frequently asked questions
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Intellectual property rights (IPR) are legal rights aimed at protecting the creations of the intellect, such as inventions, the appearance of products, literary, artistic and scientific works and signs, among others.
|Type of creation||Intellectual Property Rights|
|literary, artistic and scientific works||copyright|
|performances of performing artists, phonogram recordings by producers, and rights of broadcasters over radio and TV programmes||related rights or neighbouring rights|
|inventions||patents and utility models|
|Signs - words, phrases, symbols or designs (or a combination of these) which are used as brands of goods and services||trade mark|
For a general overview of all the different intellectual property rights, we suggest that you consult the Quick Guide to IP, prepared by the Office for the Harmonization in the Internal Market (OHIM)
Intellectual property is created by most companies, whatever business they are involved in. For many of these organisations, intellectual property is even their most important asset (e.g. startup or spin out companies)
Safeguarding this possession is therefore vital and can offer SMEs many opportunities, in particular:
- to have an exclusive set of rights in the market over their creations (for example, a patented invention allows a monopoly of twenty years, and means that a patent provides its owner with a right to prevent or exclude all others from commercially using it);
- to obtain higher returns on their investments, since owning intellectual property rights may not only enhance the bargaining power, but may also be exploited through licences in return for royalty payments;
- to enhance the market value and increase future profit expectations of an organisation in the eyes of investors and financing institutions.
It is therefore essential that SMEs consider protecting their creations through intellectual property and efficiently manage these assets to reap the most from their investment.
In Your Europe, a website maintained by the European Commission, you can find an overview of the intellectual property (IP) framework at the EU level and also in all Member States. A list of resources and contacts of organisations that can provide you with further assistance can also be found on this website.
National IP offices are also a valuable source of information. In the website of the World Intellectual Property Organization (WIPO), there is a Directory of Intellectual Property Offices where you can find the contact details of all IP offices in the EU.
A patent is an exclusive right granted by countries for the protection of inventions, whether products or processes, that offer a new technical solution or provide a new way of doing something, during a limited period of time, usually 20 years. In return of this limited monopoly, the owner of a patent must disclose the invention to the public, in the patent application. A patent is a territorial right and has its effects within the national boundaries of the country for which it was granted.
In order to get patent protection, inventors must file a patent application, since registration is a requirement in order to obtain protection.
Example of a patent: Tinting Plastic Optical Lenses
Patents are territorial rights that require registration - that is, in order to protect your invention in a given country, you must file a patent application in the country concerned or through a regional patent office designating countries in which protection shall be obtained. The European Patent Office offers a very simplified way to apply for several national patents through a unique "European" patent application. You can also file an application under the Patent Cooperation Treaty which allows the owner of an invention to seek for a national patent protection in several countries by filing one “international” patent application.
Hence, if you would like to have a patent in an EU Member State, we suggest that you contact the national patent office of the country or one of the regional patent offices in order to file the patent application there. Irrespective of the filing procedure, the rights to which you are entitled will depend on the national law of the country of registation.
Please note that filing a patent application is highly technical, and choosing the appropriate procedure (at national, European or international level) certainly has implications in terms of cost and time. Therefore, we encourage you to seek legal advice before taking the decision to submit any patent application.
If you want patent protection in more than one EU Member State, it is possible to file patent applications directly in each of the national patent offices of the countries where you seek protection. Another option that you have is to use the European Patent Convention (EPC), which allows you to register patents in more than one European country through a single application. In this way, even though you file only one patent application, you will be granted as many patents (usually called European patents) as the number of countries you have designated. These patents are then treated as national patents in each of the designated countries. You will find information on the countries where this procedure is available here.
For further information on the procedure to file a patent under the European Patent Convention, we suggest that you consult the following links:
(i) Guide for Applicants, prepared by the EPO
(ii) Information on how to apply for a European Patent, also prepared by the EPO
Please note that filing a patent application is highly technical and has important implications in terms of cost and time. Therefore, we encourage you to seek legal advice before taking the decision to submit any patent application.
