Intellectual Property Rights Economy and Ownership of Results in IST Projects The Research Council of Norway Niels Peter Thorshaug

Where is IPR regulated? Annex II, General Conditions –Implementation and Deliverables –Termination of the Contract and Responsibility –General Financial Provisions –Controls, Recoveries and Sanctions –Intellectual Property Rights Consortium Agreement –Mandatory in most cases

5 important definitions Pre-existing know-how –information -- held by Contractors prior to the conclusion of the Contract, or acquired in parallell Knowledge –the results, whether or not they can be protected Access Rights –licenses and user rights to Knowledge or Pre-existing know-how Use –the direct or indirect utilisation of Knowledge in research or for developing, creating and marketing a product, process or a service Legitimate interest –a Contractor’s interest of any kind, must prove that failure to take account will result in proportionately great harm.

Ownership of Knowledge Knowledge shall be the property of the Contractor carrying out the work leading to that Knowledge. ==> This is the Basic Rule Where several Contractors have jointly carried out work and share of work cannot be ascertained, they shall have joint ownership. The Contractors shall agree amongst themselves terms of exercising joint ownership ==> How ? ==> Consortium Agreement If personnel working for a Contractor claim rights, the Contractor shall reach agreements to ensure rights can be exercised compatible with obligations under Contract. ==> How ? ==> Consortium Agreement

Protection of Knowledge (1) Protection of Knowledge is mandatory if it is capable of industrial/commercial application. The Owner shall provide adequate and effective protection. If this is not done, the Commission may step in and take on such obligations. If so, the participant loses its rights in it. ==> Participants (incl.Universities !) shall protect Knowledge

Protection of Knowledge (2) A contractor may publish Knowledge it owns, if this does not affect the protection of that Knowledge. The Commission and the other contractors shall be given 30 days prior written notice. If they request, a copy of this data shall be communicated to them within 30 days after receipt of such notice. They may object within 30 days after receipt of the data Publication shall be suspended until end of consultation period In the absence of any objection within the above- mentioned period, it is deemed that they agree ==> Frequently a cause for strain in projects !

Use and Dissemination of Knowledge The contractors shall use Knowledge which they own in accordance with their interests Plan for use and dissemination shall be set up If dissemination would not adversely affect protection or use, contractors shall disseminate within two years after end of project. Should the contractors fail to do so, the Commission may disseminate Knowledge provided they take account of: –the need to safeguard IPR –the benefits of swift dissemination –confidentiality –the Legitimate interests of the contractors ==> Due concern paid to commercial interests

What does Ownership mean? Ownership versus Access Rights

Access Rights, General Principles (1) Access Rights only when other contractors need it –either to carry out its own work under the project –or to use its own Knowledge Access Rights shall be granted upon written request Access Rights to Pre-existing know-how shall be granted provided that the contractor is free to grant them.

Access Rights, General Principles (2) The granting of Access Rights may be made conditional on specific agreements ensuring that they are used only for the intended purposes and confidentiality Contractors may conclude agreements with the purpose of granting additional or more favourable Access Rights The Commission may object to the grant of Access Rights to third Parties (only exceptional cases)

FP6 System of Access Rights Access rights to pre-existing know-how Access rights to knowledge If a contractor needs them for carrying out its own work under the project For carrying out the project Royalty-free unless otherwise agreed before signing contract Royalty-free If a contractor needs them for using its own knowledge For use (exploitation + further research) Non-discriminatory conditions to be agreed Royalty-free unless otherwise agreed before signing contract Possibility for participants to agree on exclusion of specific pre-existing know- how before signature of the contract (or before entry of a new participant)

Incompatible or Restrictive Commitments Contractors shall be informed as soon as possible by the contractor required to grant Access Rights of any limitations to the granting of Access Rights or of any restriction which might substantially affect the granting of Access Rights ==> Important, may lead to serious conflicts in projects

Rules have been simplified Same rules apply to all Instruments (IP, NoE, STREP, etc.) Same rules apply to all classes of Participants (all are Contractors) (With some exceptions for CRAFT / Collaborative / Cooperative R&D) Subcontractors have no IPR rights

Participants’ IPR are better protected (1) May explicitely exclude specific Pre-existing know- how from obligation to grant Access Rights, by: –Written agreement between participants –Done before signing the contract with the Commission, or in advance of a new participant joining the project –The other participants may only withhold their agreement to this if they can demonstrate that the implementation of the project, or their Legitimate interests will be impaired significantly thereby

Participants’ IPR are better protected (2) Access Rights to Knowledge for use purposes only when other contractors need it for exploitation of their own Knowledge –Under 5th FP partners enjoyed Access Rights to all Knowledge for use purposes, even if they did not need it in order to exploit their own Knowledge No Access Rights for participants in other projects –Under 5th FP principal contractors enjoyed Access Rights to Knowledge from other projects under the same specific programme, even though this was on specific terms (favourable/market conditions)

More room for negotiations among participants Exclusion of Pre-existing know-how May negotiate requesting fees for the granting of Access Rights to –Pre-existing know-how for carrying out the project –Knowledge for use ==> Provided this is done before signing of Contract or before a new Participant joins But, may also decide to give each other more favourable conditions for Access Rights to either Pre-existing Know-how or Knowledge than General Conditions specify

Universities/Public research bodies subject to the same Access Rights rules 5th FP: Univ (et al) could grant Access Rights to the other participants, on reasonable financial terms No more ! If Knowledge will be owned by Univ (et al), and a participant needs Access Rights to this for using its own Knowledge, then Univ (et al) will have to grant access royalty-free. However, if Univ (et al) do negotiate and agree with the other participants otherwise before the signing of the Contract, then financial returns are possible

Final Advice Understand the Access Rights System From every angle Long before you sign the contract ==> Then you can safeguard your own particular interest

FP6 System of Access Rights Access rights to pre-existing know-how Access rights to knowledge If a contractor needs them for carrying out its own work under the project For carrying out the project Royalty-free unless otherwise agreed before signing contract Royalty-free If a contractor needs them for using its own knowledge For use (exploitation + further research) Non-discriminatory conditions to be agreed Royalty-free unless otherwise agreed before signing contract Possibility for participants to agree on exclusion of specific pre-existing know- how before signature of the contract (or before entry of a new participant)