Project Number: FP7-SME-2013-605371 Project Acronym ... on... · Self-repairable Zinc-free Weldable Anti-corrosion Primer for the Steel protection. Deliverable D8.3 Report on the

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Project Number: FP7-SME-2013-605371

Project Acronym: WELDAPRIME

Self-repairable Zinc-free Weldable Anti-corrosion Primer for the Steel protection.

Deliverable D8.3

Report on the deployed IP protection strategy

Start date of the project: 1st February 2014 Duration: 3 years Organisation name or lead contractor for this deliverable: CCE

Project co-funded by the European Commission within the 7th FP (2007-2013)

Dissemination Level

PU Public √

RE Restricted to a group specified by the

consortium (including the Commission

Services)

CO Confidential, only for members of the

consortium (including the Commission

Services)

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Content Summary .................................................................................................................................................... 3

1 Introduction ........................................................................................................................................... 5

2 Description of the WELDAPRIME technology ............................................................................... 5

3 Description of the exploitable results of the project .................................................................... 6

4 Foreground ownership ..................................................................................................................... 12

5 Analysis of the potential IPR protection tools ............................................................................. 13

5.1 Patents ........................................................................................................................................... 15

5.2 Trademark .................................................................................................................................... 18

5.3 Copyright ...................................................................................................................................... 19

6 Conclusions .......................................................................................................................................... 19

ANNEX 1 - INM background IP : EP1068372B1

ANNEX 2 – Patent Search

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Summary

The WeldaPrime project proposes an innovative approach for a zinc free corrosion

protection primer with an optimum thickness and affordable cost, offering durable

corrosion protection, resistant to mechanical damage and weldable without zinc fumes.

The objective of this report is to present the developed IP and how this IP will be

protected and exploited. However, further details on the exploitation of the project results

will also be described in Deliverable 8.5.

Due to the approach taken by the project partners, to reduce the risks of the project, of

developing two primers independently this deliverable was postponed. This extra time

allowed that a decision, regarding IP, was taken after the partners agreed on the final

WeldaPrime primer formulation.

It is also important to point out that this is a public deliverable so it was decided that some

confidential information is placed in the final PUDF and not in this deliverable.

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List of Participants

Project Partner Organisation Type /Country

EUROPEAN FEDERATION FOR WELDING JOINING AND CUTTING AISBL EWF

SME Association/ Grouping Belgium

CROATIAN CHAMBER OF ECONOMY CCE

SME Association/ Grouping Croatia

FEDERACION VIZCAINA DE EMPRESAS DEL METAL FVEM

SME Association/ Grouping Spain

THE BRITISH COATINGS FEDERATION LIMITED LBG BCF

SME Association/ Grouping United Kingdom

LOUFAKIS CHEMICALS SA LOUFAKIS

Other enterprises or end-users Greece

TALLERES DE SOLDADURA Y MECANIZADO TSMSL

Other enterprises or end-users Spain

THOMAS SWAN & CO LIMITED THOMAS SWAN

Other enterprises or end-users United Kingdom

TWI LIMITED TWI

RTD Performer United Kingdom

L'UREDERRA, FUNDACION PARA EL DESARROLLO TECNOLOGICO Y SOCIAL LUREDERRA

RTD Performer Spain

LEIBNIZ-INSTITUT FUER NEUE MATERIALIEN GEMEINNUETZIGE GMBH INM

RTD Performer Germany

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1 Introduction This report will describe all the steps and analysis carried out by the WeldaPrime consortium for the identification of the correct and better IP protection strategy. However, due to the public nature of this report (as described in the Grant Agreement) some relevant aspect of the developed IP will be discussed in greater detail in Deliverable 8.5 – PUDF.

2 Description of the WELDAPRIME technology The overall WeldaPrime project aim is to provide the European steel fabrication industry

with an enabling technology that allows the steel to be protected with a new, high

performance primer coating. The specific advantage of the WeldaPrime primer over

state-of-the-art primers is the delivery of high levels of corrosion protection

simultaneously with good weldability, without the use of zinc. This zinc-free weldable

primer will offer the following capabilities sought in weldable primers:

• Good anticorrosion properties, offering excellent adhesion to substrate to minimise undercut, long term protection (lasting 1- 2 years or more under Atmospheric Corrosivity Category 3 - medium: interior, high humidity, some air pollution; exterior, urban inland or mild coastal) and an ability to continue to provide protection following accidental breach such as scratches

