IP clauses and IP management in Joint Research and Scientific Partnerships Salvatore Amico Roxas Intellectual Property & Technology Transfer Unit Joint.
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IP clauses and IP management
in Joint Research and
Scientific Partnerships
Salvatore Amico Roxas Intellectual Property & Technology Transfer Unit
Joint Research Centre - European Commission
Email: salvatore.amico-roxas@ec.europa.eu
Bruxelles, 8 February 2010
www.jrc.ec.europa.eu
JRC Mission
… is to provide customer-driven scientific and technical support for the conception, development, implementation and monitoring of EU policies.
As a service of the European Commission, the JRC functions as a reference centre of science and technology for the Union.
Close to the policy-making process, it servesthe common interest of the Member States,while being independent of special interests,whether private or national.
Supporting nuclear safety, citizen’s security, health and environmental protection, safety of food and chemicals, alternative energies, econometrics, prospective technologies…
Joint Research Centre
Our Structure: 7 Institutes in 5 Member States
IRMM - Geel, BelgiumInstitute for Reference Materials and Measurements
ITU - Karlsruhe, GermanyInstitute for Transuranium Elements
IE - Petten, The NetherlandsInstitute for Energy
IPSC - Ispra, ItalyInstitute for the Protection and Security of the Citizen
IES - Ispra, ItalyInstitute for Environment and Sustainability
IHCP - Ispra, ItalyInstitute for Health and Consumer Protection
IPTS - Seville, SpainInstitute for Prospective Technological Studies
> 2,800 staff across Europe
2900 staff, 300 M€/y budget (+ 40 M€/y competitive income)
Joint Research Centre
JRC manages the IP portfolio of the European Communities (patents, trade marks, software, copyrights, …) and offer support on IP issues to all EU institutions (European Commission, Council, European Parliament, agencies, …)
Patent portfolio over 115 patents, 30 software
165 trade marks
Support in the exploitation of the technologies
Support on IP issues in R&D collaborations
Joint Research Centre
IP issues within Joint R&D partnerships
Internal IP management aspects, meaning the provisions governing IP aspects within the members of the partnership;
Knowledge transfer aspects, meaning those IP aspects that entail relationships with third parties;
Governance aspects, meaning the provisions ruling the way a partnership is established and managed.
Three main categories of IP-related issues:
Internal IP management aspects
Ownership of results
Notification of R&D results
Protection strategy
Identification and scope of Background (and, eventually,
Sideground) available
Access rights to Background and Foreground (and, eventually,
Sideground)
Conditions for granting access rights
IP and human resources in research activities
Reporting/Monitoring
Knowledge transfer aspects
Planning of direct and indirect exploitation
activities
Indirect exploitation: Conditions for IP licensing
to third parties
Indirect exploitation: Conditions for IP transfer
to third parties
Incentives for New Technology Based Firms
(NTBFs)
Knowledge dissemination
Governance aspects
Competence for IP-related decision
Complementarity between obligations deriving from different funding sources
New parties entering
Parties leaving
Ensuring fairness in IP aspects
IP issues within Joint R&D partnerships
IP issues - Internal IP management aspects 1/2
• Categorizing the items (Background, Foreground, Sideground etc.), in order to proper consider the parties contributions and the aspects of the use of rights in the context of time.
• Ownership and Joint Ownership – how to assign ownership to participants?
• Protection strategy: part of an asset management strategy within a R&D partnership, rather than being completely left to the autonomy of the individual owners of the results – interest of all parties should be taken into account!
• IP and human resources (legal differences between countries – professor’s privilege versus institutional ownership).
• Reporting:
- Purpose of reporting;
- What to be monitored: knowledge transfer activities (number of licences, NTBFs, revenues, etc.), research results (number of publications, IP assets, etc.), economic impact (employment, new products…), societal impact (safety, health, ageing).
IP issues - Internal IP management aspects 2/2
Example of clauses:
• Criteria to assign results ownership:
1) financial input; 2) intellectual input; 3) capacity to exploit.
• Joint ownership: Default rule to overcome impasse in exploitation of jointly owned results (in order to allow parties to individually exploit a result, subject to an agreement on compensation).
• Employees’ rights: entitlement to claim rights on IP by employees and non-employees (researchers, students) should not hamper the activities of the R&D partnership – each partner should commit itself to solve eventual conflicts.
IP issues - Knowledge transfer aspects 1/2
• Planning of direct and indirect exploitation activities: identification of the viable exploitation routes and foresee a proper role of each party in the exploitation strategy.
