© 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) issues within the FP6 Model Contract 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 What is it about?  IPR provisions govern the ownership, transfer, dissemination and use of research results generated during 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), … 1 – Generalities

© 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 – Legal framework EC TREATY 6 th FRAMEWORK PROGRAMME SPECIFIC PROGRAMS PARTICIPATION AND DISSEMINATION RULES EC CONTRACT Other relevant EC Regulations (e.g. Competition rules, Financial regulations) INTERNATIONAL AGREEMENTS Consortium agreement

© 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 To ensure a smooth implementation of the project  Same rules for each instrument (+/-), same rules for each participant  Increased certainty of participants’ intellectual property  Balanced access rights system To promote the use of the knowledge  Necessary access rights are available To promote the dissemination of the knowledge … while taking the Community’s, participants’ and project’s interests into account 3 – Objectives within FP6

© 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 Pre-existing know-how  The information which is held by contractors prior to the conclusion of the contract (“Background“), or acquired in parallel with it (“Sideground“), as well as copyrights or rights pertaining to such information following applications for, or the issue of, patents, designs, plant varieties, supplementary protection certificates or similar forms of protection Knowledge  The results, including information, whether or not they can be protected, arising from the project governed by this contract, as well as copyrights or rights pertaining to such results following applications for, or the issue of patents, designs, plant varieties, supplementary protection certificates or similar forms of protection (“Foreground”) 4 – Key words (definitions)

© 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 4 – Key words (definitions) Use  The direct or indirect utilisation of knowledge in research activities or for developing, creating and marketing a product or process or for creating and providing a service (=> commercial exploitation and utilisation in further research activities) Dissemination  The disclosure of knowledge by any appropriate means other than publication resulting from the formalities for protecting knowledge Access rights  Licenses and user rights to knowledge and/or to pre-existing know-how

© 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 Pre-existing know-how  Always remains the property of the participant concerned Knowledge  Principle: property of the participant who generates it  Exceptions:  Joint property of several participant: where generated by several participants + impossibility to determine the exact contribution of the participants concerned  Always the property of the SMEs for knowledge generated within specific actions for SMEs (Co-operative & Collective RTD projects)  100% EC-funded actions (direct actions, public procurements) 5 – Ownership

© 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 Transfer of ownership of knowledge  The participant concerned shall inform the Commission and the other participants  The participant concerned shall conclude agreement(s) to pass on its obligations (e.g. access rights)  The Commission and other participants may object in exceptional cases:  case of transfer to entities established in non-Member States or non-Associated States  affecting to the rights of the other participants  affecting to the “legitimate interest” of the Community 5 – Ownership

© 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 Requirement  Principle: participant owning knowledge  Exception: the Commission if the owner fails to do so Knowledge concerned  “Knowledge that is capable of industrial and commercial application … having due regard to the legitimate interest on the participants concerned” (flexible requirement) How?  By an adequate and effective protection  In conformity with relevant provisions of the contract (and of the consortium agreement, the case being) 6 – Protection of 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 10 Requirement By who?  Participants owning (or having access rights to) knowledge  Possibly third parties having access rights How?  By commercial exploitation or utilization in further research activities  If needed, by using pre-existing know-how as well  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 7 – Use of 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 Knowledge concerned  Any data or information concerning the knowledge  Requirement for dissemination By who?  Publication: the participant owning the knowledge (in Cooperative & Collective research : all participants)  Other disseminations: 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  Provided that dissemination/publication does not adversely affect the protection or use of the knowledge 8 – Dissemination of 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 12 General principles  Granted to pre-existing know-how if free to do so  Granted on a non-exclusive basis  Granted on written request  No sub-licensing  unless explicitly agreed (e.g. in the consortium agreement)  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 9 – Access 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 13 New features  Obligatory access rights are limited to participants of a same project  Complementary contractors, Contractors of the same specific programme, …  Affiliates companies, … are considered as third parties  Clear/simplified financial conditions  royalty-free basis  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  to be explicitly agreed before signature of the EC contract or before a new participant joins the project  should not concern “core” pre-existing know-how 9 – Access 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 14 9 – Access 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 15 Period during which access rights may be requested on a mandatory basis  For carrying out the project  Both to pre-existing know-how and to knowledge  Principle: Until the end of the project (even if a participant leaves before)  Exception: If free to grant access rights to pre-existing know-how (e.g. previous commitments)  For use purposes  Both to pre-existing know-how and to knowledge  Principle: Two years after the end of the project (or end of the participation)  The participants may agree on a longer period 9 – Access 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 16 Official sources  General information on FP6  Participation and dissemination rules  Model contract contract/index_en.html 10 – 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 17 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 18 THANK YOU FOR YOUR ATTENTION ********* QUESTIONS AND ANSWERS