If you have decided to protect your invention by patent in several European and non-European countries, you may consider filing an international patent application under the Patent Cooperation Treaty (PCT). Similarly to the EPC, the PCT provides for the filing of a single patent application (usually called an international application) with effect in several countries. The difference is that a PCT patent application does not have a regional scope like the EPC, but an international one. For further information on the procedure to file a patent under the PCT, we suggest that you consult the following links:
(ii) The PCT’s Applicant Guide prepared by WIPO;
(iii) The Guide for Applicants prepared by the EPO.
Please note that filing a patent application is highly technical and has important implications in terms of cost and time. Therefore, we encourage you to seek legal advice before taking the decision to submit any patent application.
No. An invention in all fields of technology can be protected, but it must fulfil the following requirements:
- Novelty: it must show a new characteristic which is not known in the existing knowledge in its technical field - that is, not being part of the state of the art;
- Inventive step: the invention can not be deduced by a person with average knowledge of the technical field;
- Practical use: it must be capable of industrial application.
Countries may also deny under their laws patent protection to determined subject matters or types of inventions such as mathematical methods, scientific theories, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products).
No. Inventions can also be protected by trade secrets if you keep them in secrecy. In some EU Member States, you may also file an application for utility models.
|Patent||Utility Model||Trade Secret|
Thinking about market strategy, publishing an invention may also be an option for protection, if you do not need to have exclusivity. It is certainly a cheaper option and it has the advantage of blocking others from getting a patent on the same invention. However, take into account that you will be revealing your innovation to possible competitors.
Conducting patent searches is very useful for several purposes, not only for organisations such as SMEs and universities, but also for researchers. Indeed, patent databases are a goldmine of technical and commercial information that can be used to:
- guide the definition of an organisation’s IP strategy (identifying, for example, any barriers to developing an IP strategy, the avoidance of obstacles, etc.);
- define the state of the art (to find out what already exists, to check novelty, to improve the quality of a patent application, to understand the IP landscape surrounding your projects and IP);
- check for freedom to operate (to check if you do not infringe someone else's rights, or to search for the validity of third parties’ IP);
- check if someone is not in a position of infringing your rights (infringement still needs to be proved);
- keep track on who’s doing what (commercial intelligence).
Many of the patent applications that you can find in the databases are not even “in force” and therefore are free to be used in your own projects. This can happen for different reasons, such as the application's failure, withdrawal or expiry.
Patent owners in the EU are generally entitled to prevent others from making, using, offering for sale, selling, or importing for these purposes the invention without prior authorisation.
Consequently, if you get patent protection, other persons and organisations cannot exploit your patent without your consent. However, it is important to remember that you will be entitled to this set of rights only in the territories where you have been granted a patent and as long as the patent is “in force”.
The cost of patent applications varies from country to country and depends on the route taken to pursue protection (national, European or international).
Nevertheless, there are costs other than the fee that you must pay for the application which you should consider, in particular the following:
- After the application and during the life of a patent, applicants must pay renewal fees. These payments are requested by most patent offices and are a requirement to keep patents valid (until their expiry date, which is usually after 20 years).
- The cost of services of patent attorneys or agents, which in some countries may be very high, must also be added to the total cost.
- Translation may be required, which can substantially raise the cost of a patent application.
Even though everyone could theoretically draft their own patent application, we believe that this is not advisable. Patent applications are very technical and, given the costs that they involve as well as the importance of a careful preparation, we encourage you to seek advice from a patent attorney or patent agent.
The Enterprise Europe Network (EEN) can assist you in finding such a specialist. To find the nearest EEN branch, please click here. You may also find lists of authorised patent attorneys in many National Patent Offices and at the European Patent Office.
