1© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
Intellectual Property Rights (IPR)Intellectual Property Rights (IPR)
and and
Consortium AgreementConsortium Agreement
within thewithin the
Sixth Framework ProgrammeSixth Framework Programme
Magali POINOTMagali POINOT
Representative Officer & Legal CoordinatorRepresentative Officer & Legal Coordinator
[email protected]@ua.es
2© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
1- Generalities1- 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 affect participants’ obligations and rights towards the Community defined by the EC Regulation or the EC contract
3© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
2- Signature2- 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
2- Signature2- 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
44 – – Definitions 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
55 – Ownership – 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
66 – – Joint oJoint ownershipwnership
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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
66 – – Joint oJoint ownershipwnership
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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
77 – – Protection of knowledgeProtection 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
88 – – Use & DisseminationUse & DisseminationUse
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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
99 – – Access rightsAccess 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
99 – – Access rightsAccess rights
Different conditions under which access rights to 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
1010 – – Confidentiality issuesConfidentiality 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© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
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
1111 – – ModelsModels
15© 2004 The IPR-Helpdesk is a project of the European Commission DG Enterprise,co-financed within the fifth framework programme of the European Community
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