laurence dumoulin legal team 6 4 - 6 6, a v e n u e v i c t o r h u g o l - 1 7 5 0 l u x e m b o u...

Laurence DUMOULINLaurence DUMOULIN

LEGAL TEAMLEGAL TEAM

6 4 - 6 6 , a v e n u e V i c t o r H U G O L - 1 7 5 0 L U X E M B O U R G

Tel. (+352) 47 11 11 1 Fax (+352) 47 11 11 60 [email protected] www.cordis.lu/ipr-helpdesk

6 4 - 6 6 , a v e n u e V i c t o r H U G O L - 1 7 5 0 L U X E M B O U R G

Tel. (+352) 47 11 11 1 Fax (+352) 47 11 11 60 [email protected] www.cordis.lu/ipr-helpdesk

IPR issues within FP5 Model contracts

Consortium Agreements

IPR issues within FP5 Model contracts

Consortium Agreements

PROGRAMMEPROGRAMME

RTD Project(cost reimbursement)

Cooperative Research (CRAFT)

RTD Project(cost reimbursement)

Cooperative Research (CRAFT)

R & D P r o j e c t s u n d e r t h e 5 F P

DefinitionsDefinitions

Rights resulting from the contractRights resulting from the contract

Obligations resulting from the contract

Obligations resulting from the contract


Structure of an RTD Project(Cost Reimbursement)Structure of an RTD Project(Cost Reimbursement)

Principal Contractor

A


A


B


B


C


C


D


D

Assistant ContractorAssistant

Contractor

Legalagreements

Legalagreements

ModelContractModelContract

Consortium agreementConsortium agreement

Contractbetween Principal Contractors and Assistant Contractor(s)

Contractbetween Principal Contractors and Assistant Contractor(s)

Technical SupervisionTechnical Supervision

EUROPEANCOMMISSIONEUROPEANCOMMISSION


Pre-existing know-how

Pre-existing know-how

DefinitionsDefinitions

KnowledgeKnowledge

Access rightsAccess rights


Pre-existing Know-how and KnowledgePre-existing Know-how and Knowledge

Pre-existing Know-howPre-existing Know-how

KnowledgeKnowledge

"Pre-existing know-how" means information, other than knowledge, held by the contractors prior to the conclusion of the contract or acquired in parallel with it and necessary for carrying out the project, as well as copyright or rights attaching to such information following applications for, or the issue or registration of, patents, designs and models, plant varieties, additional certificates or other similar forms of protection.

"Pre-existing know-how" means information, other than knowledge, held by the contractors prior to the conclusion of the contract or acquired in parallel with it and necessary for carrying out the project, as well as copyright or rights attaching to such information following applications for, or the issue or registration of, patents, designs and models, plant varieties, additional certificates or other similar forms of protection.

Knowledge means results, including information, arising from any project of the 5FP, as well as copyright or rights attaching to the results following applications for, or the issue of registration of, patents, designs and models, plant varieties, additional certificates or other similar forms of protection.

Knowledge means results, including information, arising from any project of the 5FP, as well as copyright or rights attaching to the results following applications for, or the issue of registration of, patents, designs and models, plant varieties, additional certificates or other similar forms of protection.


Ownership ofpre-existing know-how:

Ownership ofpre-existing know-how:

OwnershipOwnership

Ownership ofknowledge:Ownership ofknowledge:

Remains the property of the partner who has bring it into the project

Remains the property of the partner who has bring it into the project

Is the property of the contractors who have generated it

Is the property of the contractors who have generated it


… will be given to RTD Project partners upon request

… will be given to RTD Project partners upon request


…are granted on a non-exclusive basis (general principle)…are granted on a non-exclusive basis (general principle)

…can be refused…can be refused

…can be granted under more favourable conditions…can be granted under more favourable conditions

Duration of access rightsDuration of access rights

Access rights...Access rights...


