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European IPR
Helpdesk
IP in EU-funded projects
Get your ticket to innovation.
Donata Folesani
European IPR Helpdesk Ambassador
Italy
Roadmap
• Setting the scene
European
IPR
Helpdesk
• Setting the scene
• Rules and Agreements
• Specific Vocabulary
• IP in project life cycle
European
IPR
Helpdesk
STOP
IP/IPR issues in EU-funded projects
General Frame
Innovation Circle
Generation of
new knowledge
Marketable
assets/
innovation
European
IPR
Helpdesk
new knowledge
EU funded
collaborative
RTD projects
innovation
Collaborative Projects
It is in the nature of collaborative projects that different partners
with varying mindsets and interests come to sit at one table.
European
IPR
Helpdesk
University
IndustrySMEs
ROs
European
IPR
Helpdesk
STOP
Rules and Agreements
European
IPR
Helpdesk
Where are the rules regarding
IP in Horizon 2020 to be found?
Intellectual Property rules
The IP rules in Horizon 2020 can be found
in:
(i) the Rules for Participation: Regulation n.
European
IPR
Helpdesk
(i) the Rules for Participation: Regulation n.
1290/2013 artt. 41-49)
(ii) the (model) Grant Agreement
(iii) the applicable work programme
(iv) H2020 Online Manual: IP section is a work
in progress
How to find: Participant Portal
http://ec.europa.eu/research/participants/docs/h2020-
funding-guide/cross-cutting-issues/intellectual-
property_en.htm
Intellectual Property rules
1 2 3
Rules for Participation: Regulation n. 1290/2013 artt. 41-49
applicable Work Programme
GRANT AGREEMENT
European
IPR
Helpdesk
1 2 3Project EndBefore Project
Start
Grant Preparation
& Project
Implementation
Letter of intent
NDA
CONSORTIUM
AGREEMENT
Licensing
agreement
Sale and purchase
agreement
Consortium Agreement (CA)
Regulates the relation between consortium partners
Grant Agreement (GA)
European
IPR
Helpdesk
Regulates the relation between consortium partners
(= beneficiaries)
Consorti
um
Agreeme
nt
P
1
P
2
P
3
P
5
P
4
Relation between European Commission and Consortium
EU
Commissi
on
P
1
P
2
P
3
P
5P
4
Grant
Agreement
DOCUMENTO
FIRMA
QUANDO
PARTI
CHI
CONTENUTP
COSA
Grant
Agreement
Al termine della
negoziazione
Beneficiari e
Commissione
Europea
Sancisce o diritti e gli obblighi dei
beneficiari nei confronti della UE
le regole di PI non sono
negoziabili
European
IPR
Helpdesk
negoziabili
Consortium
Agreement
Durante la negoziazione
Coordinatore di
Progetto
e
gli altri beneficiari
stabilisce le basi giuridiche per la
suddivisione dei diritti, obblighi e
responsabilità tra I beneficiari
le regole di PI devono essere
concordate tra i partner
Consortium Agreement
• A legal document that regulates the internal work of the Consortium
• Mandatory for the majority of projects
• Legal basics: Grant agreement (+ Annexes)/ RfP
European
IPR
Helpdesk
• Legal basics: Grant agreement (+ Annexes)/ RfP
• Implements the provisions of the Grant Agreement/programme rules
• May in no way contradict the prerequisites laid out in the EU Agreement/programme rules;
the latter always take precedence!
• The CA should be worked out during the “time to grant” at the latest ; be prepared!
• Consortia are responsible for set up the governing rules;
the Commission has no binding model, but… see participant portal
• DESCA (Development of a Simplified Consortium Agreement) model;
Different options/modules, i.e. related to software development
IPCA - ICT industry; EUCAR – Automotive industry
Consortium Agreement - models
http://www.desca-2020.eu/
Software industry
European
IPR
Helpdesk
Software industry
http://www.digitaleurope.org/Services/H2020ModelConsortiumAgr
eement.aspx
Automotive industry
http://www.eucar.be/
Publications&Documents Miscellaneous
Consortium Agreement – IPR section
An example from http://www.desca-2020.eu/
Section 1: Definitions
Section 2: Purpose
Section 3: Entry into force, duration and termination
Section 4: Responsibilities of Parties
European
IPR
Helpdesk
Section 4: Responsibilities of Parties
Section 5: Liability towards each other
Section 6: Governance structure
Governance structure for Medium and Large Projects
Section 7: Financial provisions
Section 8: Results
Section 9: Access Rights
Section 10: Non-disclosure of information
Section 11: Miscellaneous
Section 12: Signatures
[Attachment 1: Background included]
[Attachment 2: Accession document]
[Attachment 3: List of Third Parties for simplified transfer according to Section 8.2.2.]
[OPTION: Attachment 4: Identified Affiliated Entities according to Section 9.5]
[Module GOV SP]
[MODULE IPR SC]
Specific Software provisions
Grant Agreement – IPR section
European
IPR
Helpdesk
http://ec.europa.eu/research/participants/data/ref/h2020/grant
s_manual/amga/h2020-amga_en.pdf#page=177
European
IPR
Helpdesk
STOP
Specific Vocabulary
Vocabulary
Key terms in the context of Horizon 2020 projects are:
• Background
European
IPR
Helpdesk
• Background
• Results
• Exploitation
• Dissemination
• Access rights
Definitions (I)
Background
Tangible or intangible input (data, knowhow, information) which is held by
the project partners prior to their accession to the agreement. Includes IP as
copyright, patents/ patent applications (filed prior to access to agreement).
European
IPR
Helpdesk
copyright, patents/ patent applications (filed prior to access to agreement).
Examples: prototypes; cell lines; database rights, licences with the right to
sublicense
Project partners must identify their background in writing
Results
All results which are generated under the project – whether or
not protectable. Such results may include copyrights, design
or patent rights, trademarks or others, and belong to the
partners who have generated them.
