Intellectual Property Rights in FP 5 and Consortium Agreements

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Intellectual Property Rights in FP 5and
Consortium Agreements

• European Commission

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Not legally binding
LEGAL FRAMEWORK (OVERVIEW)
EC TREATY
FRAMEWORK PROGRAMME
PARTICIPATION AND DISSEMINATION RULES
Other relevant EC Regulations
IMPLEMENTATION REGULATION
SPECIFIC PROGRAMS
CONTRACTS
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Not legally binding
Definitions of Keywords

• Pre-existing know-how
• Knowledge
• Access rights
• Legitimate interests
• Dissemination
• Use
• Exploitation

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Not legally binding
OWNERSHIP OF KNOWLEDGE
INDIRECT RTD ACTIONS Knowledge (foreground)
gained from projects partly funded by the
Community shall be the property of the
participants carrying out the work leading to
that knowledge
Where several participants have carried out the
work generating the knowledge, they shall agree
among themselves on the allocation and the terms
of exercising the ownership of the knowledge
CRAFT projects Knowledge shall be the joint
property of the SME Contractors RTD Performers
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OBLIGATIONS regarding IPR
Not legally binding

• Protection of the knowledge
• Use/Exploitation of the knowledge, or
  dissemination of it
• Establish a Technological Implementation Plan
  (TIP)

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PROTECTION OF KNOWLEDGE
Not legally binding

• The owner(s) of knowledge shall provideadequate
  and effective protection
• Choice of the appropriate manner for
  anappropriate period of time
• In conformity with the interests of theCommunity
• The terms of the protection shall appear in the
  technological implementation plan (TIP)

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Not legally binding
PROTECTION OF KNOWLEDGE

• The CASE OF PUBLICATIONS
• A participant may publish or allow the
  publication of data on whatever medium,
  concerning knowledge it owns, provided that this
  does not affect the protection of that knowledge

FIRST PROTECT THEN PUBLISH
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Not legally binding
PROTECTION OF KNOWLEDGE
CASE OF PUBLICATIONS (PROCEDURE)
The EC and the other participants shall have
prior warning of any planned publication
A copy of the planned publication shall be
communicated if they so request within 30 days as
of receiving such warning
Consortium agreements may specify the details of
such a right to object
The EC and the other participant mayobject to
publication within a new period of 30 days as of
receiving such data on the ground that, from
their point of view, it would adversely affect
the protection of the knowledge
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Not legally binding
TRANSFER OF OWNERSHIP
Where a participant transfers ownership of
knowledge to a third party, he shall take steps
or conclude agreements to pass on his obligations
(such as for the granting of the access rights)
to the assignee
ASSIGNEE
PARTICIPANT
AGREEMENT
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Not legally binding
PRINCIPLES CONCERNING THE GRANTING OF ACCESS
RIGHTS (on knowledge and pre-existing know-how)

• granted by the participants, or the RTD
  performers in the CRAFT projects, on request.
• no entitlement to grant sub-licences
• may be granted on (financial) terms more
  favourable than those provided for in the contract

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Not legally binding
On Pre-Existing Know-How (RTD Projects)
For Use
For carrying out the project
Principal Contractor
favourable conditions
favourable conditions
-
Assistant Contractor

• favourable conditions for knowledge of own
  principal contractor
• market conditions

Principal Contractor (same specific programme)
-
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Not legally binding
On Knowledge (RTD Projects)
For carrying out the project
Principal Contractor

royalty-free

• royalty-free for knowledge of own principal
  contractor
• favourable conditions

Assistant Contractor
Principal Contractor (same specific programme)
favourable conditions, subject to the owners
legitimate interests
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Not legally binding
On Knowledge (RTD Projects)
For Use


Principal Contractor

• royalty-free to all knowledge of the project
• favourable conditions to knowledge generated by
  co-contractor, but in another project, if
  necessary to use knowledge of the project

• favourable conditions for knowledgeof their
  principal contractor
• market conditions for knowledgeof other
  principal contractors

Assistant Contractor
Principal Contractor (same specific programme)
market conditions, subject to the owners
legitimate interests, for knowledge necessary to
use knowledge of the project
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Not legally binding
On Knowledge (RTD Projects)

• Specificites for Research Entities
• Participants without commercial activities may
  demand (financial) compensation for access to
  their knowledge
• Access rights for use in subsequent research may
  be conditioned to ensure that they are used only
  for the intended purpose and subjected to
  confidentiality agreements

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Not legally binding
DURATION (RTD Projects)
Source IPR Help Desk
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Access rights for use/exploitation on an
exclusive basis (NEW!)
Not legally binding

• As a rule, access rights may not be granted on an
  exclusive basis
• They may be granted if economically
  indispensable, especially taking into account
  market risks and investment required to exploit
  the knowledge.

Agreements on exclusivity must satisfy
competition rules!
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Access rights for use/exploitation on an
exclusive basis
Not legally binding

• Participants planning to grant exclusive access
  rights shall give prior notice of the relevant
  terms and conditions to the other participants
• Within 30 days of receiving the notice, the
  principal contractors may state their commitment
  to exploit the knowledge on the basis of
  non-exclusive access rights. In this case,
  exclusive access rights may not be granted

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Technological Implementation Plan (TIP)

• no later than 2 months after the end of the
  duration of the project
• to be approved by the Commission
• obligation to inform the Commission of the
  arrangements for implementing the TIP at the
  latest of the expiry of the time limits provided
  in the TIP

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Content of the Technological Implementation Plan
(TIP)

• Summary of the project to be sent by the
  co-ordinator, containing a description of the
  projects and its results along with the names of
  contractors owning the results
• Intentions/achievements regarding news of
  knowledge by each contractor individually
• protection measures
• terms of use
• extent of the Community added value
• differences with dissemination and use plan

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Not legally binding
CONSORTIUM AGREEMENT (CA)

• Recommended but not an obligation
• Objectives regarding IPR (examples)
• Identify the pre-existing know-how of each of the
  contractors
• When knowledge is generated by several
  contractors, agree on ownership and management of
  this knowledge

In any case, such a consortium agreement must be
in conformity with the European Commission
contract, which shall prevail in the event of a
conflict
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Not legally binding
CONSORTIUM AGREEMENT (CA)

• Objectives regarding project management
  (examples)
• Conflict resolution
• Decision making
• Communication
• Changes in the consortium
• Objectives regarding rights and responsibilities

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Example of Model of CA currently circulating
between FP5 projects Unified Consortium
Agreement
Not legally binding
Drawn up by

• EITIRT (European IT Industries Roundtable
  companies, e.g., Alcatel, Bull, Ericsson, Nokia)
• TNOCG (Telecom Network Operator Contract Group)
• UNITE (European University Network)
• European Research Institutes

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Not legally binding
Warning!
Unified Consortium Agreement

• is not an official document, neither drafted nor
  provided by the European Commission
• is to be considered an open text for negotiation
  between the contractors
• as with any model, it is highly recommended to
  read it carefully and in depth !