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EUREKA
THE TOOLBOX
Guidelines for the Protection of
Technological Information
TABLE OF CONTENTS
ACKNOWLEDGEMENTS .................................................................................................................................................................. 4
NOTICE......................................................................................................................................................................................... 4
FOREWORD .................................................................................................................................................................................. 5
1. INTRODUCTION .......................................................................................................................................................................... 6
Why important? .......................................................................................................................................................................... 6
What information? ...................................................................................................................................................................... 6
How to handle? .......................................................................................................................................................................... 6
How to protect and exploit? .......................................................................................................................................................... 7
2. PROTECTING THE INFORMATION .................................................................................................................................................. 9
General approach ....................................................................................................................................................................... 9
Starting off............................................................................................................................................................................... 10
Intellectual Property Rights (IPRs) ............................................................................................................................................... 10
Security management ................................................................................................................................................................ 11
Data Banks .............................................................................................................................................................................. 11
3. AUDITING THE INFORMATION ..................................................................................................................................................... 13
PRELIMINARY STAGES ............................................................................................................................................................. 13
During the RUNNING of the PROJECT .......................................................................................................................................... 14
At the END of the PROJECT and BEYOND ..................................................................................................................................... 15
4. EXPLOITING THE INFORMATION ................................................................................................................................................. 16
Essential Characteristics of Licenses ........................................................................................................................................... 16
Considering the Options ............................................................................................................................................................ 17
Implementation......................................................................................................................................................................... 17
Other General Points ................................................................................................................................................................. 17
ASSIGNMENT: The Other Option ................................................................................................................................................. 18
ANNEX 1 ..................................................................................................................................................................................... 19
Handling joint inventions............................................................................................................................................................ 19
What's the problem? .............................................................................................................................................................. 19
Some examples ..................................................................................................................................................................... 19
Particular points .................................................................................................................................................................... 19
ANNEX 2 ..................................................................................................................................................................................... 22
Intellectual property rights and allied rights ................................................................................................................................... 22
Some general points .............................................................................................................................................................. 22
Patents ................................................................................................................................................................................ 22
Utility models, petty patents and invention certificates................................................................................................................. 24
Registered designs ................................................................................................................................................................ 24
Registered trade and service marks .......................................................................................................................................... 24
Copyright ............................................................................................................................................................................. 24
Confidential information ......................................................................................................................................................... 25
ANNEX 3 ..................................................................................................................................................................................... 26
Glossary of some technical terms ................................................................................................................................................ 26
Background information ......................................................................................................................................................... 26
Confidential information ......................................................................................................................................................... 26
Copyright ............................................................................................................................................................................. 26
Exploit (exploitation) .............................................................................................................................................................. 26
Foreground information .......................................................................................................................................................... 26
Industrial design ................................................................................................................................................................... 26
Industrial property title rights .................................................................................................................................................. 26
Innovation ............................................................................................................................................................................ 26
Invention.............................................................................................................................................................................. 27
Know-how ............................................................................................................................................................................ 27
License (licensing)................................................................................................................................................................. 27
Patent.................................................................................................................................................................................. 27
Secret information - classification ............................................................................................................................................ 27
Security agreements .............................................................................................................................................................. 27
Software .............................................................................................................................................................................. 27
Trademark ............................................................................................................................................................................ 27
Trade secret ......................................................................................................................................................................... 27
Utility model ......................................................................................................................................................................... 27
ACKNOWLEDGEMENTS
This Guide is the result of an initiative undertaken by France and Austria, with the assistance of experts from Belgium,
Finland, Spain, Sweden, United Kingdom and the C.E.C.
The EUREKA Secretariats of Austria and France pay special tribute to the Department of Trade and Industry of the
United Kingdom and Berrymans Solicitors of London for their valuable cooperation.
NOTICE
• It is not the aim of the guidelines to substitute the assistance of a legal advisor to whom parties of a research coope-
ration agreement should have resort when drafting the clauses of such kind of agreement.
FOREWORD It is arranged as follows:
EUREKA aims to strengthen Europe's industrial and Chapter 1:
technological competitiveness in advanced technology Introduces some of the main reasons why partners should
products, processes, and services having a worldwide protect their valuable.information and their interests in
market potential. project results and how to safeguard it.
EUREKA projects serve civilian purposes and are di- Chapter 2:
rected both at private and public sectors. They are based Provides a general description of the many options for
upon the industrial initiative associating enterprises and looking after valuable information in a project.
research institutes from at least two different countries. Chapter 3:
The increased productivity and competitiveness generated Describes the main tasks for carrying out 'an information
through the cooperation and the technological exchange audit' before, during and after the project in order to
between European partners is the key condition for the ensure that appropriate protection is always preserved.
success of EUREKA projects. Such a cooperation must be Chapter 4:
developed in a climate of trust where the respect of ele- Summarises the usual ways by which these rights can be
mentary principles able to ensure the necessary level of used in a project and in the profitable exploitation of its
confidentiality to secure the technological acquirements of results.
each participants is well taken into account. Chapter 5:
This issue concerns all the participants (project lea- Deals with some other legal aspects which usually have to
ders, associates or contractors). Because of a financial be taken into account, such as competition laws.
contract they are obliged to be responsible and solidary Annex 1:
during the whole duration of the project elaboration. Illustrates some of the main points to be considered in the
This booklet complements another entitled ‘The handling of 'joint inventions'.
EUREKA Checklist for the Preparation and Execution of a Annex 2:
EUREKA Project', which provides a summary of all the Presents the main features of the Intellectual Property
main items that normally have to be taken into account by System.
the partners in establishing their project contract.
Annex 3:
In contrast, this booklet is rather more specialised in that it
Contains a Glossary of Terms.
concentrates on one particularly important and difficult
aspect, namely the question of defining, protecting and
exploiting the information content of EUREKA projects.
The booklet is no more than an introduction written to help the newcomer quickly appreciate some of the main considerations
that usually have to be dealt with and to lay her/his defensive plan on a more informed basis with the help of her/his legal
advisers.
As the Checklist notes, there are no formulae guaranteeing success with EUREKA Projects.
Careful well informed planning and negotiations by prospective partners, between whom a strong sense of good will,
confidence and trust exist, will go a long way towards reducing the odds against failure. And particularly so, if backed up by
strategic and sensible use of the various mechanisms and laws for safeguarding technological and other types of
information.
1. INTRODUCTION
7. Investment in securing a project information content is
Why important?
a key to success.
Taking into account the cost of a EUREKA project in
terms of finance, manpower, knowledge, and information What information?
partners individually and collectively will need to guard In having as their aim a significant technological ad-
against losing their edge by letting anybody jump ahead in vance, EUREKA projects obviously involve technical
the technological race, which increasingly nowadays is information which can be of many different sorts. Common
won by having the right knowledge and information at the examples are descriptions of inventions for products,
right time and by being able to exploit this expensive processes or services: engineering or aesthetic designs
resource fully. concerning the layout of shapes of components or
Consequently the negotiations over EUREKA agree- products; know-how relating to the specification of a
ments and the running of a project are largely occupied by product's design manufacture, performance, maintenance
the fundamental question: ‘Who has which rights to which and repair; and trade secrets concerning test results of
information and under what terms and conditions?' preliminary R&D or knowledge of how to do something in
No prospective participant in a EUREKA project can a particularly effective way.
afford to ignore this question, though there are no easy Further in being industry led and market driven,
rules to follow in answering it. The question applies EUREKA projects can involve highly sensitive commercial
equally to striking the right deal in terms of the partners' or financial information such as market intelligence,
individual contribution, to their separate or joint rights or customer lists or other information relevant to the
shares in the project's results, and to safeguarding their exploitation of the project's results in the European or
interests. within and outside the project. From the start it World markets, possibly including a new Trade or Service
really is vital to lay flexible plans, based very firmly on Mark for promoting sales.
pragmatic answers, developed with sound legal advice,
How to handle?