Access rights: Pre-existing Know-HowAccess rights: Pre-existing Know-How

For carrying out the projectFor carrying out the project

For useFor use

Principal contractorsPrincipal contractors

Assistant contractorsAssistant contractors

Any principal contractorsin the samespecific programme


Complementary contractors (both principal and assistantexcept case above)


Favourable conditions if necessary to carry-out their work in the project

Favourable conditions if necessary to carry-out their work in the project

Favourable conditions if necessary to use the knowledge of the project

Favourable conditions if necessary to use the knowledge of the project

Favourable conditions to the pre-existing know-how of their principal contractor(s) or its assistant contractor(s) of their principal contractor(s) if necessary to carry-out the project.Market Condition to the pre-existing Know-how of other Principal contractors or other assistant contractors.

Favourable conditions to the pre-existing know-how of their principal contractor(s) or its assistant contractor(s) of their principal contractor(s) if necessary to carry-out the project.Market Condition to the pre-existing Know-how of other Principal contractors or other assistant contractors.

Subject to arrangements between parties(determination of the knowledge, duration, financial

conditions)


conditions)



For useFor use



Any principal contractorsin the same specific programme

Any principal contractorsin the same specific programme



Royalty-free basis to knowledge necessary to carry-out their work in the project

Royalty-free basis to knowledge necessary to carry-out their work in the project

Royalty-free basis to all knowledge resulting from the project.Favourable conditions to knowledge generated out of the project if necessary to use knowledge resulting from the project.

Royalty-free basis to all knowledge resulting from the project.Favourable conditions to knowledge generated out of the project if necessary to use knowledge resulting from the project.


conditions)


conditions)

Royalty-free basis to the knowledge of their principal contractor(s), or its assistant contractors, necessary to carry-out their work in the project.Preferential conditions to the knowledge of other principal contractors or other assistant contractors.

Royalty-free basis to the knowledge of their principal contractor(s), or its assistant contractors, necessary to carry-out their work in the project.Preferential conditions to the knowledge of other principal contractors or other assistant contractors.

Preferential conditions to the knowledge of the principal contractor(s) or its (their) assistant contractors necessary to use the knowledge they have generated.Market conditions to the knowledge of other principal contractors or other assistant contractors.

Preferential conditions to the knowledge of the principal contractor(s) or its (their) assistant contractors necessary to use the knowledge they have generated.Market conditions to the knowledge of other principal contractors or other assistant contractors.

Preferential conditions and subject to legitimate interests to the knowledge necessary to carry out their work in their own projects.Not applicable to participants from third countries.

Preferential conditions and subject to legitimate interests to the knowledge necessary to carry out their work in their own projects.Not applicable to participants from third countries.

Market conditions and subject to legitimate interests to the knowledge generated by the project necessary to use the knowledge generated by them. Not applicable to participants from third countries.

Market conditions and subject to legitimate interests to the knowledge generated by the project necessary to use the knowledge generated by them. Not applicable to participants from third countries.

Access rights: KnowledgeAccess rights: KnowledgeR & D P r o j e c t s u n d e r t h e 5 F P

Refusal to grant access rights for exploitation(Details may be defined in the consortium agreement)

Refusal to grant access rights for exploitation(Details may be defined in the consortium agreement)


If contractor is exploiting it himself

Refusal shall only be justified, however, when it is economically indispensable in view, in particular, of the market, the risks and the investment required to exploit the knowledge

Refusal shall not affect the obligation, in accordance with Article 13(1), first and third subparagraphs, of Annex II, to grant access rights to a requester for the use of his own knowledge.

If contractor is exploiting it himself

Refusal shall only be justified, however, when it is economically indispensable in view, in particular, of the market, the risks and the investment required to exploit the knowledge

Refusal shall not affect the obligation, in accordance with Article 13(1), first and third subparagraphs, of Annex II, to grant access rights to a requester for the use of his own knowledge.

R T D P r o j e c t s u n d e r t h e 5 F P

Principle:non-exclusive basisPrinciple:non-exclusive basis

Access rights on exclusive basis?Access rights on exclusive basis?