Definitions (II)
Access rights
User rights (incl. licenses) to foreground or background of project partners.
Exploitation
European
IPR
Helpdesk
Exploitation
Utilisation (direct/indirect) of results in research activities, which are not
part of the project, as well as utilisation for further development, creation
and marketing of a product or process.
Dissemination
Means trough which research results are
presented to the public. Official publications
(e.g. patent applications) are not considered
as dissemination.
European
IPR
Helpdesk
STOP
IP in Project Life Cycle
IP in project life cycle
1 2 3
European
IPR
Helpdesk
1 2 3Project EndBefore Project
Start
Grant Preparation
& Project
Implementation
1. Before Project Start
What to bear in mind…
Become familiar with the relevant IP provisions of your specific call
Define your own background, i.e. consider existing knowledge, know-
how, IP that you will bring to the project - bear in mind potential rights
of third parties that may be needed for the project
European
IPR
Helpdesk
of third parties that may be needed for the project
Think about confidentiality issues when drafting, discussing and
negotiating your ideas and project contribution with others
Assess the state-of-the-art
Have a clear plan concerning the dissemination and exploitation of
project results
Think about a project name and acronym
Include costs for potential IP protection in your budget planning
Before Project Start
Every project starts with an idea …
• Define the state of the art
• Search in patent databases & documents (i.e.
European
IPR
Helpdesk
• Search in patent databases & documents (i.e.
Espacenet; Assistance: EEN, CoC, PATLIB centres)
• Protect technical drawings (e.g. by copyright)
• Protect all information linked to the idea: Make use
of Confidentiality Agreements
• Beware of Third Parties’ IPR infringement
(checking acronyms against registered Trade Marks)
contact your legal/patent department as early
as possible!
Before project start
Exploitation and dissemination planning
• Convincing outline of exploitation
European
IPR
Helpdesk
• Convincing outline of exploitation
strategies on individual/consortium level
• IP-exploitation issues are subject to evaluation
regarding impact and implementation. Relevant
bodies/competences within the consortium should
demonstrate the potential of addressing IP management
properly
• Include relevant activities/deliverables: PEDR,
Innovation-related workshops, Market Analysis,
Business Plans, Risk-Analysis, Freedom-to-Operate
analysis, Specific contracts/agreements
Exploitation and Dissemination Plan
Beneficiaries have an obligation to define the expected results and their strategy for
exploitation and dissemination.
Hence the following information must be included:
European
IPR
Helpdesk
Hence the following information must be included:
• A list of results the expected that might be exploited (i.e. with commercial or
industrial applicability) including their:
description
sector of application, and
protection measures
• A list of all the means through which they intend to bring the results to the public
knowledge
• A potential/expected impact – quantifiable – in terms of marketability and
research advancement
2. Grant preparation – implementation
What to bear in mind…
Re-read the IP-related provisions provided in the Grant Agreement
Specify and agree on central IP arrangements as part of a comprehensive and
elaborated Consortium Agreement
European
IPR
Helpdesk
elaborated Consortium Agreement
Install efficient knowledge management for your project
Grant access rights to your background and results
Manage the ownership and transfer of ownership of your results
Protect your project results
Start disseminating your results taking into account confidentiality obligations
Constantly review and update the plan for the dissemination and exploitation of
results
Be prepared to handle internal conflicts and disputes within your consortium
During implementation
Secure and manage research results
European
IPR
Helpdesk
• Have a clear strategy for securing and
managing newly generated knowledge
• Continuously update the exploitation and
dissemination strategy plan (and PEDR)
• Monitor regularly relevant external
factors affecting your exploitation
potential (other projects, publications,
patents, markets, competing technologies,
standards, norms, etc.)
During implementation
Access Rights (I)
• Each project partner has the right to request access rights to the other project
partner‘s background and results as long as it needs them in order to carry out
its work under the project or to use its own results (these are minimum access
rights).
European
IPR
Helpdesk
rights).
• Shall be made in writing.
• To avoid conflicts, it is recommended that beneficiaries agree (e.g. in the
consortium agreement) on a common interpretation of what is “needed”
• Are to be requested/granted throughout the duration and up to 1 year (or as
otherwise agreed in the CA) after the end of the project for exploitation needs;
Once requested, access rights may be exercised as long as they are needed for
exploiting the results (e.g. until the background patent expires).
• Access rights do not confer the right to grant sub-licences.
Access Rights (II)
Granting of Access Rights
Access to Access to
European
IPR
Helpdesk
Access to
background
Access to
foreground
Project
implementation
Royalty-free Royalty-free
Use of results Royalty-free, or on
fair and reasonable
conditions
Royalty-free, or on
fair and reasonable
conditions
During implementation
Results ownership
generally the grant agreement establishes that the results of the
project belong to the participant generating them
The simplicity only apparent: many ownership conflicts may arise when
European
IPR
Helpdesk
The simplicity only apparent: many ownership conflicts may arise when
running the project and might become a potential problem for participants
In order to avoid them, it is advisable:
to take appropriate measures to properly manage ownership issues, such as
keeping laboratory books or other kinds of documentary evidence (e.g. a
properly completed Invention Disclosure Form*), which can be used to
clearly demonstrate who generated a given result
*An Invention Disclosure Form is a document to be completed by the
creators of a particular IP setting out the details of its development, as well
as details on how it is distinguished from the state of the art.
