IP in EU-funded projects

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IP in EU-funded

projects

Jörg Scherer EU IPR Helpdesk/ Eurice GmbH (Saarbrücken) Brussels, 31 May 2013

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STOP

Need Assistance?

The European IPR Helpdesk

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October 11, 2011 © European IPR Helpdesk (2011)

Team

3

infeurope S.A.

(Project Coordinator; Website & Helpline)

Eurice GmbH

(Awareness Raising & Training Activities)

Centre de Veille Technologique

Office de la PI (MECE) et

CRP Henri Tudor

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STOP

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European Services Bulletin Newsletter Training Helpline Awareness Raising Publications Website

All of our services are offered free of

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Website

• News • Newsletter • Events • Model Agreements • Fact Sheets • Case Studies • Quizzes

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European

Fact Sheets

• License Agreements

• Spin-Off-Activities

• How to search for patent information

• How to deal with IP-related clauses in Consortium Agreements

• How to manage IP in FP7 at proposal stage

• How to manage IP in FP7 during negotiation stage

• How to manage IP during & after the project

• How to search for Trademarks (with OHIM)

• IP in Marie Curie Actions

• IP related business tools

• Alternative Resolution Mechanisms (with WIPO)

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All publications can be

found in our online

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European

Helpline

• First-line support

• User-friendly service provided in

English

• Personalised answers to individual

questions within three working days • Wide range of IP topics: IP

protection, IP management and exploitation, revision of agreements, etc.

• Understandable for non-legal

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Frequent concerns

What are positive

and negative background lists? How can we best handle joint ownership of foreground? How do I prepare a Non-Disclosure Agreement? Are the provisions drafted in How can we best protect/exploit our research results?

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European

Webinars & Educational Clips

• Regular courses

• Registration on our website

• Open to everyone interested in enhancing their

knowledge of IP/IPR • Easy handling

• Duration: 60 minutes &

15 minutes “Q&A”

• Short clips for online self-study:

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Roadmap

• General Frame

• Rules and Agreements

• Specific Vocabulary in

EU-funded coll. projects

• IP in Project Life Cycle

• CleanSky specificities

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European

STOP

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What are the characteristics of

an EU funded project?

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European

Collaborative Projects

It is in the nature of collaborative projects that different partners

with varying mindsets and interests come to sit at one table.

University

Industry SMEs

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Characteristics

• Goal: publication • Using results for

future research and teaching activities • Insufficient exploitation strategy • Lacking legal/ IPR expertise • Goal: commercialisation of results • Application-oriented approach • Strong in-house legal/IPR expertise • Goal: keeping control over own research results • Protection of

existing know-how, that is brought into the project

• Lacking legal/IPR expertise

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European

STOP

Rules and Agreements

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Where do I find rules

regarding IP in EU funded

projects, and specifically the

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European

IP Rules – Basis for CleanSky

• Article 15 of COUNCIL REGULATION (EC)

No 71/2008 setting up the Clean Sky Joint

Undertaking

Intellectual property

The Clean Sky Joint Undertaking shall adopt distinct rules governing the protection, use and dissemination of research results, based on the principles of Regulation (EC) No 1906/2006* as set out in Article 23 of the Statutes, which ensure that, where appropriate, intellectual property generated in research activities under this Regulation is protected, and that research results are used and disseminated

* rules for the participation of undertakings, research centres and universities in actions under the Seventh Framework Programme and for the dissemination of research results (2007-2013)

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IP Rules

Protection of IP in CleanSky is dealt with

in the …

… Grant Agreement (

GAP and GAM

)

… Consortium Agreement

of individual ITDs

…

Implementation agreement

… Guide to Intellectual Property

Rules for FP7 projects

… Patent Law (national / european)

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European

Overview: Agreements under

CleanSky calls (Partners)

JU

P

GAP

JU

P

CA (4 ITDs)

P

Option 1

Impl. Agree-ment

P

Option 2

_ITD Topic Manager ITD add.

