National Contact Points (NCP) Training Intellectual Property issues within the Sixth Framework Programme (2002-2006) National Contact Points (NCP) Training 15-22-29 October 2002 Magali POINOT Denis DAMBOIS

Intellectual Property in FP6 What is it about? IPR provisions govern the ownership, transfer, dissemination and use of research results generated during a FP6 project When does IP matter? Preparation of the proposal: conduct patent searches to identify prior art and possible IPR-protected areas, … Negotiation: possible specific IPR provisions to be agreed (consortium agreement), practical IPR management, … Implementation of the project: protection of the results, management of resulting IPR, granting of access rights, … After the project: use/dissemination of the results (possibly by granting licenses to third parties), …

Key words Pre-existing know-how Knowledge Use Dissemination “Background” + “Sideground” Knowledge Use Commercial exploitation Utilization in further research activities Dissemination Journals, Internet, ... Access rights Licenses + User rights Legitimate interests

Objectives within FP6 projects To ensure a smooth implementation of the project necessary access rights are available To encourage the use of the knowledge protection balanced access rights system To encourage the dissemination of the knowledge … while taking the Community’s, participants’ and project’s interests into account

Main features Feedback from previous Framework Programmes Features of the new instruments Larger projects More frequent modifications of the consortium Simplification Same rules for each instrument Same rules for each participant Increased certainty of participants’ intellectual property (less broad access rights, ...) Increased emphasis on management of knowledge

Ownership Ownership of the pre-existing know-how Always remains the property of the participant concerned Ownership of the knowledge Property of the participant who generates it Joint property of several participants where generated by several participants (specific conditions to be agreed) Exceptions Specific actions for SME (Cooperative & Collective R&D projects) 100% EC-funded activities Transfer of ownership The Commission and other participants may object in exceptional cases

Protection of knowledge Requirement What has to be protected? “Knowledge that is capable of industrial and commercial application … having due regard to the legitimate interest on the participants concerned” (flexible requirement) By who? The owner of the knowledge Exceptionally the Commission, if the participant fails to do so How? By an adequate and effective protection In conformity with relevant provisions, the contract and the consortium agreement

Dissemination (publications, …) Dissemination required What may be disseminated (published, …)? any data or information concerning the knowledge … provided that dissemination/publication does not adversely affect the protection or use of the knowledge By who? Publication  the participant owning the knowledge (in cooperative / collective research : all participants) Dissemination  all participants The Commission where the participant fails to do so How? Publications  required prior approval of the Commission and the other participants, which may object

Access rights (1/3) General principles Granted on written request No sub-licensing (even for affiliate companies) Unless explicitly agreed Possible optional clause for software, allowing sub-licensing, ... Obligatory access rights between participants are limited to what they really need ... … either for carrying out the project or for using their own knowledge … but broader access rights may be freely negotiated Possible granting of access rights to third parties The Commission may object in exceptional cases

Access rights (2/3) New features Obligatory access rights are limited to participants of a same project Clear financial conditions either on royalty-free basis or on fair and non-discriminatory conditions to be agreed Possibility to exclude a specific piece of pre-existing know-how from the obligation to grant access rights Obligatory agreement of all participants concerned To be agreed before signature of the EC contract Should not concern “core” pre-existing know-how

Access rights (3/3)

Use of the knowledge Requirement What should be used? By who? How? If needed, by using pre-existing know-how as well By who? Participants owning (or having access rights to) knowledge Possibly third parties having access rights How? Commercial exploitation or further research activities In accordance with the interest of the participants concerned (flexible requirement) Terms to be set out by the participants in a detailed and verifiable manner

Innovation-related activities Intended to promote the subsequent exploitation of the results (especially in Integrated projects and Specific Targeted Research projects) Activities relating in particular to : the protection and management of knowledge and intellectual property the dissemination of the knowledge the subsequent exploitation of the results (take-up activities, …) the development of a “Plan for the use and dissemination of knowledge” Taken into account when evaluating proposals

Innovation-related measures Possibility to include “organisations that possess specific competence in management, dissemination and transfer of knowledge” in the consortia, even if they don't carry out any R&D tasks Funding of innovation-related activities : 50 % for operational activities (e.g. filing a patent application) 100 % for management activities (< ceiling !) 0 % for commercial development activities (marketing, …) 0 % for activities not necessary for the project (e.g. filing patents for inventions developed outside of the project)

Consortium agreement Regulates the internal organisation of consortium, including potential IPR issues Compulsory except otherwise mentioned in the call for proposal May not conflict with the contract Not signed nor approved by the Commission After or (preferably) before signing the contract Some decisions on IPR issues must be made by the participants – if at all – before signature of contract Non-binding guidelines published by the Commission

For more information Legal framework within FP6 (provisional!) Participation and dissemination rules : http://europa.eu.int/comm/research/fp6/pdf/rules_en.pdf Model contract : http://europa.eu.int/comm/research/fp6/working-groups/model-contract/index_en.html IPR-Helpdesk http://www.ipr-helpdesk.org IPR-related links and reports http://europa.eu.int/comm/research/area/ipr_en.html General information on FP6 http://europa.eu.int/comm/research/fp6/index_en.html

Thank you Question time For more information Magali Poinot: magali.poinot@cec.eu.int Denis Dambois: denis.dambois@cec.eu.int Question time