A unitary patent is a single European patent with unitary effect for the 25 EU Member States which have engaged in an enhanced cooperation to this effect. The unitary patent is granted by the EPO under the rules and procedures of the European Patent Convention. In order to obtain a unitary effect, patent holders need to request the unitary effect at the European Patent Office (EPO) within one month of the date of publication of the patent grant in the European Patent Bulletin.
The unitary patent may be requested from 1 January 2014 or from the date of the entry into force of the agreement on the Unified Patent Court.
No. The unitary patent will co-exist with national patents and with classic European patents (i.e. without unitary effect) as a third option for companies or inventors seeking patent protection in Europe. Patent applicants remain free to choose between national patents, classical European patents and unitary patents. They can also use a combination, such as:
- a unitary patent for the Member States participating in the unitary patent cooperation, together with national patents covering the member states which did not take part in this cooperation;
- a unitary patent for the Member States participating in the unitary patent cooperation; together with a classic European patent taking effect in one or more Contracting States to the European Patent Convention which do not participate in the cooperation, such as Spain, Italy, Switzerland, Turkey, Norway, Iceland, etc.
The unitary patent is aimed at reducing administrative and translation costs by offering applicants a single patent with validity – uniform scope and equal effect of protection - in the territories of all the member states participating in the enhanced cooperation. For the applicants this entails no further need for national validation, a single annuity, one place to register transfers and licences and after grant, no further translation requirements.
For a transitional period of 12 years, until a machine translation system maintained by EPO (called “Patent translate”) become fully operational, a full translation into English of the European patent specification must be provided if the unitary patent is granted in German or French or, if the language of the proceedings is English, into an official language of a EU member state. In any case translations into a relevant EU language may be requested by a court or by a defendant in an infringement case. The unitary patent may be enforced or revoked in a single action for all the participating territories before the Unified Patent Court.
Utility models can be registered in some countries to protect technical innovations which might not qualify for a patent. The requirements of protection vary from country to country. However, most countries will only grant utility models for products, not for methods or processes. Because the novelty and inventive step requirements are less stringent than those required for patents, utility models can be useful for incremental inventions where only a small change has been made and which might not meet the inventive step requirements for a patent.
Utility models are a more flexible and less costly way of protection of technical inventions than patents. The degree of inventive step is required but in a lower grade than for a patent and the maximum duration of protection is shorter.
There is no European or international utility model protection. The rules for utility model registrations vary from country to country. Consequently, the requirements for utility model protection will vary depending on the particular national regulations.
One of the main advantages is that filing a utility model is much cheaper than obtaining and maintaining a patent. The lower costs associated with utility models mean that they could be particularly useful for SMEs. Another advantage is that the utility model is normally granted faster than a patent. The utility model will be easily granted since there is usually no substantive examination (e.g. on novelty.) The inventive step requirements are lower than for patents.
If a patent application is refused, many countries allow the conversion of a patent application into a utility model application. However, in some countries there is a time limit for doing so.
Yes, when a European patent is revoked, or when a European patent application is rejected or withdrawn.
This possibility exists in some countries. For example, in Germanyit is possible to obtain and keep both a patent and a utility model for the same invention. If a utility model is branched off from a patent application, the patent application can continue to be pursued to the grant stage as well. However, in other countries, such as Japanand China, only a single right for the same invention is allowed to remain in force.
A trade secret refers to information which meets the following requirements:
- it is secret, meaning that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
- it has commercial value because it is secret; and
- it has been subject to reasonable steps under the circumstances, by the person in control of the information, to keep it secret.
The type of information that can be considered as a trade secret is therefore highly diversified, including know-how, technological knowledge, business and commercial data such as lists of customers, business plans, recipes or manufacturing processes. Even though most business information could potentially be regarded as a trade secret, in practice most of it does not need to be treated as such since it has no commercial value. It is therefore important that companies are aware of the information that they consider secret, allowing their effective protection and management.
