dissemination of foreground may take place before decision is made regarding its possible protection.

European IPR Helpdeskno dissemination of foreground may take place before decision is made regarding its possible protection !!!!!

As well to share the efforts and costs connected with it. 36What is not covered..Official publications in connection with the protection of rights

Applications for patents are not covered because they are made public not until 18 months after the filing date. European IPR Helpdesk37Open Access with regard to dissemination through scientific publications:

terms and conditions to be defined in Grant Agreement(open access vs. preservation & protection of research data)

work programme / work plan shall indicate requirements of open access

prior notice shall be given to the other participants

grant agreement shall lay down time-limits in this respect

European IPR Helpdeskno dissemination of foreground may take place before decision is made regarding its possible protection !!!!!

As well to share the efforts and costs connected with it. 38StatementAll patent applications, publications or any other dissemination (also in electronic form) shall include a statement that the action received financial support from the Union.

European IPR Helpdeskno dissemination of foreground may take place before decision is made regarding its possible protection !!!!!

As well to share the efforts and costs connected with it. 39IP in Project Life Cycle

European IPR HelpdeskSTOPNow the aspects from the project point of view

In Teilen kleine Wiederholung mit Perspektive aus Projekt repetition from the projects perspective40At which stages of my project does IP matter?European IPR Helpdesk41IP in Project Life CycleIPR issues are relevant at all stages of the projectStrategy for securing and managing research results

Granting of access rights

During ImplementationDisseminating and securing generated IP

Exploitation of the results

Valorisation of intangible values CommercialisationAfter Project EndProposal preparation, incl. plan for the use and dissemination of research results

Defining project-relatedknow-how

Defining IP protectedareas

Negotiating a CA/NDA

Before Project StartEuropean IPR Helpdesk42Before Project StartEvery project starts with an idea Define the state of the art

Screen already existing project landscape

Search in patent databases & documents

Protect technical drawings (e. g. by copyright or trade secrets)

Protect all information linked to the idea

being a researcher: please contact your legal/patent department as early as possible!European IPR Helpdesk43Before Project StartWays to protect intangible assetsLiterary & Artistic Works

CopyrightsDatabases Industrial Property

TrademarksPatentsIndustrial DesignsSoft IP

SecretsKnow-HowContracts

European IPR Helpdesk44Before Project StartNo project without partners no project without negotiations Set up confidentiality agreement !!!

Define intangible assets of the project,i. e. background & foreground use & dissemination strategy access rights regime

Sign Consortium and Grant Agreement

being a researcher: please contact your legal/patent department as early as possible!European IPR Helpdesk45Before Project StartConfidentiality agreementIdentifys relevant information

Defines use of information as well as restrictions

Already very important at the proposal stage, when valuable information is exchanged between potential project partners

Includes possible sanctions

European IPR HelpdeskImportant in proposal stage before you really know if the person you are talking to will become a project partner in the end!46Before Project StartUse and dissemination strategyStrategic plan

Every contracting party has to ensure, that project results are secured, disseminated and used all results have to be used

Project partners have to be informedin advance (e.g. 45 days) about publicationactivities

STRATEGYEuropean IPR Helpdesk45 days = proposal in Desca can be negotiated = may be shorter (30 days)47IP in Project Life CycleIPR issues are relevant at all stages of the projectBefore Project StartProposal 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 ImplementationStrategy for securingand managing research results

Granting of accessrights

Disseminating and securing generated IP

Exploitation of the results

Valorisation of intangible values CommercialisationAfter Project EndEuropean IPR HelpdeskJRG

48During ImplementationSecure and manage research resultsHave a clear strategy for securing and managing newly generated know-how

Continuously update the use and dissemination strategy plan

Be clear about publication regime access right regime

European IPR Helpdesk49During ImplementationLets take a closer look!

European IPR Helpdesk50During ImplementationOwnership 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)

European IPR HelpdeskJoint ownership = start to create an joint ownership agreementAs soon as it appears to have common inventions

51IP in Project Life CycleIPR issues are relevant at all stages of the projectAfter Project EndDisseminating and securing generated IP

Exploitation of the results

Valorisation of intangible values CommercialisationProposal preparation, incl. plan for the use and dissemination of research results

Defining project-related know-how

Defining IP protected areas

Negotiating a CA/NDA

Before Project StartStrategy for securing and managing research results

Granting of access rights

During ImplementationEuropean IPR Helpdesk52Towards Project EndUse and dissemination of research resultsFirst of all, be clear about how to protect newly gained intangible assets

Make use of research results either in further research or by commercial use

Communicate project work (and results) via different dissemination channels

European IPR HelpdeskDissemination=PublicationsConferencesBooksinterviews53Dissemination Example:

The EUCO-Net moviewww.euco-net.eu

European IPR Helpdesk54Dissemination advocacy:Presentation on public television:Science programme "nano" (ZDF/3Sat) on world AIDS day

European IPR Helpdesk55After Project EndExploitation and valorisation of generated IP Be clear about different options of valorising generated project results

Implement IP portfolio management

European IPR Helpdesk56After Project EndLets take a closer look!

