INTELLECTUAL PROPERTY RIGHTS ISSUES WITHIN THE R T D MODEL CONTRACT ( COST REIMBU RSEMENT) This brochure is aimed at helping anyone preparing proposals for RTD projects or anyone already subject to a contract to understand the rules, and their rights and obligations related to IPR and the dissemination and FIFTH FRAMEWORK PROGRAMME use of research results , as set out in the model contract. The philosophy of European Research and Technological Development (RTD) projects is simple: each partner might contribute to pre- existing know-how, financial resources, and other resources. The Community contributes financial help, in this type of contract generally up to 50% of the eligible project costs. Contract partners have the right to own the research results they generate, and the obligation to protect and use or disseminate these results. The Fifth Framework Programme*, together with the corresponding rules covering project participation and the dissemination of research results, makes it necessary to outline the principles and main contractual obligations of participants or prospective participants in EU supported RTD projects. This leaflet only offers an overview. It is not intended to be exhaustive, nor is it to be considered as legally binding, or in any way to replace the regulatory documents and the model contract itself. The information provided does not necessarily reflect the official position of the European Commission. Intellectual Property Rights Issues within the Community Research and Technological Development Model Contract (Cost Reimbursement) * Fifth Framework Programme: OJ L 26 of 1.2.1999 p.1. and Specific Programmes: Understanding the Rules on OJ L 64 of 12.3.1999 p.1. Contractors’ Rights and Obligations IN ORDER TO UNDERLINE THE RIGHTS AND OBLIGATIONS RESULTING FROM AN RTD MODEL CONTRACT AND TO PROMOTE A CLEAR UNDERSTANDING OF THE SUBJECT, IT IS ESSENTIAL TO IDENTIFY SOME KEY TERMS PRE-EXISTING KNOW-HOW, KNOWLEDGE TYPES OF PARTNERS AND ACCESS RIGHTS Pre-existing know-how (ex “Background”) is the information necessary to carry P r i n c i p a l c o n t r a c t o r s are participants (legal entities, international out a project (excluding knowledge generated in the project), which is held by organisations, or the Joint Research Centre - “JRC”), other than an assistant principal or assistant contractors before the project starts. It is also information contractor, taking part in a project by virtue of the conclusion of a RTD contract acquired in parallel to the project, as well as copyright, patents, utility models, and have the rights and obligations provided for in the contract. designs and models, plant variety rights, additional certificates, or other similar The project coordinator must come from among principal contractors and is forms of protection, and any applications relating to such rights. subject to supplementary rights and obligations towards the Commission. It is in In short, pre-existing know-how covers both information and the rights deemed charge of the scientific, financial and administrative coordination of the project. necessary for the project, which are owned or acquired by the contractors before the project has begun, or in parallel with it. Assistant contractors are participants (legal entities, international organisations or the JRC) taking part in a project by virtue of the conclusion of a Knowledge (ex “Foreground”) is the results, including information, obtained RTD contract and act under the technical supervision of one or more under any project within the Fifth Framework Programme, as well as principal contractors and have the same rights and obligations as them, except copyright, patents, designs and models, plant variety rights, additional with regard to the scope of their responsablility for the execution of the project certificates or other similar forms of protection, and any applications for (they are responsible solely for the sections of research work they are carrying such rights. out), and access rights (they only benefit from limited access rights). In other words, it is the new information and rights which contractors acquire from any project under the Fifth Framework Programme. Subcontractors are third parties (legal entities, international organisations or the JRC) providing services or goods, who have entered into a subcontract. Access rights are licences (non-exclusive but exceptionally also exclusive) as well as user rights with regard to knowledge and pre-existing know-how. Complementary contractors are third parties (legal entities, international organisations or the JRC) who have entered into a complementary contract. Financial conditions for granting access rights can be on: -Royalty-free basis : there are no costs (free of USE, EXPLOITATION, DISSEMINATION, AND charge). -Favourable conditions: conditions that have a THE TECHNOLOGICAL IMPLEMENTATION value lower than commercial (market) conditions. PLAN -Market conditions: open market conditions. U s e is the direct or indirect use of knowledge in research activities or for e x p l o i t a tion purposes. TYPES OF AGREEMENTS An RTD contract is an agreement concluded between principal contractors, E x p l o i t a t i o n is the direct or indirect use of knowledge for creating and assistant contractors, and the European Community to carry out an RTD marketing a product or process, or for creating and providing a service. project. D i s s e m i n a t i o n is the disclosure of knowledge for the promotion of scientific A subcontract is an agreement for the provision of goods or services and technical progress, with the exception of publication resulting from concluded between a participant in the RTD