© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 1 Intellectual Property Rights (IPR) and Consortium Agreement within the Sixth Framework Programme Magali POINOT Representative Officer & Legal Coordinator

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 2 1- Generalities What is it about?  Agreement concluded between the participants of the same project  The Commission remains a third party For what?  Regulates or specifies participants’ obligations and rights among themselves Within which frame?  Does not affect participants’ obligations and rights  towards the Community  defined by the EC Regulation or the EC contract

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 3 2- Signature Why?  Mandatory unless otherwise provided in the call for proposal (e.g. Marie Curie actions)  EC contract does not provide the whole picture (e.g. conditions for objecting publications)  EC contract obliges participants to agree between themselves in a separate agreement (e.g. share of the EC contribution)  Some IPR rules may be derogated in a separate agreement (e.g. sublicensing)

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 4 2- Signature When?  BEFORE signature of the EC contract, if mandatory  In any cases, should be concluded as soon as possible (e.g. when submitting the proposal)  Before the signature of the EC contract concerning specific matters (e.g. exclusion of pre-existing know-how) IPR issues to be agreed before the signature of the EC contract  Exclusion of pre-existing know-how  Article II.35, paragraph 1 d)  Different conditions under which access rights are granted  Article II.35, paragraphs 2 a) and 3 a)

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 5 4 – Definitions  Affiliates companies  Definition with specific characteristics (e.g. “company owned or controlled, directly or indirectly, of at least 50% of the voting stocks or shares …”  List of affiliates concerned with possibility of updating  Necessary pre-existing know-how (for carrying out the project and for use purposes)  Definition with specific characteristics (e.g. “where technical matters are concerned technically essential “)  List of pre-existing know-how brought into the project with possibility of updating (“positive” list)  Any other needed terms

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 6 5 – Ownership Creations by personnel working for the participants  Principle: each participant has to ensure that  he owns knowledge generated by its personnel or  rights to knowledge generated by its personnel can be exercised in a manner compatible with its contractual obligations  Personnel concerned  Staff legally employed by the participants  Doctoral students, …  Personnel made available by a third party  Subcontractors

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 7 6 – Joint ownership General principles  Right in undivided shares  Any dealing is subject to consent  In insolvency, the interests may be transfered to creditors Possible derogations  Allow by the EC model contract  Trough contractual agreement  Principle of freedom (e.g. one party exercices all rights)

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 8 6 – Joint ownership Some questions to address when determining or considering joint ownership  Planning ahead for the assigning of share of the rights  Planning ahead for cost sharing  Deciding who will file for protection of the co-owned knowledge and maintain patents and other intellectual property rights in effect  Payment of fees for registration, maintaining procedures (e.g. in which country and from whose account), etc.  Responsibility for detecting and taking civil or criminal actions against third parties who in any way injure the rights conferred by the IPR  Licensing to third parties to use the invention  Consent of the co-owners for decision-making processes, etc.

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 9 7 – Protection of knowledge  Protection prevails over dissemination/publications and use  The participants may agree on the terms and periods of protection (e.g. taking over patents or similar rights taking over trade secrets) to conform with  relevant legal provisions (e.g. decision-making on where to protect or litigate and at whose costs)  applicable law  legitimate interests of the participants  Possibility to allow other participants to apply for owns’ IPR and maintaining rights in effect  Possibility to agree on the protection of the project’s acronym or domain name

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 10 8 – Use & Dissemination Use  Specify terms of use to be set up in a detailed and verifiable manner  how (e.g. commercial exploitation or utilisation in further research activities)  by who (e.g. by an Exploitation Manager)  how long  for what (e.g. a specific technical areas)  etc…  Regular updating/reporting of plan for use and disseminating knowledge Dissemination  What should be kept confidential or disseminated ( ! dissemination activities does not adversely affect the protection or use of the knowledge ! )  Specify the measures necessary to ensure publications  Allow publication of thesis To be reported in the plan for using and disseminating knowledge

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 11 9 – Access rights  Exclusion of pre-existing know-how  Explicit exclusion (“negative” list)  obligatory agreement of all participants concerned  to be agreed before signature of the EC contract or before a new participant joins the project  should not concern “core” pre-existing know-how  More favourable or additional access rights  e.g. access rights to affiliates  e.g. exclusive licenses in limited areas out of the scope of the project  Sub-licensing  Principle: not allowed unless explicitly agreed  e.g. for software, to affiliates companies

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 12 9 – Access rights  Different conditions under which access rights to pre-existing know-how for carrying out the project are granted  on financial conditions to be agreed  Different conditions under which access rights to knowledge for use purposes are granted  on financial conditions to be agreed  Access rights to knowledge for carrying out the project  on financial conditions to be agreed  Longer duration of access right for use purposes  more than 2 years after the end of the project or of participation  either to pre-existing know-how or to knowledge

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community – Confidentiality issues Generalities  Matter to make all transmitted information secure  General obligation provided in the EC contract to not reveal certain information Additional provisions  Precise information that must not be revealed  Possibility to stamp all the documents “confidential”  Exception regarding certain category of entities (e.g. subcontractors)  Retroactivity of the confidentiality provisions  Period of confidentiality must be stated in advance  Applicability of the confidentiality provisions in case of a participant withdraws from or abandons the project

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 14 Preliminary remarks  Are not official documents from the European Commission  Drafted by different organisations with a wide experience in this area  Some of them were drafted before the approval of the model contract on 17 March 2003  References to the articles of the model contract may not be updated  As a model, are indicative and should not be used as they are  Should be reviewed, revised and adapted to fit the regulation and the needs of each consortium on a case by case basis  Is the responsibility of the user to subject the contracts to legal examination 11 – Models

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 15 HELPLINE T F REPRESENTATIVE OFFICE Avenue Louise, 106 B-1050 Brussels T F – For more information

© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise, co-financed within the fifth framework programme of the European Community 16 THANK YOU FOR YOUR ATTENTION ********* QUESTIONS AND ANSWERS