• Good arc weldability without further treatments (e.g. grinding and cleaning), preserving a stable arc strike; adaptable to automatic welding processes and allowing high quality welded joints to be generated

• Good compatibility with overcoating

• Good deposition compatibility and thickness control (e.g. using airless spray)

• Cost effective as a preconstruction primer represents only 1% to 2% of the final cost of a steel assembly, cost is normally not a major issue; however the overall cost must remain within the same range, i.e. <€10/l

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3 Description of the exploitable results of the project The project exploitable results are 5, as described on the tables bellow, nevertheless the

main focus of the exploitation will be related to the combination of these results, this will

be better explained in the following section.

Nº

Description

Participant: EWF

Type of Exploitation

Remuneration (€)

1 Raw material composition for durable anti-corrosion (non-zinc)

LICENSING 130,000.00

2 Raw material composition for welding nature, over coating ability, good adhesion

LICENSING 50,000.00

3 Formulation of the overall WeldaPrime

OWNERSHIP 85,000.00

4 Coating application optimised procedure in difficult areas

LICENSING 35,000.00

5 Welding procedure guidelines for good quality weld on a weldable primer

OWNERSHIP 197,500.00

Nº

Description

Participant: CCE


Remuneration (€)


LICENSING 80,000.00




LICENSING 90,000.00


LICENSING 35,000.00


LICENSING 92,015.00

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Nº

Description

Participant: FVEM


Remuneration (€)


LICENSING 60,000.00


LICENSING 40,000.00


LICENSING 90,000.00




LICENSING 110,000.00

Nº

Description

Participant: BCF


Remuneration (€)




LICENSING 78,000.00


LICENSING 90,000.00


LICENSING 55,000.00


LICENSING 80,000.00

As explained previously the SME-AGs partners, owners of the products have agreed on

an equal share of the project results to be divided by all. This include EWF, CCE, FVEM

and BCF. This will be confirmed in the possible patent application or applications or/and

in the Licensing Agreement

However, and due to the developments carried out in the WeldaPrime project, two main

exploitable results were identified:

- WeldaPrime formulation - Use of specific nanoparticle to improve arc stability, which, due to the

public nature of this deliverable we will name as “nanoparticle X” (more details are given in the Final PUDF)

These two exploitable results derive from the combination of different results as they

were defined in the DoW. The following sections give an overview on how the results, as

defined in the DoW, are combined into the final WeldaPrime results.

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3.1 WELDAPRIME Formulation

The main project results is the final WeldaPrime formulation, which is a combination of

all the projects results, like shown in Figure 1.

Figure 1 - Final WeldaPrime Results and relation with results presented in the DoW

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3.2 Use of “Nanoparticle X” in primers

While the WeldaPrime final formulation is considered the “main” result of the project,

during its development and due to the fact that the partners decided to develop two

possible formulations, another possible exploitable result, related to the use of a

nanoparticle, for increasing the arc stability was also identified. This use of a

“nanoparticle X” in primers also derived from several project results as they were

identified in the DoW. This is better explained in Figure 2.

Figure 2 - Relation between the project results, as they were presented in the DoW, and the possible exploitable use of "nanoparticle X" in weldable primers

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However, despite not being the main project result it was identified as a possible

exploitable result since its potential for exploitation of its use is even larger than the

possible exploitation of the final formulation. Despite more research and validation is

required (which will also influence a patent application) to prove the benefit, in terms of

arc stability, of “Nanoparticle X” the consortium believes that the potential market would

be even bigger that the one for the formulation since, even existing competitors, could

add it to their own formulation.

3.3 Support for the use of the WELDAPRIME Primer in Industry

Another project result that was “combined” is related to result 4 and 5, that will be

protected by copyright, but given to industry free of charge. By doing so it will facilitate

the uptake of the WeldaPrime primer by industry.

Figure 3 - Relation between the project results, as they were presented in the DoW, and the necessary material to support industry in the implementation of the WeldaPrime primer

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3.4 Summary of WELDAPRIME exploitable results

To summarize what was presented in previous sections the following diagram shows the

main project results, how they will be protected and their potential market exploitation.

Figure 4 - Diagram of the final exploitable results

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4 Foreground ownership

As provided for under grant agreement no. FP7-SME-2013-605371- WeldaPrime in the

‘Description of Work’, the (SME-AGs) SME- association/groupings partners, which

comprise of EWF, CCE, FVEM and BCF will retain full rights of ownership, dissemination

and exploitation of all project results generated within the WeldaPrime project.

