IPR aspects in the 7th Framework Programme

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IPR aspects in the

7th Framework

Programme

___

Salvatore Amico Roxas

IPR-Helpdesk

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2 © IPR -He lpd esk Conso rtium, 2007

Topics

! Introduction

! What is IPR?

! Why is IPR important?

! IPR in 7FP

! Consortium Agreement &

Common Mistakes

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Why participating in European Framework Programmes

Benefits from participating in FP7:

(to mention a few…)

- Competitive funding

- Targeted research within multi-partner

trans-national consortia (

networking)

- Funding of research and development projects

outsourced to competent research partners

- Incoming and Outgoing Fellowships

(Industry-Academia Partnerships and Pathways action)

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What about the “costs”?

Issues to tackle

:

-

Management of the proposal / project

-

Why should I share & disclose sensitive infos about my know-how? Which risks does it imply? Which rights do I have on the project results? (IPR issues

)

We will focus on the following issues:

- Confidentiality aspects at the proposal stage

- Access rights

- Exclusion of pieces of “background”

- “Foreground” and PUDF

- IPR in SMEs specific actions

- Consortium Agreement models

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What is IPR?

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Changing Business Environment

Business Assets

Tangible Assets

Land, building, machinery, financial assets, infrastructure

Intangible Assets

Human capital, know-how, business relationships, brand,

etc.

Traditional

Knowledge-driven economy to underpin

performance

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What is IPR?

I

ntellectual

P

roperty

R

ights

= legal instruments to protect someone’s

intangible assets

(non-physical assets)

Converting Intellectual Assets into Property

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IP rights

Intellectual Property Rights

Industrial Property

Rights

e.g. patents,

utility models,

industrial designs,

trade marks,

trade secrets

etc.

Copyright &

related rights

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Which IP rights are involved…?

Design and

Trade Mark

(3dimensinal)

Recipe

Trade Secret

Coca-Cola, Coke…. Trade Mark

(word)

Trade Mark

(figurative)

Patent

Patent number:GB1293885

Copyright

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Why is IPR important for SMEs?

Innovative and creative ideas are at the heart of

most successful businesses

(→knowledge-based economy)

To commercialise an invention To prevent others from using it

To safeguard a strong market position To strengthen your negotiation power To attract investors

To develop good reputation among consumers

BUT: Ideas by themselves have little value. IPR offers : exclusive property rights

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IPRs in the

7th Framework Programme

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IPR – a strategic factor in a successful FP7 project

Before Project ! Proposal preparation, incl. “potential impact” ! Defining project-related know-how ! Defining IP-protected areas ! Negotiating a CA ! Negotiating with the EC During Project

! Strategy for protection & management of foreground ! Granting of access rights After Project ! Protection of generated IP ! Exploitation of the results ! Dissemination (PUDF)

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Sources of provisions on FP7 IPR aspects

- Rules for participation (C.E.)

- EC Grant Agreement (and related

Annexes, Annex II in particular)

- Consortium Agreement

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Grant agreement and Consortium agreement

European Commission

↕

Grant agreement

Coordinator

Consortium

agreement

↓ ← ↑ Technical provisions

Financial structure and

Participant

→

Participant

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Consortium Agreement

$

A private agreement, concluded between

participants

$ Mandatory under the FP7, unless otherwise

provided in the call for proposals

$ Compatible with the grant agreement, which

prevails in case of contradiction

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Consortium Agreement

$

The EC Contract (Grant Agreement) does not

regulate everything and provides for the possibility of

further specifications

$ Participants shall ensure the good execution of the

project

$ Fundamental for

Intellectual Property

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Consortium Agreement Structure

Main structure

# Preliminary clauses

(title, preamble, definitions …)

# Technical provisions

#

Financial structure and Management structure

# Intellectual Property

# Dispute resolution system

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Consortium Agreement Structure

Technical provisions:

Technical contribution of each participant and

coordination of the individual efforts

Information on the resources, human and

material, brought to the project by each

participant

Estimated work schedule

Flexibility

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Consortium Agreement Structure

Financial and management structure:

Estimation of costs and financing plan

Rules for the distribution of the EC contribution

by the coordinator

Creation of the bodies (committees, etc.)

necessary for the coordination and the

supervision of the work under the project

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Consortium Agreement Structure

Intellectual Property:

Confidentiality

Background

Ownership of foreground

Protection of foreground

Use and dissemination

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Negotiation and signature of the CA - Confidentiality

Grant Agreement CA signature CA negotiation Preliminary agreement

• Preserve confidentiality of data related to background and

foreground (before protection) • Especially when concluding agreements with third parties (access rights, subcontracts, etc.) and in dissemination activities • Trade secrets

