intellectual property rules in horizon 2020 · statement, logo and disclaimer in any dissemination...

European IPR Helpdesk

Luxinnovation training ”IPR in Horizon 2020”

Inna Dimova European IPR Helpdesk

24 September 2014

Luxembourg

Intellectual Property Rules in Horizon 2020

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Roadmap

• Rules and Agreements in Horizon 2020

• Specific Vocabulary

• Focus on the IP Rules in Horizon 2020

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IP Rules and Agreements in Horizon 2020

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Intellectual Property rules

The IP rules in Horizon 2020 can be found in:

the Rules for Participation

the (model) Grant Agreement - an annotated version of the Grant Agreement is also available

the applicable work programme

Horizon 2020 Online Manual: IP section is a work in progress

How to find them: Participant Portal-Reference documents

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Grant Agreement (GA)

Relation between European Commission and

Consortium

EU Commission

P1

P2 P3

P5

P4

Grant Agreement

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Consortium Agreement (CA)

Regulates the relation between consortium partners

(= beneficiaries)

Consortium Agreement

P1

P2

P3

P5

P4

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General IP issues

Every project starts with an idea …

• Protect all information linked to the idea: Make

use of Confidentiality Agreements

• Beware of Third Parties’ Intellectual Property Rights - search in patent databases & documents (i.e. Espacenet); check acronyms against registered Trade Marks

• Seek help from EEN, Chambers of Commerce, PATLIB

centers

Contact your legal department as early as possible!

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Horizon 2020 Specific Vocabulary

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Vocabulary

Key terms in the context of Horizon 2020 projects are:

• Background

• Results

• Exploitation

• Dissemination

• Access rights

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Definitions (I)

Background Tangible or intangible input (data, knowhow, information) which is held by the project partners prior to their accession to the GA. Includes IP as copyright, patents/ patent applications (filed prior to access to GA). Examples: prototypes; cell lines; database rights, licences with the right to sublicense Project partners must identify their background in writing Best practice: do so before the Grant Agreement is signed!

Results All results which are generated under the project – whether or not protectable. Such results may include copyrights, industrial design rights, trademarks, patent rights, know-how or others, and belong to the partners who have generated them.

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Definitions (II)

Access rights User rights (incl. licences) to results or background of project partners. Exploitation Utilisation (direct/indirect) of results in research activities, which are not part of the project, as well as utilisation for further development, creation and marketing of a product or process. Dissemination Means through which research results are presented to the public. Official publications (e.g. patent applications) are not considered as dissemination.

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Access Rights (I)

• Each project partner has the right to request access rights to the other project partners‘ background and results as long as it needs them in order to carry out its work under the project or to use its own results (these are minimum access rights).

• Shall be requested in writing. Can be granted in any form.

Best practice: to avoid misunderstandings, it is recommended that beneficiaries agree (e.g. in the consortium agreement) on a common interpretation of what is “needed”. • Are to be requested/granted throughout the duration and up to 1 year (or as

otherwise agreed in the CA) after the end of the project for exploitation needs. Once requested, access rights may be exercised as long as they are needed for exploiting the results (e.g. until the background patent expires).

Access rights do not confer the right to grant sub-licences!

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Access Rights (II)

Granting of Access Rights

Access to background

Access to results

Project implementation

Royalty-free Royalty-free

Use of results Royalty-free, or on fair and reasonable conditions

Royalty-free, or on fair and reasonable conditions

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Access Rights of Affiliated Entities

• Granted unless otherwise agreed in the consortium agreement • Access rights to background and to results

• Granted to affiliated entities established in an EU Member State

or associated country, if this is needed to exploit the results generated by the beneficiaries to which they are affiliated

• Under fair and reasonable conditions

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Focus on the IP rules in Horizon 2020

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Ownership of results

Ownership rules can be found in the GA (default regime) and in the CA

Principle - results belong to the beneficiary generating them.

If results have been generated by several partners jointly - joint ownership. GA = default joint ownership regime.

Best practice: agree on a tailored joint ownership agreement adapted to each jointly owned result.

It is always advisable to clarify the ownership of results within the consortium once they have been created, in line with your CA, before the partners start setting up exploitation strategies!