Trade secrets are not protected by a specific intellectual property right. Therefore trade secrets do not confer “proprietary rights”, meaning that the holder of a trade secret does not have exclusive rights over the information. Thus, to protect trade secrets, organisations are advised to take measures and implement a range of best practices to make sure that the trade secret is kept confidential.
These measures and best practices include:
- assessing the company’s valuable confidential information;
- developing an internal trade secret policy;
- storing confidential information safely;
- creating employee awareness of the importance of keeping trade secrets safe;
- concluding non-disclosure agreements in the case where trade secrets must be discussed with business partners;
- including non-disclosure clauses within agreements such as licence agreements, consortium agreements or partnership agreements, where the exchange of confidential information is very likely and/or necessary.
These measures are highly important since once the information is leaked, others can use it freely since no proprietary right to the trade secret exists.
However, if the information was leaked by someone under the obligation to keep confidentiality, such a disclosure would constitute a breach of contract allowing remedies for the trade secret holder. Moreover, if a person obtains the trade secret by dishonest means (such as in the case of espionage), all countriesin the European Union offer some form protection under unfair competition law.
|Patent||Utility Model||Trade Secret|
Non-disclosure agreements, also called confidentiality agreements,are legally binding contracts establishing the conditions under which one party (the disclosing party) discloses information in confidence to another party (the receiving party).
Depending on the number of parties disclosing information, non-disclosure agreements may be “one-way” (also known as unilateral) with one party disclosing information and one party receiving information, or “two-way” (also known as bilateral or mutual) when there is a bilateral disclosure. Whenever the two parties wish to disclose information instead of relying on a “two-way” agreement, it is also possible to sign two unilateral non-disclosure agreements, which may sometimes facilitate negotiations on the drafting of such an agreement. Sometimes you may also see multilateral agreements, with more than two parties involved.
All types of information can be exchanged under non-disclosure agreements, such as ideas, know-how, descriptions of inventions, chemical formulas, research or business information and negotiations, among others. The common characteristic however is that the disclosed information is valuable to the disclosing party to the extent that it must be kept away from the public domain.
In fact, in the European Union several types of intellectual property rights, in particular patents and industrial designs, demand novelty as a requirement for acquiring protection. In most of the EU countries, a creation is considered new if it has not been previously made available to anyone anywhere, unless under confidence obligations. Moreover, some intellectual assets are generally not patentable in many countries of the European Union, such as methods for doing business, and therefore can only be protected if kept out of the public domain. On the other hand, organisations can strategically decide that keeping information confidential is the most appropriate way of protection. Independently of the reason, in all these scenarios, non-disclosure agreements are the recommended tool to use for the purpose of protecting information when it is necessary to transmit it in confidence.
Thus, it is best practice to conclude non-disclosure agreement before engaging in negotiations for licence agreements and R&D projects, or whenever necessary to show innovative ideas, products or technologies to potential business partners or other persons. Confidentiality obligations may also be part of a larger agreement, such as license agreements, consortium agreements and employment contracts.
Trade mark searches are extremely important and typically designed to determine whether a particular trade mark is available for use on a relevant territory. Trade mark search is an investigation to discover potential conflicts between a proposed mark and the existing ones. Searches help to determine if you can register your trade mark on a relevant territory. The search may identify trade marks that are visually, phonetically, or conceptually the same or similar to the trade mark to be adopted and that cover the same or similar goods or services. The report of searching notes all use of identical or similar marks and the products or services in relation to which they are used. Conducting searches helps to avoid objections and reduces the possibility of infringement of the rights of a prior user or registrant.
A trade mark registration is performed in a specific area - always in connection with certain products and/or services offered by its owner. The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) is an international classification of goods and services - it groups goods and services into thematic classes for the purposes of the registration of trade marks. The heading of each class indicates the products or services included.