Confidentiality plays an important role throughtout the project stages

(Memorandum of Understanding, Letter of intent) • confidentiality

• information exchange for the drafting of the project proposal

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Main Definitions 1/2

• Background: information and IPR (granted or applied)

before signature of the EC grant agreement (“sideground”

is not included)

• Foreground: Results generated by the project and any

IPR attached to these results

• Use: Direct or indirect utilisation of foreground in further

research or commercial activities

• Dissemination: Making foreground available to the

public

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Main Definitions 2/2

“

Background

” = each participant’s contribution at the starting

stage of the project

Background + Research efforts + A bit of luck = “

Foreground

”

“

Access rights

” = allow the exchange information and

know-how (software, patents, work methods, etc.) in order to

benefit from each other’s resources and carry out their tasks

or their exploitation efforts. The information beneficiaries

exchange is either “background” or “foreground” (apart from

“sideground”)

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Diagram of the project developments

Participant A Foreground Dissemination

Notification

(if no protection plans)

Participant B Background Participant C Access rights Access rights Notification Protection

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“Access rights” (art. II.32 – II.34)

Participant A Background Access rights Access rights Participant D Participant C Participant B

• Access rights requests shall be made in writing; info on restricting commitments • In case of access rights to third parties,

preservation of participants’ rights • Exclusive licenses (allowed)

• Objection of the Commission in case of

granting to non-EU (or Associated) third parties • Compulsory access rights on background and foreground are

granted when needed by a

participant (for implementation or

use purposes)

Access rights

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“Access rights”: Example

Aim of the Overall project:

development of a new instrument for the sequencing of proteins

(

purification kit; chromatographic column; mass spectrometer; software)

Has to develop (together with other 2 partners: B and C) a purification kit, mainly made up of: columns, a specific resin, membranes, solvents

Participant A

Participant B

Background: know-how and patent on suitable type of column

Participant C

Background: know-how and development of new type of resins and solvents. Participant Access rights Access rights

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Access rights – (minimal) economic conditions

Implementation purposes

• Access rights to background: royalty-free, unless otherwise agreed before signature of the grant agreement

• Access rights to foreground: royalty-free

• If you leave the project, you still have to grant access rights until its end

Use purposes

• Access rights to background: fair and reasonable conditions or royalty-free • Access rights to foreground: fair and reasonable conditions or royalty-free • Request until 1 year after the end of the project or withdrawing of a

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Management of the “background”

Defines the needed background for the project implementation (positive list)

Consortium

If necessary, excludes specific pieces of background (negative list)

Access rights

Implementation purposes Use purposes

Royalty-free, unless otherwise agreed before signature of the grant agreement Fair and reasonable conditions or royalty-free

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Exclusion of pieces of “background”

Participant’s background

X

Positive list Negative list

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Ownership of foreground (art. II.26)

Foreground shall be the property of the participant carrying out the work generating that foreground

Transfer ownership (art. II.27) Joint ownership (art. II.26.2) Employees’ rights • consider employees and “other personnel”

• consider interference with the grant

agreement

• reach agreements with other joint owners • if not, default regime:

% free non-exclusive licenses to 3rd parties

% prior notice to joint owners

• Pass on obligations to the assignee

• Notify the participants (they can waive their right)

• Notify the Commission, if the grant agreement so

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Joint Ownership of foreground: Example

Participant B Participant A Participant C Purification kit

Joint ownership: patent on the whole purification kit, jointly

developed by the three partners.

Patent application includes:

# columns " developed by partners A and B

# specific resin " developed by partners C and B # membranes " developed by partners A and C # solvents " developed by partners A and C

A joint

ownership

agreement

is required!

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Protection of foreground (art. II.28)

The owner shall protect foreground capable of industrial or commercial application

Taking into account the legitimate interests (particularly commercial) of the other participants and highlighting Community support

If not:

• transfer foreground to another participant that

wishes to protect it • if no other participant is interested, inform the

Commission before disseminating it

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Protection of foreground: Example

Participant A Participant B Participant C Purification kit

Decide not to protect the kit!

Participant D

# Responsible of the development of the mass spectrometer # Interested in a commercial exploitation of the project results

Risk of impairing its

legitimate interest!

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Use and dissemination of foreground (art. II.29-II.30)

Use

• Participants shall use the foreground that they own, in further research or commercial activities

• Foreground may also be used by other participants or third parties, following transfer or license grant

Dissemination (including publications)

• Disseminate as swiftly as possible (if not, the Commission might do it) • Consider protection of foreground (IPR) and confidentiality (use)

• Notify the other participants of all dissemination activities

(objection in case legitimate interests are impaired)

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Use and dissemination of foreground – PUDF (1/4)

Plan for the use and the dissemination of foreground (PUDF)

It summarises the strategy and the concrete actions of a consortium for the protection, exploitation and dissemination of the results.

