IPR in FP7

1 Support for the coherent development of policies

This document is purely provisional, and only reflects preliminary options from Commission

services (as of September 2005).

D. Dambois – DG Research

IPR in FP7IPR in FP7


General principlesGeneral principles

• As much continuity as possible with FP6• … with improvements/fine-tuning where

necessary• As much uniformity as possible between the

different (mainstream) instruments• The IPR provisions should be as “self-

sustainable” as possible, i.e. a project must be able to run effectively without (extensive) additional arrangements between the contractors

• To be covered separately : Art. 169 and 171 (JTIs)


Basic conceptsBasic concepts

Knowledge : same definition as in FP6

Pre-existing know-how (PEKH) : – Inclusion of an explicit limitation to what is

relevant for the project (as in FP5) (= no change in substance given the “need-to” limitation for access rights)

– No longer including information generated in parallel but outside the project (“sideground”) :

• No frequent need to access sideground• Problems regarding exclusion of sideground• Better leave it to contractors to negotiate if needed

– Change name to “background”– For symmetry : replace “knowledge” with

“foreground”


OwnershipOwnership

Ownership : as in FP6, each contractor is the owner of the knowledge it generates

Joint ownership(when generated jointly, or in SME actions, etc.) :Introduction of a default joint ownership regime, e.g. :

In the absence of an agreement regarding the allocation and terms of exercising the joint ownership, each of the owners shall be entitled to grant non-exclusive licenses to third parties, subject to both prior notification and to fair and reasonable compensation to the other joint owner(s).

This would facilitate exploitation of jointly owned results ; but different provisions can still be agreed by the participants concerned.


Dissemination / PublicationsDissemination / Publications

Currently (FP6) : – Overlapping provisions for dissemination vs.

publications– Requirement to notify the Commission and the other

participants before publications Intentions for FP7 :

– Improve the coherence of dissemination & publications provisions (a publication IS a dissemination activity)

– Remove the requirement to notify the Commission in respect of intentions to disseminate/publish results(while keeping the requirement to notify the other participants, which may object)


Transfer of ownership Transfer of ownership (1/2)

Notification to the Commission and other contractors

– Currently (FP6) : before any transfer of ownership(lots of notifications ; variable handling by Commission)

– Intentions for FP7 :• No notification to the Commission, only to the other

contractors (with specific exceptions : Security, …)

• Make it possible, if all contractors agree, to globally authorize transfers from a given contractor to a specifically identified third party(e.g. to its mother company)


Transfer of ownership Transfer of ownership (2/2)

If a participant does not intend to protect a piece of knowledge/foreground :

– Currently (FP6) : the Commission can take ownership (before the other participants)

– Intention for FP7 :• Where a participant does not intend to protect

foreground it has generated, it may offer to transfer it to another participant. Where there is no intention to protect the foreground concerned, its owner shall, before any dissemination thereof, inform the Commission, which may take ownership …


Access rights Access rights (1/3)

Basic principles :• Currently (FP6) : The Commission can object to

the granting of access rights, and must be notified in specific cases

• Intention for FP7 :• Remove the notification requirement• This would be a minor change, as the FP6

notification requirement only applies where any potential grant of access rights to foreground is not in accordance with the interests of developing the competitiveness of the European economy



Exclusivity :• Currently (FP6) : A contractor cannot grant (truly)

exclusive licences until 2 years after the end of the project (as other contractors may request access rights), which may be detrimental to the exploitation of results.

• Intention for FP7 :• If all participants agree, they may waive their right

to request access rights to certain foreground or background, if the owner thereof intends to grant an exclusive licence to such foreground or background.

• Need to clarify (in guidelines) that only existing foreground is concerned (cf. competition law : no future results)



Exclusion of PEKH / background :• Currently (FP6) : Only specific elements of PEKH

can be excluded from the obligation to grant access rights ; this creates problems (e.g. regarding PEKH of other departments of the same legal entity) and is not applied consistently (positive list approach)

• Intention for FP7 :•The participants may define the background

needed for the purposes of the RTD action and, where appropriate, may exclude pieces of background.

several options available to participants : (1) FP6 regime ; (2) FP6 regime limited to the department concerned ; (3) “positive list” approach ; ...


Access rights Access rights (FP6)(FP6)

Access rights topre-existing know-how

Access rights toknowledge resulting from

the project

Yes, if a participant needs them for carrying out his ownwork under the projectFor carrying

out theproject

Royalty-freeunless otherwise agreed

before signing the contractRoyalty-free

Yes, if a participant needs them for using his ownknowledge

For usepurposes

(exploitation+ furtherresearch)

On non-discriminatoryconditions to be agreed

Royalty-freeunless otherwise agreed

before signing the contract


Access rights Access rights (FP7 – (FP7 – intentionintention))

Access rights to background

Access rights to foreground resulting from

the project

Yes, if a participant needs them for carrying out his own work under the project

For carrying out the project

Royalty-free unless otherwise agreed

before signing the contract Royalty-free

Yes, if a participant needs them for using his own knowledge

For use purposes

(exploitation + further research)

Either royalty-free, or on fair and reasonable conditions to be agreed

More uniformity, more flexibility


SME-specific actionsSME-specific actions

No major change in the IPR provisionsfor “research actions for the benefit of specific groups”

Intentions for FP7 (additional provisions) :– If all owners [of foreground] agree, access rights to

foreground will be granted to a RTD performer in order to pursue further research activities, on fair and reasonable conditions to be agreed.This would promote further research.

– Where the specific group benefiting from the indirect action is an SME association and its members need access rights to use foreground, said SME association shall be entitled to sublicense to its members any access rights granted to it.This is useful for the members of SME associations.


Assistance servicesAssistance services

Many problems result from a lack of skills regarding the management of knowledge and IPR

Personalised assistance to consortia– Less-experienced FP7 participants could have access (e.g.

two days a year) to the services of specialised consultants.

IPR-Helpdesk– This existing free-of-charge service, will continue to provide

legal assistance regarding IPR issues to FP participants.

Guidelines– The existing (FP6) IPR guidelines will be revised and

expanded into a specific version for FP7.– The existing checklist for consortium agreements

should also be updated for FP7.

Documents

IPR in FP7