A trade mark with a reputation may be protected from unauthorised use in relation to non-competing goods and/or services. They are protected in case the use of a later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. When determining whether a trade mark has a reputation, the following aspects should be taken into consideration: the duration, extent, and geographical reach of advertising and publicity of the trade mark; the amount, volume, and geographical extent of sales of goods and services offered under the mark; the extent of actual recognition of the mark.
The wording of the Article 6bis of the Paris Convention and(or) Art. 16(2) of the TRIPS Agreement as well as the Article 4(2)(d)of the Trade Mark Directive refers to a well-known mark. Well-known marks are usually protected irrespective of the fact whether they are registered or not. Furthermore, they are protected for goods and/or services which are identical with, or similar to, those for which they have gained their reputation if there is a likelihood of confusion in the relevant sector of the public. In some countries they are also, under certain conditions, protected for dissimilar goods and services.
The appearance of the product itself or of the packaging of a product is protectable as a three-dimensional trade mark.
Some criteria of examination of the three-dimensional trade mark that consist of the appearance of the product itself are the same as for other categories of trade marks. However, it may be more difficult to come to a finding of distinctiveness. In general, a three-dimensional trade mark that consist of the appearance of the product itself can only be regarded as sufficiently distinctive if the shape departs significantly from the norm or customs of the sector and can thus be perceived as an indication of origin of the goods and/or services.
Additionally, in order to obtain protection a form/shape must meet the following legal requirements:
- the form/shape must not be necessary to achieve a technical result;
- the form should not be imposed by the nature or the function of the product itself (e.g. the shape of a football for a football);
- the form should not give substantial value to the product (shapes which exclusively realise an aesthetic function, such as the shape of an object of art for objects of art).
The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification)is available in its entirety on the website of the World Intellectual Property Organisation.
In case of prolonged non-use of its mark, the owner may be deprived of its rights. Revocation of a mark is always pronounced by the courts following an application for revocation of the rights of the proprietor. It may be requested by any person if the owner has not begun to exploit its trade mark as it has been registered or has abandoned the use of its trade mark. Revocation of a mark may be total or partial - for all or part of the goods and services specified in the deposit.
In most countries, a mark will not be so cancelled unless it can be established that there has been at least three years of non-use. In this context, it would be advisable to check the legal position in the country or countries for which the trade mark has been registered. If, however, the owner of a mark can establish that, despite every intention to use the mark, it was prevented from doing so due to circumstances beyond its control, the mark may not be subject to cancellation.
A design is the outward appearance of a product or part thereof resulting, in particular, from the characteristics of the lines, contours, colours, shape, surface, structure and/or materials of the product itself and/or its ornamentation.
Besides the protection for registered Community design, the Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs provides a short-term form of protection for unregistered industrial designs. Registration is not required. Protection lasts for a period of three years and starts when a new design with an individual character is made available to the public in such a way that the interested circles within the European Union could be aware of its appearance. Unlike a registered design, it is not necessary to file an application to obtain protection. The unregistered design constitutes a right to prevent the commercial use of the design only if the use results from copying.
A well-designed product can be synonymous with the image of your undertaking, and thus become a valuable asset for you. If you do not protect your design, others may benefit from your intellectual property.
Nevertheless, depending on the national or regional law system, a design which has not be registered may still be protected in different ways:
- under industrial property law (as an unregistered design),
- as copyright (if exists as an original man-made work) or
- under unfair competition law.
The subject of the design protection is the outwardly visible appearance of the product or its part, packaging or the ornamentation itself.
A design is protected by an exclusive right if it is new and has individual character. A design is regarded as new if, on the date on which the application for registration has been filed, no identical design has been made available to the public.
A design is considered to have an individual character if the overall impression it produces on an informed user differs from the overall impression made by any design available to the public before the date of filing of the application for registration.
Further requirements for design protection may vary in different countries.
The design protection gives to its holder the exclusive right to use it and to prevent any third party from using it without having the holder's consent. The aforementioned use shall cover, in particular, making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.
In most countries, registered design protection is renewable by periods of 5 years from the filing date, up to a maximum of 25 years.