During implementation
Results ownership
Joint Ownership
collaborative nature of most projects
some results can be jointly developed by several participants
European
IPR
Helpdesk
some results can be jointly developed by several participants
In Horizon 2020, results automatically jointly owned if:
- they have been jointly generated by two or more participants
- it is not possible to:
establish the respective contribution of each beneficiary, or
separate them for the purpose of applying for, obtaining or maintaining their
protection
During implementation
Results ownership
Joint Ownership
best practice: to regulate in the consortium agreement the rules among the
consortium partners concerning possible jointly owned results
European
IPR
Helpdesk
However, since CA entered into force before the launch of the project and
the creation of the results
participants should establish during the project implementation
a separate joint ownership agreement,
defining in concrete terms the allocation and terms of exercising their
ownership
During implementation
Results ownership
Joint ownership agreement
Important clauses to include in the joint ownership agreement:
European
IPR
Helpdesk
specific conditions for granting licences;
criteria or principles for ‘fair and reasonable compensation’ to be
provided to the other joint owners, if a non-exclusive licence is granted
to a third party(if appropriate)
how disputes will be settled;
how the ownership is divided;
if and how the joint results will be protected, including issues related to
the cost of protection or to the sharing of revenues or profits;
how the joint results will be exploited and disseminated.
During implementation
Transfer of results
Participants have the possibility of transferring the ownership of their results
to other parties
requirements established in their grant agreement:
European
IPR
Helpdesk
requirements established in their grant agreement:
the transfer should be done through an agreement (preferably in written form), since
beneficiaries must ensure that the obligations of the participant(s) under the grant agreement
are passed on to the new owner and that this owner has the obligation to pass them on in any
subsequent transfer;
prior notice is given, at least 45 days before the intended transfer, to the other consortium
partners that still have (or still may request) access rights to the results, with sufficient
information about the new owner. The right to prior notice can be waived in the case of
transfers to a specifically identified third party, which is usually done through the consortium
agreement;
if established in the grant agreement, participants are bound to formally request
authorisation from the European Commission in advance, in cases of foreseen transfers to third
parties established in a non-EU country not associated with Horizon 2020
During implementation
Results protection
IP protection is vital for a prospective commercial or industrial exploitation
on the other hand it is not always mandatory
Each beneficiary must examine the possibility of protecting its results and must
European
IPR
Helpdesk
Each beneficiary must examine the possibility of protecting its results and must
adequately protect them — for an appropriate period and with appropriate territorial
coverage — if:
(a) the results can reasonably be expected to be commercially or industrially
exploited and
(b) protecting them is possible, reasonable and justified (given the circumstances).
When deciding on protection, the beneficiary must consider its own interests and the
interests (especially commercial) of the other beneficiaries.
Protection by subject matters
Subject Matter Patent Utility Model
Industrial
Design
Copyright
Trade
Mark
Confidential
Information
Invention (e.g. device,
process, method1)
X X X
European
IPR
Helpdesk
process, method1)
X X X
Software X2 X X X
Scientific article X
Design of a product X X X
Name of a
technology/product
X
Know How X X X
Website X X X X
[1] Except methods exculded from patentability by virtue of Articles 52(2)(c) and (3) and 53(c) EPC.
[2] Software patentability is still a debated issue given its exculsion as subject matter as by Article 52(2)(c) and (3) EPC.
Protection by IPR
IPR What for? Registration?
Patent New inventions Registration is required
Utility model
Registration is required, but conditions are less
European
IPR
Helpdesk
Utility model New inventions
Registration is required, but conditions are less
stringent than for patentability
Trade Marks Distinctive signs Registration is required
Industrial Design Appearance of products
Registration is usually required, but it is
possible to acquire an unregistered design right
Copyright
Literary, artistic and scientific
works
Not required, but it can be registered in some
countries
Confidentiality
Confidential business
information/trade secrets
Not required, but internal protection measures
needed (i.e. NDAs)
Always use IPR symbols, such as © for copyright, ™ and ® for trademarks, or any other equivalent indicating that it is protected by one or more different IPR
3. Project end and beyond
What to bear in mind…
Exploit your project results and valorize your IP
European
IPR
Helpdesk
Disseminate your project results
Have a conclusive report on the dissemination and exploitation of
project results ready
Be aware of post-project obligations concerning IPR provisions
General obligation to exploit
Each beneficiary must — up to four years after the project completion
take measures aiming to ensure ‘exploitation’ of its results (either directly
European
IPR
Helpdesk
take measures aiming to ensure ‘exploitation’ of its results (either directly
or indirectly, in particular through transfer or licensing by:
(a) using them in further research activities (outside the action);
(b) developing, creating or marketing a product or process;
(c) creating and providing a service, or
(d) using them in standardisation activities.
Transfer/Licensing of results (I)
Each beneficiary may transfer ownership of its results.
A beneficiary that intends to transfer owners hip of results must give at least
European
IPR
Helpdesk
A beneficiary that intends to transfer owners hip of results must give at least
45 days advance notice to the other beneficiaries that still have (or still may
request) access rights to the results.
Unless agreed otherwise (in writing), any other beneficiary may object within
30 days of receiving notification, if it can show that the transfer would
adversely affect its access rights.
In this case, the transfer may not take place until agreement has been
reached between the beneficiaries concerned.
Transfer/Licensing of results (II)
Each beneficiary may grant licences to its results. Exclusive licences for
results may be granted only if all the other beneficiaries concerned have
waived their access rights.
European
IPR
Helpdesk
A beneficiary that intends to transfer ownership or grant an exclusive
licence must formally notify the EC before the intended transfer or licensing
takes place and:
• identify the specific results concerned;
• describe in detail the new owner or licensee and the planned or potential
exploitation of the results, and
• include a reasoned assessment of the likely impact of the transfer or
licence on EU competitiveness and its consistency with ethical principles
and security considerations.