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Protection of results

Dissemination checklist: □ Take a decis ion about the protection of foreground and all required steps. □ Inform the EC (at the latest 45 days before the planned activity) in the case where the valuable foreground that you wish to disclose has not been protected. □ Inform the other consortium partners in writing 45 days before the planned dissemination activities and include enough information to allow them to analyse whether their interests are affected or not. Note that this time limit can be changed (for more or less days) in the CA. Therefo re, you must check the CA to confirm the concrete time limit in the case of your project. □ Wait 30 days for any objection to the dissemination. Again, also in this case another time limit can be agreed in the CA, and consequently you must check the CA. □ Take steps to accommodate the objections possibly put forward by the other consortium partners. □ Do not forget the financial statement, logo and disclaimer in any dissemination activity. □ Beware not to infringe third parties' intellectual property rights (e.g . c opyright). □ In the case of scientific publications, prepare a report with the details of the publication and abstract to be submitted to the EC at the latest two months after publication. □ List the dissemination activities in the PUDF.

Each beneficiary must examine the possibility of protecting its results and must adequately protect them — for an appropriate period and with appropriate territorial coverage — if: the results can reasonably be expected to be commercially or industrially

exploited and protecting them is possible, reasonable and justified (given the circumstances). When deciding on protection, the beneficiary must consider its own interests and the interests (especially commercial) of the other beneficiaries.

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Protection by IPR


IPR What for? Registration?

Patent New inventions Registration is required

Utility model New inventions Registration is required, but conditions are less

stringent than for patentability

Trade Marks Distinctive signs Registration is required

Industrial Design Appearance of products Registration is usually required, but it is

possible to acquire an unregistered design right

Copyright Literary, artistic and scientific

works

Not required, but it can be registered in some

countries

Always use IPR symbols, such as © for copyright, ™ and ® for trademarks, or any other equivalent indicating that it is protected by one or more different IPR

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Exploitation of results

Each beneficiary must — up to four years after the project completion take measures aiming to ensure ‘exploitation’ of its results (either directly or indirectly, in particular through transfer or licensing by: using them in further research activities (outside the action) developing, creating or marketing a product or process creating and providing a service, or using them in standardisation activities

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Exploitation and Dissemination Plan


Beneficiaries have an obligation to define the expected results and their strategy for exploitation and dissemination. Hence the following information must be included: • A list of expected results that might be exploited (i.e. with commercial or

industrial applicability) including their:

description

sector of application, and

protection measures

• A list of all the means through which they intend to bring the results to the public

knowledge

• A potential/expected impact – quantifiable – in terms of marketability and research advancement

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Transfer/Licensing of results (I)

Each beneficiary may transfer ownership of its results. Remember: obligation to notify the other interested partners A beneficiary that intends to transfer ownership of results must give at least 45 days advance notice to the other beneficiaries that still have (or may still request) access rights to the results. Unless otherwise agreed (in writing), any other beneficiary may object within 30 days of receiving notification, if it can show that the transfer would adversely affect its access rights. In this case, the transfer may not take place until an agreement has been reached between the beneficiaries concerned. Remember: obligation to pass on all obligations over the results (protection, dissemination, access rights…) to the transferee and any subsequent transferee.

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Transfer/Licensing of results (II)


Each beneficiary may grant licences to its results. Exclusive licences for results may be granted only if all the other beneficiaries concerned have waived their access rights. If you intend to transfer results (or grant exclusive licences) to a third party established in a non-EU country non-associated to Horizon 2020: If a clause to this effect is included in the GA, a beneficiary that intends to transfer ownership or grant an exclusive licence to third parties established in non-EU, non-associated countries must formally notify the EC before the intended transfer or licensing takes place and: • identify the specific results concerned; • describe in detail the new owner or licensee and the planned or potential exploitation of the results, and • include a reasoned assessment of the likely impact of the transfer or licence on EU competitiveness and its consistency with ethical principles and security considerations. Remember that the EC may object to such transfers for up to 4 years after completion!

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Obligation to disseminate

Project partners are obliged to disseminate the results swiftly (i.e. to scientific community/broader public) by any appropriate means other than that resulting from the formalities for protecting it or exploiting the results, and including the publication of results in any medium.

