IPR in the consortium agreement

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IPR in the consortium agreement Brussels, 23
September 2003

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Topics - consortium agreement

• why and when to sign a consortium agreement?
• identification/exclusion of PEKH
• management of knowledge procedures
• handling of joint ownership cases (including
  sharing of protection costs)
• more favourable access rights (sublicensing, 3rd
  parties)
• handling of confidentiality/publication issues
• relations with personnel working for the
  contractors (including subcontractors)

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Legal framework

• EC Treaty Article 167
• Rules of Participation EC Regulation 2321,
  16.12.2002
• FP6 model contract Decision C(2003)799,
  17.03.2003
• Specific EC contract
• Consortium agreement
• Prior agreements
• employment contracts
• TT contracts (license agreements, )
• Statutory constraints
• competition rules
• moral rights
• jurisdiction

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FP6 principles

• Simplification equal status of participants
• Flexibility changes in consortium composition
• Autonomy
• simpler access rights regime
• no compulsory cross-project licensing
• shorter period for requesting access rights
• exclusion of background/sideground

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Key words

• Knowledge results of the project and
  intellectual property rights thereon
• Pre-Existing Know-How information and rights
  acquired outside the project, either before
  (background) or in parallel to it (sideground)
• Access Rights licenses and user rights on
  knowledge and pre-existing know-how (PEKH)
• Use includes commercial and research purposes
• Legitimate interest requires proof of
  disproportionately great harm

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Consortium agreementWhy to sign it?

• because it is mandatory (always for IP, NoE SME
  specific projects) unless otherwise provided in
  the call for proposals and for some instruments
  (SSA - Fellowships)
• because the EC contract provides flexibility
• exclusion of PEKH
• sublicensing
• financial and other conditions
• more favourable/extensive access rights
• allocation and terms of exercising joint
  ownership
• conditions for objecting to publication

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Consortium agreementMandatory

• mandatory consortium agreement
• The contractors are deemed to have concluded a
  consortium agreement regarding the internal
  operation and management of the consortium. The
  consortium agreement shall include all aspects
  necessary for the management of the consortium
  and the implementation of the project as well as
  any necessary intellectual property provisions.
  (Corrigendum)

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Consortium agreement Not mandatory

• When the consortium agreement is optional
• The consortium shall make appropriate
  arrangements for its internal operation and
  management which may include any intellectual
  property provisions. To this end, a consortium
  agreement may be established, which will cover
  any other additional aspects necessary for the
  consortium management and the implementation of
  the project.

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Consortium agreementwhen should it be signed?

• as soon as possible (at any case it may be
  amended/completed later on)
• before signing the EC contract, for
• exclusion of specific PEKH
• remuneration of PEKH needed for executing the
  project
• royalty-free access to PEKH for use of K
• remuneration of K needed for use

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Access rights (model contract)
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Consortium agreementidentification of PEKH

• PEKH should be clearly identified and, where
  appropriate, documented to
• avoid confusion with K
• avoid conflicting ownership claims
• assess each participants input to the project
• assess terms and conditions for cross-licensing
  within the project
• assess any conflicting limitation to its use

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Consortium agreement exclusion of PEKH

• PEKH not intended to be subject to access rights,
  must be
• specific (limited number of PEKH elements)
• explicitly excluded by written agreement
• before signing the EC contract (initial CA), or
• before adhesion of a new participant(CA
  amendment)

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Consortium agreementtimely reporting procedures

• timely reporting procedures (on limitations to
  AR, inventions, publications) help to
• know who invented what
• avoid duplication of efforts and increase synergy
  within the consortium
• facilitate management of (joint) ownership
• speed-up protection (first-to-file principle)
• avoid conflicting author/ownership claims
• update plan for use and dissemination of K
• assess conflicting commitments

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Consortium agreementJoint ownership

• Joint ownership raises complex issues (to be
  avoided where possible)
• assess respective share of co-owners
• what each of them can do without the others
  consent (esp. regarding licensing)
• proper decision-making procedures
• cost-sharing schemes
• appropriate dispute settlement procedures
• conflicting laws/jurisdictions may apply

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Consortium agreementgeo-financial sharing of
protection

• Consortium should agree on
• appropriate record/reporting of inventions
• decision-making on how and where to protect or
  litigate at whose cost
• options/preferences on licences and use rights
• taking-over patents or similar rights

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Consortium agreementmore favourable access
rights

• Consortium may agree on
• royalty free access to PEKH for use
• remunerated access to K for use
• remunerated access to PEKH for executing the
  project
• sublicensing and respective terms
• access rights for third parties and respective
  terms
• longer (gt 45 days) prior notice for waiving
  protection

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Consortium agreementconfidentiality

• Consortium may agree on
• what is or should be kept confidential
• appropriate marking and reporting procedures
• define the level of disclosure allowed for
  confidential data (need-to-know basis, authorised
  persons, number of copies...)
• define liability for breach
• set up written confidentiality undertakings

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Consortium agreementpublication

• Consortium may agree on
• reporting procedures for envisaged publications
• details of the right to object
• open source or similar approaches, if any
• decision-making on what and when to publish at
  whose cost
• decision-making on whether to patent before
  publishing

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Consortium agreementemployment contracts

• employment rules should be carefully screened to
  avoid conflicting IPR claims
• due to statutory rights of employees or staff
  (professors privileges, employee inventions),
  including staff without contract (Ph.D. students,
  )
• due to prior rights (successive employers,
  temporary assignments, contractual rights)
• due to authorship rights (moral rights)

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Consortium agreementsubcontracting

• subcontracting, if any, should take the following
  into account
• IPR to be held by the contractor, not the
  subcontractor
• Access rights (to other contractors) not to be
  affected
• EC contract always prevails in case of conflict
• liability and dispute settlement procedures

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To know more...

• www.cordis.lu
• www.ipr-helpdesk.org

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Any question on IPR

• Please address directly to
• A03-questions-juridiques_at_cec.eu.int
• Thank you for your attention
• Maria Francisca Brunet Company
• European Commission, RTD, Unit A3