Transfer/Licensing of results (III)
The EC may – up to 4 years after project completion – object to a transfer
of ownership or exclusive licensing of results, if:
European
IPR
Helpdesk
of ownership or exclusive licensing of results, if:
(a) it is to a third party established in a non-EU country not associated with
Horizon 2020 and
(b) the EC considers that the transfer or licence is not in line with EU
interests regarding competitiveness or is inconsistent with ethical
principles or security considerations
Routes for exploitation
Basic options
• Use for further research
European
IPR
Helpdesk
• Developing and selling own products/services
• Spin-Off activities
• Cooperation agreement/Joint Ventures
• Selling IP rights/Selling the (IP based) business
• Licensing IP rights (out-licensing)
• Standardisation activities (new standards/on-
going procedures)
Obligations to disseminate
Project partners are obliged to disseminate the results swiftly
(i.e. to scientific community/broader public) by any appropriate
means other than that resulting from the formalities for protecting it
or exploiting the results, and including the publication of results in
European
IPR
Helpdesk
or exploiting the results, and including the publication of results in
any medium.
But:
• no dissemination of results may take place before decision is
made regarding their possible protection, and
• all patent applications, publications or any other dissemination
(also in electronic form) shall include a statement that the
action received financial support from the Union – The same
applies to results incorporated in standardisation activities.
Dissemination checklist
• Take a decision about the protection of foreground and all required steps
• Inform the other consortium partners in writing 45 days before the planned
European
IPR
Helpdesk
• Inform the other consortium partners in writing 45 days before the planned
dissemination activities and include enough information to allow them to
analyse whether their interests are affected or not. Note that this time limit
can be changed (for more or less days) in the CA. Wait 30 days for any
objection to the dissemination (unless otherwise agreed in the CA).
• Beware not to infringe third parties' intellectual property rights
• Open access as a general principle of scientific dissemination
• List the dissemination activities in the Exploitation and Dissemination Plan
Open Access (I)
OA = online access at no charge to the end-user (plus
further distribution and proper archiving)
to peer-reviewed scientific publications
European
IPR
Helpdesk
to peer-reviewed scientific publications
to research data
However, open access:
is not an obligation to publish: only if publishing is the chosen
dissemination route
does not interfere with the decision to exploit research results
commercially e.g. patenting: discussion on open access comes after
the decision to protect
publications are not of a lower quality: they go through the same peer
review process as other publications
Open Access (II)
Why open access?
To optimise the impact of publicly-funded research
European
IPR
Helpdesk
To optimise the impact of publicly-funded research
Expected benefits:
• Better and more efficient science Science 2.0
• Economic growth Innovation Union
• Broader, faster, more transparent and equal access for the benefit
of researchers, industry and citizens Responsible Research and
Innovation
Dissemination:
Research
results
publication 'Green' open access
Open Access (III)
European
IPR
Helpdesk
Decision on IP
protection
(patenting or
other forms of
protection)
publication
Exploitation:
Research results
commercialisation
Open
access
'Green' open access
'Gold' open access
Research
results
Open Access (IV)
The European Commission has published guidelines on
Open Access to Scientific Publications and Research Data
European
IPR
Helpdesk
Open Access to Scientific Publications and Research Data
in Horizon 2020, that can be downloaded at:
http://ec.europa.eu/research/participants/data/ref/h202
0/grants_manual/hi/oa_pilot/h2020-hi-oa-pilot-
guide_en.pdf
Costs reimbursements
• Costs of intellectual property rights (IPR), including
protecting results (e.g. fees paid to the patent office for
European
IPR
Helpdesk
protecting results (e.g. fees paid to the patent office for
patent registration) and royalties on access rights are
eligible costs
• Cost for open access publications are also considered
eligible by the GA, e.g. Author Processing Charges
(APCs)
Further information
Fact sheets
• IP management in Horizon 2020: project proposal
European
IPR
Helpdesk
• IP management in Horizon 2020: grant preparation
• IP management in Horizon 2020: project implementation and
conclusion
• Open access in Horizon 2020: FAQs
• Publishing v. patenting
• Exploitation channels for public research results and series on
commercialising IP
Check www.iprhelpdesk.eu/library !
Helpline
Awareness Raising
Website
European
IPR
Helpdesk
Services
Bulletin
Newsletter
Training
Helpline
Publications All of our services are
offered free of
charge.
Grazie
Con l’augurio di essere contattati da voi!
Donata Folesani
European IPR Helpdesk Ambassador, Italia
ASTER, Via Gobetti 101 40129 Bologna
European
IPR
Helpdesk
ASTER, Via Gobetti 101 40129 Bologna
tel +39 051 6398099
donata.folesani@aster.it
Per domande e consulenza di carattere generale potete
contattare l’Helpline team:
service@iprhelpdesk.eu
Tel +352 25 22 33-333 (Helpline)
Fax + 352 25 22 33-334 (Helpline)
www.iprhelpdesk.eu
Per domande relative alle attività formative,
inviate una email a: training@iprhelpdesk.eu
Photo credits
istockphoto.com
© istockphoto.com/Maridav
© istockphoto.com/Bliznetsov
© istockphoto.com/RTimages
© istockphoto.com/Daniel Laflor
© istockphoto.com/Pavel Bolotov
© istockphoto.com/Lise Gagne
© istockphoto.com/Alex Slobodkin
© istockphoto.com/YanC
© European Union 2014
European
IPR
Helpdesk
Disclaimer/Legal Notice
The information and advice contained in this presentation is not intended to be comprehensive and attendants are advised to seek independent professional advice
before acting upon them. The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained in
this presentation for non-commercial purposes is authorised and free of charge, provided the source is acknowledged. The use of images – other than in the mere
reproduction of this presentation – is prohibited. The European IPR Helpdesk is not responsible for any impact or adverse effects on third parties connected with the use
or re-use made of the information contained in this presentation.
The European IPR Helpdesk is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises(EASME), with policy guidance provided
by the European Commission’s Enterprise & Industry Directorate-General. Even though this presentation has been developed with EU funding, the positions expressed are
those of the authors and do not necessarily reflect the views of the European Commission or of the EASME.