With this very wide portfolio of information, it is usually
Basic steps for the protection of very important to define precisely its nature, substance
technological information and content for the purposes of planning, constructing and
1. All partners should list the critical information of the running a project. This is a task that all the partners need
project. to do separately and jointly to ensure that their individual
2. The staff managing the project must be aware of al! and collective interests are suitably protected before,
security aspects of keeping this information safe. during and after the project.
3. Encourage all the people involved in the project in- One good way of starting off is to try to break the pro-
cluding subcontractors to take these matters seriously ject down as much as possible into its main constituent
and make them feel responsible. parts. This will often reflect the contribution of each
4. Ensure that the contract fully covers all aspects of partner and help identify clearly their collaborations. Each
keeping information secure. distinct component can then also be subdivided between
5. Manage the project carefully to reduce the risk of its core technology and the fields of application or use of
information leaking out. this technology, the commercial implications of which are
6. If necessary, contact the EUREKA NPC or your often very important indeed.
national administration. Another way, especially for constructing the project
and the underpinning agreement, is to categorise the
portfolio into two basic types of information. These are use in it;
usually called 'Background' and 'Foreground' to distinguish - will provide the other partners with appropriate assu-
between information or knowledge which each partner rance about these matters.
owns or has rights to use and which is or becomes of
How to protect and exploit?
importance to the project against that generated by one or
The main options available for protection are con-
more of them under the project as it runs its course. Often
tractual (see Checklist for the Preparation and Execution
the two types need to be suitably connected in the
of a EUREKA project).
agreement to make appropriate exploitation arrangements
The terms and conditions of the project agreement are
and otherwise to tie up in a suitable manner the various
obviously a front line of defence against loss of valuable
partners' rights of ownership and use of/access to the
technical or other information, provided of course that they
information.
are properly supervised and legally enforceable through
It is advisable to make suitable arrangements within
an action worth taking. This option is usually a main stay
the project for defining the status and handling
in establishing projects for which an appropriate
improvements, i.e. information which derives directly from
confidentiality agreement is normally essential. An appro-
information of earlier origin and which is a mere
priate project organisation should also be defined.
development rather than being a completely new and
major step in the art. Intellectual property
It is possible to .make the following further and equally Laws concerning Patents, Designs, Trade or Service
important distinctions for the purpose of defining the Marks, Copyright, and Confidential Information are all
project and each partners' contribution, role and interests options normally used by partners to protect their back-
in it: ground information and the foreground information. The
- all the relevant information available to the partners for rights so established under these laws provide another
use within and outside the project; line of defence, should the project agreement be breached
- that part of this information which is to go into the by a partner
project and, conversely, that part of this information Management security
which is to stay outside the project; - In handling the project, appropriate security practices are
- the types of extra, new information that will come another important safeguard: controlling circulation of sen-
through in the project; sitive documents on a 'need-to-know' basis and use of
- the relationship of the project's internal information photocopying facilities; limiting access to areas where
content at any point in time with all other relevant project work is being carried out; marking 'Confidential'
published information, e.g. patented inventions be- documents containing important background/foreground
longing to another company which are of importance to information and otherwise ensuring that they are kept
the project or to the commercial exploitation of its safe.
results; and - Ensuring that safeguards on computer records are ade-
- rights of ownership in and use of all this information. quate for the job.
The key points to remember are that the chances of - Running regular counter industrial espionage checks.
ever striking a deal are slim indeed, whilst the risks of an - Holding key meetings in different venues and at
expensive failure are very short unless each partner: short notice.
- has properly identified, documented and categorised - Keeping on a tight reign the proliferation of project and
the information which he is willing and able to contribute meeting reports.
to the project; - Ensuring that such records are stored securely.
-can prove his ownership or exclusive/shared rights of - Vetting fully new personnel; ensuring that any patent ap-
plications made as part of the project do not needlessly European laws; particularly those concerning free and fair
give too much away when published. Generally trade or competition.
conducting affairs with a cautionary eye. Essentially, these laws set the general limits on what
Employee contracts .the partners could otherwise agree amongst themselves
This really is another aspect of management security. and they otherwise provide some checks and balances in
Much of the information content in projects is carried in the the public interest, e.g. against inequality of bargaining
heads of the people working on them. The loss of a key power. They also determine the scope of legally enfor-
researcher can be just as harmful to the project as the ceable employment contracts and the rights of employees
loss of its secret results, e.g. through industrial espionage. over, for example, inventions which they originate.
To a certain extent this risk can be reduced by careful These law therefore provide a mechanism for pro-
selection and vetting of the project's manpower. Contracts tecting the information content of projects from the
of employment are also important Prospective partners viewpoint of the participants, their competitors and the
often look closely at one another's employee contracts general public.
and it is not unknown for negotiations to break down It is by no means unusual for collaborative R&D con-
because they don't like what they see. tracts to be terminated or substantially modified through
Losing a researcher might well cause damage not only an action brought by one of the partners to them.
to a partner's participation in the project but also to his en- None of the above mentioned mechanisms should be
tire business. Whilst legal remedies might be available for judge or used in isolation.
breach of contract, pre-emptive counter measures may be Together they form the basic building blocks for esta-
better, e.g. a pay rise or promotion for working on the pro- blishing and running a project. Like any other building
ject. The concepts contained in employee contracts designed to keep out trespassers and to protect its con-
should also govern agreements with contractors. tents, putting the blocks together to fit the overall aims and
rationale of the project is a time consuming and highly
Governing laws
skilled business. But one well worth doing properly.
Contractual arrangements made by the partners for
their project are subject to various overriding national and
2. PROTECTING THE INFORMATION
General approach
The appropriate safeguards of any project are largely- the start through negotiation, the easier will be the task of
determined by its nature, content and purpose based upon: designing and establishing and running the project with
- the rationale for the collaboration; adequate safeguards built in. As with all other ventures,
- the aims and objectives of the project and of each partner; the rule to follow from the start is to make haste slowly and
- the reasons why each partner is involved; to aim for sufficient flexibility to cater for:
- their collective and individual goals; - agreed goals;
- their individual and joint innovative contributions to and as - foreseeable contingencies and events such as new
part of the project; and partners joining or one more of the original partners
- the project's design parameters in terms of its subject leaving;
matters, organisation, time scales and geographic scope. - the project, e.g. through hitting a technical or other
insoluble problem;
Each project will probably have to be planned to evolve - the alternative ways in which the project's work could
through a number of manageable stages, e.g. be carried out and managed, (There is always more than
- 'feasibility for proof of basic concepts; one);
- 'definition' for fully specifying the development of these - the likely risks of losing background and foreground
concepts and the project's realisation phase; information and the routes for such leakage;
- 'realisation' for producing the prototype system; - the consequences of these losses;
and possibly - the cost effectiveness of available countermeasures;
- 'development' for turning the prototype into a production and, of course
model; and possibly - the arrangement for handling the foreground and back-
- 'exploitation' for making and selling the results ground information for the purpose of the project and
commercially. any other.