But:

• no dissemination of results may take place before decision is made regarding their possible protection, and

• all patent applications and publications or any other type of dissemination (also in electronic form) shall include a statement that the action received financial support from the Union – The same applies to results incorporated in standardisation activities.

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Dissemination checklist

• Take a decision about the protection of results and all required steps

• Inform the other consortium partners in writing 45 days before the planned dissemination activities and include enough information to allow them to analyse whether their interests are affected or not. Note that this time limit can be changed (for more or less days) in the CA. Wait 30 days for any objection to the dissemination (unless otherwise agreed in the CA).

• Beware not to infringe third parties' intellectual property rights

• Open access as a general principle of scientific dissemination

• List the dissemination activities in the Exploitation and Dissemination Plan

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Open Access (I)

OA = online access at no charge to the end-user (plus further distribution and proper archiving). In H2020:

General rule = OA to peer-reviewed scientific publications.

Open Research Data Pilot – optional. May be required in certain areas.

However, open access: is not an obligation to publish: only if publishing is the chosen

dissemination route

does not interfere with the decision to exploit research results commercially e.g. patenting: discussion on open access comes after the decision to protect

publications are not of a lower quality: they go through the same peer review process as other publications

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Decision on IP protection (patenting or other forms of protection)

Dissemination: Research results publication

Not open access

Exploitation: Research results commercialisation

Open access

'Green' open access

'Gold' open access

Research results

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Open Access (II)

The European Commission has published a fact sheet and guidelines on Open Access to Scientific Publications and Research Data in Horizon 2020, that can be downloaded at: • https://ec.europa.eu/programmes/horizon2020/sites/horizo

n2020/files/FactSheet_Open_Access.pdf

• http://ec.europa.eu/research/participants/data/ref/h2020/grants_manual/hi/oa_pilot/h2020-hi-oa-pilot-guide_en.pdf

For more guidance and support on Open Access: the OpenAIRE initiative aims to support the implementation of the Open Access policies of the European Commission and the European Research Council. https://www.openaire.eu/

http://ec.europa.eu/research/participants/data/ref/h2020/grants_manual/hi/oa_pilot/h2020-hi-oa-pilot-guide_en.pdf

https://ec.europa.eu/programmes/horizon2020/sites/horizon2020/files/FactSheet_Open_Access.pdf

https://ec.europa.eu/programmes/horizon2020/sites/horizon2020/files/FactSheet_Open_Access.pdf












https://www.openaire.eu/

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Costs reimbursements

• Costs of intellectual property rights (IPR), including protecting results (e.g. fees paid to the patent office for patent registration) and royalties on access rights are eligible costs

• Cost for open access publications are also considered eligible by the GA, e.g. Author Processing Charges (APCs)

• For more information on costs eligible for reimbursement in H2020: contact your Legal & Financial National Contact Point!

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Further information

Fact sheets

• IP management in Horizon 2020: at the proposal stage

• IP management in Horizon 2020: at the grant preparation stage

• IP management in Horizon 2020: at the implementation stage

• Open access in Horizon 2020

• Publishing v. patenting

• Exploitation channels for public research results, and series on “Commercialising IP”

Check www.iprhelpdesk.eu/library !

http://www.iprhelpdesk.eu/library

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We look forward to getting in touch with you!

For further questions and general IP advice, please contact our Helpline team:

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Phone +352 25 22 33-333 (Helpline)

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For questions related to our training activities, please send us an email at:

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Disclaimer/Legal Notice The information and advice contained in this presentation is not intended to be comprehensive and attendants are advised to seek independent professional advice before acting upon them. The European IPR Helpdesk is not responsible for the consequences of errors or omissions herein enclosed. Re-use of information contained in this presentation for non-commercial purposes is authorised and free of charge, provided the source is acknowledged. The use of images – other than in the mere reproduction of this presentation – is prohibited. The European IPR Helpdesk is not responsible for any impact or adverse effects on third parties connected with the use or re-use made of the information contained in this presentation.

The European IPR Helpdesk is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises(EASME), with policy guidance provided by the European Commission’s Enterprise & Industry Directorate-General. Even though this presentation has been developed with EU funding, the positions expressed are those of the authors and do not necessarily reflect the views of the European Commission or of the EASME.

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