IPR issues in FP7
Dr Dariusz Kasprzycki,
20.09.2007, Bucharest
A project funded by the European Commission, DG
Enterprise and Industry, under the 6th Framework
Programme of the European Union
Contents
1. FP7 Legal Framework
2. IPR in project lifecycle
3. IP rules in FP7
1. Basic concepts
2. Overview of IPR
3. Participant’s obligations and rights
4. Access right system
5. EC rights
4. Consortium agreements
1. Function and structure
2. Consortium agreements models
5. Other important issues
1. Confidentiality
2. IP costs
3. Protection of a acronym or logo of the project
© IPR-Helpdesk Consortium, 2005
2
Legal framework of a project
3
FP7
EC
TREATY
Decision No
1982/2006/EC
Regulation (EC)
No 1906/2006
Rules for
Participation
Other EC rules
Grant Agreement
Regulations 772/2004,…
National Laws
Consortium Agreement
and any other necessary
© IPR-Helpdesk Consortium, 2005
(Competition, financial…)
Legal Framework of the project
4
1. Participation Rules (Regulation (EC) No 1096/2006)
http://eur-lex.europa.eu/LexUriServ/site/en/
oj/2006/l_391/l_39120061230en00010018.pdf
2. Grant Agreement
(FP7 Grant Agreement - Annex II General Conditions)
Annex III – SME actions
List of special clauses
3. Consortium Agreement (CA)
http://www.ipr-helpdesk.org/
Section FP7/Consortium Agreements
© IPR-Helpdesk Consortium, 2005
http://cordis.europa.eu/fp7/calls-grant-agreement_en.html
IPR issues
5
1. Participation Rules (Regulation (EC) No 1096/2006)

Direct applicable and legally binding for everyone
2. Grant Agreement (FP7 Grant Agreement - Annex II General Conditions)

Agreement between the Commission and the
participants on rights and duties
3. Consortium Agreement (CA)
Agreement among the partners (Duty to agree on a CA,
unless otherwise specified in the call)




Shall not affect participants’ obligations to the
Community and to another arising out of the
Regulation or the contract
Agreement on IPR should definitely be part of the CA
Internal organisation of the consortium
Settlement of internal disputes, pertaining to the
Consortium Agreement, etc.
© IPR-Helpdesk Consortium, 2005

Legal framework for IPR regulations under FP7
6
European Community
Grant Agreement
Coordinator
Contractor
Contractor
© IPR-Helpdesk Consortium, 2005
Contractor
Consortium
Agreement
IPR – a strategic factor in a successful FP7 project
7
• Proposal
preparation, incl.–
Plan for the Use and
Dissemination of
Foreground
 Defining projectrelated know-how
 Defining IPprotected areas
Negotiating a CA
Strategy for protection
& management of
foreground
 Granting of access
rights