Exceptionally: Exclusive access rights to their knowledge resulting from the project for exploitation purposes:

In compliance with competition policy, and Article 81(3) Treaty

Exceptionally: Exclusive access rights to their knowledge resulting from the project for exploitation purposes:

In compliance with competition policy, and Article 81(3) Treaty

Provided that they are economically indispensable,taking into account in particular the market, the risks involved and the investments required.

They must be granted on market conditions

Information of the other contractors in good time

Principal contractors may indicate their commitment to exploit such knowledge. In that case, the access rights may not be granted on an exclusive basis

Provided that they are economically indispensable,taking into account in particular the market, the risks involved and the investments required.

They must be granted on market conditions

Information of the other contractors in good time

Principal contractors may indicate their commitment to exploit such knowledge. In that case, the access rights may not be granted on an exclusive basis


Duration of Access RightsDuration of Access Rights

For carrying outof the project

For carrying outof the project

For useFor use

Principal and Assistant Contractors(period of time)

Principal and Assistant Contractors(period of time)

Principal contractorsof the same specific programme(period of time during which the AR can be requested)

Principal contractorsof the same specific programme(period of time during which the AR can be requested)

Knowledge and Pre-existing Know-howKnowledge and Pre-existing Know-how

For the duration of the project


2 years after the end of their project

2 years after the end of their project

For the duration of their project

For the duration of their project

5 years after the end of the project


CRAFT: The Concept CRAFT: The Concept

SME

ASME

ASME

BSME

BSME

CSME

CSME

DSME

D

Consortium agreement


EUROPEANCOMMISSIONEUROPEANCOMMISSION

RTDPerformersRTDPerformers

Model XModel X

CRAFT ContractCRAFT Contract


Ownership of knowledge:Ownership of knowledge:OwnershipOwnership

MODEL X:MODEL X:

Knowledge resulting from work carried out under co-operative research projects shall be the joint property of the SMEs who act as Principal Contractors in the project.

Knowledge resulting from work carried out under co-operative research projects shall be the joint property of the SMEs who act as Principal Contractors in the project.

A standard subcontracting agreement concluded between the SME contractors and the RTD Performers is proposed in the Model X in order to define the project and the financial aspect relating to it. The provisions of this agreement are the "minimum" required on determining the agreement between SME contractors and the RTD Performers.(May be completed in a Consortium Agreement)

A standard subcontracting agreement concluded between the SME contractors and the RTD Performers is proposed in the Model X in order to define the project and the financial aspect relating to it. The provisions of this agreement are the "minimum" required on determining the agreement between SME contractors and the RTD Performers.(May be completed in a Consortium Agreement)


Access Rights - Craft projectAccess Rights - Craft project

Principal Contractors (SME)

Principal Contractors (SME)

RTD -PerformersRTD -Performers

KnowledgeKnowledgeFor the execution of the projectFor the execution of the project

For exploitation

For exploitation

AR on royalty-free basis for knowledge necessary to carry out their work in the project (in case of no joint ownership).

AR on royalty-free basis for knowledge necessary to carry out their work in the project (in case of no joint ownership).

AR on royalty-free basis to all knowledge resulting from the project (in case of no joint ownership.

AR under favourable conditions for knowledge generated out of the project if necessary to exploit knowledge resulting from the project.

AR on royalty-free basis to all knowledge resulting from the project (in case of no joint ownership.

AR under favourable conditions for knowledge generated out of the project if necessary to exploit knowledge resulting from the project.

AR on royalty-free basis for knowledge necessary to carry out their own work in the project.

AR on royalty-free basis for knowledge necessary to carry out their own work in the project.

Under the decision of the SME contractor notably for the purpose of subsequent research activities and under which conditions.



Access Rights - Craft projectAccess Rights - Craft project

Pre-existing Know-howPre-existing Know-howFor the execution of the projectFor the execution of the project

For exploitationFor exploitation

AR on royalty free basis for the pre-existing know-how necessary to carry out their own work in the project

AR on royalty free basis for the pre-existing know-how necessary to carry out their own work in the project

AR on royalty-free basis for the pre-existing know-how necessary to carry out their work in the project.

AR on royalty-free basis for the pre-existing know-how necessary to carry out their work in the project.

