european ip helpdesk · 2019. 11. 27. · the european ip helpdesk provides free-of-charge...
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European IP Helpdesk
Stay ahead of the innovation game.
Michele Dubbini, 22 11 2019
IP management in EU-funded Projects –
With a special focus on MSCA
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Key success factors for „bridging“ academic/non-
academic sector
Mutual Trust ManagerialCapacities
GovernanceStructures
Clear andtransparent
contracts
Activeinvolvementof all parties
Agreements on IPR
Win-Win-Situation
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MSCA – IP relevant characteristics
• Intersectoral exchange – academic/non-academic (i.e. SMEs) – Different IP
policies/interests; Publication vs. Exploitation
• International dimension EU-MS/AC vs. Third Countries – Different IP
laws/regulations
• Joint research and innovation activities between the participants- Exchange and
sharing of knowledge (IP); joint protection and exploitation of results
• Secondments of research and innovation staff (exchanges) focusing on the
exploitation of complementary competences of the participants – Granting access
to background/results for/by “Visitors“
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Terminology and Agreements
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Key Terms in Horizon 2020
Projects:
Background
Results
Exploitation
Dissemination
Access Rights
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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).
• Examples: prototypes; cell lines; database rights, licences with the right to
sublicense
Project partners must identify their background in writing!
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Definitions (I)
• Results: All results which are generated under the project – whether or not
protectable.
• Such results may include copyrights, design rights, patent rights, trademarks or
others
• They belong to the partners who have generated them.
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Definitions (II)
• Access rights: User rights (incl. licenses) to results or background of project
partners.
• 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 through which research results are presented to the public.
Official publications (e.g. patent applications) are not considered dissemination.
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Ownership of Results
• In Horizon 2020, generally the grant agreement establishes that the results of the project belong to the
participant generating 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)
• Given the collaborative nature of most projects, some results can be jointly developed by several
participants. Hence, situations of joint ownership might arise.
Joint Ownership Agreements (i.e. defining specific conditions for granting licenses or issues related to costs
of protection and sharing of potential revenues); default rule in Consortium Agreement…
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Partnership Agreement
A MSCA partnership is composed of two types of participants:
Beneficiaries (= legal entities established in MS/AC) - signatories to the Grant Agreement
Partner Organisations (=legal entities established in TC) - not signatories to the Grant
Agreement (consent expressed by Letter of Commitment); i.e. hosting a secondee for a limited
period of time
Management and IP issues within the MSCA partnership are preferably be dealt by means of a
Partnership Agreement (not required but recommended)
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Partnership Agreement
• The Partnership Agreement regulates the relationship among the parties signatories
to the Grant Agreement (beneficiaries) and partner organisations.
• Partnership agreements must be compliant with the obligations laid down in the
Grant Agreement; it usually extends rules & obligations of the GA/CA to the partner
organisations.
• As no models currently exist, in this case participants are highly encouraged to seek
for information and assistance from our helpline.
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Researcher Agreement
• The Researcher Agreement establishes the relationship between the host organisation and the
research fellow;
• The beneficiaries must — on a royalty-free basis — give access to the recruited researchers to
background necessary for their research training activities under the action;
• Further issues: Confidentiality Arrangements; Ownership, Protection and Exploitation of Results;
Publication Rights (PhD thesis);
• Model Employment Contracts for MC fellows in Germany (Networks, Individual): www.kowi.de
Questions/looking for templates??: ask your NCP/EU IPR Helpdesk !!
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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).
• Shall be done 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 sublicences!
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Access Rights (II)
Granting of Access Rights:
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Access Rights for Researchers
• Unlike in other H2020 projects, the MSCA fellows are entitled to access rights to the
beneficiaries’ background and results for the purpose of allowing them to undertake the research
activities under the project.
• These access rights are granted on a royalty-free basis, and only for the duration of the
project.
• Beneficiaries must moreover ensure that partner organisations and entities with a capital or legal link
give similar access.
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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 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.
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IP Management
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Knowledge (IP) ManagementManaging the KEY assets!
IP used by the project
access and usage rights during AND after the project (foreground, background and 3rd party)
IP generated by the project
Capture/disclosure, ownership, management of IP, secure evidence of creation, pre-publication reviews for technical inventions
IP assessment
prior art, market opportunity, exploitation and protection strategies, etc.
IP protection
patents, copyright, database rights, trademarks, etc.
IP dissemination and exploitation (use!)
Research, education, commercial, policy, etc
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IMPACT!societal, environmental, research
technical, commercial, educational
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Key IP Management Tasksto maximise impact
1. Secure the foundations
2. Capture the project outputs
3. Assess and protect the project outputs
4. Disseminate and exploit the project outputs
STRATEGY for management of IP
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EU IP Helpdesk: Further assistance
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Enquiry Helpline
Webinars and
E-learning modules
Training Workshops
Website & Blog
Newsletter, E-Bulletin
Guides and factsheets
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Upcoming Webinars
2019
Date Topic
23 October 2019 IP in EU-funded projects
29 October 2019 IP in Biotechnology
30 October 2019 Technology Transfer
06 November 2019 Freedom to Operate in Horizon 2020
13 November 2019 Consortium Agreements
20 November 2019Effective IP & Outreach Strategies Help Increase the Impact of
Research and Innovation
27 November 2019 The Importance of IP for SMEs
28 November 2019 IP and Artificial Intelligence
04 December 2019IP Management in H2020 with a special focus on Marie Sklodowska
Curie Actions
06 December 2019 Impact and Innovation in H2020
11 December 2019 Maximise the impact of H2020 project results
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Geographical focus
www.ipr-hub.eu
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Contact us!
• www.iprhelpdesk.eu and www.ipr-hub.eu
• Twitter @iprhelpdesk
• LinkedIn /european-ipr-helpdesk
South-East Asia IPR SME Helpdesk
@ iprSEAsiaSouth-East Asia
IPR SME Helpdeskwww.yourIPinsider.eu
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Thank You!
DISCLAIMER
The European IP Helpdesk provides free-of-charge first-line support on IP-related issues aiming to help current andpotential beneficiaries of EU-funded projects, as well as EU SMEs, manage their Intellectual Property assets.
The European IP Helpdesk is managed by the European Commission’s Executive Agency for Small and Medium-sizedEnterprises (EASME), with policy guidance provided by the European Commission’s Directorate-General for InternalMarket, Industry, Entrepreneurship and SMEs (DG Grow).
The information provided by the European Union IP Helpdesk is not of a legal or advisory nature and no responsibility isaccepted for the results of any actions made on its basis. Moreover, it cannot be considered as the official position ofEASME or the European Commission. Neither EASME nor the European Commission nor any person acting on behalf ofEASME or of the European Commission is responsible for the use which might be made of this information.
© European Union (2019)