By the time the full project is ready to begin all these
Each stage will involve innovatory work undertaken by the considerations will have been translated into a full col-
partners either in various combinations or separately with laborative R&D agreement, legally binding and defining
valuable knowledge gradually accumulating. This knowledge clearly and precisely:
could be shared by some or all of the partners, though proba- - all the obligations of the partners in carrying out the
bly one or more of them will want to keep a part of the back- project;
ground or foreground information to themselves. - their individual and collective contributions to the project;
The precise divisions that are agreed will reflect both what and
each partner is contributing and what they want to get from - the ways in which these are to be managed, supervised
their contribution, as well as their collaboration. Their long and enforced.
term aim might be to set up a joint venture to make and sell
the product of research under a profit sharing agreement. While, typically, intellectual property rights and exploi-
Alternatively, their horizons might be more limited to tation are core components, other important elements of
collaborating up until the end of the realisation stage, by when these agreements are 'confidentiality' publication of data,
each will have learned enough to go their own way, reporting on progress, monitoring arrangements and
Usually, these long term goals only become clear as the provision for change and termination of the project,
project progresses. But the more precisely they are defined at including the withdrawal of each partner.
Starting off Intellectual Property Rights (IPRs)
Sorting out even the basic ingredients of the collabo- Once the partners have reached broad agreement upon
ration is never a simple or quick task. It can take many the framework of their project, the arrangements for pro-
months of hard bargaining just to determine the basic tecting the foreground information will have to be sorted out
common ground on which to build a suitable agreement. as well as the integration of background information into the
Even in these very preliminary stages it is all too easy to project and the exploitation of ail this information within and
lose valuable information or to let the natural fear. of such outside the project.
a loss lead to the negotiations breaking down. Whilst care In addition to determining the IPR position with back-
should always be taken to protect background ground information, the partners will have to consider which
information, this should not be at the expense of striking a of the various types of IPR, briefly described in Annex 2, is
reasonable deal or of analysing the options for suited to the project's foreground information and how, when,
safeguarding Foreground Information. where, and by which of the partners these are to be obtained
For example one of the partners may have made an and used.
opening proposition to begin to attract another by
revealing in some way the nature of the project in mind Some of the most common questions have to be ad-
and what he could put into it. For this, the proposer will dressed as follows:
have to decide what he is going to reveal initially not only
in terms of whetting the other side's appetite, but also: Regarding background information
- what the implications of this disclosure could be to his - definition;
business, e.g. the loss of opportunity to patent an - ownership of rights in background information;
invention; - warranties and liabilities to the other partners, including
- what the other side could otherwise do with this disclo- maintenance and enforcement;
sure, e.g. use as intelligence for furthering their busi- - use or access to Information by other partners and, pos-
ness alone; and sibly by parties outside the project;
- what further information he is going to reveal to follow - surrender/loss of rights in this background and associated
up a positive response, possibly under conditions of information.
confidentiality. Since various aspects of these broad points have coun-
terparts in those concerning foreground information, they
As the negotiations proceed and expand with the are covered below in more detail (see also Chapter 3).
other parties, they will inevitably focus on Intellectual
Property Rights (IPRs). Patents and patenting arrange-
Regarding foreground information
ments are usually important safeguards. For some pro-
- rights of ownership, e.g. joint inventions and employees'
jects, e.g. those concerning new software, copyright will
rights;
be the mainstay. Concentrating on these forms of protec-
- rights to use and rights to apply for IPRs;
tion under Intellectual Property Laws could, however, be
- notification to other partners as information comes into
at the expense of more suitable and cheaper options,
existence, regarding both its substance and its origin;
such as making a component proof against copying, e.g.
- obligation of employees to notify employers of inventions
by locking its secrets in a casing.
made in course of their work of the project;
By the end of negotiations it is essential that the
- remuneration/reward of employee inventors;
project's specification suitably fits into each partner's
- obtaining and maintenance of patents and other types of
business plans. Otherwise stresses and strains will
IPRs;
inevitably bring the project to fail.
- who is to pay the costs of application and renewal and shared by all the partners, could well be kept sufficiently safe
in which countries and on behalf of whom? simply by splitting up the R&D work into independent groups.
- who is responsible for preparing applications and For instance, in a project involving partners who will be using
reporting (how?) On progress to other partners? the end results, they might wish to preserve their background
- who is responsible for detecting and proceeding and foreground information by working independently or in
against infringers of these rights and in which sub-groups on the operational aspects of these results. In
countries? addition there may be some linkages at the general level to
- who is to pay for these actions? produce a common pool of resulting knowledge.
- who is to pay the costs of resolving disputes over titles Leakage of information can be guarded against in many
.of these rights either between partners or with other other ways. Examples are:
parties?
- who is responsible for defending infringement or other Protection of buildings and sites
actions brought by third parties and in which countries? - layout and design;
- who is to pay for these actions? - fire and intruder alarm systems;
- partners rights to use within and outside the project - counter industrial espionage arrangements;
- other partners rights to use? - personnel access controls.
- selling IPRs to other parties?
Management
Regarding exploitation - security vetting and grading of staff;
- meaning in context of project and other wise? -ensuring full awareness of need, reasons and responsi-
- by whom? bilities for security;
- where? - restricting circulation of data;
- when? - control/registration of data, e.g. document copies;
- how? - classification of data by levels of security, e.g.
Normally, arrangements will have to be agreed for 'Restricted', 'Confidential' or '(Top) Secret';
settling and managing all the above matters before, - secure document files;
during and after the project. Often Intellectual Property - secure disposal of waste, e.g. document shredding;
Rights in patents and copyright or confidential know-how camouflaging data;
will last beyond the project itself. So their ownership and - staff supervision, e.g. to prevent indiscretions;
the associated responsibilities of ownership, which will - rewards and incentives;
continue afterwards, usually must be decided when the - employment contracts;
project has run its course or is cancelled before then. - subcontractor checks and controls;
- advice from specialised administrative services.
Security management
To re-enforce the project's intellectual property arran- Data Banks
gements, the partners should also structure and manage - passwords and other measures against unauthorised
it from the security view-point. Some of the Background entry and access;
and Foreground Information will usually have only a tem- - security zoning of computer facilities;
porary value, e.g. until its true worth has been assessed - checks against software 'virus';
at one of the project's milestones. - dose supervision of data users and of maintenance work;
These and other components that do not need to be - coding of data transmitted through, e.g. telecomms;
- Safeguarding Master or Duplicate files or discs;
- checks against unauthorised use outside place of - IPR litigation insurance;
work, e.g. portable PCs. - designing of the end products of the projects;
to counter copying;
Counter checks and measures - clear lines of responsibility and authority for all the
- monitoring to detect information leakages to outside above aspects.
world, e.g. keeping a close eye on the competition; The key for a successful cooperation is to take a coherent
- monitoring new patent applications and other sources strategic, pragmatic and forward looking approach from the
of technical/commercial intelligence; start and to regularly review the precautions already in place
- defensive and aggressive patenting strategy; and planned as the project runs. The better the partners col-
- risk insurance; laborate on these matters, the easier will be the handling of
the project towards a successful and profitable outcome.
