European IPR Helpdesk

IP in EU-funded projects

Get your ticket to innovation.

Donata Folesani

European IPR Helpdesk Ambassador

Italy

Roadmap

• Setting the scene

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• Setting the scene

• Rules and Agreements

• Specific Vocabulary

• IP in project life cycle

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IP/IPR issues in EU-funded projects

General Frame

Innovation Circle

Generation ofnew knowledge

Marketableassets/

innovation

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new knowledge

EU fundedcollaborativeRTD projects

innovation

Collaborative Projects

It is in the nature of collaborative projects that different partnerswith varying mindsets and interests come to sit at one table.

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University

IndustrySMEs

ROs

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Rules and Agreements

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Where are the rules regarding IP in Horizon 2020 to be found?

Intellectual Property rules

The IP rules in Horizon 2020 can be found in:

(i) the Rules for Participation: Regulation n.

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(i) the Rules for Participation: Regulation n. 1290/2013 artt. 41-49)

(ii) the (model) Grant Agreement (iii) the applicable work programme(iv) H2020 Online Manual: IP section is a work

in progress

How to find: Participant Portalhttp://ec.europa.eu/research/participants/docs/h2020-funding-guide/cross-cutting-issues/intellectual-property_en.htm

Intellectual Property rules

1 2 3

� Rules for Participation: Regulation n. 1290/2013 artt. 41-49� applicable Work Programme

� GRANT AGREEMENT

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1 2 3Project End Before Project

Start

Grant Preparation

& Project

Implementation

�Letter of intent�NDA

�CONSORTIUM AGREEMENT

�Licensingagreement

�Sale and purchaseagreement

Consortium Agreement (CA)

Regulates the relation between consortium partners

Grant Agreement (GA)

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Regulates the relation between consortium partners(= beneficiaries)

Consortium

Agreement

P1

P2

P3

P5

P4

Relation between European Commission and Consortium

EU Commissi

on

P1

P2

P3

P5P

4

Grant Agreement

DOCUMENTO FIRMA

QUANDO

PARTI

CHI

CONTENUTP

COSA

Grant

Agreement

Al termine della

negoziazione

Beneficiari e

Commissione

Europea

Sancisce o diritti e gli obblighi dei

beneficiari nei confronti della UE

le regole di PI non sono

negoziabili

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negoziabili

Consortium

Agreement

Durante la negoziazione

Coordinatore di

Progetto

e

gli altri beneficiari

stabilisce le basi giuridiche per la

suddivisione dei diritti, obblighi e

responsabilità tra I beneficiari

le regole di PI devono essere

concordate tra i partner

Consortium Agreement

• A legal document that regulates the internal work of the Consortium

• Mandatory for the majority of projects

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

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• 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!

• Consortia are responsible for set up the governing rules; the Commission has no binding model, but… see participant portal

• DESCA (Development of a Simplified Consortium Agreement) model; Different options/modules, i.e. related to software development IPCA - ICT industry; EUCAR – Automotive industry

Consortium Agreement - models

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

Software industry

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Software industry

http://www.digitaleurope.org/Services/H2020ModelConsortiumAgreement.aspx

Automotive industry

http://www.eucar.be/Publications&Documents Miscellaneous

Consortium Agreement – IPR sectionAn example from http://www.desca-2020.eu/

Section 1: Definitions Section 2: Purpose Section 3: Entry into force, duration and termination Section 4: Responsibilities of Parties

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Section 4: Responsibilities of Parties Section 5: Liability towards each other Section 6: Governance structure Governance structure for Medium and Large Projects Section 7: Financial provisions Section 8: Results Section 9: Access Rights Section 10: Non-disclosure of information Section 11: Miscellaneous Section 12: Signatures [Attachment 1: Background included] [Attachment 2: Accession document] [Attachment 3: List of Third Parties for simplified transfer according to Section 8.2.2.] [OPTION: Attachment 4: Identified Affiliated Entities according to Section 9.5] [Module GOV SP] [MODULE IPR SC] Specific Software provisions

Grant Agreement – IPR section

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http://ec.europa.eu/research/participants/data/ref/h2020/grants_manual/amga/h2020-amga_en.pdf#page=177

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Specific Vocabulary

Vocabulary

Key terms in the context of Horizon 2020 projects are:

• Background

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• Background

• Results

• Exploitation

• Dissemination

• Access rights

Definitions (I)

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).

