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

3. co-financed by the European Commission Intellectual Property Rights Helpdesk First IPR-Helpdesk: Launched in 1998 New IPR-Helpdesk: 2002-2004 History

4. co-financed by the European Commission Intellectual Property Rights Helpdesk RTD performers RTD results Results’ application IPR Helpdesk European Commission The IPR-Helpdesk service Role

5. Website Helpline Activities Monitoring and Info-service IPR-Helpdesk Representative Office Newsletter (IPR Bulletin) Action Lines www.ipr-helpdesk.org

6. Webseite www.ipr-helpdesk.org

7. Intellectual Property Rights Helpdesk Kontakt IPR Assistance HELP-LINE (34) 96 590 97 18 ipr-helpdesk@ua.es Info on the Helpdesk Representative Office (32) 2 649 53 33 ipr-helpdesk@global-eu.com www.ipr-helpdesk.org

8. European Research Projects and Intellectual Property Law Title

9. I.Introduction II.Ownership of knowledge 1. Intellectural Property Law 2. Employees‘ Inventions/Creations Law 3. IP-Management 4. Joint ownership III. Protection of knowledge IV. Use and dissemination V. Access rights 1. General principles 2. Exclusion of pre-existing know-how Table of contents

10. I. Participation Rules (Regulation (EC) No 2321/2002)  Direct applicable and legally binding for everyone II. Project Contract (Model Contracts)  Agreement between the Commission and the participants on rights and duties III. Consortium Agreement (CA)  Agreement among the partners  NEW! Duty to agree on a CA, unless otherwise specified in the call -Shall not affect perticipants’ obligations to the Community and to another arising out of the Regulation or the contract - Agreement on Intellectual Property Rights should definitely be part of the CA - Internal organisation of the consortium - Settlement of internal disputes, pertaining to the Consortium Agreement - etc. Introduction - Hierarchy of law

11. I.Pre-existing know-how  Information which is held by participants prior to the conclusion of the contract (background) or acquired in parallel with it (sideground) as well as any intellectual property rights (patents, copyrights etc.)  Always remains the property of the participant concerned II. Knowledge  Results and information generated under the project, including any intellectual property rights (patents, copyrights etc.)  foreground Introduction - Pre-existing know-how and knowledge

12. I. Principle: “sole ownership” The knowledge arising from work carried out under the project is exclusively owned by the partner who executes the work leading to that knowledge. II. Exception: “joint ownership”  Knowledge from Cooperative and Collective RTD Projects  SMEs or enterprise groupings  Knowledge from work jointly carried out by several participants/share of work cannot be ascertained  every contributing partner Ownership of knowledge - Ownership under FP6

13. I. National IP-Rights (e.g. national Patent Acts, Copyright Acts etc)  Doctrine of territoriality The national Intellectual Property Rights are limited to the state, where protection is applied for  Doctrine of treatment as nationals Inventions/Creations of persons who are nationals of other states are treated the same way as those of nationals II. International IP-Rights  unitary, EU-wide IP-Rights, e.g.: - Community Trade Mark - Community Design Patent - Community Plant Varieties Protection - Community Patent (planned)  unitary proceedings of granting, bundle of national IP-rights, e.g.: - World Patent (PCT) - European Patent (EPC) Applicable law - Overview IP-Law

14. II.IPR-preliminary questions (doctrine of territoriality)  no choice of law  What kind of national or international IP-Rights have to be considered?  Who is the original owner/inventor etc?  Which Employee‘s Creative/Invention Law is applicable? I. Contractual rights and duties concerning IPR  possibilities of chosing the law  Duties concerning acquisition of IP-Rights  Duties concerning applying for protection of knowledge  Duties concerning access rights  Duties concerning use and dissemination Applicable law - Choice of law