3. AUDITING THE INFORMATION
From the managerial angle EUREKA projects can nor- Define any THIRD PARTY RIGHTS in
mally be viewed, at the outset in form of three distinct stages
this information
at which particular considerations will be relevant. These
- infringement searches must always be considered to
three stages are not mutually exclusive - they are identified
check that the information can be exploited through the
because different considerations may apply according to the
Project without infringing third party rights.
stage of the project:
- It is essential to be alert to the charges of infringing
- at the PRELIMINARY STAGES
third parties industrial property rights. Such obstacles
- during the RUNNING of the PROJECT
must be identified and consideration given to the
- at the END of the PROJECT and BEYOND
formulation of policies for development and exploitation
with or without their IPR. For example, it may be
PRELIMINARY STAGES possible to obtain a licence to use others' IPR.
It is essential that in defining and structuring their Once the relevant information has been identified
project, all the partners consider and identify all aspects of and ownership/documentation has been formalised,
information and its protection and analyse these elements decisions need to be taken on:
thoroughly at the outset. In so doing many of the problems,
which are likely to be encountered in the preparation of the What information is to be released to the Project:
project agreement and its implementation, may be avoided The information introduced may be limited to use
or overcome or appropriate mechanisms established for within a specific part of the Project so as to minimise the
their resolution. risk of breaches of confidentiality. The structural organi-
It is therefore advisable for each partner at the earliest sation of the planned project will be relevant here. For
opportunity to take at least some of the steps outlined instance if arranged in groups, each group can be given a
below. specific task and the inter-group exchange of information
be either expressly prevented or strictly limited and
controlled - perhaps by the project manager.
Carry out an 'Information Audit'
- identify all information which is potentially relevant to the
When this information will be released to the other
project and which could be introduced as Background
partners and on what terms:
Information;
- this matter should be considered from view points of
- identify and document all rights of ownership in this in-
both providers and recipient(s);
formation which already exist;
- it may be crucial to retain an absolute discretion as to
- establish whether there are any outstanding applications
whether or not particular information will be released to
for patents, trademarks, designs or other forms of rights to
the project regardless of its relevance because of the
be made to complete protection of this information;
sensitive nature or commercial value of the information;
- review any existing monitoring procedures of existing
- suitable confidentiality undertakings should be
patents, registered designs or trademarks to establish
obtained from all participants involved, even at these
whether renewal is required;
preliminary discussion stages.
- consider the Foreground Information which is
foreseeable and the main mechanisms for its ownership
The mechanism for release to/use by the project:
and protection - this is dealt with in more detail below.
- this can be by way of a royalty free, non-exclusive
licence lasting for the currency of the Project. Different
considerations will apply to exploitation of information that in the case of patents, ownership and registration is a
beyond the period of the Project - see CHAPTER 4; central issue.
- other mechanisms can be used such as an assignment.
This involves an absolute transfer of information with How will the Foreground Information be dealt
consideration being paid, say, on the basis of a royalty
with?
calculation;
Ownership must be settled and mechanisms provided
- as with considerations applicable to the very preliminary
for protection. These will have to include:
negotiation stage, confidentiality undertakings must be
- by whom protection will be sought and in what countries;
incorporated in any 'transfer of information' agreement
- the cost of such protection;
- appropriate mechanisms must be adopted for the regis-
- when it should be sought;
tration of licences or assignments. Failure to do so may
- confidentiality obligations.
have differing national consequences.
For example, it may result in lack of protection against ano-
Problems of joint ownership/protection
ther bona fide licensee or assignee; or preclude recovery of
- Joint ownership, particularly of patents and know-how,
damages if a patent has to be protected through legal
can cause complications and conflicts in terms of mana-
action.
gement. For example, in the case of withdrawal/
removal from the project of one co-owner, obvious pro-
Ownership of future improvements and/or
blems may occur. In terms of protection of jointly owned
enhancements of Background Information within or
inventions there is potential for conflict because of
outside the project:
differing national rights and the likelihood of inconsistent
- listing of the Background Information to be introduced to
enforcement measures when infringement occurs.
the Project (done e.g. by the project manager or leader of
- These problems must be considered and it is desirable
each subgroup working in particular fields);
that joint ownership be avoided, if at all possible. Annex
- later addition to this list might only be acceptable if a
1 illustrates some of the points to be considered in the
participant can prove that any Background Information
'handling of joint inventions'. In all cases, specialist
was not created through involvement in the Project or if it
advice is particularly important.
was not considered to be relevant at the time the list was
compiled but is subsequently found to be of relevance.
Improvement/Enhancement of
Background Information
During the RUNNING of the - During the course of the Project it is possible for
PROJECT existing Background Information to be improved, e.g. by
a licensee. Such improvements, if patentable or
The project will normally generate Foreground Infor-
protectable in their own right as another type of
mation. So the following will have to be addressed before
Intellectual Property Right, will raise questions of
and as the project proceed.
ownership and rights to use.
- Appropriate mechanisms should be considered and in-
What does Foreground Information include?
cluded in the Project Agreement dealing with ownership
The Project Agreement should define as dearly as pos-
and protection.
sible what is to be included as information created during the
- A typical Licensing Agreement will provide for the
performance of the project work. It may well include all types
Licensor to have rights over improvements by the
of rights already referred to, but it should be remembered
Licensee.
Participants who are removed or withdraw from the pro-
At the END of the PROJECT and
ject must continue to be bound by the confidentiality
BEYOND provisions of the Agreement in respect of any informa-
The Agreement should always cover the rights of the tion received from other participants. All original and
participants concerning Background and Foreground In- copy documents relating to such information must be re-
formation and its protection in the event of: turned to the participant who provided the information,
- The agreement should also provide that any
Withdrawal from the project Termination-
participant withdrawing or removed from the Project
Completion
shall cease to be entitled to use any information made
- Provision should also be made for the continued preser-
available by other participants whether by licence or
vation of confidentiality: i.e. the confidentiality provision in
otherwise.
the Project Agreement must expressly survive termination
or apply regardless of withdrawal by participants.
4. EXPLOITING THE INFORMATION
‘Exploitation' in the context of a EUREKA Project will laws of many countries an exclusive licensee is able to bring
typically involve the production/manufacture, use or an infringement action should the patent owner not do so.
application of the results of the Project Work and, more There are many factors to consider however, including
specifically, the licensing of Background and Foreground national and EU Competition Law.
information required for such production/manufacture, use A licence is normally one of three types:
or application. Bare Rights Licence
The nature and extent of exploitation will d upon the - These are largely based on statutory Intellectual Property
objectives and structural organisation of the project. Rights concerning Patents, Registered Designs, or
Where, for example, a Project has as its overall objective Copyrights. Typically, a research establishment may only
the design and construction of an 'industrial product', a have patented inventions to transfer because little or no
number of components will usually be developed practical development has been carried out for the com-
specifically or as spin-offs. Each of these may have been mercial exploitation of the protected 'raw' technology.
the responsibility of one or more of the partners possibly - Licences of these forms of statutory IPR are useful simply
working in 'compartmentalised' groups and the to remove "the risk of infringement or to allow use of the
components may be exploitable either as independent rights by a subsidiary company In EUREKA Projects they
parts on a joint commercial basis by a few of the partners will, together with confidentiality undertakings/ agreements,
or as an integral part of the 'product'. facilitate the controlled use of all protected information
Vital to the overall success of any Project is an during the currency of the Project and beyond as pan of
effective vehicle for the use and exploitation of exploitation, perhaps on a commercial basis.