© istockphoto.com/Daniel Laflor
© istockphoto.com/Zeffss1
© istockphoto.com/Agata Malchrowicz
© istockphoto.com/Joseph Weber
© istockphoto.com/Danijela Pavlovic Markovic
© istockphoto.com/Yuri_Arcurs
© istockphoto.com/rzdeb
© istockphoto.com/Sean Locke
© istockphoto.com/Artsem Martysiuk
© istockphoto.com/José Carlos Pires Pereira
© istockphoto.com/YanC
© istockphoto.com/hudiemm
© istockphoto.com/Dave White
Others
© Boggie, ScoutMedia

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Proprietà intellettuale (IP) nei progetti finanziati dalla UE - Seminario Aster 21/10/14

  • 1. European IPR Helpdesk IP in EU-funded projects Get your ticket to innovation. Donata Folesani European IPR Helpdesk Ambassador Italy
  • 2. Roadmap • Setting the scene European IPR Helpdesk • Setting the scene • Rules and Agreements • Specific Vocabulary • IP in project life cycle
  • 3. European IPR Helpdesk STOP IP/IPR issues in EU-funded projects General Frame
  • 4. Innovation Circle Generation of new knowledge Marketable assets/ innovation European IPR Helpdesk new knowledge EU funded collaborative RTD projects innovation
  • 5. Collaborative Projects It is in the nature of collaborative projects that different partners with varying mindsets and interests come to sit at one table. European IPR Helpdesk University IndustrySMEs ROs
  • 7. European IPR Helpdesk Where are the rules regarding IP in Horizon 2020 to be found?
  • 8. Intellectual Property rules The IP rules in Horizon 2020 can be found in: (i) the Rules for Participation: Regulation n. European IPR Helpdesk (i) the Rules for Participation: Regulation n. 1290/2013 artt. 41-49) (ii) the (model) Grant Agreement (iii) the applicable work programme (iv) H2020 Online Manual: IP section is a work in progress How to find: Participant Portal http://ec.europa.eu/research/participants/docs/h2020- funding-guide/cross-cutting-issues/intellectual- property_en.htm
  • 9. Intellectual Property rules 1 2 3 Rules for Participation: Regulation n. 1290/2013 artt. 41-49 applicable Work Programme GRANT AGREEMENT European IPR Helpdesk 1 2 3Project EndBefore Project Start Grant Preparation & Project Implementation Letter of intent NDA CONSORTIUM AGREEMENT Licensing agreement Sale and purchase agreement
  • 10. Consortium Agreement (CA) Regulates the relation between consortium partners Grant Agreement (GA) European IPR Helpdesk Regulates the relation between consortium partners (= beneficiaries) Consorti um Agreeme nt P 1 P 2 P 3 P 5 P 4 Relation between European Commission and Consortium EU Commissi on P 1 P 2 P 3 P 5P 4 Grant Agreement
  • 11. DOCUMENTO FIRMA QUANDO PARTI CHI CONTENUTP COSA Grant Agreement Al termine della negoziazione Beneficiari e Commissione Europea Sancisce o diritti e gli obblighi dei beneficiari nei confronti della UE le regole di PI non sono negoziabili European IPR Helpdesk negoziabili Consortium Agreement Durante la negoziazione Coordinatore di Progetto e gli altri beneficiari stabilisce le basi giuridiche per la suddivisione dei diritti, obblighi e responsabilità tra I beneficiari le regole di PI devono essere concordate tra i partner
  • 12. Consortium Agreement • A legal document that regulates the internal work of the Consortium • Mandatory for the majority of projects • Legal basics: Grant agreement (+ Annexes)/ RfP European IPR Helpdesk • Legal basics: Grant agreement (+ Annexes)/ RfP • Implements the provisions of the Grant Agreement/programme rules • May in no way contradict the prerequisites laid out in the EU Agreement/programme rules; the latter always take precedence! • The CA should be worked out during the “time to grant” at the latest ; be prepared! • Consortia are responsible for set up the governing rules; the Commission has no binding model, but… see participant portal • DESCA (Development of a Simplified Consortium Agreement) model; Different options/modules, i.e. related to software development IPCA - ICT industry; EUCAR – Automotive industry
  • 13. Consortium Agreement - models http://www.desca-2020.eu/ Software industry European IPR Helpdesk Software industry http://www.digitaleurope.org/Services/H2020ModelConsortiumAgr eement.aspx Automotive industry http://www.eucar.be/ Publications&Documents Miscellaneous
  • 14. Consortium Agreement – IPR section An example from http://www.desca-2020.eu/ Section 1: Definitions Section 2: Purpose Section 3: Entry into force, duration and termination Section 4: Responsibilities of Parties European IPR Helpdesk Section 4: Responsibilities of Parties Section 5: Liability towards each other Section 6: Governance structure Governance structure for Medium and Large Projects Section 7: Financial provisions Section 8: Results Section 9: Access Rights Section 10: Non-disclosure of information Section 11: Miscellaneous Section 12: Signatures [Attachment 1: Background included] [Attachment 2: Accession document] [Attachment 3: List of Third Parties for simplified transfer according to Section 8.2.2.] [OPTION: Attachment 4: Identified Affiliated Entities according to Section 9.5] [Module GOV SP] [MODULE IPR SC] Specific Software provisions
  • 15. Grant Agreement – IPR section European IPR Helpdesk http://ec.europa.eu/research/participants/data/ref/h2020/grant s_manual/amga/h2020-amga_en.pdf#page=177
  • 17. Vocabulary Key terms in the context of Horizon 2020 projects are: • Background European IPR Helpdesk • Background • Results • Exploitation • Dissemination • Access rights
  • 18. Definitions (I) Background Tangible or intangible input (data, knowhow, information) which is held by the project partners prior to their accession to the agreement. Includes IP as copyright, patents/ patent applications (filed prior to access to agreement). European IPR Helpdesk copyright, patents/ patent applications (filed prior to access to agreement). Examples: prototypes; cell lines; database rights, licences with the right to sublicense Project partners must identify their background in writing Results All results which are generated under the project – whether or not protectable. Such results may include copyrights, design or patent rights, trademarks or others, and belong to the partners who have generated them.
