Transcript IPR-Helpdesk - Naslovnica - Hrvatski informatički zbor

FP7 IP Rules
Madrid, 23.09.2008
Theo Stamatiadis
IPR-Helpdesk Legal Expert
IPR-Helpdesk is a constituent part of the IP-BASE project which is
financed by the CIP Programme, DG Enterprise and Industry of
the European Commission
Intellectual Property (IP) rights
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trade marks
patents and
utility models
designs
trade secrets
copyright
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IP rights allow me to protect my creations,
license them or sell them to others
IP management in research collaborations
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Under which conditions are
they going to exchange their
knowledge?
Who and how will exploit
the results?
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Who will be the owner of
the results?
IP management in FP7
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- Consortium Agreement
- other agreements
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- Grant Agreement
- Annex I (technical description)
- Annex II (general conditions)
- Annex III (specific conditions)
- Special clauses
IP- related definitions
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Background: project-related information and IP rights
(granted or applied) that participants hold before the
signature of the grant agreement
Foreground: results generated in the project and IP rights
attached to these results
Dissemination: making foreground available to the public
Access rights: licences and user rights to foreground and
background
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Use: direct or indirect utilisation of foreground in further
research or economic activities
The background
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B
B
B
B
B B
B
B
B
- Background refers to IP resources necessary for the project
- Background remains the property of the participant that brings it into the project
- Participants shall inform each other of any limitations to access background due to
previous commitments
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B
B
B
The background
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B
B
B B
B
B
B
B
B
- The consortium may define the background available to the project (positive list)
- The consortium may exclude specific background (negative list)
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B
B
B
The foreground
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F
F
F
- Each participant is owner of the foreground it generates by its own efforts
- Participants may agree on a different ownership regime
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F
The foreground
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- When foreground has been generated by common efforts and it is not possible to
ascertain individual contributions, participants shall have joint ownership of such foreground
- Each joint owner may grant non-exclusive licences to third parties, subject to prior notice
and fair and reasonable compensation to the other joint owners (default rule)
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Joint ownership
The foreground
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Confidentiality
F
F
F
- A general obligation of confidentiality applies to all participants for information
exchanged during the execution of the project and identified as “confidential”
- The confidentiality obligation persists up to 5 years after the project end
- It is crucial to preserve confidential data, until protection and use activities have been
planned (and implemented)
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F
The access rights
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F
B
B
B B
F
B
B
F
F
B
B
B
- A participant needs another participant’s background or foreground in order to carry
out its project work
- A participant needs another participant’s background or foreground in order to use its
own foreground
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B
B
B
The access rights
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F
B
B
B B
F
B
B
F
F
B
B
B
- Access rights requests shall be made in writing
- Access rights for implementation: granted throughout the duration of the project
- Access rights for use may be requested up to 1 year after the end of the project (unless
participants agree on a different time-limit)
- Access rights do not confer the right to grant sub-licences, unless so agreed
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B
B
B
The access rights
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F
B
B
B B
F
B
B
F
F
B
B
B
- Access rights to background for project execution purposes are granted royalty-free,
unless otherwise agreed before the grant agreement is signed
- Access rights to foreground for project execution purposes are royalty-free
- Access rights to foreground and background for use purposes are granted royaltyfree or on fair and reasonable conditions
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B
B
B
The protection of foreground
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F
F
F
- Each participant shall protect its own foreground if commercially or industrially
applicable
- When a participant is not interested in protecting its foreground it shall transfer it to
another entity that is willing to protect it
- If nobody is interested in protecting the foreground, the Commission shall be informed
before any dissemination activity takes place
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F
Conditions for transferring the foreground
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F
F
F
F
- The other participants shall be notified and may object if their access rights are not
preserved
- No notification for transfers towards specifically identified third parties may be agreed
- The Commission may object to transfers towards entities established in third countries
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- The participant that transfers foreground shall pass on all its obligations
Conditions for exclusive licences
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F
B
B
B B
F
B
B
B
F
F
B
B
B
- A participant can grant an exclusive licence to foreground or background, but…
- …the other participants shall waive their access rights in writing
- The Commission may object to the exclusive licensing of foreground to entities
established in third countries
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B
B
Use of foreground
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F
F
F