Background and Foreground Information. 'Licensing' is
'Other' Rights and Information Licences
often the preferred vehicle within the framework of a
- These usually concern the licensing of know-how, It is
EUREKA project and so becomes the key to its success
generally accepted that such licences raise more difficulties
during and beyond its life. Partners may also constitute a
than is the case of Industrial Property Licences of, for
company for the sole purpose of exploiting of the project
example, Patents.
results.
- Particular care must be taken in the Licence Agreement
to ensure that the Licensor grants only the rights which he
Essential Characteristics of intends the Licensee to use.
- Because of the problems of restricting the use of technical
Licenses
information, it is preferable that some 'field definition' is
A Licence is a contract giving the controlled included, i.e. permitting use only in a particular and well
permission of the Licensor to enjoy rights "or to have defined field.
access to subject information that would not otherwise be - National and EU Competition Law (see further CHAPTER
available to the Licensee. Basically a Licence is a right to 5) might also have to be taken into account since it im-
use the Licensor's property with the Licensor retaining poses some restrictions on licensing..
ownership.
Pure Information Licences
A Licence may be granted either on an 'exclusive' or
- This relates to the transfer of pure information, for ex-
'non-exclusive' basis depending whether the Licensor is
ample lists of customers or marketing details.
or is not excluded from using the Intellectual Property
- There are obvious inherent difficulties in limiting the
Right(s) involved during the term of the Licence. An
Licence use to a specific field. Similarly there will be
exclusive licence may be preferable because under the
difficulties in enforcing the confidentiality aspects.
- the Licensee preserves the confidentiality of all
Considering the Options
information transferred to him.
At the outset of the Project - at the definition and the
Exploitation of the results of the project work
proposal stages - it is always worth considering how,
How should the agreement provide for exploitation of the
when and on what terms information is to be introduced to
results of the project as a whole, which will usually involve
the Project and how and/or on what terms it will be
the licensing of Background and Foreground information
exploited afterwards. It is essential to do so at this early
necessary for such exploitation?
stage to anticipate potential problem areas in Sight of the
This will often be a particularly sensitive issue for the
Project objectives and the commercial and legal
partners looking to ensure that such licensing is tightly con-
parameters. This can be done by:
trolled. One possible method of control is the imposition of
- identifying the subject matter to be exploited in the
strict conditions to be satisfied before a licence will be
context of the Project's objectives, common or
granted. The grant to other participants (in other groups) of a
otherwise;
licence to use information generated (within a different group)
- defining the relevant Background Information and po-
could be conditional upon the consent of ail the participants.
tential Foreground Information;
However, such terms are limited by national and EU
- reconciling this with the proposed organisational and
Competition Law and should not be agreed without specialist
contractual structure of the Project with a view to en-
advice.
suring its commercial and legal efficiency.
This applies to all complex legal questions.
Implementation
Other General Points
National and EU. Competition Law, especially Article
The following general points must also be considered:
85 of the Treaty of Rome, might impose limitations where
for instance restrictive rights of exploitation are
Subsidiary Companies
contemplated. Any transfer of information to a subsidiary needs to be
Typically the following elements of exploitation will carefully monitored be cause the subsidiary or its undertaking
require particular consideration: may pass out of control of the holding company either by way
of sale or because of receivership. The effective control of
Background and foreground information
partners by third companies should be contemplated in view
How should the agreement provide for the exchange
of the range of the flow of information between the partners.
of information between partners? The essential questions
are the type and terms of the Licence (including payment) Improvements
and the field of use. Licence Agreements will normally provide that the Li-
Whether to permit use of their Background censor will advise the Licensee of any future improvements
Information by all of the participants in the project or to and vice versa- National and EU Competition Law will affect
restrict use to participants in the project or to restrict use rights and obligations concerning improvements made by the
to participants within a particular part of a group within the Licensee.
project? This is an important consideration, and for Sub-licensing
minimising the risk associated with use on a wider basis it This is normally permissible so long as it is specifically
may be preferable if: recited in the Agreement. Similarly subcontracting will be
- use is limited only to other participants working in close permissible unless prohibited by the Agreement.
proximity, perhaps on a particular 'component' and
- such use is only for exploitation of the results of the
project and
Warranty information. The sale can be on single payment or instalment
The Project Agreement itself must provide for terms or for a consideration in kind.
questions of liability arising out of the project as a whole. The assignment may provide terms where assignment
A typical clause is as follows: back is possible but this is likely to involve another formal
'whilst the grantor of any licence or sub-licence granted document.
shall use all reasonable endeavours to ensure that the in- There may be similarities to licences in the sense that
formation or Intellectual Property provided to the Licensee royalties may be paid, though it can often be difficult to gauge
is accurate, the grantor shall be under no liability to the accurately the value of the rights assigned, especially when
Licensee whatsoever by reason of any loss or damage determining a single payment.
sustained by the use of the licensed information or Some of the major disadvantages of assignment relate to
Intellectual Property'. the fact that the new owner may go into receivership and the
In the context of the Licence Agreement, the Warranty information will then vest in the receiver possibly to the
will relate to Title and Project Liability. In the latter detriment of the former owner.
context, the Licensor will wish to ensure that the Licensee As a general rule assignment is a far less satisfactory
indemnifies the Licensor in all eventualities provided that vehicle for exploitation than licensing.
the Licensee has effective indemnity insurance.
ASSIGNMENT: The Other Option
By an assignment, in contrast to a license, an owner of
information sells all his rights of ownership in the
ANNEX 1
Handling joint inventions
whatever he wishes with it unless his agreement with the
What's the problem?
other partner says otherwise.
- Put simply, it is sorting out the Inventor's and the
This is why it is so important for their agreement to cover
Partner's rights in Joint Inventions. How the partners are
properly the meaning of joint inventions in the project, the
going to manage these rights and how to deal
partners rights in them at the time they are made and for
adequately and effectively with these matters in their
subsequent handling. Only then can their exercise and use be
international collaborative agreement? Probably the
clearly and adequately covered by other terms of the
most important distinction to draw is whether or not the
agreement.
partners have joint rights in the invention at the time it
In any case, there may be only one or a number of in-
was made, e.g. the right under their home law to patent
ventors of a "joint invention" and rights over the invention can
it and the right to sell this right or the patent once
be owned by the actual inventor(s) and/or their employees) -
obtained.
the partners. As mentioned in Chapter 5, an employed
- The answer to this question depends upon the
inventor may have such basic legal rights as:
applicable Governing Law, as applied to the farts of the
- the right to be paid compensation for the invention being
case, particularly the circumstances in which the
taken up and exploited by his employer
invention was made, the employment contracts of the
- the right to patent it if his employer does not do so after a
employed inventors and the terms of the agreement
particular period of time has elapsed
between the partners.