  • 19. Definitions (II) Access rights User rights (incl. licenses) to foreground or background of project partners. Exploitation European IPR Helpdesk Exploitation Utilisation (direct/indirect) of results in research activities, which are not part of the project, as well as utilisation for further development, creation and marketing of a product or process. Dissemination Means trough which research results are presented to the public. Official publications (e.g. patent applications) are not considered as dissemination.
  • 21. IP in project life cycle 1 2 3 European IPR Helpdesk 1 2 3Project EndBefore Project Start Grant Preparation & Project Implementation
  • 22. 1. Before Project Start What to bear in mind… Become familiar with the relevant IP provisions of your specific call Define your own background, i.e. consider existing knowledge, know- how, IP that you will bring to the project - bear in mind potential rights of third parties that may be needed for the project European IPR Helpdesk of third parties that may be needed for the project Think about confidentiality issues when drafting, discussing and negotiating your ideas and project contribution with others Assess the state-of-the-art Have a clear plan concerning the dissemination and exploitation of project results Think about a project name and acronym Include costs for potential IP protection in your budget planning
  • 23. Before Project Start Every project starts with an idea … • Define the state of the art • Search in patent databases & documents (i.e. European IPR Helpdesk • Search in patent databases & documents (i.e. Espacenet; Assistance: EEN, CoC, PATLIB centres) • Protect technical drawings (e.g. by copyright) • Protect all information linked to the idea: Make use of Confidentiality Agreements • Beware of Third Parties’ IPR infringement (checking acronyms against registered Trade Marks) contact your legal/patent department as early as possible!
  • 24. Before project start Exploitation and dissemination planning • Convincing outline of exploitation European IPR Helpdesk • Convincing outline of exploitation strategies on individual/consortium level • IP-exploitation issues are subject to evaluation regarding impact and implementation. Relevant bodies/competences within the consortium should demonstrate the potential of addressing IP management properly • Include relevant activities/deliverables: PEDR, Innovation-related workshops, Market Analysis, Business Plans, Risk-Analysis, Freedom-to-Operate analysis, Specific contracts/agreements
  • 25. Exploitation and Dissemination Plan Beneficiaries have an obligation to define the expected results and their strategy for exploitation and dissemination. Hence the following information must be included: European IPR Helpdesk Hence the following information must be included: • A list of results the expected that might be exploited (i.e. with commercial or industrial applicability) including their: description sector of application, and protection measures • A list of all the means through which they intend to bring the results to the public knowledge • A potential/expected impact – quantifiable – in terms of marketability and research advancement
  • 26. 2. Grant preparation – implementation What to bear in mind… Re-read the IP-related provisions provided in the Grant Agreement Specify and agree on central IP arrangements as part of a comprehensive and elaborated Consortium Agreement European IPR Helpdesk elaborated Consortium Agreement Install efficient knowledge management for your project Grant access rights to your background and results Manage the ownership and transfer of ownership of your results Protect your project results Start disseminating your results taking into account confidentiality obligations Constantly review and update the plan for the dissemination and exploitation of results Be prepared to handle internal conflicts and disputes within your consortium
  • 27. During implementation Secure and manage research results European IPR Helpdesk • Have a clear strategy for securing and managing newly generated knowledge • Continuously update the exploitation and dissemination strategy plan (and PEDR) • Monitor regularly relevant external factors affecting your exploitation potential (other projects, publications, patents, markets, competing technologies, standards, norms, etc.)
  • 28. During implementation Access Rights (I) • Each project partner has the right to request access rights to the other project partner‘s background and results as long as it needs them in order to carry out its work under the project or to use its own results (these are minimum access rights). European IPR Helpdesk rights). • Shall be made in writing. • To avoid conflicts, it is recommended that beneficiaries agree (e.g. in the consortium agreement) on a common interpretation of what is “needed” • Are to be requested/granted throughout the duration and up to 1 year (or as otherwise agreed in the CA) after the end of the project for exploitation needs; Once requested, access rights may be exercised as long as they are needed for exploiting the results (e.g. until the background patent expires). • Access rights do not confer the right to grant sub-licences.
  • 29. Access Rights (II) Granting of Access Rights Access to Access to European IPR Helpdesk Access to background Access to foreground Project implementation Royalty-free Royalty-free Use of results Royalty-free, or on fair and reasonable conditions Royalty-free, or on fair and reasonable conditions
  • 30. During implementation Results ownership generally the grant agreement establishes that the results of the project belong to the participant generating them The simplicity only apparent: many ownership conflicts may arise when European IPR Helpdesk The simplicity only apparent: many ownership conflicts may arise when running the project and might become a potential problem for participants In order to avoid them, it is advisable: to take appropriate measures to properly manage ownership issues, such as keeping laboratory books or other kinds of documentary evidence (e.g. a properly completed Invention Disclosure Form*), which can be used to clearly demonstrate who generated a given result *An Invention Disclosure Form is a document to be completed by the creators of a particular IP setting out the details of its development, as well as details on how it is distinguished from the state of the art.
