co-financed by the European Commission Intellectual Property Rights Helpdesk Michael Veddern, University of Muenster, Institute for Information, Telecommunications and Media Law (ITM)

Consortium Agreements IPR-regime and practical examples (Ljubljana, 30 th Nov., 2004) Michael Veddern University of Muenster (Germany) Institute for Information, Telecommunications and Media Law Title

purpose: giving support on IP issues, especially to applicants, participants, contractors in frame of FP6 (free-of-charge) co-financed by the European Community under FP5 services:  participation in events  website (  newsletter (IPR Bulletin)  daily -news service  helpline (free-of-charge) IPR-Helpdesk - Purpose and services

I.Introduction 1. Legal Framework 2. Consortium Agreement II.IPR-Regime and Consortium Agreement 1. Basic Terms 2. Ownership of Knowledge 3. Protection of Knowledge 4. Use and Dissemination of Knowledge 5. Access Rights III. Contact Table of contents

FP6 (Decision 1513/2002/EC)  The Sixth Framework Programme of the European Community Participation Rules (Regulation 2321/2002/EC)  legal framework, direct applicable and legally binding for everyone  rules for dissemination and use (Art. 21 – 28) FP6 model contract (Decision C (2003)3834)  agreement between the Commission and the participants on rights and duties  rules for dissemination and use (Annex II Art. 32 – 36)  unitary rules for all instruments and projects  exceptions: CRAFT, Software etc Consortium agreement (CA)  agreement among the partners  different models of different organisations  high flexibility Introduction - Legal framework

Consortium agreement - Why to conclude it? FP 6: duty to agree on a CA - unless otherwise specified in the calls for proposals EC Contract does not provide the whole picture - agreement on IP rights should definitely be part of the CA - internal organisation of the consortium - settlement of internal disputes pertaining to the CA - sublicensing -financial and other conditions -more favourable access rights -conditions for objecting to publication -allocation and terms for exercising joint ownership

Consortium agreement - When should it be signed? before starting negotiations: confidentiality agreement regarding all exchanged data no specific deadline: the sooner, the better where practicable, before submitting the tender at the lastest: before signing the EC contract, for: –exclusion of pekh –remuneration of pekh needed for the project –remuneration of knowledge needed for use

pre-existing know-how (pekh)  information and rights (patents, copyrights, etc.) acquired outside the project, either prior to the conclusion of the contract (background) or in parallel with it (sideground)  always remains the property of the participant concerned knowledge  results and information generated under the project, including any IP rights (patents, copyrights etc.)  foreground Basic terms - Pekh and knowledge

principle: ‘sole ownership’ of the concerned contractor  knowledge arising from work carried out under the project is exclusively owned by the partner who executed the work leading to that piece of knowledge. exception: ‘joint ownership’  knowledge from work jointly carried out by several participants / share of work cannot be ascertained (joint ownership)  every contributing partner  knowledge from Cooperative and Collective RTD Projects  SMEs or enterprise groupings Ownership of knowledge - Art. II.32 Model-Contract

applicable law/choice of law  no unitary European law, left to national legislation  difficult to ascertain in cross-border relationships  therefore: choice of applicable law and detailed rules in CA allocation of ownership => who applies for protection rights?  joint ownership, sole ownership of one partner, ownership of some partners or  foundation of a joint legal entity (Ltd., GmbH, EEIG) and transfer of ownership to the joint entity? terms of exercising ownership  usage: jointly or every partner on its own?  licences with or without consent?  responsibility and rights to prosecute IP rights infringements (jointly by all owners, on behalf of other owners, etc.)  sharing of costs and profits Joint ownership - CA: What should be ruled?

