© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community

1© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community

Intellectual Property Rights (IPR)Intellectual Property Rights (IPR)

and and

Consortium AgreementConsortium Agreement

within thewithin the

Sixth Framework ProgrammeSixth Framework Programme

Magali POINOTMagali POINOT

Representative Officer & Legal CoordinatorRepresentative Officer & Legal Coordinator

[email protected]@ua.es


1- Generalities1- Generalities

What is it about?

Agreement concluded between the participants of the same project The Commission remains a third party

For what?

Regulates or specifies participants’ obligations and rights among themselves

Within which frame?

Does not affect participants’ obligations and rights towards the Community defined by the EC Regulation or the EC contract


2- Signature2- Signature

Why?

Mandatory unless otherwise provided in the call for proposal (e.g. Marie Curie actions)

EC contract does not provide the whole picture (e.g. conditions for objecting publications)

EC contract obliges participants to agree between themselves in a separate agreement (e.g. share of the EC contribution)

Some IPR rules may be derogated in a separate agreement (e.g. sublicensing)


2- Signature2- Signature

When?

BEFORE signature of the EC contract, if mandatory

In any cases, should be concluded as soon as possible (e.g. when submitting the proposal)

Before the signature of the EC contract concerning specific matters (e.g. exclusion of pre-existing know-how)

IPR issues to be agreed before the signature of the EC contract

Exclusion of pre-existing know-how Article II.35, paragraph 1 d)

Different conditions under which access rights are granted Article II.35, paragraphs 2 a) and 3 a)


44 – – Definitions Definitions

Affiliates companies Definition with specific characteristics (e.g. “company owned or controlled, directly or indirectly, of at least 50% of the voting stocks or shares …” List of affiliates concerned with possibility of updating

Necessary pre-existing know-how (for carrying out the project and for use purposes)

Definition with specific characteristics (e.g. “where technical matters are concerned technically essential “) List of pre-existing know-how brought into the project with possibility of updating (“positive” list)

Any other needed terms


55 – Ownership – Ownership

Creations by personnel working for the participants

Principle: each participant has to ensure that he owns knowledge generated by its personnel or rights to knowledge generated by its personnel can be exercised in a manner compatible with its contractual obligations

Personnel concerned Staff legally employed by the participants Doctoral students, … Personnel made available by a third party Subcontractors


66 – – Joint oJoint ownershipwnership

General principles

Right in undivided shares Any dealing is subject to consent In insolvency, the interests may be transfered to creditors

Possible derogations

Allow by the EC model contract Trough contractual agreement Principle of freedom (e.g. one party exercices all rights)


66 – – Joint oJoint ownershipwnership

Some questions to address when determining or considering joint ownership

Planning ahead for the assigning of share of the rights

Planning ahead for cost sharing

Deciding who will file for protection of the co-owned knowledge and maintain patents and other intellectual property rights in effect

Payment of fees for registration, maintaining procedures (e.g. in which country and from whose account), etc.

Responsibility for detecting and taking civil or criminal actions against third parties who in any way injure the rights conferred by the IPR

Licensing to third parties to use the invention

Consent of the co-owners for decision-making processes, etc.


77 – – Protection of knowledgeProtection of knowledge

Protection prevails over dissemination/publications and use

The participants may agree on the terms and periods of protection (e.g. taking over patents or similar rights taking over trade secrets) to conform with

relevant legal provisions (e.g. decision-making on where to protect or litigate and at whose costs) applicable law legitimate interests of the participants

Possibility to allow other participants to apply for owns’ IPR and maintaining rights in effect

Possibility to agree on the protection of the project’s acronym or domain name


88 – – Use & DisseminationUse & DisseminationUse

Specify terms of use to be set up in a detailed and verifiable manner

how (e.g. commercial exploitation or utilisation in further research activities) by who (e.g. by an Exploitation Manager) how long for what (e.g. a specific technical areas) etc…

Regular updating/reporting of plan for use and disseminating knowledge

Dissemination

What should be kept confidential or disseminated ( ! dissemination activities does not adversely affect the protection or use of the knowledge ! ) Specify the measures necessary to ensure publications Allow publication of thesis

To be reported in the plan for using and disseminating knowledge


99 – – Access rightsAccess rights

Exclusion of pre-existing know-how Explicit exclusion (“negative” list) obligatory agreement of all participants concerned to be agreed before signature of the EC contract or before a new participant joins the project should not concern “core” pre-existing know-how

More favourable or additional access rights e.g. access rights to affiliates e.g. exclusive licenses in limited areas out of the scope of the project

Sub-licensing Principle: not allowed unless explicitly agreed e.g. for software, to affiliates companies


99 – – Access rightsAccess rights

Different conditions under which access rights to pre-existing know-how for carrying out the project are granted

on financial conditions to be agreed

Different conditions under which access rights to knowledge for use purposes are granted

on financial conditions to be agreed

Access rights to knowledge for carrying out the project on financial conditions to be agreed

Longer duration of access right for use purposes more than 2 years after the end of the project or of participation either to pre-existing know-how or to knowledge


1010 – – Confidentiality issuesConfidentiality issues

Generalities

Matter to make all transmitted information secure General obligation provided in the EC contract to not reveal certain information

Additional provisions

Precise information that must not be revealed Possibility to stamp all the documents “confidential” Exception regarding certain category of entities (e.g. subcontractors)

Retroactivity of the confidentiality provisions Period of confidentiality must be stated in advance Applicability of the confidentiality provisions in case of a participant withdraws from or abandons the project


Preliminary remarks

Are not official documents from the European Commission Drafted by different organisations with a wide experience in this area

Some of them were drafted before the approval of the model contract on 17 March 2003 References to the articles of the model contract may not be updated

As a model, are indicative and should not be used as they are Should be reviewed, revised and adapted to fit the regulation and the needs of each consortium on a case by case basis

Is the responsibility of the user to subject the contracts to legal examination

1111 – – ModelsModels


HELPLINE

T. +34 96 590 97 18

F. +34 96 590 97 15

E-mail: [email protected]

REPRESENTATIVE OFFICE

Avenue Louise, 106

B-1050 Brussels

T. +32 2 649 53 33

F. +32 2 647 59 34

http://www.ipr-helpdesk.org

1212 – For more information – For more information


THANK YOUTHANK YOUFOR YOUR ATTENTIONFOR YOUR ATTENTION

******************

QUESTIONS AND ANSWERSQUESTIONS AND ANSWERS

Documents

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community