AT ALL STAGES
After Project
Protection
of
generated IP
 Exploitation of
the results
Dissemination
© IPR-Helpdesk Consortium, 2005
During Project
Before Project
Before Project
8
Screening process
Search in patent documents
Protection of technical
drawings by trade secrets
& / or copyright
Protection of all information
linked to the idea
© IPR-Helpdesk Consortium, 2005
IDEA
DECISION TO
INNOVATE
Define the state of the art
Before Project
9
Confidentiality Agreement
Background & foreground
Access Rights
Consortium Agreement
© IPR-Helpdesk Consortium, 2005
NEGOTIATE
Before Project: Case Study
10
We want to invite representatives from other relevant
projects to the technical committee meetings.
Clearly define under which conditions & for which purpose such
third parties obtain confidential information, what they can do &
what they are not allowed to do with this information & how long
the non-disclosure obligation will last.
© IPR-Helpdesk Consortium, 2005
Sign non-disclosure agreements with any entity or person that
has access to confidential information related to your project
work.
During Project
11
Make use of confidentiality
agreements
Make use of patent
documents:
- as a source of information
- as a source of competitive
intelligence
© IPR-Helpdesk Consortium, 2005
RESEARCH:
- basic
- applied
During Project
12
Research results
Question of ownership
Access rights regime
Continuous update of
dissemination and use
plan
© IPR-Helpdesk Consortium, 2005
MANAGE &
PROTECT
During Project: Case Study
13
Have you concluded a confidentiality agreement at the proposal
stage?
All information exchanged must be marked confidential.
Parts of your proposal – tables, graphics, working method
description etc. may be protected by copyright. A literal copy of the
proposal may be considered as infringement of your copyright.
© IPR-Helpdesk Consortium, 2005
A party in our consortium is using the same work
description as well as other facets (same graphics,
etc.) prepared for the current project for another
proposal
Toward Project Conclusion
14
Protection of results
Publication as a means of
dissemination activities
Use of results
Enhanced visibility of EC
support
© IPR-Helpdesk Consortium, 2005
USE &
DISSEMINATION
Toward Project Conclusion: Case Study
15
As a tool to manage our project and disseminate our
research results to the public we have set up a website,
created a logo and a slogan. What are the appropriate
protection instruments?
Trade mark
Domain name registration
© IPR-Helpdesk Consortium, 2005
Copyright
Toward Project Conclusion
16
Possible need of further
technical development
Setting up strategic
alliances to facilitate the
successful completion of
an innovation
© IPR-Helpdesk Consortium, 2005
RESEARCH
OUTPUT
Invention, improved product
or service protected by
patent, utility model or
industrial design
What happens when…?
17
Compose a letter of intent or confidentiality agreement to
safeguard your confidentiality interests, and to enable you to
exchange sensitive information on a good-faith basis.
Outline the basic features of the planned joint venture: duration,
distribution of work, define partners, authorise the use of
production premises, management structure, responsibilities.
© IPR-Helpdesk Consortium, 2005
We would like to collaborate with a third party who
wishes to use technology we have developed in an
EU project on a joint venture basis
After Project: Product Commercialisation
18
Attracting investments,
business angels, VC, etc.
Careful management of IP
portfolio
© IPR-Helpdesk Consortium, 2005
MARKETING OF
INNOVATION
Trade mark and industrial
design are key in a
successful marketing
strategy
IP in innovation: in a Nutshell
19
Decision to innovate
IDEA
Trade secrets, patent information
Copyright
R&D
Trade secrets, patent documents, copyright
Patents, utility models,
Industrial design,
Patents, utility models, trade marks
Industrial design
Product output
Product commercialisation
Strategic management of IP-portfolio
© IPR-Helpdesk Consortium, 2005
Product design & prototype
IPR in FP7
20
I. Basics
II. Ownership
III. Protection
V. Access rights
No rules changing the nature (content)
of the intelelctual property rights
© IPR-Helpdesk Consortium, 2005
IV. Use and disemination (publication)
Changing terminology FP6 => FP7
21
EC contract
Grant agreement
Contractor
Beneficiary
Knowledge
Foreground
Pre-existing know- Background
Instruments
Funding schemes
Audit certificate
Certificate on the
financial statements
© IPR-Helpdesk Consortium, 2005
how
Basic definitions
22
Participant
legal entity taking part in an indirect action and having the rights and
obligations defined by the Grant Agreement entered into with the EC
Third party
legal entity which does not participate in the same project, even though
such third party may participate in another FP7 project
any natural person, or any legal person created under the national law of its
place of establishment, or under Community law or international law,
which has legal personality and which may, acting in its own name,
exercise rights and be subject to obligations.
Coordinator
participant who has very specific role in a given project. He has to monitor the
compliance by participants with their obligation, is responsible for
communication with the Commission
© IPR-Helpdesk Consortium, 2005
Legal entity
Basic definitions
23
Foreground (FP6 – knowledge)
The results of the project (info & IPR)
© IPR-Helpdesk Consortium, 2005
means 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;
BACKGROUND
24
Background
means information which is held by beneficiaries prior to
their accession to this 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 this agreement, and which is needed for
carrying out the project or for using foreground;
Previous info & IPR
“the information which is held by contractors prior to the conclusion of the contract, or acquired
in parallel with it (…)”
Background
Previous info & IPR
+
Sideground
Parallel info & IPR
© IPR-Helpdesk Consortium, 2005
FP6 Pre-existing know-how (PEKH)
BACKGROUND
25
Background
information and IPR
held by participant
prior to the accession to the grant agreement
which is needed for carrying out the project or for using
foreground;
Background is limited only to the information and IPR needed for the
project purposes
Background covers IPR for which application was filed before
acceding the project.
Background covers not only the information owned by the participant
but also held through other agreements like licensing agreements
© IPR-Helpdesk Consortium, 2005
-
The overview of IPR
• Concept of Intellectual Property
Rights
• Copyright
• Patents
• Trade Mark
• Designs
• Summary
© IPR-Helpdesk Consortium, 2005
26
What is Intellectual Property?
27
• Creations of human mind
• Different form ‘things’ but
usually incorporated in them
© IPR-Helpdesk Consortium, 2005
• Immaterial character (intangible
assets)
Intellectual Property
28
I. Copyright

intellectual human creations of unique and original character
(works and subjects of other related rights)

subjects which have an innovative solution (inventions, utility
models and industrial designs),

marks making goods in circulation distinguishable (trade marks,
geographical indications)

indications helping enterprises to distinguish their companies in
the market (trade names and other commercial designations)