- Rights of subcontractors
- Rights of companies providing technical supports
- Rights of end-users
• Licensing and transfer policy: to be agreed within participants, in order to ensure fairness in the deals and adequate compensation (financial or not). Special focus on transfer of ownership and granting of exclusive licences.
• Dissemination policy: to be agreed in a way not to hamper protection and exploitation of the results and retain control over confidential information.
IP issues - Knowledge transfer aspects 2/2
Example of clause for providing incentives to NTBFs:
• Non-exclusive licensing of the relevant rights which may convert to an exclusive granting (or to an assignment) once the NTBFs has reached predefined milestones (e.g. in terms of product development, amount of funds raised etc.).
• Providing for some form of right-of-first-refusal on improvements and further developments of a technology.
• Allowing the NTBFs to collaborate on further developments of a technology.
• Consultancy agreements.
• Competence for IP-related decision: internal IP body versus external consultancy on IP issues.
• New parties entering: avoid unreasonable restrictions on their IP rights and, at the same time, safeguard the interest of other partners.
• Partners leaving: consider detailing the main conditions, procedure and consequences for voluntary and "imposed" departure, with a view to avoid that the departure jeopardizes partnership work.
• Ensuring fairness in IP aspects: ensure that parties with less negotiating power than others (e.g. SMEs), or with less experience in terms of IP management, may negotiate IP conditions on an equal footing.
IP issues - Governance aspects 1/2
IP issues - Governance aspects 2/2
Example of clauses to ensure the protection of “weaker parties” interests:
• Establishing a default regime, globally favourable to all parties. Amendments could be negotiated with the consent of all parties and under some form of compensation.
• Foreseeing appropriate provisions governing the partnership management (e.g. as regards decision mechanisms and required quorums and procedures for decisions to be binding for the whole partnership).
• Competence on IP-related decisions assigned to an internal body representing, on an equal footing basis, the different parties – possibly with the support of external expert (e.g. IP body).
FP7
FP7 - Diagram of the project developments
Participant A Foreground Protection Dissemination
Use
Notification(if no protection plans)
Notification
Participant B
Background
Participant C
Access rights
Access rights
AT ALL STAGES
Before Project
Proposal preparation, incl. “potential impact” Defining project-related know-how Defining IP-protected areas Negotiating a CA Negotiating with the EC
During Project
Strategy for protection & management of foreground Granting of access rights
After Project
Protection of generated IP Exploitation of the results Dissemination
(PUDF)
IPR – a strategic factor in a successful FP7 projects
Sources of provisions on FP7 IPR aspects
• Rules for participation (EC)
• EC Grant Agreement (and related Annexes, Annex II in particular)
• Consortium Agreement
European Commission
↕Coordinator
Participant
Participant Participant
↓
←
↑
→
Grant agreement and Consortium agreement
Technical provisions
Financial structure and Management structure
Intellectual Property Participant = Beneficiary
Grant agreement
Consortium agreement
Strong dependence of IP rules on the nature and goals of R&D partnerships;
Need for flexibility, since there can be events influencing the course of a project and giving rise to a need for change;
Need to understand the individual needs and positions of the parties involved in the partnership and foresee an adequate role for each one;
Take into account cross-border issues;
Focus on clarifying and setting the terms of the partnership as clearly as possible before relevant activities start.
Final considerations 1/3
Model Contracts
They may help in saving time and efforts in negotiating IP-related clauses and increase the likelihood of reaching a consensus among the parties;
They may help in making parties aware of the IP issues arising from R&D partnerships;
….but
They should be properly understood and tailored to the partnership needs and goals!
Links:- Lambert Agreements: http://innovation.gov.uk/lambertagreements/ - CREST Collaboration Decision Guide: http://ec.europa.eu/invest-in-research/policy/crest_cross_en.htm
- Commission Recommendation on the management of intellectual property in knowledge transfer
activities and Code of Practice for universities and other public research organisations: http://ec.europa.eu/invest-in-research/pdf/ip_recommendation_en.pdf
- FP7 Consortium Agreement models: http://www.ipr-helpdesk.org/Consortium_agreement-FP7.html
Final considerations 2/3
IPR-Helpdesk
- Assisting on “IPR issues” in RTD projects (Communitarian and International)
- Raising the awareness of and training the research community on IPR
http://www.ipr-helpdesk.org
Final considerations 3/3
…in case of need of help on IP issues in FP7 projects…..
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