There are different ways to acquire design protection, through application to national, Community design or Hague design offices.
In the EU, you may obtain a community design registration valid in all member countries through a single application, which can be filed directly in the Office for Harmonization in the Internal Market (OHIM) in Alicante (Spain) or through any of the EU national Industrial Property Offices. If the design is registered by national offices, the protection is limited to the country in which protection is granted. Some countries (e.g. the UK) provide the protection of unregistered design in their national legislation. Furthermore, all designs in the EU fulfilling specific criteria for protection are automatically protected (without registration) as unregistered Community designs.
The Hague System for the International Registration of Industrial Designs provides a mechanism for registering a design in several countries by means of a single application, filed in one language, with one set of fees. The system is administered by WIPO.
The features of appearance that result solely from the technical function of a product cannot be protected as a design. The components of a complex product are protected only if they are visible during the normal use of a product and if they are new and have individual character. Design features enabling one product to be functionally fitted or aesthetically matched to another are excluded from protection. These so-called 'must-fit' and 'must-match' exceptions are influenced by the need to ensure that third party providers of spare parts should not be unfairly prevented from competing within the spare parts market.
The existence of a grace period and the corresponding requirements can be provided by applicable national laws. The law can allow the filing of an application for registration of an industrial design after its disclosure, within a limited time period from the date of disclosure (generally six months or a year). This is particularly useful for small businesses since they frequently lack the funds to finance registration of designs, which may not be successful on the market.
Copyright protects works such as:
- literary works- novels, song lyrics, newspaper articles;
- computer programs, some types of databases;
- dramatic works- dance or mime;
- musical works;
- artistic works- paintings, photographs, sculptures, architectural designs, technical drawings, diagrams, maps, logos;
- layouts or typographical arrangements;
- recordings of a work - recorded music performances;
- broadcasts of a work.
According to a well-established principle, copyright protection extends only to physical expressions, not to ideas, procedures, methods of operation or mathematical concepts as such.
Copyright protection is automatic in the EU, as well as in every country which is a signatory to the Bern Convention. Indeed, copyright arises from the moment of the work’s creation and no registration or other formality is required.
Nevertheless, copyright owners may take some measures with the purpose of informing others of the existence of copyright, therefore reducing the likelihood of a potential infringement. A well-known measure commonly used is to mark copyrighted works with a copyright notice. Usually it includes the copyright symbol (©), followed by the owner’s name and year of the work’s protection.
Even though copyright owners do not have to register copyright, and registration is not a requirement for protection, some national laws allow it. Using these non-mandatory registration systems may prove to be useful in some situations, particularly when it is necessary to demonstrate that a work was in the creator’s possession on a certain date. It may also prevent misappropriations of information in negotiations with potential partners, since it shows that such information had already been created.
To qualify for copyright protection, a work must:
- exist in some physical form for at least some period of time;
- be original;
- be the result of at least some creative effort on the part of its author.
Copyright is an intellectual property right, which entitles the owners of literary and artistic works to a set of exclusive rights over their works. These rights, generally, include:
- adapting and altering;
- communicating and performing to the public;
- renting and lending copies.
Copyright grants two kinds of prerogatives:
- economic rights;
- moral rights;
So-called "economic rights" enable right holders to control (license) the use of their works, and be remunerated for their use. These rights normally take the form of exclusive rights and include the right to reproduce and communicate the work to the public.
The author of a copyrighted work also has the right to claim authorship, as well as the right to object to a distortion and mutilation of the work that may be detrimental to his honour or reputation. These rights are generally known as moral rights. Moral rights may include the right to decide on when or whether to make the work public, the right to claim authorship of the work and the right to object to any derogatory action in relation to the work. Moral rights are not harmonised at EU level.
Related rights are the rights that have a specific subject matter and protect the interests of certain group of right holders, such as:
- rights of performers;
- rights of producers (of phonograms, films);
- rights of broadcasting organisations;
- rights of publishers in their editions.