  • 31. During implementation Results ownership Joint Ownership collaborative nature of most projects some results can be jointly developed by several participants European IPR Helpdesk some results can be jointly developed by several participants In Horizon 2020, results automatically jointly owned if: - they have been jointly generated by two or more participants - it is not possible to: establish the respective contribution of each beneficiary, or separate them for the purpose of applying for, obtaining or maintaining their protection
  • 32. During implementation Results ownership Joint Ownership best practice: to regulate in the consortium agreement the rules among the consortium partners concerning possible jointly owned results European IPR Helpdesk However, since CA entered into force before the launch of the project and the creation of the results participants should establish during the project implementation a separate joint ownership agreement, defining in concrete terms the allocation and terms of exercising their ownership
  • 33. During implementation Results ownership Joint ownership agreement Important clauses to include in the joint ownership agreement: European IPR Helpdesk specific conditions for granting licences; criteria or principles for ‘fair and reasonable compensation’ to be provided to the other joint owners, if a non-exclusive licence is granted to a third party(if appropriate) how disputes will be settled; how the ownership is divided; if and how the joint results will be protected, including issues related to the cost of protection or to the sharing of revenues or profits; how the joint results will be exploited and disseminated.
  • 34. During implementation Transfer of results Participants have the possibility of transferring the ownership of their results to other parties requirements established in their grant agreement: European IPR Helpdesk requirements established in their grant agreement: the transfer should be done through an agreement (preferably in written form), since beneficiaries must ensure that the obligations of the participant(s) under the grant agreement are passed on to the new owner and that this owner has the obligation to pass them on in any subsequent transfer; prior notice is given, at least 45 days before the intended transfer, to the other consortium partners that still have (or still may request) access rights to the results, with sufficient information about the new owner. The right to prior notice can be waived in the case of transfers to a specifically identified third party, which is usually done through the consortium agreement; if established in the grant agreement, participants are bound to formally request authorisation from the European Commission in advance, in cases of foreseen transfers to third parties established in a non-EU country not associated with Horizon 2020
  • 35. During implementation Results protection IP protection is vital for a prospective commercial or industrial exploitation on the other hand it is not always mandatory Each beneficiary must examine the possibility of protecting its results and must European IPR Helpdesk Each beneficiary must examine the possibility of protecting its results and must adequately protect them — for an appropriate period and with appropriate territorial coverage — if: (a) the results can reasonably be expected to be commercially or industrially exploited and (b) protecting them is possible, reasonable and justified (given the circumstances). When deciding on protection, the beneficiary must consider its own interests and the interests (especially commercial) of the other beneficiaries.
  • 36. Protection by subject matters Subject Matter Patent Utility Model Industrial Design Copyright Trade Mark Confidential Information Invention (e.g. device, process, method1) X X X European IPR Helpdesk process, method1) X X X Software X2 X X X Scientific article X Design of a product X X X Name of a technology/product X Know How X X X Website X X X X [1] Except methods exculded from patentability by virtue of Articles 52(2)(c) and (3) and 53(c) EPC. [2] Software patentability is still a debated issue given its exculsion as subject matter as by Article 52(2)(c) and (3) EPC.
  • 37. Protection by IPR IPR What for? Registration? Patent New inventions Registration is required Utility model Registration is required, but conditions are less European IPR Helpdesk Utility model New inventions Registration is required, but conditions are less stringent than for patentability Trade Marks Distinctive signs Registration is required Industrial Design Appearance of products Registration is usually required, but it is possible to acquire an unregistered design right Copyright Literary, artistic and scientific works Not required, but it can be registered in some countries Confidentiality Confidential business information/trade secrets Not required, but internal protection measures needed (i.e. NDAs) Always use IPR symbols, such as © for copyright, ™ and ® for trademarks, or any other equivalent indicating that it is protected by one or more different IPR
  • 38. 3. Project end and beyond What to bear in mind… Exploit your project results and valorize your IP European IPR Helpdesk Disseminate your project results Have a conclusive report on the dissemination and exploitation of project results ready Be aware of post-project obligations concerning IPR provisions
  • 39. General obligation to exploit Each beneficiary must — up to four years after the project completion take measures aiming to ensure ‘exploitation’ of its results (either directly European IPR Helpdesk take measures aiming to ensure ‘exploitation’ of its results (either directly or indirectly, in particular through transfer or licensing by: (a) using them in further research activities (outside the action); (b) developing, creating or marketing a product or process; (c) creating and providing a service, or (d) using them in standardisation activities.
  • 40. Transfer/Licensing of results (I) Each beneficiary may transfer ownership of its results. A beneficiary that intends to transfer owners hip of results must give at least European IPR Helpdesk A beneficiary that intends to transfer owners hip of results must give at least 45 days advance notice to the other beneficiaries that still have (or still may request) access rights to the results. Unless agreed otherwise (in writing), any other beneficiary may object within 30 days of receiving notification, if it can show that the transfer would adversely affect its access rights. In this case, the transfer may not take place until agreement has been reached between the beneficiaries concerned.
  • 41. Transfer/Licensing of results (II) Each beneficiary may grant licences to its results. Exclusive licences for results may be granted only if all the other beneficiaries concerned have waived their access rights. European IPR Helpdesk A beneficiary that intends to transfer ownership or grant an exclusive licence must formally notify the EC before the intended transfer or licensing takes place and: • identify the specific results concerned; • describe in detail the new owner or licensee and the planned or potential exploitation of the results, and • include a reasoned assessment of the likely impact of the transfer or licence on EU competitiveness and its consistency with ethical principles and security considerations.