Furthermore, the consortium agreed after the DOW was drawn up, that there should be

joint-ownership of the WeldaPrime’s IPR between EWF, CCE, FVEM and BCF. This will

be formalised and drawn up in a co-operation agreement between EWF, CCE, FVEM

and BCF setting out a certain percentage share each. Furthermore, the Consortium

Agreement states that “the Parties hereby acknowledge and agree that all of the

Foreground resulting from the work carried out during this Project will be owned by the

SME-AG Participants”. However, this document is not binding in relation to the European

Commission, whilst the Description of Work is.

As there was no joint-ownership agreement in place at the start of the project, combined

with the fact that the WeldaPrime results have the potential to provide a cost effective

tool for SMEs to reduce their workers exposure to Zinc and to reduce their manufacturing

costs when using the WeldaPrime Primer. EWF, CCE, FVEM and BCF have agreed to

have an equal share of exploitation results so that the results can be updated and

disseminated widely beyond the life time of this project in order to enable our association

members and affected companies to use them. This is better explained in the final PUDF.

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5 Analysis of the potential IPR protection tools

IPR are legally enforceable rights over the use of inventions or other creative works.

They confer a right to exclude others from their use.

IPR is of utmost importance as it is about protecting the skills and knowledge of WeldaPrime (during and after the project). Protection of foreground can be achieved through several IPR protection tools:

- Patent o Title providing the inventor and/or the applicant with the exclusive right to

prevent others from possessing, using, selling, manufacturing and importing the patented invention or offering to do any of these things within a defined geographical area

o Patents may be granted for any invention concerned with the functional and technical aspects of products and processes. To qualify for patent protection the invention must fulfil the so-called conditions of patentability:

▪ Novelty ▪ Inventive step (non-obviousness) ▪ Industrial Applicability (utility) ▪ Patentable subject matter

- Utility Model

o It is a title of protection for certain inventions, such as inventions in the mechanical field. Utility models are usually sought for technically less complex inventions or for inventions that have a short commercial life and normally do not meet the patentability criteria.

o The requirements for acquiring a utility model are less stringent than for patents. While the “novelty” requirement must always be met, that of “inventive step” or “non-obviousness” may be much less or even absent altogether.

o In the EU only 17 countries provide registration process. The latter is often significantly simpler and faster taking – on average – six months. Finally, utility models much cheaper to obtain and to maintain.

o Duration of protection: between 6 and 10 years, without renewal

- Industrial Design o It refers to the right granted in many countries to protect the original,

ornamental and non-functional features of a product that result from design activity. The right concerns merely the appearance (the “design”) of a product, not the product itself. It allows the owner to exclude others from making, importing, selling, hiring or offering articles for sale in which the design is embodied.

o It may be granted for visual features of a product (i.e. shape, ornamentation, pattern, configuration, etc.). Designs that are dictated solely by the article’s function are excluded from protection.

o To qualify for protection the design must show: ▪ Novelty ▪ Individual character

o Duration of protection: up to 25 years, without renewal

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- Trademark

o It is a sign, or a combination of signs, used in the trade to identify and distinguish the goods or services of one entreprise from those of another. A trademark owner is granted exclusive rights to:

▪ Use the mark in relation to the goods or services with respect to which it is registered

▪ Prevent others from using a substantially identical or deceptively similar mark in relation to the goods or services registered by the mark

o Trademark can protect words, letters, numerals, pictures, shapes and colours, as well as any combination of the above.

o It is now allowed for the registration of less traditional forms of trademark, such as three-dimensional signs (like the Coca-Cola bottle), audible signs (sounds, Nokia jingle), or olfactory signals (smells, such as perfumes)

o Trademark normally perform four main functions: ▪ Distinguishing the products or services of one enterprise from

those of other enterprises ▪ Referring to a particular enterprise which offers the products or

services on the market ▪ Referring to a particular quality of the product or service for which

it is used ▪ Promoting the marketing and sale of products, and the marketing

and rendering of services o Duration of the protection: 10 years, renewable indefinitely

- Copyright

o Relates to literary and artistic creation, such as poems, novels, music and paintings, but also includes cinematographic works, architectural works, sculptures, TV and radio broadcast and many others

Figure 5 gives a general overview of the different IP routes investigated.