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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

ResultsAll 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.

Definitions (II)

Access rightsUser rights (incl. licenses) to foreground or background of project partners.

Exploitation

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ExploitationUtilisation (direct/indirect) of results in research activities, which are notpart of the project, as well as utilisation for further development, creation and marketing of a product or process.

DisseminationMeans trough which research results are presented to the public. Official publications (e.g. patent applications) are not considered as dissemination.

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IP in Project Life Cycle

IP in project life cycle

1 2 3

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1 2 3Project End Before Project

Start

Grant Preparation

& Project Implementation

1. Before Project Start

What to bear in mind…

� Become familiar with the relevant IP provisions of your specific call

� Define your own background, i.e. consider existing knowledge, know-how, IP that you will bring to the project - bear in mind potential rights of third parties that may be needed for the project

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of third parties that may be needed for the project

� Think about confidentiality issues when drafting, discussing and negotiating your ideas and project contribution with others

� Assess the state-of-the-art

� Have a clear plan concerning the dissemination and exploitation ofproject results

� Think about a project name and acronym

� Include costs for potential IP protection in your budget planning

Before Project Start

Every project starts with an idea …

• Define the state of the art

• Search in patent databases & documents (i.e.

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• Search in patent databases & documents (i.e. Espacenet; Assistance: EEN, CoC, PATLIB centres)

• Protect technical drawings (e.g. by copyright)

• Protect all information linked to the idea: Make use of Confidentiality Agreements

• Beware of Third Parties’ IPR infringement (checking acronyms against registered Trade Marks)

contact your legal/patent department as early as possible!

Before project start

Exploitation and dissemination planning

• Convincing outline of exploitation

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• Convincing outline of exploitation strategies on individual/consortium level

• IP-exploitation issues are subject to evaluation regarding impact and implementation. Relevant bodies/competences within the consortium should demonstrate the potential of addressing IP management properly

• Include relevant activities/deliverables: PEDR, Innovation-related workshops, Market Analysis, Business Plans, Risk-Analysis, Freedom-to-Operate analysis, Specific contracts/agreements

Exploitation and Dissemination Plan

Beneficiaries have an obligation to define the expected results and their strategy for exploitation and dissemination.

Hence the following information must be included:

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Hence the following information must be included:

• A list of results the expected that might be exploited (i.e. with commercial or industrial applicability) including their:

� description

� sector of application, and

� protection measures

• A list of all the means through which they intend to bring the results to the public knowledge

• A potential/expected impact – quantifiable – in terms of marketability and research advancement

2. Grant preparation – implementation

What to bear in mind…

� Re-read the IP-related provisions provided in the Grant Agreement

� Specify and agree on central IP arrangements as part of a comprehensive and elaborated Consortium Agreement

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elaborated Consortium Agreement

� Install efficient knowledge management for your project

� Grant access rights to your background and results

� Manage the ownership and transfer of ownership of your results� Protect your project results

� Start disseminating your results taking into account confidentiality obligations

� Constantly review and update the plan for the dissemination and exploitation ofresults

� Be prepared to handle internal conflicts and disputes within your consortium

During implementation

Secure and manage research results

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• Have a clear strategy for securing and managing newly generated knowledge

• Continuously update the exploitation and dissemination strategy plan (and PEDR)

• Monitor regularly relevant external factors affecting your exploitation potential (other projects, publications, patents, markets, competing technologies, standards, norms, etc.)

During implementationAccess 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).

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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 Access to

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Access to background

Access toforeground

Projectimplementation

Royalty-free Royalty-free

Use of results Royalty-free, or on fair and reasonable conditions

Royalty-free, or on fair and reasonable conditions

During implementationResults ownership

generally the grant agreement establishes that the results of the project belong to the participant generating them

The simplicity only apparent: many ownership conflicts may arise when

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The simplicity only apparent: many ownership conflicts may arise when running the project and might become a potential problem for participants

In order to avoid 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*), which can be used to clearly demonstrate who generated a given result

*An Invention Disclosure Form is a document to be completed by the creators of a particular IP setting out the details of its development, as well as details on how it is distinguished from the state of the art.