  • 42. Transfer/Licensing of results (III) The EC may – up to 4 years after project completion – object to a transfer of ownership or exclusive licensing of results, if: European IPR Helpdesk of ownership or exclusive licensing of results, if: (a) it is to a third party established in a non-EU country not associated with Horizon 2020 and (b) the EC considers that the transfer or licence is not in line with EU interests regarding competitiveness or is inconsistent with ethical principles or security considerations
  • 43. Routes for exploitation Basic options • Use for further research European IPR Helpdesk • Developing and selling own products/services • Spin-Off activities • Cooperation agreement/Joint Ventures • Selling IP rights/Selling the (IP based) business • Licensing IP rights (out-licensing) • Standardisation activities (new standards/on- going procedures)
  • 44. Obligations to disseminate Project partners are obliged to disseminate the results swiftly (i.e. to scientific community/broader public) by any appropriate means other than that resulting from the formalities for protecting it or exploiting the results, and including the publication of results in European IPR Helpdesk or exploiting the results, and including the publication of results in any medium. But: • no dissemination of results may take place before decision is made regarding their possible protection, and • all patent applications, publications or any other dissemination (also in electronic form) shall include a statement that the action received financial support from the Union – The same applies to results incorporated in standardisation activities.
  • 45. Dissemination checklist • Take a decision about the protection of foreground and all required steps • Inform the other consortium partners in writing 45 days before the planned European IPR Helpdesk • Inform the other consortium partners in writing 45 days before the planned dissemination activities and include enough information to allow them to analyse whether their interests are affected or not. Note that this time limit can be changed (for more or less days) in the CA. Wait 30 days for any objection to the dissemination (unless otherwise agreed in the CA). • Beware not to infringe third parties' intellectual property rights • Open access as a general principle of scientific dissemination • List the dissemination activities in the Exploitation and Dissemination Plan
  • 46. Open Access (I) OA = online access at no charge to the end-user (plus further distribution and proper archiving) to peer-reviewed scientific publications European IPR Helpdesk to peer-reviewed scientific publications to research data However, open access: is not an obligation to publish: only if publishing is the chosen dissemination route does not interfere with the decision to exploit research results commercially e.g. patenting: discussion on open access comes after the decision to protect publications are not of a lower quality: they go through the same peer review process as other publications
  • 47. Open Access (II) Why open access? To optimise the impact of publicly-funded research European IPR Helpdesk To optimise the impact of publicly-funded research Expected benefits: • Better and more efficient science Science 2.0 • Economic growth Innovation Union • Broader, faster, more transparent and equal access for the benefit of researchers, industry and citizens Responsible Research and Innovation
  • 48. Dissemination: Research results publication 'Green' open access Open Access (III) European IPR Helpdesk Decision on IP protection (patenting or other forms of protection) publication Exploitation: Research results commercialisation Open access 'Green' open access 'Gold' open access Research results
  • 49. Open Access (IV) The European Commission has published guidelines on Open Access to Scientific Publications and Research Data European IPR Helpdesk Open Access to Scientific Publications and Research Data in Horizon 2020, that can be downloaded at: http://ec.europa.eu/research/participants/data/ref/h202 0/grants_manual/hi/oa_pilot/h2020-hi-oa-pilot- guide_en.pdf
  • 50. Costs reimbursements • Costs of intellectual property rights (IPR), including protecting results (e.g. fees paid to the patent office for European IPR Helpdesk protecting results (e.g. fees paid to the patent office for patent registration) and royalties on access rights are eligible costs • Cost for open access publications are also considered eligible by the GA, e.g. Author Processing Charges (APCs)
  • 51. Further information Fact sheets • IP management in Horizon 2020: project proposal European IPR Helpdesk • IP management in Horizon 2020: grant preparation • IP management in Horizon 2020: project implementation and conclusion • Open access in Horizon 2020: FAQs • Publishing v. patenting • Exploitation channels for public research results and series on commercialising IP Check www.iprhelpdesk.eu/library !
  • 53. Grazie Con l’augurio di essere contattati da voi! Donata Folesani European IPR Helpdesk Ambassador, Italia ASTER, Via Gobetti 101 40129 Bologna European IPR Helpdesk ASTER, Via Gobetti 101 40129 Bologna tel +39 051 6398099 donata.folesani@aster.it Per domande e consulenza di carattere generale potete contattare l’Helpline team: service@iprhelpdesk.eu Tel +352 25 22 33-333 (Helpline) Fax + 352 25 22 33-334 (Helpline) www.iprhelpdesk.eu Per domande relative alle attività formative, inviate una email a: training@iprhelpdesk.eu
  • 54. Photo credits istockphoto.com © istockphoto.com/Maridav © istockphoto.com/Bliznetsov © istockphoto.com/RTimages © istockphoto.com/Daniel Laflor © istockphoto.com/Pavel Bolotov © istockphoto.com/Lise Gagne © istockphoto.com/Alex Slobodkin © istockphoto.com/YanC © European Union 2014 European IPR Helpdesk Disclaimer/Legal Notice The information and advice contained in this presentation is not intended to be comprehensive and attendants are advised to seek independent professional advice before acting upon them. The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained in this presentation for non-commercial purposes is authorised and free of charge, provided the source is acknowledged. The use of images – other than in the mere reproduction of this presentation – is prohibited. The European IPR Helpdesk is not responsible for any impact or adverse effects on third parties connected with the use or re-use made of the information contained in this presentation. The European IPR Helpdesk is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises(EASME), with policy guidance provided by the European Commission’s Enterprise & Industry Directorate-General. Even though this presentation has been developed with EU funding, the positions expressed are those of the authors and do not necessarily reflect the views of the European Commission or of the EASME. © istockphoto.com/Daniel Laflor © istockphoto.com/Zeffss1 © istockphoto.com/Agata Malchrowicz © istockphoto.com/Joseph Weber © istockphoto.com/Danijela Pavlovic Markovic © istockphoto.com/Yuri_Arcurs © istockphoto.com/rzdeb © istockphoto.com/Sean Locke © istockphoto.com/Artsem Martysiuk © istockphoto.com/José Carlos Pires Pereira © istockphoto.com/YanC © istockphoto.com/hudiemm © istockphoto.com/Dave White Others © Boggie, ScoutMedia