- Participants shall use the foreground in further research or commercial activities
- Participants may use the foreground directly or indirectly
- Participants may use the foreground together or individually
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F
Dissemination of foreground
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F
B
B
B
F
B
B
B
F
F
B
B
- Participants shall disseminate their foreground as swiftly as possible…
-…taking care of protection and use of foreground, as well as of the legitimate interests of
the other participants
- Dissemination activities shall be notified in advance and may be objected
- Always ensure visibility for the European Community support
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B
B
Access rights for affiliated entities
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F
F
B
B
B
F
F
B
B
- Annex II defines “affiliated entities” and recognises them some access rights for use
purposes
- In order to enjoy access rights for use, the affiliate needs to have (in whole or in part)
ownership of foreground
- Other agreements are possible (e.g. in the consortium agreement)
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B
B
Subcontractors and other third parties
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- The participant is responsible towards the consortium and the Commission for the
work to be carried out by the subcontractor
- The participant shall ensure to be the owner of all results generated by the
subcontractor
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F
IP reporting in FP7
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F
F
F
- A plan for using and disseminating the foreground is submitted by the participants to
the Commission both at the proposal stage and at the end of the project
- It describes participants’ plans for the protection, use and dissemination of foreground
(including arrangements on joint ownership, licensing to third parties, etc.)
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F
IPR-Helpdesk documents
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How IP rules work in FP7
Issues of confidentiality under FP7
Protection of project results in FP7
Use of foreground under FP7
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Dissemination of foreground under FP7
Research for the benefit of SMEs
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RTD performers
SME participants or
SME associations
- The beneficiaries of SME actions are SME participants or SME associations
- The RTD performers carry out RTD activities for the benefit of SME participants/SME
associations
- Other participants may take part in SME actions, but their role is not dominant
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- FP7 actions specifically aim at strengthening the innovation capacity of SMEs
The specific regime of SME actions
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SME participants or
SME associations
RTD performers
F
- Default regime: the SME participants/SME associations retain ownership of all
foreground; the RTD performers are reimbursed for their costs on the basis of their
invoices
- The parties may agree otherwise, as long as the interests of the SME participants/SME
associations are preserved
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Transaction
The transaction
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SME participants or
SME associations
RTD performers
F
F
- The transaction details IP management and the remuneration of the RTD performers
- The Commission approves the transaction (and any modification) as part of the
Annex I to the grant agreement
- The transaction shall be complete and transparent
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Transaction
The transaction
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SME participants or
SME associations
RTD performers
B
B
F
F
Option 1: participants follow the default regime
- Which conditions for access rights to the RTD performers’ background?
- Which conditions for the RTD performers’ access to the SME participants/SME
associations’ foreground?
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…royalty-free, unless otherwise agreed
before the grant agreement is signed
The transaction
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RTD performers
B
F
F
Option 2: joint ownership (adjustment of the RTD performers’ remuneration)
- SME participants/SME associations own some results/RTD performers own others
- Proper joint-ownership situation: How shall the parties manage the joint foreground to
the benefit of SME participants/SME associations?
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B
SME participants or
SME associations
The transaction
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SME participants or
SME associations
RTD performers
B
B
F
F
…royalty-free?
Option 3: RTD performers own the foreground (adjustment of their remuneration)
- Such decision shall be justified, taking into account the long-term interests of SME
participants/SME associations (!)
- What kind of access for the SME participants/SME associations to the foreground?
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…exclusive?
The transaction – SME associations
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RTD performers
F
SME associations
F
F
SME association
members
- The SME associations shall use and disseminate the results for the profit of their
members
- The SME associations have the right to sublicense the foreground to their members
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F
The transaction – to sum up
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RTD performers
SME participants or
SME associations
F
B
- Access to the foreground by SME participants/SME associations and RTD
performers
- Access to the RTD performers’ background by the SME participants/SME
associations
- Remuneration paid to the RTD performers
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- Ownership of the results
IPR-Helpdesk documents
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IP-related issues for SMEs in FP7 projects
IP management in SME actions
Joint ownership in FP7
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SME Gateway
Further information and assistance
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Seminars
[email protected]
Helpline
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Documents
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Part II
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Consortium agreements in FP7
www.ipr-helpdesk.org