It must contain information on:

• Exploitable foreground and its use

• Dissemination of foreground

• Publishable results

Dissemination

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Use and dissemination of foreground – PUDF (2/4)

Plan for the use and the dissemination of foreground (PUDF)

Exploitable foreground and its use

- Needs for further R&D activity and/or collaboration needs

for exploitation (and which risks are implied)

- IP-related aspects

- Customer detection (

focus on factors that affect purchasing decisions

)

- Features of the target market (

size, growth rate, share that the

technology/product could reach, driving factors likely to change the market, legal, technical and commercial barriers, other technologies likely to emerge in the near future…

)

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Use and dissemination of foreground – PUDF (3/4)

Plan for the use and the dissemination of foreground (PUDF)

Dissemination of foreground

- It should describe how participants intend to disseminate the

generated foreground (i.e. how to reaching the target

audience, the proposed communication strategy and a specific

set of actions)

- Methods: press releases, conferences, scientific publications,

exhibitions, workshops, newsletters, websites, etc

Publishable results

Summary of each exploitable result in order to allow the EC to

promote the results of European research for market

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Use and dissemination of foreground – PUDF (4/4)

The collaboration between

ensures a concrete support in drafting and

implementing the PUDF

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Diagram of the project developments

Participant A Foreground Dissemination

Notification

(if no protection plans)

Participant B Background Participant C Access rights Access rights Notification Protection Use

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Actions in favour of specific groups

SMEs and SME associations

• Specific groups are the owners of foreground generated by such actions, but they may decide otherwise

• The default ownership regime (art. II.26.2) applies

• RTD performers shall always grant access rights to background on a royalty-free basis (exception: use purpose)

• RTD performers are entitled to access rights to foreground for further research purposes, granted on fair and reasonable conditions

• If the owner of the results is a legal entity representing the benificiaries, sublicensing is expressly accepted

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Which support participants

need to tackle

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At a proposal stage

IDEA

DECISION TO

INNOVATE

Protection of all information

linked to the idea

Protection of technical

drawings by trade secrets

& / or copyright

Search in patent documents

Define the state of the art

Confidentiality issues

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Before Project

NEGOTIATE

Consortium Agreement

Background & foreground

Access Rights

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During Project

RESEARCH:

- basic

- applied

Make use of patent

documents

(“freedom to operate”)

:

- as a source of competitive

intelligence

- as a source of information

Make use of confidentiality

agreements

(patents, third parties…)

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During Project

MANAGEMENT

Research results

Question of ownership

Access rights regime

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Toward Project Conclusion

PROTECTION,

USE

&

DISSEMINATION

Publication as a means of

dissemination activities

Enhanced visibility of EC

support

Use of results

Protection of results

Continuous update of

dissemination and use

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Toward Project Conclusion

RESEARCH

OUTPUT

Invention, improved product

or service protected by

patent, utility model or

industrial design

Possible need of further

technical development

Setting up strategic

alliances to facilitate the

successful completion of

an innovation

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After Project: Product Commercialisation

MARKETING OF

INNOVATION

Trade mark and industrial

design are key in a

successful marketing

strategy

Careful management of IP

portfolio

Attracting investments,

business angels, VC, etc.

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Consortium Agreement Models

Please do not just copy!!!

%

Not official, not drafted by the Commission

% Participants may use them as examples and adjust

them to their specific wishes and needs

- IPCA:

http://www.eicta.org/index.php?id=32&id_article=93

- DESCA:

http://www.desca-fp7.eu

- EUCAR:

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Consortium Agreement Models

Comparison between the DESCA and IPCA models

%

Management of the background

(DESCA: positive/negative list; IPCA: sideground)

% Management of the foreground

(DESCA: no objection right to transfer; IPCA:facilitation of transfer

towards transferees)

% Joint Ownership

(DESCA: default regime; IPCTA: individual exploitation)

% Access rights

(IPCA: broader access rights for affiliates)

% Affiliated companies

…For further infos, see IPR-HD

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Common mistakes in drafting

the

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EXAMPLES for discussion 1/5

SECTION: Definition

“Background means exclusively the information which is held by the Party’ specific research group, research department or

research institute carrying out the project work prior to the conclusion of the Contract, as well as copyrights or rights

pertaining to such information following applications for, or the issue of, patents, designs, supplementary protection certificates or similar forms of protection.”

