Transcript Slide 1

IP clauses and IP management
in Joint Research and
Scientific Partnerships
Salvatore Amico Roxas
Intellectual Property & Technology Transfer Unit
Joint Research Centre - European Commission
Email: [email protected]
Bruxelles, 8 February 2010
www.jrc.ec.europa.eu
Joint Research Centre
JRC Mission
… is to provide customer-driven scientific and technical support for the
conception, development, implementation and monitoring of EU policies.
As a service of the European Commission, the JRC functions as a reference
centre of science and technology for the Union.
Close to the policy-making process, it serves
the common interest of the Member States,
while being independent of special interests,
whether private or national.
Supporting nuclear safety, citizen’s security, health and environmental protection, safety of
food and chemicals, alternative energies, econometrics, prospective technologies…
Joint Research Centre
Our Structure: 7 Institutes in 5 Member States
IRMM - Geel, Belgium
Institute for Reference Materials and Measurements
ITU - Karlsruhe, Germany
Institute for Transuranium Elements
IE - Petten, The Netherlands
Institute for Energy
IPSC - Ispra, Italy
Institute for the Protection and Security of the Citizen
IES - Ispra, Italy
Institute for Environment and Sustainability
IHCP - Ispra, Italy
Institute for Health and Consumer Protection
IPTS - Seville, Spain
Institute for Prospective Technological Studies
 2900 staff,  300 M€/y budget
(+ 40 M€/y competitive income)
> 2,800 staff across Europe
Joint Research Centre
JRC manages the IP portfolio of the European Communities (patents,
trade marks, software, copyrights, …) and offer support on IP issues to
all EU institutions (European Commission, Council, European
Parliament, agencies, …)
 Patent portfolio over 115 patents, 30 software
 165 trade marks
 Support in the exploitation of the technologies
 Support on IP issues in R&D collaborations
IP issues within Joint R&D partnerships
Three main categories of IP-related issues:
 Internal IP management aspects, meaning the provisions
governing IP aspects within the members of the partnership;
 Knowledge transfer aspects, meaning those IP aspects that
entail relationships with third parties;
 Governance aspects, meaning the provisions ruling the way
a partnership is established and managed.
IP issues within Joint R&D partnerships
Internal IP management
aspects
Knowledge transfer
aspects
Ownership of results
Planning of direct and
indirect exploitation
activities
Notification of R&D results
Protection strategy
Identification and scope of
Background (and, eventually,
Sideground) available
Access rights to Background and
Foreground (and, eventually,
Sideground)
Indirect exploitation:
Conditions for IP licensing
to third parties
Indirect exploitation:
Conditions for IP transfer to
third parties
Incentives for New
Technology Based Firms
(NTBFs)
Conditions for granting access rights
Knowledge dissemination
IP and human resources in research
activities
Reporting/Monitoring
Governance aspects
Competence for IP-related
decision
Complementarity between
obligations deriving from
different funding sources
New parties entering
Parties leaving
Ensuring fairness in IP
aspects
IP issues - Internal IP management aspects 1/2
•
Categorizing the items (Background, Foreground, Sideground etc.), in
order to proper consider the parties contributions and the aspects of the use
of rights in the context of time.
•
Ownership and Joint Ownership – how to assign ownership to participants?
•
Protection strategy: part of an asset management strategy within a R&D
partnership, rather than being completely left to the autonomy of the individual
owners of the results – interest of all parties should be taken into account!
•
IP and human resources (legal differences between countries – professor’s
privilege versus institutional ownership).
•
Reporting:
- Purpose of reporting;
- What to be monitored: knowledge transfer activities (number of licences,
NTBFs, revenues, etc.), research results (number of publications, IP assets,
etc.), economic impact (employment, new products…), societal impact
(safety, health, ageing).
IP issues - Internal IP management aspects 2/2
Example of clauses:
•
Criteria to assign results ownership:
1) financial input; 2) intellectual input; 3) capacity to exploit.
•
Joint ownership: Default rule to overcome impasse in exploitation of jointly owned
results (in order to allow parties to individually exploit a result, subject to an
agreement on compensation).
•
Employees’ rights: entitlement to claim rights on IP by employees and nonemployees (researchers, students) should not hamper the activities of the R&D
partnership – each partner should commit itself to solve eventual conflicts.
IP issues - Knowledge transfer aspects 1/2
•
Planning of direct and indirect exploitation activities: identification of the
viable exploitation routes and foresee a proper role of each party in the
exploitation strategy.
- Rights of subcontractors
- Rights of companies providing technical supports
- Rights of end-users
•
Licensing and transfer policy: to be agreed within participants, in order to
ensure fairness in the deals and adequate compensation (financial or not).
Special focus on transfer of ownership and granting of exclusive licences.
•
Dissemination policy: to be agreed in a way not to hamper protection and
exploitation of the results and retain control over confidential information.
IP issues - Knowledge transfer aspects 2/2
Example of clause for providing incentives to NTBFs:
•
Non-exclusive licensing of the relevant rights which may convert to an exclusive
granting (or to an assignment) once the NTBFs has reached predefined
milestones (e.g. in terms of product development, amount of funds raised etc.).
•
Providing for some form of right-of-first-refusal on improvements and further
developments of a technology.
•
Allowing the NTBFs to collaborate on further developments of a technology.
•
Consultancy agreements.
IP issues - Governance aspects 1/2
•
Competence for IP-related decision: internal IP body versus external
consultancy on IP issues.
•
New parties entering: avoid unreasonable restrictions on their IP rights and,
at the same time, safeguard the interest of other partners.
•
Partners leaving: consider detailing the main conditions, procedure and
consequences for voluntary and "imposed" departure, with a view to avoid that
the departure jeopardizes partnership work.
•
Ensuring fairness in IP aspects: ensure that parties with less negotiating
power than others (e.g. SMEs), or with less experience in terms of IP
management, may negotiate IP conditions on an equal footing.
IP issues - Governance aspects 2/2
Example of clauses to ensure the protection of “weaker parties” interests:
•
Establishing a default regime, globally favourable to all parties. Amendments
could be negotiated with the consent of all parties and under some form of
compensation.
•
Foreseeing appropriate provisions governing the partnership management (e.g. as
regards decision mechanisms and required quorums and procedures for decisions
to be binding for the whole partnership).
•
Competence on IP-related decisions assigned to an internal body representing, on
an equal footing basis, the different parties – possibly with the support of external
expert (e.g. IP body).
FP7
FP7 - Diagram of the project developments
Participant B
Notification
(if no protection plans)
Participant C
Access
rights
Background
Participant A
Notification
Access
rights
Foreground
Protection
Use
Dissemination
IPR – a strategic factor in a successful FP7 projects
Before Project
During Project
 Proposal preparation,
incl. “potential impact”
 Defining projectrelated know-how
 Defining IP-protected
areas
 Negotiating a CA
 Negotiating with the
EC