European IPR HelpdeskJRG/SERGE57After Project EndValorisation of intangible assets: basic optionsDeveloping 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)

European IPR Helpdesk58IPR regime for IP exploitation in FP7

European IPR HelpdeskSTOPOverview: FP7 IPR regime

European IPR HelpdeskFP7 IPR regimeGrant Agreement

Signed by European Commission, project coordinator and all project members

Little room to negotiate

Mandatory IPR regime included in Annex II (General Conditions-Part C) & Annex III (Specific Provisions for SME Actions)

Consortium Agreement

Comprises individual agreements between the partners of the consortium

Recommended for all projects, obligatory for some areas

Needs to reflect the IPR regime of the Grant Agreement, where the latter provides flexibility, i.e.:. specify the IPR regime. choose individual provisions

European IPR HelpdeskFP7 access rightsBackground - identified as relevant -- available for access -Foreground- project results -Needed to carry out the project (Implementation)Royalty-free,unless otherwise agreed before the Grant Agreement is signedRoyalty-freeNeeded to exploit own project results(Use = further R&D and commercialisation)Royalty-free or on fair and reasonable conditionsRoyalty-free or on fair and reasonable conditions

Access rights are licences and user rights to Foreground and Backgroundwhich Beneficiaries (and their Affiliates in Member States or Associated countries) can mutually request in writing until 1 year after the project.European IPR Helpdesk62FP7 IP exploitationLicence Agreement/Transfer of IPR

Beneficiary(Owner of Foreground/Background)

Third partyLicensee or transfereeThe other beneficiaries access rights need to be maintainedas long as they can be requested, or to the extent, as they have already been granted

The other beneficiaries need to be notified if IPR is transferred to a third party and may object if their access rights are not maintained.European IPR HelpdeskFP7 IP exploitationLicence Agreement/Transfer of IPR

Beneficiary(Owner of Foreground/Background)

Third partylicensee or transfereeConsequences:Non-exclusive licenses can be granted to third parties anytimeIn an exclusive license or in a transfer of IPR the obligation to grant access rights has to be passed on to the third party not really exclusive

Exceptions: Real exclusive licensing is possible if the other beneficiaries waive their access rights in writing

Notification is not necessary in case of a transfer to specifically identified third partiesEuropean IPR HelpdeskFP7 exploitation of joint IP Joint IP Ownership of Foreground arises if:project results are generated jointly by 2 or more beneficiaries, andthe individual parts of the contributing beneficiaries cannot be determined.

The beneficiaries must conclude a JointOwnership Agreement to settle: the allocation of shares, andthe exercise of rights related to the joint IP

European IPR HelpdeskJoint Ownership AgreementThe allocation of shares and protection by IPRDetermination of shares in the inventionResponsibility for IPR protection and related management Shares in the IPR costs

Exercise of rights Individual use in further R&D activitiesIndividual or joint commercializationwith or without mutual financial compensation (profit share)Possible: Set up a joint venture or a start-up company

Applicable law, jurisdiction or alternative dispute resolution (ADR) European IPR HelpdeskWithout Joint Ownership AgreementFP7 prescribes a default regime if no/until a Joint Ownership Agreement is concluded:

Beneficiaries may grant non-exclusive licences to third partiesupon prior notice to the other beneficiaries.against fair and reasonable compensation.

European IPR HelpdeskIn any case of joint ownershipIn any case with or without Joint Ownership Agreement:

The access rights of the other beneficiaries who have not contributed to the joint Foreground must be maintained in any IP exploitation activity.

Exception for exclusive licensing: Written waiver of their access rights

European IPR HelpdeskIn a Nutshell European IPR HelpdeskSTOPIn a Nutshell General frame of EU-funded collaborative Projects

Rules + Agreements: GA / CA

Vocabulary: background / foreground / access rights / use / dissemination

Project Life Cycle

IPR regime concerning the exploitation of results out of collaborative (FP7) projects

European IPR Helpdesk70Disclaimer/Legal NoticeThe 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 European IPR Helpdesk 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 European IPR Helpdesk 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 European IPR Helpdesk is managed by the European Commissions Executive Agency for Competitiveness and Innovation (EACI), with policy guidance provided by the European Commissions Enterprise & Industry Directorate-General.

The positions expressed are those of the authors and do not necessarily reflect the views of the European Commission.

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/Sean Locke istockphoto.com/Jos Carlos Pires Pereira istockphoto.com/Artsem Martysiuk

istockphoto.com/rzdeb istockphoto.com/Pavel Bolotov istockphoto.com/Lise Gagne istockphoto.com/Alex Slobodkin istockphoto.com/Andrew Johnson istockphoto.com/YanC istockphoto.com/hudiemm istockphoto.com/Christian Baitg

Others Boggie, ScoutMedia clker.com (slides: Negotiations)

European IPR Helpdesk71