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Overview: Agreements under

CleanSky calls (Members)

GAM

JU

M

_{(4 ITDs)}CA

M

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European

What about the

Grant Agreement?

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Grant Agreement for Partners (GAP)

Relation between Joint Undertaking and Partners

Joint Undertaking P1 P2 P3 P5 P4 Grant Agreement

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European

Grant Agreement for Partners

Components of the Grant Agreement GAP

Core agreement Core with project specifics

Annex I Description of the project

Annex II General Conditions

Annex III Form A: Entry of partners

Annex IV Form B: Entry of partners after project start

Annex V Form C: Declaration of costs; specific for

individual project types

Annex VI+VII Forms D&E: Auditor‘s or Internal Assessor‘s report for certifying costs (CFS)

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Grant Agreement for Members (GAM)

Relation between Joint Undertaking and Members

Joint Undertaking P1 P2 P3 P5 P4 Grant Agreement

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European

Grant Agreement for Members

Components of the Grant Agreement GAM

Core agreement Core with project specifics

Annex I A General Description of the Work of the

Programme

Annex IB Description of the annual project and

corresponding max. JU financial contribution Annex II General Conditions

Annex III Form A: Entry of partners

Annex IV Form B: Entry of partners after project start

Annex V Form C: Declaration of costs; specific for

individual project types

Annex VI+VII Forms D&E: Auditor‘s or Internal Assessor‘s report for certifying costs (CFS)

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Grant Agreement – relevant Annexes

Annex II – General Conditions

• Reference for EU regulations on project implementation

(refundable costs, reporting, payment schedule…)

• Answers many questions that arise during the project

Annex I – Description of Work

• Project work plan, which is worked out during

agreement negotiations • Whatever is promised must

be delivered (Deliverables) • A well-structured, practical and realistic Description of Work is the basis for the successful implementation of a project

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European

What does the Consortium

Agreement encompass?

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Consortium Agreement (CA)

Regulates the relation between consortium partners

Consortium Agreement P1 P2 P3 P5 P4

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European

Consortium Agreement

• A legal document that regulates the internal work of the Consortium • Implements the provisions of the Grant Agreement/programme rules • Legal basics: Grant agreement (+ Annexes)/ Participation regulations • The CA may in no way contradict the prerequisites laid out in the EU

Agreement; the latter always takes precedence!

• The CA is the main instrument to lay down the basis for efficient IP management

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Consortium Agreement – CleanSky

specific case

• Consortium agreements are available for four of the six ITDs: • ITD Smart Fixed Wing Aircraft (SFWA)

• ITD Green Regional Aircraft (GRA) • ITD Green Rotorcraft

• ITD Sustainable and Green Engines • ITD System for green operations • ITD Eco-Design

• Partners have the choice between acceding to the specific CA or using the implementation agreement

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European IPR Helpdesk

Clauses & Issues

Central Clauses

• Financial and

adminstrative

management:

• Consortium bodies • Decision-making procedures • Financial organisation

• Technical provisions

• Intellectual property

issues

• Dissemination

• Liability

Final Clauses

• Applicable Law

• Dispute resolution

= Jurisdiction

• Other: e.g.

Confidentiality,

Duration, Severability,

assignment

Preliminary Clauses

• Preamble :

• Summary of project framework • Title

• Parties

• Language

• Definitions

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STOP

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European

Vocabulary

Key terms in the context of EU-funded

projects are:

• Background

• Foreground

• Access rights

• Use

• Dissemination

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Definitions (I)

Background

Information which is held by the project partners prior to their accession to the agreement. Includes IP as copyright, patents/ patent applications (filed prior to access to agreement).

Foreground

All results which are generated under the project – whether or not protectable. Such results may include copyrights, design or patent rights, trademarks or others.

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European

Definitions (II)

Access rights

User rights (incl. licenses) to foreground or background of project partners.