15. Inventions (technical solutions) Novelty Inventive Step Industrially applicable max. 20 years National Patents European Patent Community Patent (planned) PCT-application National patent offices European patent office WIPO Duration of protection Subject of protection Legal requirements Instruments Competent authorities Applicationyes Ownership of knowledge - Overview IP-Rights I PatentsCopyright Law Trade Marks Design Patent 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. 20 years National Design Patents European Design Patent Intern. Registration National Offices OHIM WIPO 10 years National Copyrights Laws no National Offices OHIM WIPO

16. I. Employees‘ Inventions Law  Left to national legislation, great differencies  Employer: either original owner or owner by implied cession or right to obtain rights over invention/patent within a certain period of time from contract or statutory law  Employee: Duty to inform, Right to a special compensation  Some Member States: special rules for universities (e.g. Italy: „free“ invention, Germany: Right to refuse, higher compensation) II. Employees‘ Creations Law  Largely left to national legislation (except software protection)  Moral rights are generally not transferable  economic rights transferable (great differencies) -Employer: orginial owner (e.g. UK) or automatic transfer of rights (e.g. Germany, UK, NL), software always -Employee: remain by the creator (e.g. France, Belgium, Portugal, Italy): need for special clauses in employment or separate contract -Some Member States: special legal situation for universities (e.g. Germany: „free creations“) III. External Inventions/Creations (subcontractors, doctorands, students etc):  Regularly no automatic transfer to the participant  Need for a contractual transfer of economic rights Ownership of knowledge - Employees‘ Inventions/Creations Law

17. Project Contract/CA are insufficient!!! Participants are obliged to „take steps or reach appropriate agreements to ensure that these rights can be excercised in a manner compatible with its obligations under this Regulation and the contract“  IP-Management:  Appointment of an „IPR-Manager“  Monitoring and documenting all required rights  What types of exploitations are foreseen? Scope of exploitation?  Which needed IP-Rights are already owned?  Acquisition of all further needed rights as wide as possible - from all employees and external persons/entities - on the ground of the concerned national or international IP-Law - In consideration of the envisaged exploitation  New types of exploitation planned: subsequent acquisition of additionally required IP-Rights? Ownership of knowledge - IP-Management

18. Ownership of knowledge - Joint ownership under FP6 I. Joint Ownership  Knowledge from Cooperative and Collective RTD Projects  SMEs or enterprise groupings  Knowledge from work jointly carried out by several participants/share of work cannot be ascertained  every contributing partner II. Duty to agree on  allocation of ownership  terms of exercising ownership  in accordance with regulation and contract, particularly AR III. Applicable Law?  No unitary European Law, left to national legislation  Difficult to ascertain in cross-border relationships  therefore: agreement on detailed rules in CA necessary

19. What should be ruled?  Allocation of ownership  Responsibility for the administration of IP-Rights  Determination of the partners who apply for a protection right (e.g. one partner, jointly, by territories, markets, by a joint company etc.)  Responsibility and rights to prosecute IP-Rights-infringements (jointly by all owners, on behalf of other owners etc)  Sharing-model for accruing costs (e.g. compensation costs for inventors, filling costs, maintenance costs, administration costs, prosecution costs, etc.)  Licences for other partners, affiliates, third parties  Rights to licence (jointly by all owners, every owner on its own etc.)  Types of exploitation (commercial, non-commercial etc.)  Rights to exploit (jointly by all owners, every owner on its own etc.)  Legal consequences in case of termination of participation in the contract of an owner or change of control of a owner  Arbitration court agreement, jurisdictional clause Ownership of knowledge - Consortium Agreement

20. I. Principle:  Joint protection right application by all joint owners II. Other possibilities  Protection right application by one partner/several partners which grant licences to the other partners  Foundation of an joint entity (e.g. Ltd., GmbH, EEIG etc.) and transfer of ownership to the joint entity Ownership of knowledge - Models for allocation of joint ownership

