European IPR Helpdesk

Get your ticket to innovation.

TALLER SOBRE ASPECTOS CRÍTICOS EN LA ELABORACIÓN DE LAS PROPUESTAS EN FASE 2

Instituto Nacional de Salud Carlos III

Michele Dubbini14th April 2016

Impact and Innovation in H2020

Eurice - History founded in 2000 to assist and consult scientists from academia and industry in the

area of EU project management and dissemination of project outcomes

portfolio of EU & other international funding programmes (H2020, FP4-7, COST, EDCTP, …)

large experience in FP7-participation: in the top 20 among 10.800 SME-participants in FP7 (EC-Monitoring Report 08/2013)

40 staff members with different scientific and non-scientific backgrounds

currently managing ~80 running projects, of which ~40 coordinated, with a strong focus on Life Sciences

Several institutional collaborations (Saarland University, different Leibniz Institutes)

21.02.2017 2

Eurice - Location

21.02.2017 3

Berlin

Saarbrücken

Eurice - Services

1 - Strategic Advise

2 - Proposal Support

3 - Project Administration

4 - Project Management

5 - Communication & IP management

21.02.2017 4

Objectives

Analyse the road to impact

Point out the problematics that beneficiaries experience

Understand the services of the European IPR Helpdesk and how it can be useful for you

HORIZON 2020The New EU Framework Programme for Research and Innovation (2014-

2020)

Idea to Impact!

Nurture and Develop

Creation/Research

Capture

Protect

Idea/Concept

Innovation

Bring to market

IMPACT!

Idea to Impact!

Nurture and Develop

Creation/Research

Capture

Protect

Idea/Concept

Innovation

Bring to market

IMPACT!

BackgroundTangible 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

Results

All results which are generated under the project – whether or not protectable. Such results may include copyrights, designor patent rights, trademarks or others, and belong to the partners who have generated them.

Idea to Impact!

Nurture and Develop

Creation/Research

Capture

Protect

Idea/Concept

Innovation

Bring to market

IMPACT!

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 jointlydeveloped by several participants. Hence, situations of joint ownership mightarise.

> 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 ..

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 made 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 sub-licences.

Access Rights (II)

Granting of Access Rights

Access to background Access toresults

Project implementation Royalty-free Royalty-free

For exploitation Royalty-free, or on fairand reasonable conditions

Royalty-free, or on fairand reasonable conditions

Grant Agreement (I)

Relationship between the European Commission and Consortium

EU Commission

P1

P2P3

P5

P4

Grant Agreement

General obligation to protect

Each beneficiary must examine the possibility of protecting its results and must adequately protect them — for an appropriate period and with appropriate territorial coverage — if:

(a) the results can reasonably be expected to be commercially or industrially exploited and

(b) protecting them is possible, reasonable and justified (given the circumstances).

When deciding on protection, the beneficiary must consider its own interests and the interests (especially commercial) of the other beneficiaries.

Intellectual Property (IP)

Products of the mind

Products of research, experimentation and creativity

Intellectual Property, like Physical Property can be a valuable asset.

Like physical property, intellectual property is an asset which can be traded

Intellectual Property Rights (IPR)

The law provides legal “rights” to protect your Intellectual Property, known as Intellectual Property Rights (IPRs)

• Patents (technical inventions)

• Copyright (Software, Written works,

Engineering drawings, Semiconductor Topologies, etc)

• Design Rights (appearance)

• Database Rights (creation and arrangement

of data)

• Trade marks

• Plant Breeders Rights

• Utility Models/petty patents

• etc

• Confidentiality Agreements (Know-

how)

• Secrets (Trade Secrets)

• National rights

• Time limited rights

• NOT ONLY PATENTS

European IPR Helpdesk

Protection by subject matters

[1] Except methods exculded from patentability by virtue of Articles 52(2)(c) and (3) and 53(c) EPC.[2] Software patentability is still a debated issue given its exculsion as subject matter as by Article 52(2)(c) and (3) EPC.

