European IPR Helpdesk IP in EU-funded collaborative projects European IPR Helpdesk Dr Sabine Albrecht EU IPR Helpdesk / Eurice GmbH (Saarbrücken) European

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IP in EU-funded collaborative projects European IPR HelpdeskDr Sabine AlbrechtEU IPR Helpdesk / Eurice GmbH (Saarbrcken)

European Spallation Source ESS AB /Lund, 08 May 2013

European IPR HelpdeskRoadmapGeneral Frame Rules and AgreementsSpecific Vocabulary in EU-funded coll. projectsIP in Project Life CycleIPR regime for IP exploitation in FP7In a Nutshell

European IPR HelpdeskGeneral Frame

European IPR HelpdeskSTOPKnowledge SocietyChanging business environment in the knowledge society

Business AssetsTangible Assetse. g. machinery, infrastructure, financial assetsIntangible Assetse. g. know-how, human resources, business relationships, brandsIntellectual CapitalEuropean IPR HelpdeskSABINE

1. Tangible assets / intangible assetsIn the past the value of enterprises was based on its physical capital.However, in recent years there has been an increased awareness of the existence of another type of property asset: the intangible asset: human creativity, thoughts, inventiveness. Creations of human mind

2 . Part of intangible assets in enterpriseIntangible assets = Assets which doesnt have a tangible form.Today intangible assets represents the major value of an enterprise and the most valuable assets of an organisation.(Reprendre la prsentation IPR Helpdesk qui montre limportance aujourdhui des actifs immatriels des entreprises.Today it represents more than the half of the enterprises value.

3. Intangibel assets = Intellectual capitalIntellectual capital components: Human capital: knowledge that the employee takes with him when he leaves the organisationEx. Knowledge, Know how, Competences, Skills, education, experiences and training Structural capital: Everything that remains in your organisation at the end of the workdayEx. Intellectual proerty (patents, trademarks, designs, copyreights), Trade secrets, Licences and franchises, inventions made by an organisation, in-house databases, software in-house developped, Work documents (manual processes, procedures, etc.) external publications. Market capital: external relationships of your organisationEx. Collaboration, partnerships and networks, customs list, product certificates, brand and goodwill= knowledge, know-how and innovativeness are the essence of your intellectual capital.

3. Intangible assets and intellectual propertyIntellectual property is one of the means that provide the opportunities to protect some intangible assets especially the structual capital.

4Innovation CircleGeneration of new knowledgeEU funded collaborativeRTD projectsMarketable assets/innovationEuropean IPR HelpdeskJRG / Sabine5What are the characteristics of an EU funded project?European IPR Helpdesk6Collaborative ProjectsIt is in the nature of collaborative projects that different partners with varying mindsets and interests come to sit at one table.UniversityIndustrySMEsROsEuropean IPR Helpdesk7Characteristics Goal: publicationUsing results for future research andteaching activitiesInsufficient exploitation strategyLacking legal/IPR expertise

Goal: commercialisation of resultsApplication-oriented approachStrong in-house legal/IPR expertise

Goal: keeping control over own research resultsProtection of existing know-how, that is brought into the projectLacking legal/IPR expertise

UniversityIndustrySMEsROsEuropean IPR HelpdeskStrategic Guide to Successful Use and Dissemination of the Results of R&D Projects

The very nature of a collaborative R&D project is that you will be working with other project beneficiaries or project partners. Its good to become familiar with the other participants and to understand their motivations for joining the project, their role and what their expectations are. In this way you can be sure that they are the right partners for you.8What does intellectual property mean and comprise?European IPR Helpdesk9Intellectual Property (IP) Intellectual PropertyIndustrial Property

TrademarksPatentsIndustrial DesignsLiterary & Artistic Works

CopyrightsRelated rights Databases Soft IP SecretsKnow-HowContractsEuropean IPR HelpdeskOverview and Vocabulary......

Overview on the IP CapitalIts important to keep in mind this classification:- it will allows you a better understanding of the course,- it will allows you to analyse and classify your own IP Capital

Industrial property: Technical, industrial, commercial creations

2. Literary and artistic works: esthetical and art creations,

3. Soft IP: Specific IP which is not included in the Literrary and Artistic Works and not included in industria Property, but soft IP is composed of intangible assets which have an important value for the company, and thus are important to know

10Rules and Agreements

European IPR HelpdeskSTOP11Where do I find rules regarding IP in EU funded collaborative projects?European IPR HelpdeskJRG12IP RulesProtection of IP in EU-funded collaborative projects is dealtwith in the

Grant Agreement Consortium Agreement Guide to Intellectual Property Rules for FP7 projects

Patent Law (national / european)

European IPR HelpdeskProtection of research results (when they are innovative)13Overview: Agreements

European IPR HelpdeskProtection of research results (when they are innovative)14What about the Grant Agreement? European IPR Helpdesk (2012) European IPR HelpdeskJRG15Grant Agreement (I)Relation between European Commission and ConsortiumEU CommissionP1P2P3P5P4Grant AgreementEuropean IPR Helpdesk16Grant Agreement (II) Components of the Grant Agreement

Core agreement Standard with project specifics Annex I Technical Annex/work plan Annex IIGeneral Conditions (applies to all measures) Annex IIISpecific conditions for each type of measure Annex IVForm A: Entry of partners Annex VForm B: Entry of partners after project start Annex VIForm C: Declaration of costs; specific for individual project types Annex VIIForms D&E: Auditors or Internal Assessors report for certifying costs (Certificate on Financial Statement)

