1. National Contact Points (NCP) Training
Intellectual Property issues within the Sixth Framework Programme ( )
National Contact Points (NCP) Training
October 2002
Magali POINOT
Denis DAMBOIS

2. 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), …

3. 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

4. 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

5. 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

6. 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

7. 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

8. 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

9. 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

10. 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

11. Access rights (3/3)

12. 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

13. 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

14. 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)

15. 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

16. For more information Legal framework within FP6 (provisional!)
Participation and dissemination rules :
Model contract :
IPR-Helpdesk
IPR-related links and reports
General information on FP6

17. Thank you Question time
For more information
Magali Poinot:
Denis Dambois:
Question time