21. I. Copyrights as a whole are not transferable (only licences), but patents, utility models, trademarks etc. II. Ruled by concerned national or international law  EP: in writing and signature of parties III. Requirements under FP6 1. Duty to report the planned assignment and the assignee to the Commission and other contractors  at least 60 days in advance 2. Duty to pass on obligations under the contract to the assignee  in particular concerning AR and dissemination and use 3. Right to object  within 30 days of notification  Commission: - Transfer to entities not established in Member State or Associated State - Conflict with economic interests of the Community  Contractors  affecting to their AR Ownership of knowledge - Transfer of ownership

22. On what terms is the protection (filling of a patent etc.) of knowledge mandatory? I. Capability of industrial or commercial application II.Adequate and effective protection in regard to the legitimate interests of the contractors concerned  In principal  duty to apply for protection rights  Consideration of costs/benefits and prospects/risks –Necessity of protection (e.g. copyright protection sufficient?) –Kind of protection (e.g. patent or utility model?) –Period and extent of protection (nat. patents, EP, how many states etc?)  Limits –Excessive financial demands for the concerned partners –Damage of financial and other interests of another partner Protection of knowledge - Duty to protect

23. Protection of knowledge - If a contractor fails to do so I. Possibility to agree on a right of entry in favor of other contractors in CA  Duty to inform the consortium about non-applying  Duty to report to the consortium about interested partners  Regulations for the case that several partners are interested in a protection right application  Transfer of the right to apply in compliance with the conditions established for the transfer of ownership (see above) II. Right to entry of the Commission (Participation Rules/Contract)  Contractor does not intend to protect its knowledge in a specific country or a contractor waives the protection  Duty to inform the Commission (45 days prior to the corresponding deadline)  Commission adopts measures to protect knowledge with the agreement of the contractor  Right to refuse only where legitimate interests of the contractor will significantly impaired  Community takes on the obligations regarding AR

24. Use and dissemination - Duty to use I. Duty to use knowledge  For research purposes or  For commercial exploitation purposes II. Obligated Contractor  Owner/joint owners of knowledge concerned III. How?  Use by the owner/owners concerned  Pass on the usage to another contractor or third party by transfer of ownership (see above) by exclusive or non-exclusive licences (see below) IV. Plan for using and disseminating  “Terms of use in a detailed and verifiable manner”

25. Use and dissemination - Models of usage/exploitation I. Principle: Every partner uses/exploits only its own knowledge  Possibly other partners having access rights to use their knowledge  Access rights to knowledge and peKH of other partners, if needed for using own knowledge II. Other Possibilities  Cross licencing Mutual licencing by all partners and every partner exploits its own and foreign knowledge  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

26. Use and dissemination - Duty to disseminate I. Dissemination 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  Contractor fail to do: Commission allowed to disseminate II. Obligated Contractor  owner/joint owner of knowledge III. Conditions for publications  Permitted, if it does not affect an IP-Right application - Principle of “absolute” novelty  First apply, then publish!!! - No grace period in European Patent Law (unlike U.S.)  Procedure - Written notice of any planned publication to the Commission and partners (30 days prior) - If so requested: copy of data to Commission and/or partners (30 days after notice) - Right to object by Commission and partners, if publication affect IP-Right application (within 30 days after receipt of data) - Publication interdicted until the end of consultation period

27. Access rights - General principles I. Access Rights (AR)  licences and rights to use II. General principles  Unitary rules for all partners and instruments (IP, NoE, STREP etc.)  Only within same project  Only where contractor is free to grant them  Only upon written request  No sub-licencing (even for affiliates), if not so agreed  Only if needed for the concerned purpose (execution or use)  No possibility to restrict AR, but to grant additional AR to partners or third parties  Duty to inform about any limitations of potential AR  Confidentiality and purpose clauses (not mandatory, but reasonable)

28. 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

29. Intellectual Property Rights Helpdesk Contact IPR Assistance HELP-LINE ipr-helpdesk@ua.es Info on the Helpdesk Representative Office (32) 2 649 53 33 ipr-helpdesk@ua.es www.ipr-helpdesk.org