During implementationResults ownership

Joint Ownership

collaborative nature of most projectssome results can be jointly developed by several participants

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some results can be jointly developed by several participants

In Horizon 2020, results automatically jointly owned if:

- they have been jointly generated by two or more participants

- it is not possible to:establish the respective contribution of each beneficiary, or separate them for the purpose of applying for, obtaining or maintaining their protection

During implementationResults ownership

Joint Ownershipbest practice: to regulate in the consortium agreement the rules among the consortium partners concerning possible jointly owned results

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However, since CA entered into force before the launch of the project and the creation of the results

participants should establish during the project implementation

a separate joint ownership agreement,defining in concrete terms the allocation and terms of exercising their ownership

During implementationResults ownership

Joint ownership agreement

Important clauses to include in the joint ownership agreement:

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� specific conditions for granting licences;� criteria or principles for ‘fair and reasonable compensation’ to be

provided to the other joint owners, if a non-exclusive licence is granted to a third party(if appropriate)

� how disputes will be settled;� how the ownership is divided;� if and how the joint results will be protected, including issues related to

the cost of protection or to the sharing of revenues or profits;� how the joint results will be exploited and disseminated.

During implementationTransfer of results

Participants have the possibility of transferring the ownership of their results to other parties

requirements established in their grant agreement:

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requirements established in their grant agreement:

�the transfer should be done through an agreement (preferably in written form), since beneficiaries must ensure that the obligations of the participant(s) under the grant agreement are passed on to the new owner and that this owner has the obligation to pass them on in any subsequent transfer;

�prior notice is given, at least 45 days before the intended transfer, to the other consortium partners that still have (or still may request) access rights to the results, with sufficient information about the new owner. The right to prior notice can be waived in the case of transfers to a specifically identified third party, which is usually done through the consortium agreement;

�if established in the grant agreement, participants are bound to formally request authorisation from the European Commission in advance, in cases of foreseen transfers to third parties established in a non-EU country not associated with Horizon 2020

During implementationResults protection

IP protection is vital for a prospective commercial or industrial exploitationon the other hand it is not always mandatory

Each beneficiary must examine the possibility of protecting its results and must

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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.

Protection by subject matters

Subject Matter Patent Utility ModelIndustrial

DesignCopyright

Trade

Mark

Confidential

Information

Invention (e.g. device,

process, method1)X X X

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process, method1)X X X

Software X2 X X X

Scientific article X

Design of a product X X X

Name of a

technology/productX

Know How X X X

Website X X X X

[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.

Protection by IPR

IPR What for? Registration?

Patent New inventions Registration is required

Utility modelRegistration is required, but conditions are less

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Utility model New inventionsRegistration is required, but conditions are less

stringent than for patentability

Trade Marks Distinctive signs Registration is required

Industrial Design Appearance of productsRegistration is usually required, but it is

possible to acquire an unregistered design right

CopyrightLiterary, artistic and scientific

works

Not required, but it can be registered in some

countries

ConfidentialityConfidential business

information/trade secrets

Not required, but internal protection measures

needed (i.e. NDAs)

Always use IPR symbols, such as © for copyright, ™ and ® for trademarks, or any other equivalent indicating that it is protected by one or more different IPR

3. Project end and beyond

What to bear in mind…

� Exploit your project results and valorize your IP

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� Disseminate your project results

� Have a conclusive report on the dissemination and exploitation ofproject results ready

� Be aware of post-project obligations concerning IPR provisions

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

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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.

Transfer/Licensing of results (I)

Each beneficiary may transfer ownership of its results.

A beneficiary that intends to transfer owners hip of results must give at least

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A beneficiary that intends to transfer owners hip of results must give at least 45 days advance notice to the other beneficiaries that still have (or still may request) access rights to the results.

Unless agreed otherwise (in writing), any other beneficiary may object within 30 days of receiving notification, if it can show that the transfer would adversely affect its access rights.

In this case, the transfer may not take place until agreement has been reached between the beneficiaries concerned.

Transfer/Licensing of results (II)

Each beneficiary may grant licences to its results. Exclusive licences for results may be granted only if all the other beneficiaries concerned have waived their access rights.

