project number: fp7-sme-2013-605371 project acronym ... on... · self-repairable zinc-free weldable...
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Project Number: FP7-SME-2013-605371
Project Acronym: WELDAPRIME
Self-repairable Zinc-free Weldable Anti-corrosion Primer for the Steel protection.
Deliverable D8.3
Report on the deployed IP protection strategy
Start date of the project: 1st February 2014 Duration: 3 years Organisation name or lead contractor for this deliverable: CCE
Project co-funded by the European Commission within the 7th FP (2007-2013)
Dissemination Level
PU Public √
RE Restricted to a group specified by the
consortium (including the Commission
Services)
CO Confidential, only for members of the
consortium (including the Commission
Services)
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Content Summary .................................................................................................................................................... 3
1 Introduction ........................................................................................................................................... 5
2 Description of the WELDAPRIME technology ............................................................................... 5
3 Description of the exploitable results of the project .................................................................... 6
4 Foreground ownership ..................................................................................................................... 12
5 Analysis of the potential IPR protection tools ............................................................................. 13
5.1 Patents ........................................................................................................................................... 15
5.2 Trademark .................................................................................................................................... 18
5.3 Copyright ...................................................................................................................................... 19
6 Conclusions .......................................................................................................................................... 19
ANNEX 1 - INM background IP : EP1068372B1
ANNEX 2 – Patent Search
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Summary
The WeldaPrime project proposes an innovative approach for a zinc free corrosion
protection primer with an optimum thickness and affordable cost, offering durable
corrosion protection, resistant to mechanical damage and weldable without zinc fumes.
The objective of this report is to present the developed IP and how this IP will be
protected and exploited. However, further details on the exploitation of the project results
will also be described in Deliverable 8.5.
Due to the approach taken by the project partners, to reduce the risks of the project, of
developing two primers independently this deliverable was postponed. This extra time
allowed that a decision, regarding IP, was taken after the partners agreed on the final
WeldaPrime primer formulation.
It is also important to point out that this is a public deliverable so it was decided that some
confidential information is placed in the final PUDF and not in this deliverable.
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List of Participants
Project Partner Organisation Type /Country
EUROPEAN FEDERATION FOR WELDING JOINING AND CUTTING AISBL EWF
SME Association/ Grouping Belgium
CROATIAN CHAMBER OF ECONOMY CCE
SME Association/ Grouping Croatia
FEDERACION VIZCAINA DE EMPRESAS DEL METAL FVEM
SME Association/ Grouping Spain
THE BRITISH COATINGS FEDERATION LIMITED LBG BCF
SME Association/ Grouping United Kingdom
LOUFAKIS CHEMICALS SA LOUFAKIS
Other enterprises or end-users Greece
TALLERES DE SOLDADURA Y MECANIZADO TSMSL
Other enterprises or end-users Spain
THOMAS SWAN & CO LIMITED THOMAS SWAN
Other enterprises or end-users United Kingdom
TWI LIMITED TWI
RTD Performer United Kingdom
L'UREDERRA, FUNDACION PARA EL DESARROLLO TECNOLOGICO Y SOCIAL LUREDERRA
RTD Performer Spain
LEIBNIZ-INSTITUT FUER NEUE MATERIALIEN GEMEINNUETZIGE GMBH INM
RTD Performer Germany
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1 Introduction This report will describe all the steps and analysis carried out by the WeldaPrime consortium for the identification of the correct and better IP protection strategy. However, due to the public nature of this report (as described in the Grant Agreement) some relevant aspect of the developed IP will be discussed in greater detail in Deliverable 8.5 – PUDF.
2 Description of the WELDAPRIME technology The overall WeldaPrime project aim is to provide the European steel fabrication industry
with an enabling technology that allows the steel to be protected with a new, high
performance primer coating. The specific advantage of the WeldaPrime primer over
state-of-the-art primers is the delivery of high levels of corrosion protection
simultaneously with good weldability, without the use of zinc. This zinc-free weldable
primer will offer the following capabilities sought in weldable primers:
• Good anticorrosion properties, offering excellent adhesion to substrate to minimise undercut, long term protection (lasting 1- 2 years or more under Atmospheric Corrosivity Category 3 - medium: interior, high humidity, some air pollution; exterior, urban inland or mild coastal) and an ability to continue to provide protection following accidental breach such as scratches
• Good arc weldability without further treatments (e.g. grinding and cleaning), preserving a stable arc strike; adaptable to automatic welding processes and allowing high quality welded joints to be generated
• Good compatibility with overcoating
• Good deposition compatibility and thickness control (e.g. using airless spray)
• Cost effective as a preconstruction primer represents only 1% to 2% of the final cost of a steel assembly, cost is normally not a major issue; however the overall cost must remain within the same range, i.e. <€10/l
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3 Description of the exploitable results of the project The project exploitable results are 5, as described on the tables bellow, nevertheless the
main focus of the exploitation will be related to the combination of these results, this will
be better explained in the following section.