Use

Utilisation (direct/indirect) of foreground in research activities, which are not part of the ITD. As well as utilisation for further development, creation and marketing of a product or process.

Dissemination

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

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Definitions in Detail

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European

Background & Foreground

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Background

• Information which is needed for the project (includes IP

rights).

• Remains the property of the project partner that brings

it into the project.

• Project partners have the right to define the background

that each of them is going to make available to the

project and / or exclude from their obligation to grant

access rights – and to withdraw background defined…

• This can be done as „

positive

“ (Art 9.1 implementation

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European

Foreground (I)

Ownership:

• Each beneficiary is the owner of the results it generates during the project.

• Personnel rights have to be taken into consideration.

Joint ownership:

• Appears for Foreground generated in common while respective parts of the partners can not be determined.

• Project partners must therefore conclude a joint ownership

agreement to deal with allocation and exercise.

• In absence of such an agreement, a default joint ownership regime applies.

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Foreground (II)

Joint ownership:

Each of the joint owners may use their joinlty used Foreground free of charge, and without requiring the prior consent of the other joint owner(s) for direct use

Default rule for licensing

- Non-exclusive licenses - No right for sub-licensing - 45-days prior notice

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European

Foreground (III)

Transfer of Ownership:

• A beneficiary may transfer ownership of its foreground.

• The other project partners should be informed about the envisaged transfer – objection possible if their access rights are not

preserved.

• Facilitated through List of „Third parties“ in annex to IA

Licensing:

• A project partner may grant non-exclusive license to third parties to exploit the jointly owned results (without any right to

sub-licence), subject to:

- the other participants shall waive their access rights

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Access Rights (I)

• Each project partner has the right to request access rights to the other project partner‘s background and foreground as long as it needs them in order to carry out its work under the project or to use its own foreground. • Shall be made in writing.

• Are to be granted throughout the duration and up to 1 year* after the end of the project for use needs (* or as otherwise agreed – IA: 2 years)

• Access rights generally do not confer the right to grant sub-licences. • BUT: SWFA/SAGE – Additional clause: sub-licensing of

background/foreground to other ITD partners (in other subprojects) if needed

• Affiliated entities may get some access rights for use purposes. Therefore

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European

Access Rights (II)

Granting of Access Rights

Project participants have to grant other partners access to their know-how, if those need the know-how in order to be able to implement the project or to use the results of the project

Access to

background Access to foreground

Project

implementation Royalty-free Royalty-free

Use of results Royalty-free, or on

fair and reasonable conditions

Royalty-free, or on fair and reasonable conditions

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Dissemination

Annex II of the Grant Agreement =

the disclosure of foreground by

any appropriate means other than

that resulting from the formalities

for protecting it, and including the

publication of foreground in any

medium.

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European

Means of Dissemination

Examples

• Press releases

• Meetings

• Newsletters

• Homepage/project website

• Scientific publications

• Workshops

• Exhibitions & conferences

• Audiovisual media

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Obligation

Project partners are obliged to

disseminate the results swiftly.

But:

No dissemination of foreground may take

place before decision is made regarding its

possible protection.

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European

STOP

The Plan for the Use and

Dissemination of Foreground (PUDF)

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PUDF – what is it?

Dissemination and exploitation activities must be reported in

detail by project participants in the PUDF.

This report, whis is a contractual deliverable, describes the

activities that beneficiaries have already carried out during the

project implementation and still expect to develop with the

purpose of allowing the dissemination and use of the

foreground at the end of the project in support of an optimal

exploitation.