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A beneficiary that intends to transfer ownership or grant an exclusive licence must formally notify the EC before the intended transfer or licensing takes place and:

• identify the specific results concerned;

• describe in detail the new owner or licensee and the planned or potential exploitation of the results, and

• include a reasoned assessment of the likely impact of the transfer or licence on EU competitiveness and its consistency with ethical principles and security considerations.

Transfer/Licensing of results (III)

The EC may – up to 4 years after project completion – object to a transfer of ownership or exclusive licensing of results, if:

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of ownership or exclusive licensing of results, if:

(a) it is to a third party established in a non-EU country not associated with Horizon 2020 and

(b) the EC considers that the transfer or licence is not in line with EUinterests regarding competitiveness or is inconsistent with ethical principles or security considerations

Routes for exploitation

Basic options

• Use for further research

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• 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)

Obligations to disseminate

Project partners are obliged to disseminate the results swiftly (i.e. to scientific community/broader public) by any appropriate means other than that resulting from the formalities for protecting it or exploiting the results, and including the publication of results in

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or exploiting the results, 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 foreground and all required steps

• Inform the other consortium partners in writing 45 days before the planned

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• 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 (I)

OA = online access at no charge to the end-user (plus further distribution and proper archiving)

� to peer-reviewed scientific publications

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� to peer-reviewed scientific publications

� to research data

However, open access:� is not an obligation to publish: only if publishing is the chosen

dissemination route

� does not interfere with the decision to exploit research results commercially e.g. patenting: discussion on open access comes after the decision to protect

� publications are not of a lower quality: they go through the same peer review process as other publications

Open Access (II)

Why open access?

To optimise the impact of publicly-funded research

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To optimise the impact of publicly-funded research

Expected benefits:

• Better and more efficient science � Science 2.0

• Economic growth � Innovation Union

• Broader, faster, more transparent and equal access for the benefit of researchers, industry and citizens � Responsible Research and Innovation

Dissemination: Research results publication 'Green' open access

Open Access (III)

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Decision on IP protection (patenting or other forms of protection)

publication

Exploitation:Research results commercialisation

Open access

'Green' open access

'Gold' open access

Researchresults

Open Access (IV)

The European Commission has published guidelines on Open Access to Scientific Publications and Research Data

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Open Access to Scientific Publications and Research Data in Horizon 2020, that can be downloaded at:

http://ec.europa.eu/research/participants/data/ref/h2020/grants_manual/hi/oa_pilot/h2020-hi-oa-pilot-guide_en.pdf

Costs reimbursements

• Costs of intellectual property rights (IPR), including protecting results (e.g. fees paid to the patent office for

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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)

Further information

Fact sheets

• IP management in Horizon 2020: project proposal

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• IP management in Horizon 2020: grant preparation

• IP management in Horizon 2020: project implementation and conclusion

• Open access in Horizon 2020: FAQs

• Publishing v. patenting

• Exploitation channels for public research results and series on commercialising IP

Check www.iprhelpdesk.eu/library !

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Con l’augurio di essere contattati da voi!

Donata Folesani

European IPR Helpdesk Ambassador, Italia

ASTER, Via Gobetti 101 40129 Bologna

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ASTER, Via Gobetti 101 40129 Bologna

tel +39 051 6398099

donata.folesani@aster.it

Per domande e consulenza di carattere generale potetecontattare l’Helpline team:

service@iprhelpdesk.eu

Tel +352 25 22 33-333 (Helpline)

Fax + 352 25 22 33-334 (Helpline)

www.iprhelpdesk.eu

Per domande relative alle attività formative, inviate una email a: training@iprhelpdesk.eu

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Disclaimer/Legal NoticeThe information and advice contained in this presentation is not intended to be comprehensive and attendants are advised to seek independent professional advicebefore acting upon them. The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained inthis presentation for non-commercial purposes is authorised and free of charge, provided the source is acknowledged. The use of images – other than in the merereproduction of this presentation – is prohibited. The European IPR Helpdesk is not responsible for any impact or adverse effects on third parties connected with the useor 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 European Commission’s Enterprise & Industry Directorate-General. Even though this presentation has been developed with EU funding, the positions expressed are those of the authors and do not necessarily reflect the views of the European Commission or of the EASME.

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