Nº
Description
Participant: EWF
Type of Exploitation
Remuneration (€)
1 Raw material composition for durable anti-corrosion (non-zinc)
LICENSING 130,000.00
2 Raw material composition for welding nature, over coating ability, good adhesion
LICENSING 50,000.00
3 Formulation of the overall WeldaPrime
OWNERSHIP 85,000.00
4 Coating application optimised procedure in difficult areas
LICENSING 35,000.00
5 Welding procedure guidelines for good quality weld on a weldable primer
OWNERSHIP 197,500.00
Nº
Description
Participant: CCE
Type of Exploitation
Remuneration (€)
1 Raw material composition for durable anti-corrosion (non-zinc)
LICENSING 80,000.00
2 Raw material composition for welding nature, over coating ability, good adhesion
OWNERSHIP 165,000.00
3 Formulation of the overall WeldaPrime
LICENSING 90,000.00
4 Coating application optimised procedure in difficult areas
LICENSING 35,000.00
5 Welding procedure guidelines for good quality weld on a weldable primer
LICENSING 92,015.00
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Nº
Description
Participant: FVEM
Type of Exploitation
Remuneration (€)
1 Raw material composition for durable anti-corrosion (non-zinc)
LICENSING 60,000.00
2 Raw material composition for welding nature, over coating ability, good adhesion
LICENSING 40,000.00
3 Formulation of the overall WeldaPrime
LICENSING 90,000.00
4 Coating application optimised procedure in difficult areas
OWNERSHIP 162,015.00
5 Welding procedure guidelines for good quality weld on a weldable primer
LICENSING 110,000.00
Nº
Description
Participant: BCF
Type of Exploitation
Remuneration (€)
1 Raw material composition for durable anti-corrosion (non-zinc)
OWNERSHIP 190,015.00
2 Raw material composition for welding nature, over coating ability, good adhesion
LICENSING 78,000.00
3 Formulation of the overall WeldaPrime
LICENSING 90,000.00
4 Coating application optimised procedure in difficult areas
LICENSING 55,000.00
5 Welding procedure guidelines for good quality weld on a weldable primer
LICENSING 80,000.00
As explained previously the SME-AGs partners, owners of the products have agreed on
an equal share of the project results to be divided by all. This include EWF, CCE, FVEM
and BCF. This will be confirmed in the possible patent application or applications or/and
in the Licensing Agreement
However, and due to the developments carried out in the WeldaPrime project, two main
exploitable results were identified:
- WeldaPrime formulation - Use of specific nanoparticle to improve arc stability, which, due to the
public nature of this deliverable we will name as “nanoparticle X” (more details are given in the Final PUDF)
These two exploitable results derive from the combination of different results as they
were defined in the DoW. The following sections give an overview on how the results, as
defined in the DoW, are combined into the final WeldaPrime results.
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3.1 WELDAPRIME Formulation
The main project results is the final WeldaPrime formulation, which is a combination of
all the projects results, like shown in Figure 1.
Figure 1 - Final WeldaPrime Results and relation with results presented in the DoW
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3.2 Use of “Nanoparticle X” in primers
While the WeldaPrime final formulation is considered the “main” result of the project,
during its development and due to the fact that the partners decided to develop two
possible formulations, another possible exploitable result, related to the use of a
nanoparticle, for increasing the arc stability was also identified. This use of a
“nanoparticle X” in primers also derived from several project results as they were
identified in the DoW. This is better explained in Figure 2.
Figure 2 - Relation between the project results, as they were presented in the DoW, and the possible exploitable use of "nanoparticle X" in weldable primers
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However, despite not being the main project result it was identified as a possible
exploitable result since its potential for exploitation of its use is even larger than the
possible exploitation of the final formulation. Despite more research and validation is
required (which will also influence a patent application) to prove the benefit, in terms of
arc stability, of “Nanoparticle X” the consortium believes that the potential market would
be even bigger that the one for the formulation since, even existing competitors, could
add it to their own formulation.
3.3 Support for the use of the WELDAPRIME Primer in Industry
Another project result that was “combined” is related to result 4 and 5, that will be
protected by copyright, but given to industry free of charge. By doing so it will facilitate
the uptake of the WeldaPrime primer by industry.