other (new varieties of plants, semiconductors)
III. Trade secrets, protection agianst unfair competition
© IPR-Helpdesk Consortium, 2005
II. Industrial Property
Territorial nature of IPR
29
II. International IP-Rights
•
extended protection through international
agreements
•
unitary, EU-wide IPRs:
– Community Trade Mark
– Community Design
– Community Plant Varieties Protection
– Community Patent (planned)
•
unitary proceedings of granting (bundle of
national IPR):
– World Patent (PCT)
– European Patent (EPC)
© IPR-Helpdesk Consortium, 2005
I. National IP-Rights
•
doctrine of territoriality
•
doctrine of treatment as nationals
Copyright
30
Copyright protects intellectual creations if they
are expressed in an original form
Examples of Copyright works:
• web pages
• literary works
• pictures
• software
• sculptures
• databases
• multimedia works
• music
• architecture
• photographs
• graphics
© IPR-Helpdesk Consortium, 2005
Two conditions must be met in order to enjoy
protection:
- originality
- expression in particular form
Copyright
31
Some creations are outside the scope of copyright.
This is often the case with political speeches, court
decisions, and legal texts (law provisions).
Copyright protection is granted from the sole fact of the
creation of the work.
No formality (registration) is required.
© IPR-Helpdesk Consortium, 2005
Copyright does not protect:
• ideas
• information as itself
• mathematical theories
• algorithms
Copyright
32
Economic rights
Rights to reproduce and communicate a work to the public. The
right of reproduction allows the author to reproduce his work, in
whole or in part, on any medium and in any form. The right to
communicate the work to the public covers any direct
communication of the work to the public, without any material
embodiment (concert, television, webcasting, the Internet).
Economic rights generally expire 70 years after the death of the
author. Economic rights may be transferred or licensed.
Moral rights aim at protecting creator's personality which is
expressed through the work.
They include: paternity right (which enables the author to have
his name on the work), integrity right (which enables the author
to refuse any modification to the work or its context).
Moral rights cannot be transferred.
© IPR-Helpdesk Consortium, 2005
Moral rights
What is a Patent?
33
• Exclusive right to a new invention
• Granted by patent offices
• Allows to prevent others from (re-)
producing, offering, using or selling the
invention without his permission
• territorial - protects the invention only
within the country for which the patent
protection has been granted.
© IPR-Helpdesk Consortium, 2005
• for a limited period of time (20)
Criteria of patentability
34
Criteria of patentability:



Technical nature
Novelty (absolute)
Inventive step
Industrial application
Novelty:
Convention priority
International exhibitions
Bad faith disclosure
Industrial applicability:
• capable of being
produced or used in
some kind of industry
Inventive step:
• the invention does not
obviously follow from the
state-of-the-art
Prior art:
© IPR-Helpdesk Consortium, 2005

everything which has been
made available to the public
anywhere in the world by
means of written disclosure
Patent searching
Databases
Patent attorneys
Non-inventions (as such)
35
• discoveries, scientific theories and
mathematical methods;
• schemes, rules and methods for
performing mental acts, playing games
or doing business,
• programs for computers;
• presentations of information.
© IPR-Helpdesk Consortium, 2005
• aesthetic creations;
Patents: infringement
36

manufacturing, using, offering,
putting on the market, importing of
a patented product

using the patented process, as well
as using, offering, putting on the
market, importing of a product
obtained directly with the patented
process
© IPR-Helpdesk Consortium, 2005
What is not allowed for others:
Trademarks

Signs distinguishing goods
and services of one trader
from those of another

A trademark should be
distinctive and capable of
graphic representation
© IPR-Helpdesk Consortium, 2005
37
Trademarks - examples
38
•
•
•
•
© IPR-Helpdesk Consortium, 2005
Words or word combinations.
Images, figures, symbols, graphics and drawings.
Letters, numbers and their combinations.
Three-dimensional forms, including wrappings,
packages and the shape of the product and its
presentation.
• Colour or a combination of colours.
• Signs perceived by the senses (sound, smell, taste
and touch), as long as they overcome the obstacle of
the graphic representation requirement.
• Melody or other sounds
Trademarks - rights
39

To designate with the mark the corresponding products
and services.

To use the mark for advertising purposes
2. Preventing non-authorised third parties from
using an identical or similar mark for products
or services similar to the ones under the
registered mark
3. Trademarks with reputation
© IPR-Helpdesk Consortium, 2005
1. Right of exclusive use of the mark in the
market, in particular:
Existing Unitary Rights in the EU
40
• Community Trade Mark (CTM)
© IPR-Helpdesk Consortium, 2005
• Community Design
41
•
to provide instruments of industrial property allowing companies to act
in a uniform manner throughout the whole territory of EU
•
to keep formalities and management of IP rights simple
•
to reduce legal obstacles to the circulation of goods within the Internal
Market and to ensure fair competition in this respect
•
to foster creativity and innovation by making it easier to protect
subjects of IP throughout the Internal Market with a single application
•
to decrease cost of proceedings
© IPR-Helpdesk Consortium, 2005
Reasons for introducing unitary IP rights on
the EU level
42
•
possibility for filing application for registration either directly at the
Office of Harmonisation of Internal Market (OHIM) or at the central
industrial property office of a Member State (in the Benelux countries - at
the Benelux Design Office),
•
registration with the OHIM under conditions provided in the Regulations
on Community trade mark and Community designs
•
unitary character of the right throughout the Community
•
Community right valid across all the EU countries
•
jurisdiction over infringement and validity of special Community
trademark and design courts designated by Member States on in their
territories
© IPR-Helpdesk Consortium, 2005
General characteristic of the
existing Community IP rights
Community Trade Mark (CTM)
43
Character of protection:

exclusive right covering whole territory of the European Community
Term of protection:

