Intellectual Property issues within the Sixth Framework Programme 20022006

1
Intellectual Property issues within theSixth
Framework Programme (2002-2006)

• National Contact Points (NCP) Training
• 15-22-29 October 2002
• Magali POINOT
• Denis DAMBOIS

2
Intellectual Property in FP6

• What is it about?
• IPR provisions govern the ownership, transfer,
  dissemination and use of research results
  generated during a FP6 project
• When does IP matter?
• Preparation of the proposal conduct patent
  searches to identify prior art and possible
  IPR-protected areas,
• Negotiation possible specific IPR provisions to
  be agreed (consortium agreement), practical IPR
  management,
• Implementation of the project protection of the
  results, management of resulting IPR, granting of
  access rights,
• After the project use/dissemination of the
  results (possibly by granting licenses to third
  parties),

3
Key words

• Pre-existing know-how
• Background Sideground
• Knowledge
• Use
• Commercial exploitation
• Utilization in further research activities
• Dissemination
• Journals, Internet, ...
• Access rights
• Licenses User rights
• Legitimate interests

4
Objectives within FP6 projects

• To ensure a smooth implementation of the project
• necessary access rights are available
• To encourage the use of the knowledge
• protection
• balanced access rights system
• To encourage the dissemination of the knowledge
• while taking the Communitys, participants and
  projects interests into account

5
Main features

• Feedback from previous Framework Programmes
• Features of the new instruments
• Larger projects
• More frequent modifications of the consortium
• Simplification
• Same rules for each instrument
• Same rules for each participant
• Increased certainty of participants intellectual
  property (less broad access rights, ...)
• Increased emphasis on management of knowledge

6
Ownership

• Ownership of the pre-existing know-how
• Always remains the property of the participant
  concerned
• Ownership of the knowledge
• Property of the participant who generates it
• Joint property of several participants where
  generated by several participants (specific
  conditions to be agreed)
• Exceptions
• Specific actions for SME (Cooperative
  Collective RD projects)
• 100 EC-funded activities
• Transfer of ownership
• The Commission and other participants may object
  in exceptional cases

7
Protection of knowledge

• Requirement
• What has to be protected?
• Knowledge that is capable of industrial and
  commercial application having due regard to the
  legitimate interest on the participants
  concerned (flexible requirement)
• By who?
• The owner of the knowledge
• Exceptionally the Commission, if the participant
  fails to do so
• How?
• By an adequate and effective protection
• In conformity with relevant provisions, the
  contract and the consortium agreement

8
Dissemination (publications, )

• Dissemination required
• What may be disseminated (published, )?
• any data or information concerning the knowledge
• provided that dissemination/publication does
  not adversely affect the protection or use of the
  knowledge
• By who?
• Publication ? the participant owning the
  knowledge(in cooperative / collective research
  all participants)
• Dissemination ? all participants
• The Commission where the participant fails to do
  so
• How?
• Publications ? required prior approval of the
  Commission and the other participants, which may
  object

9
Access rights (1/3)

• General principles
• Granted on written request
• No sub-licensing (even for affiliate companies)
• Unless explicitly agreed
• Possible optional clause for software, allowing
  sub-licensing, ...
• Obligatory access rights between participants are
  limited to what they really need ...
• either for carrying out the project or for
  using their own knowledge
• but broader access rights may be freely
  negotiated
• Possible granting of access rights to third
  parties
• The Commission may object in exceptional cases

10
Access rights (2/3)

• New features
• Obligatory access rights are limited to
  participants of a same project
• Clear financial conditions
• either on royalty-free basis
• or on fair and non-discriminatory conditions to
  be agreed
• Possibility to exclude a specific piece of
  pre-existing know-how from the obligation to
  grant access rights
• Obligatory agreement of all participants
  concerned
• To be agreed before signature of the EC contract
• Should not concern core pre-existing know-how

11
Access rights (3/3)
12
Use of the knowledge

• Requirement
• What should be used?
• The knowledge
• If needed, by using pre-existing know-how as well
• By who?
• Participants owning (or having access rights to)
  knowledge
• Possibly third parties having access rights
• How?
• Commercial exploitation or further research
  activities
• In accordance with the interest of the
  participants concerned (flexible requirement)
• Terms to be set out by the participants in a
  detailed and verifiable manner

13
Innovation-related activities

• Intended to promote the subsequent exploitation
  of the results (especially in Integrated projects
  and Specific Targeted Research projects)
• Activities relating in particular to
• the protection and management of knowledge and
  intellectual property
• the dissemination of the knowledge
• the subsequent exploitation of the results
  (take-up activities, )
• the development of a Plan for the use and
  dissemination of knowledge
• Taken into account when evaluating proposals

14
Innovation-related measures

• Possibility to include organisations that
  possess specific competence in management,
  dissemination and transfer of knowledge in the
  consortia, even if they don't carry out any RD
  tasks
• Funding of innovation-related activities
• 50 for operational activities(e.g. filing a
  patent application)
• 100 for management activities (lt ceiling !)
• 0 for commercial development activities
  (marketing, )
• 0 for activities not necessary for the project
  (e.g. filing patents for inventions developed
  outside of the project)

15
Consortium agreement

• Regulates the internal organisation of
  consortium, including potential IPR issues
• Compulsory except otherwise mentioned in the call
  for proposal
• May not conflict with the contract
• Not signed nor approved by the Commission
• After or (preferably) before signing the contract
• Some decisions on IPR issues must be made by the
  participants if at all before signature of
  contract
• Non-binding guidelines published by the Commission

16
For more information

• Legal framework within FP6 (provisional!)
• Participation and dissemination rules
  http//europa.eu.int/comm/research/fp6/pdf/rules_e
  n.pdf
• Model contract http//europa.eu.int/comm/researc
  h/fp6/working-groups/model-contract/index_en.html
• IPR-Helpdesk
• http//www.ipr-helpdesk.org
• IPR-related links and reports
• http//europa.eu.int/comm/research/area/ipr_en.htm
  l
• General information on FP6
• http//europa.eu.int/comm/research/fp6/index_en.ht
  ml

17
Thank you

• For more information
• Magali Poinot magali.poinot_at_cec.eu.int
• Denis Dambois denis.dambois_at_cec.eu.int

Question time