AR under favourable conditions to the pre-existing know-how necessary to exploit the knowledge of the project.

AR under favourable conditions to the pre-existing know-how necessary to exploit the knowledge of the project.



Principal Contractors(SME)

Principal Contractors(SME)

RTD -PerformersRTD -Performers


Duration of Access RightsDuration of Access Rights


For useFor use

SME contractors and RTD Performers

SME contractors and RTD Performers

Knowledge and Pre-existing Know-howKnowledge and Pre-existing Know-how






Obligation resulting from the contractObligation resulting from the contract

Obligation to use results, otherwise to disseminate

Obligation to use results, otherwise to disseminate

Obligation to protect the knowledge obtained

Obligation to protect the knowledge obtained

Technological implementation plan

Technological implementation plan

1.1.2.2.3.3.

R &D P r o j e c t s u n d e r t h e 5 F P

R &D P r o j e c t s u n d e r t h e 5 F P

Technological implementation PlanTechnological implementation Plan1/21/2

Synthetic jointpreamble:Synthetic jointpreamble:

Project and results

description

Project and results

description

Names of participantsand ownersNames of participantsand owners

Submitted by the coordinatorSubmitted by the coordinator

2/22/2

Individual estimateof distribution and valorization modalities

Individual estimateof distribution and valorization modalitiesIntentionsIntentions

Submitted by each contractor individuallySubmitted by each contractor individually

AchievementsAchievementsIndicativescheduleIndicativeschedulePlannedresources

PlannedresourcesNecessarydocumentationNecessarydocumentation

R & D P r o j e c t s u n d e r t h e 5 F PTechnological

implementation PlanTechnological implementation Plan

Reimbursementof protection costs

only if...Reimbursementof protection costs

only if...

Compatibility with the

competition rules

Compatibility with the

competition rules

Prior writtenagreementof the Commission

Prior writtenagreementof the Commission

Reimbursement of Protection Costs Reimbursement of Protection Costs R & D P r o j e c t s u n d e r t h e 5 F P

Which costscan be reimbursed ?Which costscan be reimbursed ?

Under some specific conditionsand for a limited amount,costs related to

Under some specific conditionsand for a limited amount,costs related to

Preliminary searchon patent documentsPreliminary searchon patent documents

Official feesto obtain a patent ora patent extension

Official feesto obtain a patent ora patent extension

patent agent servicespatent agent services


Which costswill NOT be reimbursed ?Which costswill NOT be reimbursed ?

Costs related to the creation andCosts related to the creation and

TranslationcostsTranslationcosts

Costs related toaccess rightsCosts related toaccess rights

commercialisationcommercialisationof products and servicesof products and services


Consortium Consortium AgreementsAgreements

for Participants in R T D for Participants in R T D P r o j e c t s P r o j e c t s u n d e r F P 5u n d e r F P 5

I P R - H e l p d e s k

WarningWarning!!WarningWarning!!The EC model contract is used for hundreds of projects that have important differences between them.

The CA should develop and supplement the aspects that are particular to the specific project and that are not contemplated in the standard contract.

The CA will need to cover all the major management issues, especially in the area of intellectual property: ownership, management and access to rights.

The EC model contract is used for hundreds of projects that have important differences between them.

The CA should develop and supplement the aspects that are particular to the specific project and that are not contemplated in the standard contract.

The CA will need to cover all the major management issues, especially in the area of intellectual property: ownership, management and access to rights.



Should not conflict with the EC contract. In caseof conflict formal recognition of the supremacy of the EC contract

Should not conflict with the EC contract. In caseof conflict formal recognition of the supremacy of the EC contract

Sign by the participants in a project, not by the CommissionSign by the participants in a project, not by the Commission


= agreement concluded between contractors in order to specify or supplement, between themselves, the provisions of the EC model contract


= agreement concluded between contractors in order to specify or supplement, between themselves, the provisions of the EC model contract

It is not obligatory, but strongly recommended by the CommissionIt is not obligatory, but strongly recommended by the Commission

References to the CA within the RTD contract References to the CA within the RTD contract

Article 1 of part A of Annex II of the model contractArticle 1 of part A of Annex II of the model contract

Article 2.2.B of Annex II of the model contractArticle 2.2.B of Annex II of the model contract

Article 8.2 of Annex II of the model contractArticle 8.2 of Annex II of the model contract



Article 15 of Annex II of the model contractArticle 15 of Annex II of the model contract

…...…...