Figure 5 - Possible IP routes

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Based on the previous mentioned IPR protection tools EWF, CCE, FVEM and BCF (owners of the developed IP) considered the following IP protection tools:

5.1 Patents

EWF, CCE, FVEM and BCF are consulted an expert in IPR for legal advice. The partners

also approached the EC IPR Helpdesk for support.

In order to evaluate the possibility of applying for a patent as a way of protecting the

results of the WeldaPrime project a search of existing patents was carried out. Based on

the search it was clear to see that there is a possibility of patenting the WeldaPrime

results due to their novelty.

However, and adding to the initial patent search, in order to better evaluate the need of

having a patent in place to protect the developed IP, the consortium carried out an NPA

(Network Patent Analysis) which is presented in Annex 2 of Deliverable 8.5 - PUDF. The

reason why the consortium decided to include the NPA results in D8.5 is related to the

fact that this deliverable is considered as Public, while D8.5 is Confidential. Considering

that to carry out the NPA it was necessary to identify keywords related to the primer

formulation it was decided to keep the NPA confidential and so it is not included in this

deliverable.

While the results are presented in Error! Reference source not found. of Deliverable 8

.5 the main conclusion, after analysing the existing patents, that the consortium was able

to achieve was that there is no existing patent that could jeopardize or act as a barrier to

the exploitation of the WeldaPrime project results.

Note: In Annex 2 of this deliverable a better explanation of the purpose and how a NPA

works is given.

Following the NPA the partners evaluated all the possibilities related to patent

application.

The novelty of the development results in the project would come from the combination

of corrosion protection, weldability and arc stability at the same time.

In this direction two nanoparticles were tested as functional additives in sol-gel-derived

coatings. Coating formulations that contain only SiO2 are already covered by INM

background IP (EP1068372B1 – Annex I of this deliverable), which is not a barrier for

exploitation since this is covered in the background IP in the Consortium Agreement.

The “Nanoparticle X” was intended to act on the arc stability because of its lower work

function, but only low concentrations (1 wt.-%) turned out to be acceptable in the coating

in order not to negatively influence the corrosion protection effect. Unfortunately the

effect on the arc stability could not be proven perfectly and further time consuming

systematic investigation would be necessary to decide whether we would achieve a

sufficient inventive step or not. If the result of the bigger investigation would turn out that

“Nanoparticle X” has almost no effect on arc stability then one would have to consider

“Nanoparticle X” only as a further additive in the basic formulation covered by

EP1068372B1 (no sufficient inventive step). If “Nanoparticle X” would lead to a proven

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effect on the arc stability (sufficient inventive step) one could try to file a patent which

would combine the formulation with the process and the substrate. The formulation and

the process will be published when the patent application will be laid open (18 months

after filing) and everybody in the world could try to copy this approach and there would

be almost no way to keep control over this.

A more clever approach to circumvent both - the uncertainty in the arc stability effect and

the publishing of details of the procedure - would be that the WeldaPrime SMEs just use

the formulation and the secret know-how of the process as it was optimized during the

project (and is describe in the other project deliverables), like it is common standard for

SME paint companies worldwide (They also don’t file patents but use their secret know-

how to exist on the market – this was validated in the NPA). The benefit of the

WeldaPrime SMEs against their competitors would be that they would use the secret

know-how from the project concerning the process, that could not be copied even if a

competitor would try to analyse the WeldaPrime coating on a steel part. The steps taken

when evaluating the need for a patent for the full WeldaPrime formulation is presented

in the scheme in Figure 6.

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Figure 6 - Scheme of the need or not of applying for a patent for the WeldaPrime formulation

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For these reasons it was decided and agreed by the consortium not to file a patent at

this time to cover the main formulation. However, and after the end of the project, the

SME-AGs and the RTDs will carry out some of the work extra to the one started in the

WeldaPrime project to see if it is possible to patent the use of “Nanoparticle” in weldable

primers.

5.2 Trademark

The WeldaPrime partners have agreed in looking into the trademarking the logo

WeldaPrime. The idea behind this Trademark is to take advantage of all the

dissemination done during the project duration. An evaluation to see if the logo

WeldaPrime could be trademarked has been carried out. In order for a sign to be eligible

for a trademark protection it must:

- Be distinctive - Not be deceptive - Not be descriptive - Not belong to the exclusions provided by the law - Be in conformity with public order and morality

The partners evaluated that the WeldaPrime logo is in agreement with all the previous

mentioned topics. Since a trademark protection lasts or 10 years this will allow a good

time frame for the implementation of the product in the market, associated with the name

WeldaPrime, which, in case of success, can be renewed indefinitely. The SME-AGs have

also agreed that if a trademark is submitted it will be done at the European Level with

the possibility of also being done at the European level.

