Intellectual Property Rights (IPR) and Consortium Agreement within the Sixth Framework Programme

1. Intellectual Property Rights (IPR) and Consortium Agreement within the Sixth Framework Programme Magali POINOT Representative Officer & Legal Coordinator Magali.Poinot@ua.es

2. 1- Generalities What is it about? • Agreement concluded between the participants of the same project • The Commission remains a third party For what? • Regulates or specifies participants’ obligations and rights among themselves Within which frame? • Does not affectparticipants’ obligations and rights • towards the Community • defined by the EC Regulation or the EC contract

3. 2- Signature Why? • Mandatory unless otherwise provided in the call for proposal (e.g. Marie Curie actions) • EC contract does not provide the whole picture (e.g. conditions for objecting publications) • EC contract obliges participants to agree between themselves in a separate agreement (e.g. share of the EC contribution) • Some IPR rules may be derogated in a separate agreement (e.g. sublicensing)

4. 2- Signature When? • BEFORE signature of the EC contract, if mandatory • In any cases, should be concluded as soon as possible (e.g. when submitting the proposal) • Before the signature of the EC contract concerning specific matters (e.g. exclusion of pre-existing know-how) IPR issues to be agreed before the signature of the EC contract • Exclusion of pre-existing know-how  Article II.35, paragraph 1 d) • Different conditions under which access rights are granted  Article II.35, paragraphs 2 a) and 3 a)

5. 4 – Definitions • Affiliates companies  Definition with specific characteristics (e.g. “company owned or controlled, directly or indirectly, of at least 50% of the voting stocks or shares …”  List of affiliates concerned with possibility of updating • Necessary pre-existing know-how (for carrying out the project and for use purposes)  Definition with specific characteristics (e.g. “where technical matters are concerned technically essential “)  List of pre-existing know-how brought into the project with possibility of updating (“positive” list) • Any other needed terms

6. 5 – Ownership Creations by personnel working for the participants • Principle: each participant has to ensure that • he owns knowledge generated by its personnel or • rights to knowledge generated by its personnel can be exercised in a manner compatible with its contractual obligations • Personnel concerned • Staff legally employed by the participants • Doctoral students, … • Personnel made available by a third party • Subcontractors

7. 6 – Joint ownership General principles • Right in undivided shares • Any dealing is subject to consent • In insolvency, the interests may be transfered to creditors Possible derogations • Allow by the EC model contract • Trough contractual agreement • Principle of freedom (e.g. one party exercices all rights)

8. 6 – Joint ownership Some questions to address when determining or considering joint ownership • Planning ahead for the assigning of share of the rights • Planning ahead for cost sharing • Deciding who will file for protection of the co-owned knowledge and maintain patents and other intellectual property rights in effect • Payment of fees for registration, maintaining procedures (e.g. in which country and from whose account), etc. • Responsibility for detecting and taking civil or criminal actions against third parties who in any way injure the rights conferred by the IPR • Licensing to third parties to use the invention • Consent of the co-owners for decision-making processes, etc.

9. 7 – Protection of knowledge • Protection prevails over dissemination/publications and use • The participants may agree on the terms and periods of protection (e.g. taking over patents or similar rights taking over trade secrets) to conform with  relevant legal provisions (e.g. decision-making on where to protect or litigate and at whose costs)  applicable law  legitimate interests of the participants • Possibility to allow other participants to apply for owns’ IPR and maintaining rights in effect • Possibility to agree on the protection of the project’s acronym or domain name

10. 8 – Use & Dissemination Use • Specify terms of use to be set up in a detailed and verifiable manner  how (e.g. commercial exploitation or utilisation in further research activities)  by who (e.g. by an Exploitation Manager)  how long  for what (e.g. a specific technical areas)  etc… • Regular updating/reporting of plan for use and disseminating knowledge Dissemination • What should be kept confidential or disseminated ( !dissemination activities does not adversely affect the protection or use of the knowledge ! ) • Specify the measures necessary to ensure publications • Allow publication of thesis To be reported in the plan for using and disseminating knowledge

11. 9 – Access rights • Exclusion of pre-existing know-how • Explicit exclusion (“negative” list) • obligatory agreement of all participants concerned  to be agreed before signature of the EC contract or before a new participant joins the project  should not concern “core” pre-existing know-how • More favourable or additional access rights  e.g. access rights to affiliates  e.g. exclusive licenses in limited areas out of the scope of the project • Sub-licensing  Principle: not allowed unless explicitly agreed  e.g. for software, to affiliates companies

12. 9 – Access rights • Different conditions under which access rightsto pre-existing know-how for carrying out the project are granted  on financial conditions to be agreed • Different conditions under which access rights to knowledge for use purposes are granted  on financial conditions to be agreed • Access rights to knowledge for carrying out the project  on financial conditions to be agreed • Longer duration of access right for use purposes  more than 2 years after the end of the project or of participation  either to pre-existing know-how or to knowledge

13. 10 – Confidentiality issues Generalities • Matter to make all transmitted information secure • General obligation provided in the EC contract to not reveal certain information Additional provisions • Precise information that must not be revealed • Possibility to stamp all the documents “confidential” • Exception regarding certain category of entities (e.g. subcontractors) • Retroactivity of the confidentiality provisions • Period of confidentiality must be stated in advance • Applicability of the confidentiality provisions in case of a participant withdraws from or abandons the project

14. 11 – Models Preliminary remarks • Are not official documents from the European Commission • Drafted by different organisations with a wide experience in this area • Some of them were drafted before the approval of the model contract on 17 March 2003 • References to the articles of the model contract may not be updated • As a model, are indicative and should not be used as they are • Should be reviewed, revised and adapted to fit the regulation and the needs of each consortium on a case by case basis • Is the responsibility of the user to subject the contracts to legal examination

15. HELPLINE T. +34 96 590 97 18 F. +34 96 590 97 15 E-mail:ipr-helpdesk@ua.es 12 – For more information http://www.ipr-helpdesk.org REPRESENTATIVE OFFICE Avenue Louise, 106 B-1050 Brussels T. +32 2 649 53 33 F. +32 2 647 59 34

16. THANK YOU FOR YOUR ATTENTION ********* QUESTIONS AND ANSWERS