Strategy for protection &
management of foreground
 Granting of access rights
AT ALL STAGES
After Project
Protection of
generated IP
 Exploitation of
the results
 Dissemination
(PUDF)

Sources of provisions on FP7 IPR aspects
• Rules for participation (EC)
• EC Grant Agreement (and related Annexes, Annex II
in particular)
• Consortium Agreement
Grant agreement and Consortium agreement
European Commission
↕
Grant agreement
Coordinator
↓
Participant →
Consortium
agreement
↑
Participant
Participant = Beneficiary
← Participant
Technical provisions
Financial structure and
Management structure
Intellectual Property
Final considerations 1/3
 Strong dependence of IP rules on the nature and goals of R&D
partnerships;
 Need for flexibility, since there can be events influencing the course of
a project and giving rise to a need for change;
 Need to understand the individual needs and positions of the parties
involved in the partnership and foresee an adequate role for each
one;
 Take into account cross-border issues;
 Focus on clarifying and setting the terms of the partnership as clearly
as possible before relevant activities start.
Final considerations 2/3
Model Contracts
 They may help in saving time and efforts in negotiating IP-related clauses and
increase the likelihood of reaching a consensus among the parties;
 They may help in making parties aware of the IP issues arising from R&D
partnerships;
….but
They should be properly understood and tailored
to the partnership needs and goals!
Links:
- Lambert Agreements: http://innovation.gov.uk/lambertagreements/
- CREST Collaboration Decision Guide: http://ec.europa.eu/invest-in-research/policy/crest_cross_en.htm
- Commission Recommendation on the management of intellectual property in knowledge transfer
activities and Code of Practice for universities and other public research organisations:
-
http://ec.europa.eu/invest-in-research/pdf/ip_recommendation_en.pdf
FP7 Consortium Agreement models: http://www.ipr-helpdesk.org/Consortium_agreement-FP7.html
Final considerations 3/3
…in case of need of help on IP issues in FP7 projects…..
IPR-Helpdesk
- Assisting on “IPR issues” in RTD
projects (Communitarian and
International)
- Raising the awareness of and training
the research community on IPR
http://www.ipr-helpdesk.org