10 years with the possibility for renewal for further periods of 10
years

for filing a CTM application: €900 (by electronic means: €750) plus
€150 for each class of goods and services which exceeds three

for registering a CTM: €850 plus €150 for each class of goods and
services exceeding three
© IPR-Helpdesk Consortium, 2005
Basis fees:
Community Design
44
Legal framework:
•
Council Regulation (EC) No 6/2002 of 12th December 2001 on
Community Designs
•
Commission Regulation (EC) No 2245/2002 of 21 October 2002
implementing Regulation (EC) No 6/2002
Definition:
© IPR-Helpdesk Consortium, 2005
Appearance of the whole or a part of a product resulting from the features of, in
particular, the lines, contours, colours, shape, texture and/or materials of the
product itself and/or its ornamentation;
Community Design
45
Types of protection:

registered Community design

unregistered Community design
Requirements:
novelty
•
individual character
if the overall impression design produces on the informed user differs from
the overall impression produced on such a user by any design which has
been made available to the public earlier
© IPR-Helpdesk Consortium, 2005
if no identical design has been made available to the public before
the date of first disclose of design, date of filing of the application for
registration/ date of claimed priority
•
Community Design
46
Character of protection:

exclusive right granted by registration covering whole territory of the
EC

anti-copying right provided for unregistered Community designs
covering whole territory of the EC

5 years with possibility for renewal for further one or more 5-year
periods up to a total of 25 years (registered designs)

3 years (unregistered designs)
Basis fees:

basic registration fee for a single design is € 230, with lower fees for
any further design registered at the same time,

renewals will cost € 90 for a first renewal up to € 180 for a maximum
fourth renewal
© IPR-Helpdesk Consortium, 2005
Term of protection:
Advantages of the Community IP rights
•
single registration – Community wide
protection
•
extended legal protection accessible to
all
•
simplified formalities and management
•
reduced costs
© IPR-Helpdesk Consortium, 2005
47
European patent
48
Legal framework:
• EUROPEAN PATENT CONVENTION (EPC) of 1973
• Implementing regulations to the convention on the grant of
European patents (last amended 9 December 2004)
• Guidelines for examination
Requirements:
• technical character
• inventive step
• industrial application
© IPR-Helpdesk Consortium, 2005
• novelty
European Patent
49
Character of protection:
•
bundle of national patents (exclusive rights to an invention)
Term of protection
•
20 years from the date of filing patent application
•
the grant of a European patent may be requested for one or more of the
Contracting States (AT, BE, BG, CH, CY, CZ, DE, DK, EE, ES, FI, FR,
GB, GR, HU, IE, IS, IT, LI, LT, LU, LV, MC, NL, PL, PT, RO, SE, SI, SK,
TR)
Cost
•
total cost of obtaining a typical Euro-direct patent (validated in 6
countries, with 10 claims on 3 pages, 11 pages of description) was about
€30,000 in 2003
© IPR-Helpdesk Consortium, 2005
Scope of protection
The advantages of a European patent
50
Economy and efficiency
• a cost-effective and time-saving way of applying for patent
protection in several different countries
Unitary effects in the contracting states
• term of protection, binding text, grounds for revocation
• the grant procedure comprises a high quality prior art search
and examination
Patent can be obtained for countries which otherwise operate only a registration system
© IPR-Helpdesk Consortium, 2005
A 'strong' patent
IPR Overview
51
Patents
Copyright
Trade Marks
Subject of
protection
Inventions
(technical solutions)
Original Works
Distinctive Signs
Legal requirements
Novelty
Inventive step
Industrially applicable
Expression in
particular form
Originality
Distinctive
character
Graphically
representative
Application
yes
no
(in principle) yes
Duration of
protection
max. 20 years (+5 SPC)
Lifetime of
creator + 70
years
10 years
Legal instruments
National Patents
European Patent
PCT-application
National
National
European
Intern.
Registration
Competent
authorities
National patent offices
European Patent Office
No registration
National patent
offices/OHIM
© IPR-Helpdesk Consortium, 2005
(Aesthetic Creations)
IPR Overview
52
Plant Varieties
Utility Models
Design
Subject of
protection
Botanical genera and
Original Works
Designs and Models
species
(Aesthetic Creations)
(Aesthetic Creations)
Legal
requirements
Novelty
Expression in
Novelty
Inventive step
particular form
Originality
Industrially applicable
Originality
Useful function
Application
yes
yes
(in principle) yes
Duration of
protection
max. 20 years
+/- 20
max. 25 years
Legal
instruments
National Patents
European Patent
National Copyrights
National Design Patents
Laws
European Design Patent
Community Patent
Intern. Registration
(planned)
PCT-application
Competent
authorities
National patent offices
European Patent Office
No registration
National patent offices/OHIM
© IPR-Helpdesk Consortium, 2005
Individual character
© IPR-Helpdesk Consortium, 2005
53
IPR &
Ownership
54
•
Where several beneficiaries have jointly carried out work
generating foreground and where their respective share of the
work cannot be ascertained, they shall have joint ownership of
such foreground.
We do, we get it
•
Exceptions: Ownership of foreground by specific
groups
Foreground shall be jointly owned by the participants which are
members of the specific group benefiting from the action
© IPR-Helpdesk Consortium, 2005
 Foreground shall be the property of the beneficiary carrying out
the work generating that foreground.
I do, I get it
Joint ownership
55
 Beneficiaries shall establish an agreement regarding the
allocation and terms of exercising that joint ownership.