Intellectual Property Rights (IPR)

WHY?

• To promote innovation by encourage invention and creativity, and thereby creating benefits for the society

HOW?

A limited monopoly in return for publishing the invention is granted

Secrecy is avoided, stimulating further innovation and thus enriching society

The creator benefits by preventing unauthorized use by others, unless they come to an agreement (usually financial!)

Costs reimbursements

• Costs of intellectual property rights (IPR), including protecting results (e.g. fees paid to the patent office for patent registration) and royalties on access rights are eligible costs

• Cost for open access publications are also considered eligible by the GA, e.g. Author Processing Charges (APCs)

• Ask your legal/financial NCP!

European IPR Helpdesk

Why is it important to consider IP in H2020?

The Rules for Participant establish best efforts commitment of participants to exploit their own results.

IP and exploitation issues are subject to evaluation regarding impact and feasibility of the proposal.

A convincing outline of IP management and exploitation strategies on individual and consortium level within the proposal is a relevant matter.

Results of research and development activities require further and often substantial investments to take them to market, which is appealing if the results are well protected through intellectual property.

Properly managing IP in the projects, helps participants to avoid future conflicts among the consortium.

Idea to Impact!

Nurture and Develop

Creation/Research

Capture

Protect

Idea/Concept

Innovation

Bring to market

IMPACT!

Obligations to disseminate

Project partners are obliged to disseminate the results swiftly (i.e. to scientific community/broader public) by any appropriate means and including the publication of results in any medium.

But:

• no dissemination of results may take place before decision is made regarding their possible protection, and

• all patent applications, publications or any other dissemination (also in electronic form) shall include a statement that the action received financial support from the Union – The same applies to results incorporated in standardisation activities.

Dissemination checklist

• Take a decision about the protection of results and all required steps

• Inform the other consortium partners in writing 45 days before the planned dissemination activities and include enough information to allow them to analyse whether their interests are affected or not. Note that this time limit can be changed (for more or less days) in the CA. Wait 30 days for any objection to the dissemination (unless otherwise agreed in the CA).

• Beware not to infringe third parties' intellectual property rights

• Open access as a general principle of scientific dissemination

• List the dissemination activities in the Exploitation and Dissemination Plan

Open Access

Open access as a general principle of scientific dissemination

Each beneficiary must ensure open access (free of charge, online access for any user) to all peer reviewedscientific publications relating to its results

More information?

Fact Sheet:

Open access to publication and data inH2020: FAQ

Communication of activities vs Dissemination of results

Project

First project outputs

Communication activities

Dissemination of results

Exploitation of results

Start End

Review and Protect

Idea to Impact!

Nurture and Develop

Creation/Research

Capture

Protect

Idea/Concept

Innovation

Bring to market

IMPACT!

Exploitation

Exploitation can be commercial or further research

European IPR

Helpdesk

Technology Readiness LevelsWhere are you starting from and where do you want to go?

Basicinvention

Lab demo/ Proof of Concept

Working prototype/Market acceptance

Scale-upvalidated

Market Ready

Invention

value

BasicResearch

MarketDeployment

321 4 5 6 7 8 9

Technology Readiness Level (TRL)

Routes for use/exploitation

• Use for further research

• Developing and selling own products/services

• Spin-Off activities

• Cooperation agreement/Joint Ventures

• Selling IP rights/Selling the (IP based) business

• Licensing IP rights (out-licensing)

• Standardisation activities (new standards/on-going procedures)

Idea to Impact!

Nurture and Develop

Creation/Research

Capture

Protect

Idea/Concept

Innovation

Bring to market

IMPACT!

Innovation

The successful exploitation (not necessarily commercial) of new ideas to produce tangible benefits

Invention Innovation

exploitation

Invention IS NOT Innovation

Innovation Potential

How much benefit?

Innovation Capacity

• Can the invention/new creation/design be used to develop other innovations?

Innovation Impact

The extent of the benefits derived from the innovation

H2020 Evaluation Criteria: “The extent to which the outputs of the project should contribute at the European and/or International level to the expected impacts listed in the work programme under the relevant topic.