Exactly the same sort of considerations can apply to other
types of joint innovation, i.e. new knowledge produced
Some examples through the combined, creative efforts of two or more people.
- The easiest case to imagine is the one in which an An example if a Registrable Design. They can occur in many
invention is made jointly by the partners' employees different circumstances. The rights over them are largely
working together, possible at the same time in the same determined by national Governing Laws, e.g. Patent Law or
place. Another case is where an employee of one Labour Law. Such rights however vary according to which
partner makes an invention to which the other partner country is being considered.
inputs a significant contribution, e.g. by paying the costs
or supplying his Background and Foreground Particular points
information. And a third case would be when the From these fine distinctions of Property, Labour and
invention is made entirely by one partner, but is in . fact Contract Law, a whole range of particular points may have to
a joint invention for the purpose of his agreement with be settled and agreed by partners In their contract, such as
the other. the following illustrative ones. In reading them, it should be
Taking the first case, the invention is plainly a co- remembered that the right being considered is jointly owned
production and each of the partner's national Patent Laws and therefore cannot be exercised by just one partner alone.
will probably say that it is jointly owned by them and that
they both must apply for a patent unless one agrees that
Applying for patents
the other can do so atone. In the third case, the Patent
- Whether or not patent applications are to be make and
Law of the partner who made the invention might well say
how decisions on this question are to be taken, including the
that he owns it, in which circumstances he is free to do
resolution of disagreements over this? infringement action or monies paid under a settlement to be
- Where should patent applications be made and how divided between the partners?
and when are decisions about this to be taken?
- What happens, should one partner not want to patent
Exploitation of invention under patents
the invention at all or in a particular country? Can the
- How are monies earned to be accounted for and by which
other do so?
of the partner?
- Does that waiver by one partner of his right to apply for
- How can it be ensured that accounts are accurate and
a patent mean that he has also given up his right to use
right?
or exploit the invention in that country?
-Which partners are entitled to 'exploit' under which
- If one partner waives his right to file a patent applica-
patents?
tion in a foreign country, can the others do so or other-
- What does 'exploit' mean: make, use, sell, import, export,
wise exploit the invention there?
license?
- Where should the first patent application be filed,
- How can either partner use these various rights to exploit,
possible to serve as a priority for later applications
eg by selling them?
through the Paris Convention (see Annex 2). Sometimes
this is best done in the country where the invention was
made. Assignment and licensing of patents
- Should applications be made jointly or by one partner - Do different considerations apply between home and
on behalf of others, e.g. for the sake of convenience? foreign countries? Perhaps a partner can licence without
- Who should be the partners' representative in each agreement of others in his home country but all must agree
foreign country for patenting? for a foreign country.
- Which partners are to prepare and make the applica- - How should partners cooperate in drawing up licenses,
tions and how are they to cooperate in these tasks? paying the costs and signing them - which of the partners is
- How are the costs or patent applications) to be paid? to be signatory?
- How are the partners to deal with application(s) once - How are royalties paid by Iicensee(s) to be accounted for
made up until patent grant? and by which partner(s)?
- How are these royalties to be shared between partners?
Maintaining patent(s)
- How and by which partners is this to be done and for Dealing with inventor's rights in invention of
which patents? patent
- if one partner decides not to maintain a patent for This is an especially complicated matter that needs very
which he is responsible should he inform the other? careful attention. In most countries there will be Governing
- How and by which partners are the patents to be Laws that cannot be overridden by anything agreed by the
policed and enforced against infringers? Same question partners, eg concerning the legal definition of an employee
might also apply to independent inventions forming part invention and the rewards that must be paid to the employee
of Background Information. for making it. Those in the countries where the partners
- How are decisions to be taken on beginning legal ac- decide to carry out Project work jointly will need particular
tion against an infringer or on negotiation a settlement attention.
with the infringer? - If one of the partners is a University or similar Institution,
- How are disagreements on these matters to be particular care will have to be taken if students are involved
resolved by the partners? in carrying out some of the Project's innovatory work.
- How are damages awarded at the end of a successful
Some key points are: Many of the above questions of course are of equal im-
-Whether and how should partners reward employees portance to handling independently made inventions. But
for their inventions in accordance with applicable usually in these circumstances they are less difficult to ans-
Governing Law? wer, to incorporate in a contract, and to manage during and
- Should costs of any such reward be shared by the after the Project.
partners?
- How should partners cooperate to enforce employment
contracts?
ANNEX 2
Intellectual property rights and allied rights
forms or protection, i.e. through a portfolio of Intellectual
Property Rights (IPR) which forms a defensive wall within and
Some general points
around the project.
Most EUREKA projects involve the use of a system of
For example, a project protected through:
law, commonly known as Intellectual Property, which ba-
- patents covering its inventive technology
sically exists to balance the public interest in free, ready
- designs over its outward appearance and its various
and wide access to useful knowledge, against the private
components
interest of somebody wanting to protect his brainchild and
- copyrights in engineering drawings, software, electronic
to prevent it falling prey to copiers and others looking to
circuitry and text reports or specification manuals
profit from it without his permission or payment.
- secret know-how concerning how to build or operate it
Conventionally, this system is subdivided. Firstly there
most efficiently or test results or operating/performance
are Industrial Property Rights comprising Patents,
parameters
Registered Designs, and Registered Trade or Service
- a Trade Mark for advertising and selling it
Marks, as well as special types of Patents for Biotechnolo-
Though there are no hard and fast rules, 1PR manage-
gy Inventions, such as Plant Breeding Material and other
ment is one of the most important parts of any EUREKA
Living Organisms that are created by human ingenuity. All
project, even in the initial rounds of negotiation. And a broad
these are characterised by the fact that they may be
understanding by all concerned of their advantages and
subject to registration with national Industrial Property
disadvantages really is essential, particularly in terms of
(Patent) Offices and usually involve examination for com-
getting the best possible professional legal advice.
pliance with certain legal criteria before the rights of
Adequately protecting Background and Foreground
ownership are granted within that country.