European IPR Helpdesk17Grant Agreement (II)Annex II General Conditions

Reference for EU regulations on project implementation (refundable costs, reporting, payment schedule)

Answers many questions that arise during the project

The Commission must also observe these conditions

Annex I Technical Annex

Project work plan, which is worked out during agreement negotiations

Whatever is promised must be delivered (Deliverables)

A well-structured, practical and realistic Technical Annex is the basis for the successful implementation of a project

European IPR Helpdesk= Main annexes18What does the Consortium Agreement encompass? European IPR Helpdesk (2012) European IPR Helpdesk19Consortium Agreement (CA) Regulates the relation between consortium partners (= beneficiaries)

Consortium AgreementP1P2P3P5P4European IPR Helpdesk20Consortium Agreement II A legal document that regulates the internal work of the Consortium

Implements the provisions of the Grant Agreement/programme rules

Mandatory for the majority of projects

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 should be worked out during Grant Agreement negotiations at the latest

Consortia are responsible for defining the regulations; the Commission has no binding model

The coordinator works on the template

European IPR Helpdesk21Clauses & Issues Central Clauses

Financial and adminstrative management:Consortium bodiesDecision-making proceduresFinancial organisation

Technical provisions

Intellectual property issues

Liability

Final Clauses

Applicable Law

Dispute resolution = Jurisdiction

Other: e.g. Confidentiality, Duration, Severability, assignment

Preliminary Clauses

Preamble :Summary of project frameworkTitle

Parties

Language

DefinitionsEuropean IPR HelpdeskTechnical provisions: resources provided (human resources, durable equipment, IP resources)Work packages; measures in case of non-compliance with timetable

IP issues: very important: = access rights, use and dissemination provisions,

Liability: for damage caused; actions for non-compliance (incl. force majeure)

Applicable Law : Project partners can choose the law they prefer, mostly belgium law is chosen (for the EC is in Brussels)

Dispute resolution: Jurisdiction (= competent tribunals in case of conflict). Alternative Dispute resolution systems may be choosen, like e.g. mediation, arbitration 22Specific VocabularyEuropean IPR HelpdeskSTOP23VocabularyKey terms in the context of EU-funded collaborative projects are:

BackgroundForegroundAccess rightsUseDissemination

European IPR Helpdesk24Definitions (I)BackgroundInformation 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).ForegroundAll results which are generated under the project whether or not protectable. Such results mayinclude copyrights, design or patent rights, trademarks or others.

European IPR Helpdesk25Definitions (II)Access rightsUser rights (incl. licenses) to foreground or background of project partners.

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

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

European IPR HelpdeskDirect Use = done by the owner (e.g. further research / commercial or industrial exploitation in own activities). Indirect Use = done by other parties (e.g. via licensing).

26Definitions in DetailLets take a closer look!

European IPR Helpdesk27Background & Foreground

European IPR HelpdeskBeneficiary = project partner28BackgroundInformation 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.

This can be done as positive or negative list in writing and attached to the Consortium agreement.

European IPR HelpdeskDirect Use = done by the owner (e.g. further research / commercial or industrial exploitation in own activities). Indirect Use = done by other parties (e.g. via licensing).

29Foreground (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.

European IPR HelpdeskOwnership / Joint ownership = project partners may modify the ownership regime. default joint ownership = each joint owner will be free to grant non-exclusive licences to third parties, provided that it notifies the ogher joint owners and grants them fair and reasonable compensation. 30Foreground (II)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. 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 - fair and reasonable compensation to the other joint owners

European IPR HelpdeskTransfer of Ownership = no notification for transfers specially identified third parties may be agreed.

31Access Rights (I)Each project partner has the right to request access rights to the other project partners 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)

Access rights do not confer the right to grant sub-licences.

Affiliated entities may get some access rights for use purposes. Therefore they need ownership of foreground (in whole or in part).

European IPR HelpdeskProject partners may complement the provision concerning affiliates in their consortium agreeement.32Access Rights (II)Granting of Access RightsProject 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 projectAccess to backgroundAccess toforegroundProject implementationRoyalty-freeRoyalty-freeUse of resultsRoyalty-free, or on fair and reasonable conditionsRoyalty-free, or on fair and reasonable conditionsEuropean IPR HelpdeskProject partners may complement the provision concerning affiliates in their consortium agreeement.33DisseminationAnnex 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.

European IPR HelpdeskDissemination = the means through which research results are presented to the public.

Depending on project contentsUser workshop

34Means of DisseminationExamples

Press releasesMeetingsNewslettersHomepage/project websiteScientific publicationsWorkshopsExhibitions & conferencesAudiovisual media

European IPR HelpdeskDissemination = the means through which research results are presented to the public.

Depending on project contentsUser workshop

35ObligationProject partners are obliged to disseminate the results swiftly.

But: No dissemination of foreground may take place before decision is made regarding its possible protection.

European IPR Helpdeskno dissemination of foreground may take place before decision is made regarding its possible protection !!!!!

As well to share the efforts and costs connected with it. 36What is not covered..Official publications in connection with the protection of rights

Applications for patents are not covered because they are made public not until 18 months after the filing date. European IPR Helpdesk37Open Access with regard to dissemination through scientific publications:

terms and conditions to be defined in Grant Agreement(open access vs. preservati...

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