IP clauses and IP management in Joint Research and Scientific Partnerships Salvatore Amico Roxas Intellectual Property & Technology Transfer Unit Joint.

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: [email protected]

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…..