Some more research was done at the class in which the Trademark will be submitted

will be in CLASS 2 (Paints) that covers: Paints, varnishes, lacquers; preservatives

against rust and against deterioration of wood; colorants; mordants; raw natural resins;

metals in foil and powder form for painters, decorators, printers and artists. Explanatory

Note: This class includes mainly paints, colorants and preparations used for the

protection against corrosion. Includes, in particular: paints, varnishes and lacquers for

industry, handicrafts and arts; dyestuffs for clothing; colorants for foodstuffs and

beverages.

The partners will look into applying for the Trademark during 2018.

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5.3 Copyright

The partners looked into copyrighting results number 4 and 5:

• Coating application optimised procedure in difficult areas

• Welding procedure guidelines for good quality weld on a weldable primer

This will be done by EWF, that every year carries out an application of its documents

and these extra documents will be added to the application process, by doing so the cost

of this copyright will be reduced.

Despite protecting these documents with copyright, it was clear to the consortium that

these two results were crucial for the implementation of the WeldaPrime primer in

industry (despite the fact that it was proven during the project that the developed primer

could be welded and sprayed with a normal procedure).

6 Conclusions Based on the research carried during the entire project duration, the SME-AGs (owners

of the results) identified three possible options:

• Patents

• Trademark

• Copyright

While Trademark and Copyright will be IP protection that will be put in place in a near

future by the SME-AGs the possible application of a patent still requires some more

research, mainly related to the use and benefits of “Nanoparticle X”. For the full

WeldaPrime Formulation it was clear that no patent is required or that it would be

beneficial to the project partners. So the consortium as decided to keep it as a trade

secret.

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ANNEX 1 - INM background IP : EP1068372B1

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ANNEX 2 – Patent Search

The consortium have engaged patent search in order to identify any “gaps” in terms of

IP to increase the impact of the IP generated by the WeldaPrime project.

There are a multitude of primers commercially available but to date none have the

characteristics that we are aiming for in the WeldaPrime project. This limits the uptake

of weldable primers by industry, not only because of safety reasons but also because of

the properties achieved.

The consortium have engaged in a patent search, whose finding reinforce this statement,

see Annex II of the Final PUDF. We have carried out an analysis of patents related to

primers for steel applications.

Conventional patent searches are based around the use of key words, including

company names, and Patent Classification Codes [PCCs] on various patent databases

such as those available at the Espacenet and the USPTO websites. The problem with

using these approaches alone is that links between patents in different, though still highly

relevant technology sectors are often missed through the inappropriate choice of key

words or PCCs. To identify key patents relevant to the research carried out in the

WeldaPrime, the consortium will look into using a combination of keywords and PCC

searches with powerful citation analysis algorithms. This patents search includes

searching citations to background patents, scientific literature, etc. These are backward

citations. Within two to three years, important patents will be cited in turn by other

applicants and, importantly, the experts in the technology sector concerned who are the

patent examiners. These are forward citations. In general (of course there are exceptions

but surprisingly few), the more a patent is cited, and the more important it is or has been

in the development of a particular technology sector.

The partners will look into using Network Patent Analysis, like for example

www.amberscope.com, to correctly identify the “best patent” to be submitted. The correct

usage of the Network Patent Analysis depends heavily of the already done patent

search, Annex II. However, a closer research will be necessary closer to the end of the

project.

http://www.amberscope.com/

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Figure 7 - Search result obtained in the Network Patent Analysis found at www.amberscope.com

This Network Patent Analysis allowed the consortium to evaluate the following topics:

- Viability of Future Patent Applications – By looking into existing patents the partners were able to identify any possible barriers to the exploitation of the WeldaPrime primer but also to identify how the existing “competitors” protect their IP;

- Identified Project Results with Potential IP Value - By evaluating existing patents the partners will also be able to evaluate the best way of protecting the project results and outcomes.

Documents

Project Number: FP7-SME-2013-605371 Project Acronym ... on... · Self-repairable Zinc-free Weldable Anti-corrosion Primer for the Steel protection. Deliverable D8.3 Report on the