in accordance with grant agreement

(a) prior notice must be given to the other joint
owners (45 days);

(b) fair and reasonable compensation must be
provided to the other joint owners.
© IPR-Helpdesk Consortium, 2005
 Where no joint ownership agreement has yet been
concluded, each of the joint owners shall be entitled to
grant non-exclusive licenses to third parties, without any
right to sublicence, subject to the following conditions:
Ownership – employees’ creations
56
If employees or other personnel working for a beneficiary are entitled to claim
rights to foreground, the beneficiary shall ensure that it is possible to exercise
those rights in a manner compatible with its obligations under this grant
agreement.
Take personnel rights into account (employees’ inventions...)
Therefore, each participant has to ensure that it owns the results
generated by its personnel or that their rights to knowledge can be
exercised in a manner compatible with its contractual obligations




Staff employed by the participants (employees)
Doctoral students, fellows …
Personnel made available by a third party
Subcontractors
© IPR-Helpdesk Consortium, 2005
“Personnel” concerned
Copyright works - general rule
57
The owner of copyright is the creator of the work
Employer is the owner of the right to work made by
its employees in the performance of their normal
business duties (most European Union countries)
 employer is the owner employees’ copyrighted work
upon the acceptance of it (e.g. Poland)
Institute of Intellectual Property Law
of Jagiellonian University
© IPR-Helpdesk Consortium, 2005
 employer is the first owner of copyright (e.g. UK)
IPR
Helpdesk
Copyright works - specific rules
58
Author remain the owner of the copyright, even if
the work is created in the performance of an
employment contract (e.g. France, Italy, Belgium,
Luxembourg, Portugal)
employee retains the economic rights unless otherwise
provided in the contract. (Romania).
Institute of Intellectual Property Law
of Jagiellonian University
© IPR-Helpdesk Consortium, 2005

IPR
Helpdesk
Inventions - general rule
59

Inventor owns the right to his „free” invention
 The invention is "free" when there is no link with
professional activity.
 Employer owns the right to the invention created by the
employee
 „claiming the right” regime (Germany, Sweden,
Norway, Finland)
 depending if the contract of employment
provides expressly for the performance of inventive
activities and in case of research contract
(Romania)
Institute of Intellectual Property Law
of Jagiellonian University
IPR
Helpdesk
© IPR-Helpdesk Consortium, 2005
„invention in mission” regime (UK, France,
Holland, Italy, Greece, Portugal)
Links between invention and the employment
60
 the invention falls within the scope of the company's
field of activity (Portugal, Italy, France, Germany,
Sweden)
 the invention is realised with the help of intellectual or
material means of the company (Greece, Spain, France)
 the invention is based upon the experience or activities
of the company (Germany)
 the invention is related to the execution of the
employee's function (Germany, Finland, Sweden,
Norway)
IPR
Helpdesk
© IPR-Helpdesk Consortium, 2005
 the invention is the result of an inventive mission
entrusted to the employee (Sweden, Finland, Norway)
Transfer of Ownership
61

Where a participant transfers ownership of foreground, it shall
pass on its obligations regarding that foreground to the assignee,
including the obligation to pass them on to any subsequent
assignee, in accordance with the grant agreement.

prior notice to the other participants in the same action must be
given (45 days if no otherwise agreed)

any other participant may object to any transfer of ownership on
the ground that it would adversely affect their access rights (45
days if no otherwise agreed)

possible regular transfers to a specific third party

third party need to be identified beforehand

other participants must agree beforehand
© IPR-Helpdesk Consortium, 2005
Allowed but with conditions
Transfer of Ownership
62
No prior notice required if transfer to a specifically
identified third party (with the prior agreement from
all participants)
Commission can object to a transfer to a legal entity
established in a third, not-associated country on
competitiveness or ethical grounds – transfer will
not take place until Commission is satisfied
© IPR-Helpdesk Consortium, 2005
Commission does not have to be notified unless foreseen
in grant agreement
Ownership - changes in 7FP
63
 new default regime for joint-ownership in case
contractors have not agreed on a particular one
 extended definition of ‘employees’



remaining obligation to notify the transfer to other
participants (in the same project),
requirement to notify the Commission removed, except
few projects where it is kept (e.g. for security research)
possibility of global authorisation of transfers of
ownership of results to a specifically identified third party
© IPR-Helpdesk Consortium, 2005
 more autonomy in regard to transfer of ownership of the
results
Protection
64
When mandatory?
Results capable of commercial or industrial application
Who is obliged to protect?
Owner (participant owning foreground)
How?
- By an adequate and effective protection
- With regard to legitimate interests of the owner and other
participants (particularly the commercial interest)
© IPR-Helpdesk Consortium, 2005
Exception: if the owner fails to do so
- another participant (transfer)
- the Commission (assumption+consent of prior owner)
Protection
65
Important!
Protection prevails over dissemination/publications
Dissemination activities shall be compatible with the protection
of intellectual property rights, confidentiality obligations, and
the legitimate interests of the owner of the foreground.
Details of protection to be given in the plan for using and
disseminating the knowledge
© IPR-Helpdesk Consortium, 2005
Participants may agree on the terms and periods of protection to
conform with relevant legal provisions (e.g. decision-making
on where to protect or litigate and at whose costs)
Dissemination (publication)
Conditions

By the owner (or with its consent)

Cannot prejudice protection

As swiftly as possible. If not:

Commission may disseminate that foreground

grant agreement may set out time-limits.