Figure 3 - Relation between the project results, as they were presented in the DoW, and the necessary material to support industry in the implementation of the WeldaPrime primer
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3.4 Summary of WELDAPRIME exploitable results
To summarize what was presented in previous sections the following diagram shows the
main project results, how they will be protected and their potential market exploitation.
Figure 4 - Diagram of the final exploitable results
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4 Foreground ownership
As provided for under grant agreement no. FP7-SME-2013-605371- WeldaPrime in the
‘Description of Work’, the (SME-AGs) SME- association/groupings partners, which
comprise of EWF, CCE, FVEM and BCF will retain full rights of ownership, dissemination
and exploitation of all project results generated within the WeldaPrime project.
Furthermore, the consortium agreed after the DOW was drawn up, that there should be
joint-ownership of the WeldaPrime’s IPR between EWF, CCE, FVEM and BCF. This will
be formalised and drawn up in a co-operation agreement between EWF, CCE, FVEM
and BCF setting out a certain percentage share each. Furthermore, the Consortium
Agreement states that “the Parties hereby acknowledge and agree that all of the
Foreground resulting from the work carried out during this Project will be owned by the
SME-AG Participants”. However, this document is not binding in relation to the European
Commission, whilst the Description of Work is.
As there was no joint-ownership agreement in place at the start of the project, combined
with the fact that the WeldaPrime results have the potential to provide a cost effective
tool for SMEs to reduce their workers exposure to Zinc and to reduce their manufacturing
costs when using the WeldaPrime Primer. EWF, CCE, FVEM and BCF have agreed to
have an equal share of exploitation results so that the results can be updated and
disseminated widely beyond the life time of this project in order to enable our association
members and affected companies to use them. This is better explained in the final PUDF.
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5 Analysis of the potential IPR protection tools
IPR are legally enforceable rights over the use of inventions or other creative works.
They confer a right to exclude others from their use.
IPR is of utmost importance as it is about protecting the skills and knowledge of WeldaPrime (during and after the project). Protection of foreground can be achieved through several IPR protection tools:
- Patent o Title providing the inventor and/or the applicant with the exclusive right to
prevent others from possessing, using, selling, manufacturing and importing the patented invention or offering to do any of these things within a defined geographical area
o Patents may be granted for any invention concerned with the functional and technical aspects of products and processes. To qualify for patent protection the invention must fulfil the so-called conditions of patentability:
▪ Novelty ▪ Inventive step (non-obviousness) ▪ Industrial Applicability (utility) ▪ Patentable subject matter
- Utility Model
o It is a title of protection for certain inventions, such as inventions in the mechanical field. Utility models are usually sought for technically less complex inventions or for inventions that have a short commercial life and normally do not meet the patentability criteria.
o The requirements for acquiring a utility model are less stringent than for patents. While the “novelty” requirement must always be met, that of “inventive step” or “non-obviousness” may be much less or even absent altogether.
o In the EU only 17 countries provide registration process. The latter is often significantly simpler and faster taking – on average – six months. Finally, utility models much cheaper to obtain and to maintain.
o Duration of protection: between 6 and 10 years, without renewal
- Industrial Design o It refers to the right granted in many countries to protect the original,
ornamental and non-functional features of a product that result from design activity. The right concerns merely the appearance (the “design”) of a product, not the product itself. It allows the owner to exclude others from making, importing, selling, hiring or offering articles for sale in which the design is embodied.
o It may be granted for visual features of a product (i.e. shape, ornamentation, pattern, configuration, etc.). Designs that are dictated solely by the article’s function are excluded from protection.
o To qualify for protection the design must show: ▪ Novelty ▪ Individual character
o Duration of protection: up to 25 years, without renewal
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- Trademark
o It is a sign, or a combination of signs, used in the trade to identify and distinguish the goods or services of one entreprise from those of another. A trademark owner is granted exclusive rights to:
▪ Use the mark in relation to the goods or services with respect to which it is registered
▪ Prevent others from using a substantially identical or deceptively similar mark in relation to the goods or services registered by the mark
o Trademark can protect words, letters, numerals, pictures, shapes and colours, as well as any combination of the above.
o It is now allowed for the registration of less traditional forms of trademark, such as three-dimensional signs (like the Coca-Cola bottle), audible signs (sounds, Nokia jingle), or olfactory signals (smells, such as perfumes)
o Trademark normally perform four main functions: ▪ Distinguishing the products or services of one enterprise from
those of other enterprises ▪ Referring to a particular enterprise which offers the products or
services on the market ▪ Referring to a particular quality of the product or service for which
it is used ▪ Promoting the marketing and sale of products, and the marketing
and rendering of services o Duration of the protection: 10 years, renewable indefinitely
- Copyright
o Relates to literary and artistic creation, such as poems, novels, music and paintings, but also includes cinematographic works, architectural works, sculptures, TV and radio broadcast and many others
Figure 5 gives a general overview of the different IP routes investigated.