contract and a subcontractor for the formalities related to knowledge protection. specific needs of the project. The Technological Implementation Plan (TIP) is a report produced by the A complementary contract is an agreement concluded with the European contractors containing a summary of the project, a description of their Community, for work technically related to the RTD project and recognised as achievements, and a forecast of their intentions regarding the use of knowledge. such by the participants in each contract. A consortium agreement is one or more agreements concluded between participants, which aims to specify or supplement the provisions of the RTD contract, without conflicting with it. THE EC TREATY The Council Decision 1999/65/EC of 22 December 1998 concerning the rules for the participation of undertakings, research c e n t r e s a n d u n i v e r s i t i e s a n d f o r t h e d i s s e m i n a t i o n of research results for the implementation of the Fifth Framework P r o g r a m m e of the European Community (1998-2002) (OJ L 2 6 o f 1.2.1999 p.46); The Commission Regulation (EC) No 996/1999 of 11 May 1999 on the implementation of the Council Decision 1999/65/EC concerning the rules for the participation of undertakings, research centres and universities and for the dissemination of research results for the implementation of the Fifth Framework Programme of the European Community (1998-2002) (OJ L 122 of 12.5.1999 p. 9); The model contract, including the general rules relating to intellectual and industrial property, publicity, and confidentiality contained in Annex II Part B of this contract. THE EURATOM TREATY Articles 12-29 of the Euratom Treaty implemented by: The Council Decision 1999/66/Euratom of 22 December 1998 concerning the rules for the participation of undertakings, research centres and universities in the implementation of the Fifth Framework Programme of the European Atomic Energy Community (Euratom) (1998-2002) (OJ L 26 of 1.2.1999 p. 56); The Commission Regulation (Euratom) No 1605/1999 of 22 July 1999 on the implementation of Council Decision 1999/66/Euratom concerning the rules for the participation of undertakings, research centres and universities for the implementation of the Fifth Framework Programme of the European Atomic Energy Community (Euratom) (1998-2002) (OJ L 190 of 23.7.1999 p. 3). OWNERSHIP OF PRE-EXISTING ACCESS RIGHTS TO PRE-EXISTING KNOW-HOW KNOW-HOW AND KNOWLEDGE Each partner may bring in know-how which was previously or concurrently acquired outside the project a n d i s d e e m e d n e c e s s a r y f o r c a r r y i n g i t o u t . This pre- Access rights to pre-existing know-how and knowledge w i l l existing know-how will always remain the property of the be given to RTD contractors. partner in question. Such rights can be granted free of charge, under preferential conditions, or under market conditions (see table of access rights below), according to the type of partner (principal contractors or OWNERSHIP OF KNOWLEDGE assistant contractors) and the use to which this knowledge will be put (to carry out the project, or for its use or dissemination). Knowledge resulting from a RTD project i s t h e p r o p e r t y o f the principal contractors and assistant contractors who As a general principle, access rights are granted on a have generated that knowledge. non-exclusive basis but the holder may, as an exception, grant exclusive access rights to their knowledge for exploitation In the case where knowledge is generated by several contractors, an purposes at market conditions. This exception should apply when agreement shall be made concerning ownership of these results and economically essential, in particular taking into account the market, the use of these property rights (for example in a consortium the risks involved, and the investment required to exploit the agreement). knowledge. It should also comply with competition rules. The ownership of knowledge can be transferred, subject to In such cases, the holder must inform the other contractors in due time agreements transferring all related obligations resulting from a RTD about the requesting party and of the proposed arrangements for model contract, and complying with i nternational agreements granting such rights. concluded by the Community. A transfer notification, specifying the terms and conditions must be made to the rest of the contracting Principal contractors may object to the concession of such exclusive parties prior to concluding the agreement. rights, indicating their commitment to exploit the knowledge on the basis of non-exclusive access rights within 30 days of receipt of such notification. The holder of the rights is entitled to refuse access rights for the exploitation of knowledge if it intends to exploit the knowledge itself, but only if it is economically essential to do so, taking into account the market, the risks involved, and the investments required. The act of granting exclusive access rights or the refusal to do so does not affect the obligation to grant access rights to the requesting party for the use of its own knowledge. The holder of these rights is entitled to grant them under more favourable financial conditions . Within a consortium agreement it will always be possible to grant additional access rights or to complement the access right conditions. FOR HOW LONG WILL II BE ENTITLED TO ACCESS RIGHTS? ? IF I AM UNABLE TO EXPLOIT THE KNOWLEDGE ? FOR HOW LONG WILL BE ENTITLED TO ACCESS RIGHTS? WHICH I GENERATED WITHIN A PROJECT, WHAT CAN I DO? ? The length of time during which access rights can be requested In this case, you may decide to grant access rights to this