Any planned publication has to be notified in advance to the
other participants (45 days, if no otherwise agreed)

they may object if it considers that its legitimate
interests in relation to its foreground or background
could suffer disproportionately great harm (30 days)
Particularly important rules for academic participants, whose
normal activity is publication not protection or use
© IPR-Helpdesk Consortium, 2005
66
Dissemination
67
By making available info about the results where
protection and use safeguarded

Website

Conferences

Specialised journals

Seminars, etc.
Taking care of IPR, promptness, confidentiality and participants’
legitimate interests
© IPR-Helpdesk Consortium, 2005
Publication is a way of
disseminating knowledge
Dissemination - changes in 7FP
68
 Participants may transfer results to other participants
where they are not interested in protecting the
results themselves
More room for negotiation by contractors
 The obligation to notify the Commission was
removed as the other participants are much better
placed to deal with such dissemination intentions.

Statement indicating Community support must
be included in patent applications, publications
and other dissemination activities
EC financial support must be highlighted!
© IPR-Helpdesk Consortium, 2005
 Enhanced visibility of EC support
STATEMENT TO BE USED IN DISSEMINATION ACTIVITIES
69
RO:
Cercetarea care a generat aceste rezultate a primit
finanţare în cadrul celui de-al şaptelea Programcadru [al Comunităţii Europene] [al Comunităţii
Europene a Energiei Atomice] ([PC7/2007-2013]
[PC7/2007-2011]) prin acordul de finanţare nr.
[xxxxxx].
© IPR-Helpdesk Consortium, 2005
EN:
The research leading to these results has received
funding from the European Community's Seventh
Framework Programme (FP7/2007-2013) under
grant agreement n° xxxxxx.21
Use
70
The participants shall use the foreground which they own, or
ensure that it is used.
Optimising EC funding leads to the use and dissemination of the
results obtained in the project
By commercial exploitation, or by carrying out further
research activities

Directly by the owner

Licensing other participants or thirds

Other ways: transfers, creation of a new entity,
etc.
© IPR-Helpdesk Consortium, 2005
HOW?
Access rights
71
Access rights mean licences and user rights
to both foreground and background
owned by another participant in the
project
When is it compulsory to grant AR?
 When it is necessary to implement the project (carrying
out the project)
 When it is necessary for using one self’s results (use of
the own foreground)
© IPR-Helpdesk Consortium, 2005
Mechanism for sharing the results and
ensuring benefits for all participants
When the AR are really „needed”?
72
• without the access rights concerned, some of the R&D
tasks assigned to a participant under the project would
be impossible to be carried out, or significantly delayed,
or require significant additional financial or human
resources;
• without the access rights concerned, the use of a given
element of foreground by its owner would be technically
or legally impossible, or would require very significant
additional R&D work outside the frame of the project (in
order to develop an alternative solution equivalent to that foreground or
background of another participant to which access is refused.)
Is it possbile to refuse?
© IPR-Helpdesk Consortium, 2005
case by case basis
Access Rights. General Principles
 On written request
 No sublicensing, unless expressly allowed
 Exclusive licences possible if all participants waive their access
rights (explicitly)
 Conditioning the grant on conclusion of certain further
agreements (confidentiality, determined aim) possible
 Granting more favourable or additional AR, also to third parties
(particularly to associated enterprises) possible
 Commission may exceptionally oppose to the grant of AR to
third parties
 Contractors have to inform sometimes
 The termination of participation does not affect the obligation to
grant access rights
© IPR-Helpdesk Consortium, 2005
73
Access Rights
74
Background may be freely defined by written
agreement by the participants
- No time limit for exclusion of specific background
- Only “needed” background is to be excluded
– by definition if not needed not necessary to exclude
therefore no need for long lists of exclusions.
© IPR-Helpdesk Consortium, 2005
Possibility of excluding background
“Participants may define the background needed for
the purposes of the indirect action in a written
agreement and, where appropriate, may exclude
specific background”
Access rights to background
75
Participants can freely define in any manner (for example in
a positive or negative way) what is needed for the project
(i.e. background available for access by each other).
Negative lists
Positive lists
Clear identification which background is available for access by
the other participants.
Possible „selective availability”
to be agreed in writing
© IPR-Helpdesk Consortium, 2005
Explicit exclusion of some specific elements of the background
from the obligation to grant access rights.
Any background that is to be excluded should be defined in
such a way that it is sufficiently clear to avoid uncertainty
Access Rights and the EC
76
Commission right to oppose to the grant of AR to third parties
WHEN? Commission can object to the grant of an exclusive licence to
legal entity established in a third, not-associated country
- on competitiveness or
- ethical grounds
grant will not take place until the Commission is satisfied
Contractors shall inform the Commission when it is foreseen in
grant agreement.
Commission note of 19.01.04 (FP6)
© IPR-Helpdesk Consortium, 2005
accordance with the interests of developing the competitiveness of the EU
economy or is inconsistency with ethical principles or security reasons
Compulsory AR system
77
Access rights to
background
Access rights to
foreground resulting from
the project
If a participant needs them for carrying out his own work
under the project
For use
purposes
(exploitation
+ further
research)
Royalty-free excep
unless otherwise agreed
before acceding to the
grant agreement
Royalty-free
If a participant needs them for using his own foreground
Either fair and reasonable conditions or royalty free - to
be agreed
excep
© IPR-Helpdesk Consortium, 2005
For carrying
out the
project
Changes in FP7
78
Simplification of the access rights regime and increased protection of
participants' interests:
Unlimited possibility for defining the background needed