Figure 5 - Possible IP routes
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Based on the previous mentioned IPR protection tools EWF, CCE, FVEM and BCF (owners of the developed IP) considered the following IP protection tools:
5.1 Patents
EWF, CCE, FVEM and BCF are consulted an expert in IPR for legal advice. The partners
also approached the EC IPR Helpdesk for support.
In order to evaluate the possibility of applying for a patent as a way of protecting the
results of the WeldaPrime project a search of existing patents was carried out. Based on
the search it was clear to see that there is a possibility of patenting the WeldaPrime
results due to their novelty.
However, and adding to the initial patent search, in order to better evaluate the need of
having a patent in place to protect the developed IP, the consortium carried out an NPA
(Network Patent Analysis) which is presented in Annex 2 of Deliverable 8.5 - PUDF. The
reason why the consortium decided to include the NPA results in D8.5 is related to the
fact that this deliverable is considered as Public, while D8.5 is Confidential. Considering
that to carry out the NPA it was necessary to identify keywords related to the primer
formulation it was decided to keep the NPA confidential and so it is not included in this
deliverable.
While the results are presented in Error! Reference source not found. of Deliverable 8
.5 the main conclusion, after analysing the existing patents, that the consortium was able
to achieve was that there is no existing patent that could jeopardize or act as a barrier to
the exploitation of the WeldaPrime project results.
Note: In Annex 2 of this deliverable a better explanation of the purpose and how a NPA
works is given.
Following the NPA the partners evaluated all the possibilities related to patent
application.
The novelty of the development results in the project would come from the combination
of corrosion protection, weldability and arc stability at the same time.
In this direction two nanoparticles were tested as functional additives in sol-gel-derived
coatings. Coating formulations that contain only SiO2 are already covered by INM
background IP (EP1068372B1 – Annex I of this deliverable), which is not a barrier for
exploitation since this is covered in the background IP in the Consortium Agreement.
The “Nanoparticle X” was intended to act on the arc stability because of its lower work
function, but only low concentrations (1 wt.-%) turned out to be acceptable in the coating
in order not to negatively influence the corrosion protection effect. Unfortunately the
effect on the arc stability could not be proven perfectly and further time consuming
systematic investigation would be necessary to decide whether we would achieve a
sufficient inventive step or not. If the result of the bigger investigation would turn out that
“Nanoparticle X” has almost no effect on arc stability then one would have to consider
“Nanoparticle X” only as a further additive in the basic formulation covered by
EP1068372B1 (no sufficient inventive step). If “Nanoparticle X” would lead to a proven
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effect on the arc stability (sufficient inventive step) one could try to file a patent which
would combine the formulation with the process and the substrate. The formulation and
the process will be published when the patent application will be laid open (18 months
after filing) and everybody in the world could try to copy this approach and there would
be almost no way to keep control over this.
A more clever approach to circumvent both - the uncertainty in the arc stability effect and
the publishing of details of the procedure - would be that the WeldaPrime SMEs just use
the formulation and the secret know-how of the process as it was optimized during the
project (and is describe in the other project deliverables), like it is common standard for
SME paint companies worldwide (They also don’t file patents but use their secret know-
how to exist on the market – this was validated in the NPA). The benefit of the
WeldaPrime SMEs against their competitors would be that they would use the secret
know-how from the project concerning the process, that could not be copied even if a
competitor would try to analyse the WeldaPrime coating on a steel part. The steps taken
when evaluating the need for a patent for the full WeldaPrime formulation is presented
in the scheme in Figure 6.
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Figure 6 - Scheme of the need or not of applying for a patent for the WeldaPrime formulation
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For these reasons it was decided and agreed by the consortium not to file a patent at
this time to cover the main formulation. However, and after the end of the project, the
SME-AGs and the RTDs will carry out some of the work extra to the one started in the
WeldaPrime project to see if it is possible to patent the use of “Nanoparticle” in weldable
primers.