Within this document beneficiaries should also envisage the

strategy for the management of intellectual property

rights, an essential step for an effective exploitation of

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European

PUDF – structure

• Part A: dissemination activities

• List of publications

• List of dissemination measures: • Website

• Information on materials produced for specific target groups

• Overview of conferences attended • Own workshops

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PUDF – structure

• Part B: exploitation

• (A) a list of all the intellectual property rights (patents, trade marks, registered designs, utility models and others) applied for (and which are under examination or have been granted) from the beginning until after the end of the project;

• (B) a list of foreground that might be exploited (i.e. that might have commercial or industrial applicability) including its description, sector of application and IP protection;

• (B.1) in addition, it is necessary to describe the strategic plans for the future exploitation of foreground, including the following elements:

• i. the purpose of the foreground;

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European

PUDF – how to deal with it

• Use the PUDF as a tool for monitoring strategies for

dissemination and exploitation during the course of

the project

• Agree on PUDF structure at the start of the Project (although this is not a contractual obligation)

• Collect relevant information regularly, both for dissemination as well as exploitation parts

• Provide templates to partners, such as “innovation sheets” in order to obtain data in a consistent format

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STOP

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European

At which stages of my project

does IP matter?

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IP in Project Life Cycle

• Strategy for securing and managing research results • Granting of access rights During Implementation • Disseminating and securing generated IP • Exploitation of the results • Valorisation of intangible values  Commercialisation

After Project End

• Proposal preparation, incl. outlining dissemination and exploitation strategies

• Defining project-related

know-how/IP protected areas

• Defining state-of-the-art/ patent search

• Negotiating a CA/NDA

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European

IP in Project Life Cycle

IPR issues are relevant at all stages of the project

Before Project Start

• Proposal preparation, incl. plan for the use and dissemination of research results • Defining project-related know-how • Defining IP protected areas • Negotiating a CA/NDA During Implementation • Strategy: Protecting and managing research results (Updating PUDF) • Granting of access rights • Managing Ownership • Dissemination • Disseminating and securing generated IP • Exploitation of the results • Valorisation of intangible values  Commercialisation

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During Implementation

Ownership of results

• All know-how gained in the project belongs to the project partner, who generated

it

• If project partners generate knowledge

jointly without being able to identify the

single contribution of each partner  joint ownership

• Handling of ownership has to be clearly

regulated by the project partners

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European

IP in Project Life Cycle

IPR issues are relevant at all stages of the project

After Project End

• Disseminating and securing generated IP • Exploitation of the results • Valorisation of intangible values  Commercialisation

• Proposal preparation, incl. plan for the use and dissemination of research results • Defining project-related know-how • Defining IP protected areas • Negotiating a CA/NDA Before Project Start

• Strategy for securing and managing research results

• Granting of access rights

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Exploitation - many options

Valorisation of intangible assets: basic options

• Developing and selling own products/services • Developing and selling products/services

by starting up a spin-off company • Making a cooperation agreement • Selling IP rights

• Selling the (IP based) business

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European

STOP

CleanSky specificities and

implications

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CleanSky specifities

• Area concerned (aviation sector)

• Specific conceptual characteristics of PPPs

• TRL of expected outcomes

• Specific partner setting

The specifities of the CleanSky concept and environment turn IPR management

into a central and challenging task

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European

EU aviation sector - characteristics

• Strong competition

• High impact sector in terms of financial and societal

aspects

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CleanSky funding instrument - conceptual

characteristics

Type of instrument Characteristic

Collaborative

research (FP7) Public private partnership Contract research

Funding body EU COM Industrial members / EU

COM Industry

Common cooperation

basis Multilateral partnership (average 6 partners +) Multilateral partnership (low average number; frequently bilateral)

Bilateral

Legal framework • FP7 GA + Annexes • Individual Consortium Agreement • GAM + GAP • implementation agreement or • Consortium agreement Individual Contractual partners

with specific rights Beneficiaries + subcontractors Members, Partners and subcontractors Research organisation or Industry + Contract SME

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European

CleanSky in the EU funding framework with a view to TRL

Source: Presentation ACARE Workshop, Torino, May 17 2012; Presenter: Roberto Bojeri, Selex Galileo