Exclusion of specific background.

Positive lists and similar practices may be admitted

either under fair and reasonable conditions or

royalty-free.
The period during which access rights for use may be requested is reduced
from 2 years to 1, unless the participants agree differently
Introduction of a provision on exclusive licences

conditional on all participants waiving their access rights and
confirming this in writing.
© IPR-Helpdesk Consortium, 2005
Access rights for use purposes have to be granted

The subject of the Agreement – basic rights and
obligations should be defined in order to avoid
controversies regarding the type of contract.

Subject- matter (IP rights) should be clearly
indicated. However with regard to know-how licenses
confidentiality must be observed.

In case of numerous IP rights listing them in an
annex may be of help

Definitions of terms assist in avoiding
misunderstandings

Since IP rights are territorial licenses are also
territorial
© IPR-Helpdesk Consortium, 2005
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Basic provisions of licence agreements
Definition of use
80
It is important to know what are the goals of the parties to
the agreement


Field of use - e.g. application of product / technology in a certain
industry branch,
Exploitation - authorised exploitation activities, e.g. production,
offer, sale in the territory / for the defined filed of use
Types of licenses:
© IPR-Helpdesk Consortium, 2005
Non-exclusive licence :The same licence can be granted to as many as
licensees as the licensor wants
Exclusive licence :The licence excludes any other potential licensee
A sole licence: Licensor is entitled to use the licensed technology but
no other licenses are granted
Which to choose?
81
Non-exclusive licence :
Licensor can spread the risk of a successful
commercialisation by licensing to more than one
Licensee in a territory and filed of use
However, we should remember that all licenses are
flexible. For example exclusivity can be limited to a
territory and / or field of use
© IPR-Helpdesk Consortium, 2005
Exclusive licence :
Licensor takes a high risk as to successful
exploitation based on the activities of one licensee
only
In practice exclusivity is very often a precondition set
up by the licensee
Often needed to enable manufacture, distribution
and marketing of the final product
Requires consent of the licensor
Should correspond to the same terms and
conditions as the license
Rights and obligations as in a license agreement
The licensee should indemnify the licensor against
any actions by the sub-licensee and be required
to collect any royalties payable
© IPR-Helpdesk Consortium, 2005
82
Sublicensing
Royalties
83
1.
Lump sum payments

Usually paid at the beginning of the license period

Often used by exclusive licenses

Less risk for the licensor

Do not depend on profits generated by the licensed IP
2.
Recurrent payments

E.g. payments per unit or percentage license

Percentage license refers to a base formula like e.g. net
sales. Defining this formula is crucial.