Consortium agreements:Consortium agreements:

Checklist for Consortium Agreements Tutorial on Consortium Agreements

Guidelines on the conformity of Consortium Agreements with the EC Model Contract

Guidelines on the conformity of Consortium Agreements with the EC Model Contract


Available on our Website (www.ipr-helpdesk.org)Available on our Website (www.ipr-helpdesk.org)

Sections that should be included in a CASections that should be included in a CA

1. Title1. Title

2. Preamble2. Preamble

3. Parties/Partners3. Parties/Partners

4. Definitions4. Definitions5. Purpose and scope5. Purpose and scope

6. Nature of the agreement6. Nature of the agreement



7. Organising how the structures put into place by the agreement work

7. Organising how the structures put into place by the agreement work

• Coordination• Coordination

• Project Coordination Committee• Project Coordination Committee

• Task leader• Task leader

8. Ownership of results8. Ownership of results

9. Access rights9. Access rights



10. Protection10. Protection

12. Confidentiality12. Confidentiality

13. Responsibilities (and sanctions for failing to carry out contractual obligations/terminating contractual relations)

13. Responsibilities (and sanctions for failing to carry out contractual obligations/terminating contractual relations)

11. Exploitation and Dissemination of Results

11. Exploitation and Dissemination of Results



14. Force majeure14. Force majeure

16. Subcontract16. Subcontract

17. Duration, termination17. Duration, termination

15. Assignment (transfer)15. Assignment (transfer)

18. Settlement of disputes18. Settlement of disputes



19. Language19. Language

21. Amendments21. Amendments

20. Applicable law20. Applicable law


Consortium agreement FAQsConsortium agreement FAQs

Is there a model consortium agreement?Is there a model consortium agreement?Is it obligatory for RTD contractors to sign a consortium agreement?Is it obligatory for RTD contractors to sign a consortium agreement?

Why should the contractors of an RTD project sign a consortium agreement?Why should the contractors of an RTD project sign a consortium agreement?

Could you please check the conformity of our consortium with the EC model contract?

Could you please check the conformity of our consortium with the EC model contract?


Drawn up by:Drawn up by:

EITIRT (European IT Industries Roundtable companies e.g. Alcatel, Bull,

Ericsson, Nokia, etc.)

EITIRT (European IT Industries Roundtable companies e.g. Alcatel, Bull,

Ericsson, Nokia, etc.)TNOCG (Telecom Network Operator Contract Group)TNOCG (Telecom Network Operator Contract Group)

UNITE (European University Network)UNITE (European University Network)

European Research InstitutesEuropean Research Institutes

Unified Consortium agreement

It is not an official document, neither supported nor recommended by the European Commission

It is not an official document, neither supported nor recommended by the European Commission

To be considered an open text to negotiation between the contractorsTo be considered an open text to negotiation between the contractors

Highly recommended to read the U-CA carefully and in depthHighly recommended to read the U-CA carefully and in depth

Unified Consortium agreementWarningWarning

!!WarningWarning!!

Access right for carrying out the Project

•MC favourable conditions

•U-CA established an automatic grant for the project research and always on royalty free basis

Access rights for exploitation

•MC requires use and allows exclusivity and payment to contractors not generally undertaking commercial activities.

•U-CA requires notice in advance if these rights are to be invoked (Article 10.3.3 and 10.4.1 of the U-CA invoked “as soon as reasonably possible and preferably before submission of the Project proposal to the Commission but in any case prior to entering into the contract” !) and access rights are granted automatically subject to conditions of confidentiality.

Access right for carrying out the Project

•MC favourable conditions

•U-CA established an automatic grant for the project research and always on royalty free basis

Access rights for exploitation

•MC requires use and allows exclusivity and payment to contractors not generally undertaking commercial activities.