5.2 Trademark
The WeldaPrime partners have agreed in looking into the trademarking the logo
WeldaPrime. The idea behind this Trademark is to take advantage of all the
dissemination done during the project duration. An evaluation to see if the logo
WeldaPrime could be trademarked has been carried out. In order for a sign to be eligible
for a trademark protection it must:
- Be distinctive - Not be deceptive - Not be descriptive - Not belong to the exclusions provided by the law - Be in conformity with public order and morality
The partners evaluated that the WeldaPrime logo is in agreement with all the previous
mentioned topics. Since a trademark protection lasts or 10 years this will allow a good
time frame for the implementation of the product in the market, associated with the name
WeldaPrime, which, in case of success, can be renewed indefinitely. The SME-AGs have
also agreed that if a trademark is submitted it will be done at the European Level with
the possibility of also being done at the European level.
Some more research was done at the class in which the Trademark will be submitted
will be in CLASS 2 (Paints) that covers: Paints, varnishes, lacquers; preservatives
against rust and against deterioration of wood; colorants; mordants; raw natural resins;
metals in foil and powder form for painters, decorators, printers and artists. Explanatory
Note: This class includes mainly paints, colorants and preparations used for the
protection against corrosion. Includes, in particular: paints, varnishes and lacquers for
industry, handicrafts and arts; dyestuffs for clothing; colorants for foodstuffs and
beverages.
The partners will look into applying for the Trademark during 2018.
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5.3 Copyright
The partners looked into copyrighting results number 4 and 5:
• Coating application optimised procedure in difficult areas
• Welding procedure guidelines for good quality weld on a weldable primer
This will be done by EWF, that every year carries out an application of its documents
and these extra documents will be added to the application process, by doing so the cost
of this copyright will be reduced.
Despite protecting these documents with copyright, it was clear to the consortium that
these two results were crucial for the implementation of the WeldaPrime primer in
industry (despite the fact that it was proven during the project that the developed primer
could be welded and sprayed with a normal procedure).
6 Conclusions Based on the research carried during the entire project duration, the SME-AGs (owners
of the results) identified three possible options:
• Patents
• Trademark
• Copyright
While Trademark and Copyright will be IP protection that will be put in place in a near
future by the SME-AGs the possible application of a patent still requires some more
research, mainly related to the use and benefits of “Nanoparticle X”. For the full
WeldaPrime Formulation it was clear that no patent is required or that it would be
beneficial to the project partners. So the consortium as decided to keep it as a trade
secret.
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ANNEX 1 - INM background IP : EP1068372B1
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ANNEX 2 – Patent Search
The consortium have engaged patent search in order to identify any “gaps” in terms of
IP to increase the impact of the IP generated by the WeldaPrime project.
There are a multitude of primers commercially available but to date none have the
characteristics that we are aiming for in the WeldaPrime project. This limits the uptake
of weldable primers by industry, not only because of safety reasons but also because of
the properties achieved.
The consortium have engaged in a patent search, whose finding reinforce this statement,
see Annex II of the Final PUDF. We have carried out an analysis of patents related to
primers for steel applications.
Conventional patent searches are based around the use of key words, including
company names, and Patent Classification Codes [PCCs] on various patent databases
such as those available at the Espacenet and the USPTO websites. The problem with
using these approaches alone is that links between patents in different, though still highly
relevant technology sectors are often missed through the inappropriate choice of key
words or PCCs. To identify key patents relevant to the research carried out in the
WeldaPrime, the consortium will look into using a combination of keywords and PCC
searches with powerful citation analysis algorithms. This patents search includes
searching citations to background patents, scientific literature, etc. These are backward
citations. Within two to three years, important patents will be cited in turn by other
applicants and, importantly, the experts in the technology sector concerned who are the
patent examiners. These are forward citations. In general (of course there are exceptions
but surprisingly few), the more a patent is cited, and the more important it is or has been
in the development of a particular technology sector.
The partners will look into using Network Patent Analysis, like for example
www.amberscope.com, to correctly identify the “best patent” to be submitted. The correct
usage of the Network Patent Analysis depends heavily of the already done patent
search, Annex II. However, a closer research will be necessary closer to the end of the
project.
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Figure 7 - Search result obtained in the Network Patent Analysis found at www.amberscope.com
This Network Patent Analysis allowed the consortium to evaluate the following topics:
- Viability of Future Patent Applications – By looking into existing patents the partners were able to identify any possible barriers to the exploitation of the WeldaPrime primer but also to identify how the existing “competitors” protect their IP;
- Identified Project Results with Potential IP Value - By evaluating existing patents the partners will also be able to evaluate the best way of protecting the project results and outcomes.