Idea to Impact!

Nurture and Develop

Creation/Research

Capture

Protect

Idea/Concept

Innovation

Bring to market

IMPACT!

STOP

Problems in the road to impact

Common problems of Beneficiaries in Horizon 2020 projects

Early/unwanted disclosures from other parties of the consortium

Impossibility to properly exploit the results of the project

Risk to lose strategic information to the consortium

Risk that such information is going to be used by competitors

Consortium Agreement (CA)

Regulates the relation between consortium partners(= beneficiaries)

ConsortiumAgreement

P1

P2

P3

P5

P4

Consortium Agreement (II)• A legal document that regulates the internal work of the Consortium

• Mandatory for all the projects

• Legal basics: Grant agreement (+ Annexes)/ RfP

• Implements the provisions of the Grant Agreement/programme rules

• May in no way contradict the prerequisites laid out in the EU Agreement/programme rules; the latter always take precedence!

• The CA should be worked out during the “time to grant” at the latest ; be prepared!

DESCA (Development of a Simplified Consortium Agreement) model; Different options/modules, i.e. related to software development MCARD-2020 - ICT industry; EUCAR – Automotive industry; IMG4 - Model Consortium Agreement for the Aeronautics projects

http://www.desca-2020.eu/

Early/unwanted disclosures from other parties of the consortium

In this case it is necessary to pay attention to the Consortium Agreement:

DESCA model Section 5.2:

“No party shall be responsible to any other party for any indirect or consequential loss provided that such damage was not caused by a willful act or by a breach of confidentiality”

Confidentiality agreements:

Mutual non disclosure agreement (European IPRHelpdesk’s)

One-way non disclosure agreement (European IPRHelpdesk’s)

Non disclosure agreement templates (UKPTO)

Templates of confidentiality agreements:

Impossibility to properly exploit the results of the project

Access rights

Transfer of results: Assignments etc.

- Have to be communicated 45 days in advance

- Other parties have 30 days to object to the transfer

- Other specific rules laid down by the Grant Agreement

Impossibility to properly exploit the results of the project

Exclusive Licenses:

- Art 30 Grant Agreement may be granted if they do not affect access rights of other parties of the Consortium…

…In other words, in order to obtain a exclusive license it is necessary that the other parties of the consortium waive their access rights.

Risk of losing strategic information to the consortium

VERY IMPORTANT: ATTACHEMENT 1 Consortium Agreement.

It gives the chance to the parties to limit the background they bring into the project

Option 1: The background included brought into the project is expressly written down

Option 2: No data know how or information of the party shall be needed by another party for implementation of the project or exploitation of that party results.

Risk that such information is going to be used by competitors

At the beginning of the project:

Check attachment 4 of the consortium agreement: List of affiliate entities

During the project:

Possibility to object to transfer, licenses etc. towards third parties and affiliate entities

Credits© istockphoto.com/maridav© istockphoto.com/Bliznetsov© Iambic Innovation Ltd

Disclaimer/Legal NoticeThe information and advice contained in this presentation is not intended to be comprehensive and attendants are advised to seek independent professional advice before acting upon them.The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained in this presenation for non-commercial purposes isauthorised and free of charge, provided the source is acknowledged. The use of images – other than in the mere reproduction of this presentation – is prohibited. The European IPR Helpdesk isnot responsible for any impact or adverse effects on third parties connected with the use or re-use made of the information contained in this presentation.

The European IPR Helpdesk is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises (EASME), with policy guidance provided by the EuropeanCommission’s Enterprise and Industry Directorate - General. Even though this leaflet has been developed with the financial support of the EU, the positions expressed are those of the authorsand do not necessarily reflect the official opinion of EASME or the European Commission. Please see our full disclaimer at www.iprhelpdesk.eu.

© European Union (2011-2015)

Presentation produced by Dr. Eugene Sweeney, Iambic Innovation Ltd. December 2015