Information is a pragmatic art, not a science, dependent
Secondly, there is Copyright, which exists automati-
largely on the partners' ability to identify and agree sensible
cally in most countries without formal application or
mechanisms for dealing with all the many complex
registration.
considerations involved. These mechanisms must lie at the
Lastly, there is the Law of Confidence, through which
heart of their agreement and be an integral part of the
distinct pieces or information of many different types that
Project's organisation, professionally managed from the
are not already public knowledge can be kept secret or
beginning. Otherwise the odds are stacked heavily against a
safeguarded against misuse by others who receive it in
successful and profitable outcome.
breach of this secrecy,
All these forms of Intellectual Property exist under
Patents
specific laws, country by country. Industrial Property, as
well as Copyright, only lasts for certain (though different) Scope
periods of time, again country by country. So in using The main points to bear in mind are that they:
Industrial Property, EUREKA partners have to decide not - are fairly expensive, especially to establish a wide interna-
only which form suits which parts of their project but also tional portfolio;
in which countries protection is needed and when that -last at most for 15-20 years from the date of filing, a con-
protection should be applied. sideration which is especially relevant in the field of phar-
Moreover, their Background and Foreground Infor- maceutical or biotechnological inventions which take a long
mation is normally covered by a combination of these time before exploitation on the market can begin;
- are granted on a first to apply basis in ail except a few 'monopoly' being sought.
countries; This specification is a complex legal document and its
- are negative in the sense that they only give monopoly drafting is best left to an expert such as a patent agent or
rights to stop other people exploiting the invention with- a specialist legal attorney.
out permission. They do not permit exploitation, regard- Procedures, etc. vary enormously from country to
less of someone else's IPR; country, as to:
- are revocable. They can be attacked and cancelled - the criteria which the specification must meet before a
through another party proving them to be invalid, i.e. not patent is granted;
complying with the governing legal criteria; - who is entitled to apply for and to own a patent;
- are public documents containing details of the - duration of the patent's term;
invention and which are extensively used as a source of - costs of obtaining a patent and renewing it through its
technical and commercial intelligence; term;
- are not essential for the owner to exploit out his inven- - procedures for enforcements and remedies for infringe-
tion, either privately or commercially in that country, sub- ment of the owner's rights;
ject to other people's IPT there; - consequence of disclosure of the invention by the inventor
- are marked by differing national laws and or another person before the application is made;
requirements; - compulsory licences.
- are limited to the granting country's boundaries; Patenting in several countries normally involves making
- may well be subject to compulsory licences being separate applications in each, though through the
granted against the owner in the granting country's International Paris Convention the date of filing of the first
national interest; and one effectively becomes that of the others, provided they are
- are restricted to certain types of invention. all made within 12 months of each other. This allows a family
Normally to qualify for protection in most Western of patent applications with the same filing date determining
European countries an invention must at least: both the novelty of the invention and priority over later
- be novel, i.e. different from everything published any- applicant seeking to patent the same invention. The choice of
where in the world before the date of application; the first country in which to file can sometimes be important in
- contain a non-obvious feature; and a EUREKA project.
- be makeable or useable in some sort of industry, i.e.
the invention must be practical and be a product, EUREKA countries belonging to the
apparatus or device, process or method of operation.
International Paris Convention
Most countries will not grant a patent if the invention is
Austria, Belgium, Czech Republic, Denmark, Finland,
a mere discovery, a scientific theory or mathematical
France. Germany, Greece,-Hungary, Ireland, Iceland, Italy,
method, a mental process, a literary, artistic or aesthetic
Luxembourg, the Netherlands, Norway, Poland, Portugal,
creation, a scheme or method for doing a mental act, play-
Russia, Slovenia, Spain, Sweden, Switzerland, Turkey, United
ing a game or doing a business, presentation of informa-
Kingdom
tion or a computer programme.
Obtaining a patent
There are also two further Conventions that help
To gain patent rights in a country, a written application
international patenting in Europe:
has to be make to its Industrial Property Office. This nor-
- The European Patent Convention allows patents
mally has to include a complete specification containing an
to be gained in any of the countries belonging to it
adequate description of the invention, using drawings as
through just one application to the European Patent
appropriate, and a set of claims which define the
Office. The countries include all the EU states
except Portugal and the Republic of Ireland, plus examination, or are limited to aesthetics, while others allow
Austria, Liechtenstein, Sweden and Switzerland. designs that are purely functional, e.g. the shape of a new
gear wheel.
Some European countries also belong to the Hague
EUREKA countries belonging to the
Convention by which design rights in each country can be
European Patent Convention obtained by their organisations and residents through a single
Austria, Belgium, Denmark, Finland, France, Germany, application.
Greece, Ireland, Italy, Luxembourg, the Netherlands,
Portugal, Spain, Sweden, Switzerland, United Kingdom EUREKA countries belonging to the
Hague Convention
EUREKA countries belonging to the
Belgium, France, Germany, Italy, Luxembourg,
Patent Cooperation Treaty the Netherlands, Spain, Switzerland
Austria, Belgium, Czech Republic, Denmark, Finland,
France, Germany, Greece, Hungary, Ireland, Iceland, Registered trade and service marks
Italy, Luxembourg, the Netherlands, Norway, Poland,
These are distinctive, non descriptive words or symbols or
Portugal, Russia, Slovenia, Spain, Sweden, Switzerland,
a combination of the two which uniquely identify the source of
Turkey, United Kingdom
the goods or services. As marks can last long subject to
periodic renewals, their value often increases through use,
- The Patent Corporation Treaty covers around 40
e.g. in advertising. Registered Trade and Service Marks also
countries worldwide and allows the first part of patenting to
help combat counterfeiters.
be undertaken through a single application in which the re-
Like patents and designs the rights are obtained through
quired country coverage is designated. In the second
national applications and registrations or through a single
stage, however, duplicates have to be filed according to
application for countries belonging to the Madrid Convention.
these countries' procedures and requirements.
(EU Countries and the EU Commissions are currently
Other parts of the world also have regional patent
working establishing a Trade Mark System covering the entire
systems to avoid the expenses of multiple applications.
Community).
There is also a Community Patent Convention for the EU
Rights to prevent others using unregistered marks are
Countries though this has yet to become operational.
also recognised under laws concerning unfair competition.
Utility models, petty patents and EUREKA Countries belonging to the
invention certificates Madrid Agreement
These are rather like patents but give a more limited Austria, Belgium, France, Germany, Italy, Luxembourg,
sort of protection for a shorter period of time. the Netherlands, Portugal, Spain, Switzerland
Registered designs Copyright
This form or protection concerns the way a two or Traditionally connected with the world or artists, writers
three dimensional product looks; i.e. its eye appealing fea- and musicians, copyrights or quasi copyrights are becoming
tures of shape, configuration, pattern or ornamentation. increasingly important in the industrial, scientific and technical
National Laws vary widely as to scope, criteria and proce- fields. Examples are computer software, computer held data,
dures. Some, for instance, simply require registration, not engineering drawings, masks for making electronic chips,
technical reports and manuals. e.g. an employee with knowledge of his employer's trade or
Copyright is not subject to any registration. It arises as technical secrets. In others the courts will prevent disclosure
soon as a qualifying work is created and it can last for the for some other reason in view of the nature of the information
life of the author plus another plus 50 or more years. Like of the way it became the knowledge of the person seeking to
with the other forms of industrial property, Copyright Laws disclose or use it.
vary country by country. Copyright is not a free substitute Generally, for this sort of legal protection, the information
for patents or registered designs since the scope and must have some real value and it must not be known publicly.
nature of what is protectable differs. It is a quasi monopoly Examples are:
in being limited to preventing unauthorised copying, not - Commercial Intelligence, e.g. built up through surveys;
independent creation and exploitation of the same work. - Technical Know-how, e.g.; regarding a product's full
More importantly, the protection is largely limited to specification including its performance;
form rather than substance. Thus copyright in a technical - Financial, e.g. sensitive price lists;
manual covers the manual, not what it describes, though - other, e.g. a company's plans or private details of its
this might itself be subject to Confidentiality or concern a customers.
patentable invention. The scope of protection is also de- This sort of protection overlaps with the various types of
pendent upon the national law's definition of copying it. IPR. An engineering drawing for instance might be both
Because the rights are not publicly registered, it is es- copyright and confidential. Moreover, its duration is normally
sential that copyright works are adequately documented to indeterminate because its confidentiality could be destroyed
prove ownership and date of creation, e.g. in order to bring at any time by public disclosure by another source, e.g.
legal actions against copiers. somebody who has independently come up with the same
Through two International Copyright Conventions, of invention, which is quite common in these highly competitive
which the Bern Convention is the basic one, national fields. It depends crucially on the ability to forestall breaches
copyright laws of the Member countries treat their na- of confidentiality through prompt (legal) action. Once the
tionals, etc. equally with those of the other Members. information is out, it is usually lost for good.