Art. II.33 EC-Model Contract  mandatory, if knowledge is ‘capable of industrial or commercial application’ and in compliance with legitimate interests of the contractors => who? owning partner/s  duty to inform Commission, if owning partner/s does not intend to protect knowledge => Commission can apply for protection rights CA: What could be ruled?  before informing Commission failing partner/s shall inform all other partners about non-applying  right of the other partners to apply for protection rights on the ground of a special agreement or after a notification  stipulation for the case that several partners are interested in a protection right application Protection of knowledge - Duty to protect

Inventions (technical solutions) Novelty Inventive Step Industrially applicable max. 20 years National Patents European Patent Community Patent (planned) PCT-application National patent offices EPO WIPO Duration of protection Subject of protection Legal requirements Instruments Competent authorities Applicationyes Protection of knowledge - Overview IP rights I PatentsCopyright Law Trade Marks Industrial Designs Original Works (Aesthetic Creations) Distinctive Signs Expression in particular form Originality Individual character Distinctive Power Graphical representative National Trade Marks European Trade Marks Intern. Registrations No registration (in principle) yes Lifetime of creator + 70 years Designs and Models (Aesthetic Creations) Novelty Originality Useful function max. 25 years National Design Patents European Design Patent Intern. Registration National Offices OHIM WIPO National Copyright Laws no National Offices OHIM WIPO

Semicon- ductors Utility models Plant Varieties Three-dimensional structure Botanical genera and species Novelty (in relation to a limited state of the art) Inventive Step Industrially applicable Independent Creation Not commonplace Distinct Uniform Stable New +/- 10 years (varying within the Member States) +/- 25 years (varying within the Member States) National Utility Models (not in UK, Luxembourg and Sweden) National semiconductor protection National Plant Variety protection European Plant Variety protection National patent officesNational offices (no application necessary: UK, Sweden) National Offices Community Office Duration of protection Subject of the protection Legal requirements Instruments Competent authorities Application yes 10 years Inventions (technical solutions) Protection of knowledge - Overview IP-rights II

Use and dissemination - Duty to use knowledge (Art. II.34 EC-Contract) obligation to use knowledge  for research purposes or  for exploitation purposes  who? owner/s of knowledge obligation to disseminate knowledge publication of knowledge by every appropriate means other than publication resulting from the formalities for protecting knowledge (e.g. patent register) within a period of two years after end of project  who? consortium attention:  dissemination shall not affect use and protection right application (“principle of novelty”)  30 days prior to any publication other partners and the Commission have to be informed => right to object duty to submit a plan for using and disseminating knowledge

Use - CA: What could be ruled? commercial or non-commercial usage different models of exploitation  every owner by its own (principle)  cross licensing / all partners mutual licensing by all partners and every partner exploits all the knowledge generated under the project  one or several partners transfer of knowledge or licence to one or several partners which exploit all knowledge  foundation of a joint exploitation company - national law (e.g. plc., Ltd., GmbH.); or - unitary European law (EEIG, Oct. 2004: Societas Europeae)  third parties transfer of knowledge ownership or licence to third parties which exploit (in compliance with Art. II.32.2 EC-Contract) sharing of costs and benefits

Access rights - General principles (Art. II.35.1 EC-Model Contract) access rights (AR)  licences and rights to use general principles  unitary rules for all partners and instruments (IP, NoE, STREP etc.)  to be granted on written request  only within same project  only where contractor is free to grant them  no sub-licensing (even for affiliates), unless otherwise agreed  only if needed for the concerned purpose (execution or use)  no possibility to restrict AR, but to grant more favourable or additional AR to partners or third parties

for the purpose of executing own work for the purpose of using own knowledge royalty-free unless otherwise agreed before signing the contract fair and non-discriminatory conditions Access rights - Overview Pre existing know-how unless excluded before signing the contract knowledge royalty-free unless otherwise agreed before signing the contract royalty-free time for request subject to legitimate interests until end of project until 2 years after end of project

Access rights - CA: What could be ruled? only before signing the project contract or entering of a new contractor!!!! - exclusion of pekh from AR  only upon “written agreement”  negative list is mandatory  positive list not sufficient, but recommendable => excluded peKH can be brought into project on basis of negotiation - fees for granting AR  to pekh for execution of own work  to knowledge for using own knowledge before or after signing the EC-Contract: - granting without a prior “written request” - “need”-clauses - more favourable or additional access rights for partners, affiliates, third parties (duty to inform Commission and right to object of Commission) - right to sublicences

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