intellectual property rights in ec projects

Mexico - April 15, 2005 1

Intellectual Property Rights

in EC projects

Katerina TsakonaFORTH

[email protected]

Bruno Le DantecGEIE ERCIM

[email protected]


Intellectual Property Rights(IPR) provisions govern the ownership, transfer, dissemination and use of research

results generated during FP6 project...

at any time of the project/proposal life• Preparation: patent searches to identify prior ownership, possible

IPR-protected areas, …• Negotiation: specific IPR provisions to be agreed if needed

(consortium agreement), practical IPR management, …• During: protection of the results, management of resulting IPR,

granting of access rights, …,• After: dissemination of the results, use of the results by partners or

third parties

What is it about ?


Clarify ownership of results to ensure a smooth implementation of the project

• Increase certainty of participants’ intellectual property • Protect EC investment• Make available access rights in order to

– promote the use of the knowledge (results of the project)– promote the dissemination of the knowledge

• Same rules for each instrument # FP5• Same rules for each participant # FP5

Why is it needed ?


Know-how ?


• Pre-existing Know-how– know-how needed to carry out the project or to use its results– held by a contractor before the project starts or acquired in parallel

with the project (sideground)– can be protected or secret information– always remain the property of the partner in question– access rights shall be granted on written request

• Points to be considered– identify the information available and mandatory for the project– list what information will be put into or excluded from the project– decide how the pre-existing know-how will be accessed both during

and after the project

Know-how


Knowledge ?


• Knowledge• knowledge is what contractors "get out of" the project• covers both information and rights. • is owned by:

• the contractor who carried out the work generating the K• where several contractors, they must agree on the

allocation and the terms of exercising the ownership• can be transferred with the EC agreement

• Points to be considered• if capable of commercial/industrial application, shall be

protected by participant or EC• partners can use other partners knowledge if they need it,

but limited:• for carrying out their own work under the project• for using their own knowledge

Knowledge


Access rights ?


Access rights


Documents ?


Governing documents

• EC contract & Annex II to EC contract• mandatory regulations, may be sufficient for most of the

projects• http://www.cordis.lu/fp6/find-doc-

specific.htm#modelcontracts• Consortium agreement (CA)

• specify or supplement the provisions of the EC contract• cover all major management issues, intellectual

property, ownership, access rights...• list granted and excluded pre-existing know-how• access rigths can be modified for exploitation• the conclusion of the CA is obligatory - exceptions• it must be signed before the start of the contract• it can be updated at any time


• Access to know-how– could be difficult to identify pre-existing know-how needed or to be excluded– should ensure that the partner is free to grant access to the KH– private companies may be reluctant to share their know-how

• Knowledge generated must be exploited– long term research // applied research - open source // proprietary solution – difficulties to identify who produced the knowledge in large projects – private companies having affiliates may want the knowledge produced to be used

by all their affiliates - IBM, HP, FT…– carefully check the content of any publications to avoid dissemination of

“protected” knowledge– check knowledge produced by employees– EC can decide to directly exploit the results if parties are reluctant in...

• Difficulties to sign the EC contract governed by the Belgium law

Check list


Remember

Clear management of IPR will allow:

• Fair relations

• Good results

• Strong Dissemination

• Use of results


multilingual website

www.ipr-helpdesk.org

legal Helpline e-mail

[email protected]

More informations