•U-CA requires notice in advance if these rights are to be invoked (Article 10.3.3 and 10.4.1 of the U-CA invoked “as soon as reasonably possible and preferably before submission of the Project proposal to the Commission but in any case prior to entering into the contract” !) and access rights are granted automatically subject to conditions of confidentiality.

Example: Access RightsExample: Access Rights


Access rights for further research

•MC allows the possibility of use of results but a duly substantiated request and the conclusion of specific agreement is necessary.

•U-CA gives automatic rights for internal use and specifies how to deal on research with third parties (2 solutions, they would not give access to the method or source code only they will dispose of the object code and therefore “hermetically sealed”, otherwise in agreement with the owner of the knowledge.)

Access rights on software

•MC does not mention anything in relation to software (open question in whether access right is given to the source code)

•U-CA gives access rights for carrying out the project and use including the source code form.

Access rights for further research

•MC allows the possibility of use of results but a duly substantiated request and the conclusion of specific agreement is necessary.

•U-CA gives automatic rights for internal use and specifies how to deal on research with third parties (2 solutions, they would not give access to the method or source code only they will dispose of the object code and therefore “hermetically sealed”, otherwise in agreement with the owner of the knowledge.)

Access rights on software

•MC does not mention anything in relation to software (open question in whether access right is given to the source code)

•U-CA gives access rights for carrying out the project and use including the source code form.



Example: Pre-existing know-how for carrying out the ProjectExample: Pre-existing know-how for carrying out the Project

Principal contractor (who grants)Principal contractor (who grants)





= Preferential conditions = Preferential conditions

= Market conditions = Market conditions

= Royalty-free Access rights = Royalty-free Access rights

EC U-CA EC U-CA

EC U-CA EC U-CA

Who gets:Who gets:


Example: Knowledge for carrying out the ProjectExample: Knowledge for carrying out the Project

Principal contractor (who grants)Principal contractor (who grants)





= Preferential conditions = Preferential conditions

= Market conditions = Market conditions

= Royalty-free Access rights = Royalty-free Access rights

EC U-CA EC U-CA

EC U-CA EC U-CA

Who gets:Who gets:

EC U-CA EC U-CA


Access rights to affiliates

FP4: the Affiliates were included under the concept of contractors.

FP5: the Affiliates are not longer included under the concept of contractors.

•MC the affiliates are out, they are not included any longer under the concept of contractors.

•U-CA gives a definition of affiliate and concedes access rights to affiliates of contractors provided all such affiliates grant access rights to all Parties and fulfil all confidentiality and other obligations accepted by the Parties under the MC or U-CA as if such affiliates were Parties.

Access rights to affiliates

FP4: the Affiliates were included under the concept of contractors.

FP5: the Affiliates are not longer included under the concept of contractors.

•MC the affiliates are out, they are not included any longer under the concept of contractors.

•U-CA gives a definition of affiliate and concedes access rights to affiliates of contractors provided all such affiliates grant access rights to all Parties and fulfil all confidentiality and other obligations accepted by the Parties under the MC or U-CA as if such affiliates were Parties.



WebsiteWebsite HelplineHelpline

Tel. (+352) 47 11 11 1

Fax. (+352) 47 11 11 60

[email protected]

laurence.dumoulin @ipr-helpdesk.org

Tel. (+352) 47 11 11 1

Fax. (+352) 47 11 11 60

[email protected]

laurence.dumoulin @ipr-helpdesk.org

www.cordis.lu/ipr-helpdeskwww.cordis.lu/ipr-helpdesk

IPR-Helpdesk communication toolsIPR-Helpdesk communication tools

Intellectual Property Rights (IPR) Helpdesk

laurence dumoulin legal team 6 4 - 6 6, a v e n u e v i c t o r h u g o l - 1 7 5 0 l u x e m b o u...

Documents

v e n u e v i c t o

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f ppreexisting knowhow

f pstructure

f pfor

f pdefinitionsrights

f paccess rights

rtd project partners