This is one of the reasons why it is standard practice for
employment contracts to contain restrictions on employees
EUREKA countries belonging to the Bern
concerning their use of this sort of information, the context of
Convention which should always be dearly defined in the contract.
Austria, Belgium, Czech Republic, Denmark. Finland, To be enforceable, however, any such restrictions should
France, Germany, Greece, Hungary, Ireland, Iceland, be fair, reasonable in their particular context and otherwise
Italy, Luxembourg, the Netherlands, Norway, Poland, comply with the country's Trade and Competition Laws.
Portugal, Russia, Slovenia, Spain. Sweden, Switzerland, Usually, the restrictions are subdivided into non-disclosure
Turkey, United Kingdom during employment and non-competition or use following
termination of employment.
Such arrangements are a good way of heightening em-
Confidential information
ployees security awareness and their individual responsibili-
This is a very broad heading to cover all sorts of in-
ties for looking after valuable information. Regardless of
formation which countries' laws protect, broadly on the '
whether such arrangements have been made, it is usually
principle that promises or secrets should be kept. The
worth getting an employee, who is about to leave and who
range and circumstances of such protection vary just as
has access to genuine confidential information, to sign a
widely as with the various types of IPR.ln some cases pro-
written undertaking that he will not divulge it to his new
tection will exist because of a contractual arrangement
employer or anyone else.
requiring the recipient to keep the information to himself,
ANNEX 3
Glossary of some technical terms
(based mainly on the WIPO-Joint Inventive Activity Guide product;
and definitions) - stocking such product for the purposes of offering for
sale, selling or using;
Background information - when protection - through Industrial Property Rights -
has been granted for an invention relation to a process.
Information excluding Foreground Information owned
or controlled by project partners in the same or related
Regarding a process to exploit means:
fields to the research activities carried out in the
- doing any act referred to in the first sub-paragraph, in
framework of a EUREKA project.
respect of a product obtained directly by means of the
Confidential information
process.
Confidential information comprises trade or commer-
Foreground information
cial secret and know-how. These are not normally statu-
Information including ali kind of results generated by
tory rights although certain countries do have codified
project partners or third parties working for them in the
laws concerning trade secrets.
execution of a EUREKA project.
Confidential information embodies a wide range of
concepts. Participants should identify and define as Industrial design
clearly as possible the confidential information to be in- The appearance - possibly as a ornamental aspect -
troduced. This may assist in obviating the difficulties of of a useful article which is original or novel and must be
protection and enforcement. reproducible by industrial means.
Any disclosure of confidential information at even this Industrial property title rights
preliminary stage must be entirely in confidence,
A title granted in accordance with the applicable legal
otherwise any subsequent filing of an application for a
provisions, certifying rights in inventions, utility models,
patent may be refused on the bases that the 'invention'
industrial designs or trademarks.
has already become part of the 'state-of-the-art'.
Industrial property titles are, for example, patents,
Copyright certificates of industrial designs and utility certificates.
Copyright is a (quasi) monopoly right which provides Innovation
usually for automatic protection of copy-rightable material
In a general sense, 'innovation' covers that whole
contained in the technology. It prevents the copying or
process of creation, development, application, production
original literary, musical or artistic works from copying.
and commercialisation of new ideas, products and
Copyright protects and 'expression' and not the idea
processes in any branch of the economy.
itself.
In a limited sense, 'innovation' has several different
Copyright protection will normally belong to the au-
meanings, the most common being:
thor, maker or publisher - generally for his lifetime plus 50
- a practical solution of a technological problem of a
or more years.
specific enterprise, which is new for the enterprise
Exploit (exploitation) (sometimes it is called a technological innovation) or
Regarding a product, to exploit means: - the result of the complex process transforming the
- making, using, marketing (i.e. importing, offering for invention into an industrial product or process.
sale, selling, exporting, renting, leasing, etc.) the 'Innovation' is sometimes also used to cover
rationalisation proposals, technological innovations or Security agreements
technovations.
Provision for the preservation of confidential infor-
Invention mation, technical and other, used for the implementation
A new idea of an inventor which permits in practice of the project and produced by it.
the solution to a specific problem in the field of Software
technology. Detailed criteria for the recognition of ideas
Software is an utilitarian article designed to give
as inventions are established by national legislation.
computer hardware desired functions.
An invention may be or may relate to a product, a de-
Computer software consists of the programme, its
vice, a substance or a process and normally is
structure and sequence.
'patentable' if it is new, involves an inventive step and is
The programme itself may benefit from protection by
industrially applicable. New strains of micro-organisms
copyright if it complies with certain criteria of originality!
may also be recognised as inventions.
Trademark
Know-how
Any sign visible, audible or other serving to
For the purposes of this Guide, 'know-how' means
distinguish the goods - as does the service mark with
any technical information, data or knowledge resulting
regard to services - of one enterprise from those of other
from experience or skills which are applicable in practice,
enterprises.
particularly in industry.
Trade secret
License (licensing)
A 'trade secret' may consist of any formula, pattern,
License means the permission to act or (as a verb) to
device or compilation of information which is used in
permit to authorise.
one's business and which helps to obtain an advantage
For the purpose of this Guide, 'to license' means to
over competitors who do not know or use. It may be a
grant a license, that is, to give permission to perform the
formula for a chemical compound, a process or manufac-
acts that are protected by the exclusive right of the owner
turing, treating or preserving materials, a pattern for a
of a patent trademark, utility model, industrial design or
machine or other device, a computer programme or a list
copyright, or to authorise a third person to use one's
of customers. The holder of the trade secret takes mea-
know-how or trade secrets.
sures to preserve its confidential character.
Patent Utility model
The word 'patent' has two meanings (in connection
A title for protecting inventions recognised in the laws
with inventions). It means either:
of some 20 countries. A utility model usually differs from
- the title (the industrial property title) to the invention;
a patent in that it Is granted for a duration which is
- the official document, certifying that a title - called a
shorter that the duration of a patent. Moreover, under
patent - has been granted and containing the
certain laws, difference exist with respect to the kind of
description, etc. of the invention patented. This
inventions for which utility models are available (for ex-
document is sometimes called 'letters patent'.
ample, only for mechanical inventions), with respect to
'Patent' without any further indication is generally
the requirement of inventive steps and with respect to the
considered a patent for an invention. However, in some
examination procedure.
laws or languages, it is usual to call such patents 'patents
for inventions'.
Secret information - classification
Classification of data by levels of security: restricted,
confidential, top secret.