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TRLs influence direct commercialisation potential and

criticality of IPR issues

Level 3 • Precompetitive technology readiness • Combination of integrated system • Final demonstration in operational environment • _{Fully integrated} system of systems • Basic research • Validation of concepts at component or sub-system level Level 1 • RTD to higher TRLs • Technology integration and validation • Demonstration at system level Level 2 • Basic research • Breakthrough technologies • Conceptual work Level 0

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Partner setting

• Goal: publication • Using results for

future research and teaching activities • Insufficient

exploitation strategy • Lacking legal/

IPR expertise

• Goal: commercialisation of results • Application-oriented approach • Strong in-house legal/IPR expertise • Goal: keeping control over own research results • Protection of

existing know-how, that is brought into the project

• Lacking legal/IPR expertise

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STOP

Challenges of a large-scale

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European

Challenges

• Problems regarding IP management and exploitation

of project results that occur (according to our

experience) in projects in which partners from

different segments collaborate:

• Conflicts between partners regarding the handling and exploitation of project results

• Delays in the fulfillment of planned activities due to such conflicts

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Challenges

• Managerial Reasons for such problems:

• IPR issues are not taken into account from the very start of the proposal preparation, so that the projects start with unsolved IPR issues

• Lack of a detailed dissemination and exploitation strategy, that is set up and closely monitored from the very start of the project

• Lack of understanding regarding the importance of dissemination and societal aspects

• Reporting and reviewing procedures are not efficient, because they are not streamlined and/or not consequently implemented

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European

Challenges

• Strategic and knowledge-related reasons:

• Partners are not aware of the specific IPR rules in general

• Partners are involved in different funding instruments and mix up rules

• Partners see their economic interests at stake and prefer not to disclose relevant information regarding exploitation plans

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Optimisation

• Approach and solutions:

• Review implementation rules and workflows across ITDs and levels

• If necessary and possible, increase resources for grant implementation procedures including monitoring and quality assurance

• Improve information policy with regard to IP rules towards partners

• Put emphasis on IP issues

• Adapt communication and reporting procedures at all levels as necessary

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European

STOP

Ownership and handling of

deliverables

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Project example

• MAGNASENSE

• (Source: http://cordis.europa.eu/projects/rcn/103045_en.html)

• Title: Magnetostrictive sensor applications for self-sensing of composite structures

• Research area: JTI-CS-2011-1-GRA-01-035 Smart maintenance technologies

• Project start date: [2012-04-01] • Coordinator: GMI AERO SAS

• Participants:

• NATIONAL TECHNICAL UNIVERSITY OF ATHENS

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European

Project example

• MAGNASENSE

aim

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

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Project example

• MAGNASENSE

detailed objectives

• A five step development and demonstration

process is proposed, comprising of:

• (a) Identification of appropriate strain sensitive magnetic wires (Magnetostrictive Sensor MsS) to be applied to composite structures;

• (b) Development of a non-contact magnetic flux

sensor arrays for quick scanning and strain mapping of

the composite structures;

• (c) Numerical simulation of arrays of sensing elements, to couple mechanical to magnetic readings;

• (d) Development of appropriate algorithms and

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European

Project example

• MAGNASENSE

• It is assumed that the following items will

represent the main outcome and main

deliverables:

• Sensors • Software

• Prototype comprising sensors, software and further

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Combined deliverables /

demonstrators

• Typical for higher TRLs

• Demonstrators comprise different types of

components

• IP strategies relating to individual components

(software / sensor) or the demonstrator as a

whole can vary widely

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European

Combined deliverables /

demonstrators

• IP management is highly critical:

• All partners need to provide detailed

information about background to be used,

expected outcome in terms of IP and intended

use before project start

• This information needs to be included in the

CA/implementation

agreement,

the

Description of Work

• Demonstrator Deliverables usually consist of

the demonstrator itself and a report

containing technical details – include IP status

if appropriate

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