Dependent on generated profits – incentive creating
3.
Minimum royalties

A mixed formula providing some benefits of both 1 and 2.
© IPR-Helpdesk Consortium, 2005
Various models used in practise. Generally 3 basic methods:
Royalties
84
Flexible royalty schemes: e.g. royalties increasing gradually as the
implementation of licensed technology progresses
How to calculate
Calculation based on projected income streams (i.e. based on the
probable profit, the technology may generate
 How valuable is the technology?
 What is its useful life?
 Is there a market?
Calculation based on standard royalties applied commonly in a
given field (often percentage royalties)
Costs of developing technology, costs of protection (esp. relevant
for patents), the need to obtain other licenses
© IPR-Helpdesk Consortium, 2005
 Is it easy to defend in litigation?
The CA
85
© IPR-Helpdesk Consortium, 2005
The Consortium Agreement
Consortium Agreement
86
 A private agreement, concluded between
contractors
 Compatible with the grant agreement, which
prevails in case of contradiction
© IPR-Helpdesk Consortium, 2005
 Mandatory under the FP7, unless otherwise
provided in the call for proposals
Consortium Agreement
87
Structure:
 Technical provisions
 Financial structure
 Dispute resolution mechanisms
 Intellectual Property
© IPR-Helpdesk Consortium, 2005
 Management structure
The CA
88
Within which frame?
It shall not affect participants’ rights and obligations
towards the Community and among themselves as
defined by the Rules for Participation or the
Grant Agreement
If mandatory = BEFORE the Grant Agreement is signed
If not mandatory = no explicit mention in the grant
agreement
(the sooner, the better)
© IPR-Helpdesk Consortium, 2005
When to be signed?
The CA
89
Preliminary Clauses
Checklist for a Consortium Agreement
for FP7 projects is available on Cordis website
Consistency with the grant agreements (!)
Object of the agreement
Duration
© IPR-Helpdesk Consortium, 2005
Preamble [Summary of the project framework]
Title
Parties
Language/s and determining valid version
Definitions (!!!)
All necessary terms defined (different backgrounds, cultures,
legal nature...)
“needed” or “necessary”, “affiliate” ...
The CA
90
Central Clauses
Financial and administrative management
Consortium bodies, decision-making procedures
Financial organisation (how, when, how much, to whom ...)
Measures in case of breach of contract
Damages, termination in grave cases, etc.
© IPR-Helpdesk Consortium, 2005
Technical provisions (i.a. IPR-related provisions)
Resources provided (human resources, durable equipment,
IC, etc.)
WPs, measures in case of non-compliance of timetable, e.g.
Procedure for modifying the CA
The CA
91
Final Clauses
Dispute resolution systems
Jurisdiction [competent tribunals in case of conflict]
ADR systems, e.g.:
Mediation
Arbitration
© IPR-Helpdesk Consortium, 2005
Applicable Law
Contractors can choose the law they prefer... but
law applicable to grant agreement is BE or LU
law...
Consistency advisable
The CA: Models
92
Not official documents from the European Commission
Drafted by different organisations with a wide experience
in order to help contractors to draft theirs’
As a model, are indicative and should not be used as
they are
It is the responsibility of the user to subject the CA to
legal examination
© IPR-Helpdesk Consortium, 2005
Should be reviewed, revised and adapted to fit needs
of each consortium on a case-by-case basis
The CA Models in FP7
93
DESCA (Development of a Simplified Consortium Agreement)
- more adequate for universities and research centres
- easier for non-lawyers
- with alternatice options
IPCA (Integrated Projects Consortium Agreement)
Where to find?
http://www.eicta.org
http://www.desca-fp7.eu/
© IPR-Helpdesk Consortium, 2005
- more focused on commercial exploitation
- prepared by (and mainly for) the ICT industry
The CA Models. Main features
94
- Provides good option for the
delimitating background (by
designation of specific
department for the project)
- enables easier transfer of
foreground towards third parties
- default regime of joint
ownership
- all access rights on request
- default definition and regime
for affiliates
IPCA
- Introduces the concept of
sideground (the knowledge obtained
in parallel with the project)
- transfer of foreground has broader
scope (including affiliates)
- default regime of joint ownership is
excluded
- some access rights are deemed as
already granted
- extended access right for affiliates
- special provisions regarding Open
Source Software
© IPR-Helpdesk Consortium, 2005
DESCA
Confidentiality issues
95
The foreground should be kept confidential in order to satisfy
the requirement of the foreground protection.
Participants shall preserve confidentiality of info so identified
Participants shall guarantee confidentiality of any third person to
whom (sensitive) project info is communicated
Advisable: signing confidentiality agreements and/or
including a confidentiality clause in the CA
- disclosure to any person bound by secrecy obligations
is not detrimental to the state of confidentiality
We have documents on confidentiality agreements
on the IPR-Helpdesk website + NDA model
© IPR-Helpdesk Consortium, 2005
Confidentiality obligations should be detailed
Plan for use and dissemination of foreground
96
For the first time dissemination plans should be
prepare together with project proposal
Plan for use and dissemination is necessary for the
Comission to out the audit
Any dissemination activity shall be reported in the
plan for the use and dissemination of foreground,
including sufficient details/references.
EC may not approve the reports (plan for use and
dis.) what may result the termination of the
project.
© IPR-Helpdesk Consortium, 2005
Morover, any technical audit (up to 5 years after
project’s end) can asses the plan for use and dis.
IP Costs
97
The IPR protection, dissemination and management activities may
be reimbursed up to 100% of the eligible costs.
Eligibility criteria must be fulfilled i.e. costs must be
• actual
• incurred by the beneficiary
• determined in accordance with the usual accounting and
management principles and practices of the beneficiary
• used for the sole purpose of achieving the objectives of the
project and its expected results, in a manner consistent with the
principles of economy, efficiency and effectiveness
© IPR-Helpdesk Consortium, 2005
• incurred during the duration of the project,
IPR costs
98
Examples:
- filing and prosecution of patent applications,
- including patent searches and legal advice
- filing and prosecution of trade mark applications
- the payment of royalties to a third party for IPR which are
needed to implement the project
- the payment of royalties to the other participant for access
rights (if they relate to access rights granted before the start of the
They should be discussed carefully during the negotiations,
and be included in Annex I to Grant Agreement
Get familiar with Commission FP7 Financial Guidelines
© IPR-Helpdesk Consortium, 2005
project)
Protection of the name of the project and EU emblem
99
In principle, participants are free to choose the
name/acronym/logo
2. Name/logo/acronym registered as trade mark by one
of the participants
3. The need to protect in the long-term and
commercially important projects
4. The use EU emblem (prior agreements with EC)
© IPR-Helpdesk Consortium, 2005
1. Possible conflict with registered trade marks
• While use of the trade mark for the
goods/services in the same area
• Trade mark searches
100
© IPR-Helpdesk Consortium, 2005
Dariusz.kasprzycki@uj.edu.pl