will depend on the status of the principal contractor or assistant knowledge to the principal contractors for their exploitation, contractor engaged in the same project, or the principal contractor not free of charge but under financial conditions corresponding of another project within the same specific programme. to your contribution to the project, and to the potential of this ? knowledge. ? ? ? A longer term can be agreed upon in the technological implementation plan ? ARE ACCESS RIGHTS GRANTED AUTOMATICALLY? ? No, they are only granted on request . No ? ARE THERE ANY LIMITATIONS TO THE GRANTING OF ACCESS RIGHTS? ? Yes, there are limitations. Yes The concession of these rights can be made subject to the conclusion ? of agreements about the intended purpose of using these rights and to confidentiality. Furthermore, the concession of access rights for pre-existing know-how ? will only be possible if the holder of these rights is free to do so. ? OBLIGATION TO PROTECT OBLIGATION TO USE OR DISSEMINATE The aim of the rules on use and dissemination of research results is to ensure The contractors have to protect knowledge capable of industrial or that the benefits of EU-supported RTD are used as widely as possible for the commercial application in an adequate and effective manner and for an economic and social benefit of Europe's industry and society. appropriate period of time . The details of how the knowledge is or has been protected* must be defined in the technological implementation plan. T h e c o n t r a c t o r s a r e r e q u i r e d , within a reasonable period of time and in accordance with the interests of the Community: If the contractors do not intend to protect knowledge capable of protection in a particular country, the Commission may, after to use results which they own either in further research activities or for agreement with the contractors, take over their contractual obligations. exploitation purposes or alternatively to ensure that effective use is made of any knowledge according to the principles and timetable A contractor may publish or allow the publication of data concerning the set out in the TIP; or knowledge they have acquired in the course of the contract, only if the disclosure does not affect the protection of the knowledge , and always otherwise to disseminate the knowledge if it is not to be used either subject to prior consultation and with the agreement of the other by exploitation or research. The contractors, when disseminating, must contractors. always respect: - the need to safeguard intellectual and industrial property rights; - confidentiality; DOES COMMUNITY FUNDING COVER THE PROTECTION COSTS OF - the legitimate interests of the other contractors. KNOWLEDGE GENERATED BY THE PROJECT ? If the contractors fail to use or disseminate the knowledge, the Community may disseminate it by any appropriate means. Yes, under the Fifth Framework Programme, the protection costs of Yes knowledge generated by the project can be eligible for Community PRODUCTION OF A TECHNOLOGICAL funding under certain conditions. These include the prior conditions written approval of the Commission, and conformity with IMPLEMENTATION PLAN (TIP) competition rules. The contractors must produce a technological implementation plan as a tool for ensuring adequate IPR management and for monitoring the obligation to use or These costs will cover: disseminate their knowledge. This plan: - costs of documentary research preliminary to the filing of an application for the granting of an must be submitted to the Commission no later than two industrial property right; months after the end of the duration of the project; - fees paid to relevant author ities, which are necessary with a view to the granting of must reflect the broad outlines of the plan for dissemination an industrial property right, for its territorial and use submitted and evaluated as part of the original extension (provided that a preliminary documentary proposal; research has been carried out), or for the extension of must include a summary of the project, a description of the the duration of an industrial property right; achievements, and a forecast of the intentions of the - fees paid to advisers (internal or external) with a limit of contractors, as to how the knowledge is to be used or 4,000 EUR in respect of each industrial property right, provided disseminated; that an application for the granting of an industrial property right has been subsequently filed. must justify any subsequent changes in the initial dissemination and use plan that significantly alters Costs excluded are: the conditions of dissemination and use; - translation costs, - costs to obtain access rights. requires approval from the Commission. * Details of the precise form the protection of research results will take is left to the contractors. DO I HAVE ANY OTHER OBLIGATIONS? The various existing legal protection instruments may be used. It should be borne in mind that depending on the nature of the results, the use of a protection system or the combination of several different types of Yes, as in previous Framework Programmes, the contracting parties commit themselves to protection systems for property rights could be chosen. These can be patents or utility models, industrial designs, trade marks and other distinctive signs, copyright, and other types of protection such as plant carrying out the work listed in the work programme annexed to the contract, and to varieties rights, additional certificates, or other similar forms of protection. providing the Commission with detailed activity reports and cost statements.
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