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EXAMPLES for discussion 2/5

SECTION: Provisions on Access Rights (IPR macro section)

“Where research is carried out in collaboration with and/or for a third party and it appears to the researching Party that the third party will require direct access to the Foreground of another Party, Access Rights to the said Foreground of another Party shall be granted to the third party on written request subject to the following: […]

If despite reasonable efforts on behalf of the researching Party, the owner cannot be so informed, the researching Party may carry out the research without prejudice to the owner's rights to enforce its rights in any way it deems fit against such third

party.”

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EXAMPLES for discussion 3/5

SECTION: Dissemination of Foreground

“According to the Contract, a Party may publish or allow the publication of data, on whatever medium, concerning

Foreground it owns provided that this does not affect the

protection of that Foreground. A Party shall provide the other Parties and the Commission with a 45 days prior notice and

another Party may object to the publication. Such objection shall be duly justified and shall – unless resolved between the Parties concerned – be reported to Management Team. An intended publication can normally be delayed no longer than what is needed for the Parties concerned to obtain adequate legal

protection of Foreground and, eventually, of the Background, in any event not more than sixty days after first notification.”

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EXAMPLES for discussion 4/5

SECTION: Dissemination

“For the avoidance of doubt it is stated that unless otherwise agreed between the Parties concerned no Party shall have the right to publish or allow the publication of data which includes Foreground of another Party, Background of another Party or confidential information of another Party…[..]

This Section shall not prevent the submission, examination, publication and defence of any dissertation or thesis for a degree which includes incidental and minor elements of

Foreground of another Party, Background of another Party or confidential information of another Party in case the intention to make such dissertation or thesis has been notified to the other Parties in writing promptly as soon as such intention is

foreseen.”

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EXAMPLES for discussion 5/5

SECTION: General principle on Access rights

“All Access Rights granted in accordance with this Section are deemed to be granted on a non-exclusive basis, to expressly exclude any rights to sub-license unless otherwise agreed

herein, and, save in exceptional circumstances, shall be made free of any transfer costs.”

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Other useful tools for collaborative R&D projects

% CREST Collaboration Decision Guide,

designed to help

potential R&D collaborators, such as businesses (in particular SMEs) and public research organisations (PROs), to decide the best way to arrange matters in their collaboration agreement.

http://ec.europa.eu/invest-in-research/policy/crest_cross_en.htm

% UK’s Lambert Agreements

http://innovation.gov.uk/lambertagreements

% Danks Industri - Contacts, contracts and codices

http://billed.di.dk/wimpfiles/lores/image.asp?objno=/686201.pdf

% EC Voluntary guidelines

for universities and other research

institutions to improve their links with industry across Europe

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Sources of information and support

Information and support:

# Directory of Intellectual Property Offices (http://www.wipo.int/directory/en/urls.jsp)

# IPR-Helpdesk FP7 documents and Helpline (http://www.ipr-helpdesk.org)

# National Contact Points (http://cordis.europa.eu/fp7/ncp_en.html)

# FP7 Enquiry Service (http://ec.europa.eu/research/enquiries)

# IGLO - Informal Group of RTD Liaison Offices (http://www.iglortd.org)

# Innovation Relay Centres Network (http://www.innovationrelay.net)

# Finance Helpdesk (http://www.finance-helpdesk.org)

Information only:

# CORDIS FP7 (http://cordis.europa.eu/fp7)

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About us

IPR-Helpdesk

- Assisting on “IPR

issues” in RTD projects

(Communitarian and

International)

- Raising the awareness of

and training the research

community on IPR

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IPR-Helpdesk: Target Audience

Target Audience:

Current and potential

participants in

Community-funded R&D

projects, and in particular:

SMEs, academia, research

centres and individual

researchers

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Services of the IPR-Helpdesk

Helpline

Website

eNewsletter

Bulletin

Training Actions

http://www.ipr-helpdesk.org

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Helpline

Expert & personalised

advice in three working days per email

in the following 6 languages: English, Spanish, French,

Polish, German, Italian

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Services of the IPR-Helpdesk: Helpline

In a consortium made up of several SMEs involved in a

software-developing CRAFT project, RTD developers

of most of the software modules wanted to retain the

rights.

One of the SMEs sent us a question via the HELPLINE. In

a simple way we explained:

%

The basics about software copyright

%

The ownership rules of the CRAFT contract

RESULT:

% The participants better understood their basic rights & obligations

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Website

IPR-Helpdesk documents Official documents Examples of C.A. Glossary FAQs

News & Event Section

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eNewsletter

Daily, weekly, quarterly subscription to:

IPR-Helpdesk documents, News & Events,

IPR Bulletin

in six languages

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IPR Bulletin

Expert articles , success stories,

best practice reports

published bi-monthly – in six languages

(68)

Training

Training for multipliers NCPs Chambers of Commerce in six languages

http://www.ipr-helpdesk.org

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The IPR-Helpdesk – Complementary expertise

Jagiellonian University

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