These are rights granted to performers, producers and broadcasters to ensure that those who have created or invested in the creation of music, or other content such as literature or films, can determine how such a creation can be used and receive remuneration for it.
After the period of copyright protection has expired, a work becomes available for use without permission from the copyright owner; it is said to be "in the public domain." Most works enter the public domain because their copyrights have expired.
Generally in the EU, copyright is owned by the natural person who creates the work. In most EU countries, the author or co-authors of a work are the first owners or co-owners of the copyright.
However, the IP systems in the EU currently vary between Member States which maintain a system of institutional ownership, and those which maintain a system of professor’s privilege (inventor ownership).
In fact, in many countries, when a work is made by an employee in the course of their employment, the employer will be the first owner of copyright on the work created under a contractual relationship (e.g. the university would be regarded as the owner of a copyright to a work created by its researcher in the course of their employment, since the latter is paid to perform such a task).
Some countries of the EU have a specific type of "professor’s privilege" regime according to which the researchers, PhD students, etc. are entitled by law to the ownership of the work they created in the course of their employment (e.g. in Italyor Sweden). Results of publicly-funded research created or developed by researchers are thus owned by the latter and not by the academic institution where the research is carried out.
The requirements to be satisfied for a work to be considered as jointly created (joint authorship) are generally the following:
- the work has to be produced through the process of collaboration;
- each of the authors must contribute to the making of the work;
- the respective contribution of each author is not distinct from that of the other(s).
Copyright is essentially a private right. The copyright owner must decide how best to exploit the copyright work – to sell it, license it (exclusively or non-exclusively); an assignment transfers the full (all economic rights) or partial (some economic rights) ownership.
These options often involve contractual agreements, which may be just as important as the rights provided by copyright law.
Registered copyright does not refer to a different type of intellectual property right, but to copyright that has been registered under the voluntary system of registration. Copyright is indeed an automatic right that does not depend on registration. Nevertheless, in some countries (e.g. Belgium), national laws allow registration of artistic/literary works. This voluntary system of registration is generally aimed at identifying the work and serving as evidence in court in litigation disputes (e.g. in order to prove more easily the date of creation of the work); it does not prove authorship.
There are a number of exceptions in copyright law, which allow limited uses of copyright works without the permission of the copyright owner. Normally permission is not needed if using less than a substantial part of a copyright protected work.
The following list of exceptions is not exhaustive and particular care should be taken if intending to rely on an exception:
- non-commercial research and private study;
- criticism, review and reporting current events;
- teaching in educational establishments;
- helping visually impaired people;
- time shifting;
- material used in legal proceedings.
Certain exceptions require giving sufficient acknowledgment when making use of a copyright protected work.
Copyright is infringed when a person deals with a ‘substantial part’ of a copyright-protected work without the copyright owner’s authorisation where such dealing is not covered by an exception. It is important to take into consideration that dealing with a ‘substantial part’ of a copyright-protected work does not necessarily refer to using a large amount of the work. A person who wants to exploit another person's works must obtain authorisation from the owner of the copyright-protected work; otherwise the person's act will constitute infringement of the copyright on the works.
The Berne Convention establishes that literary works are protected under copyright, without any formal registration of rights, in the countries that agree to this Convention. This means that as soon as a literary work is created, it is considered to be protected by copyright. All European Union Member States are parties to the Berne Convention.
To obtain copyright protection on a book, authors in the EU do not need to register their publication, as protection arises automatically; but they are required to satisfy the copyright requirements that are imposed in their country. For example, one such requirement is the original character of the work.
Copyright combines rights of the author and rights to the exploitation of works. Concerning the publication of a book, authors are usually required to assign the copyright or grant a licence to publishers in order to allow them to make copies and to distribute the work. These arrangements commonly include an agreement on the payment of royalties to the author.
At the European level, Directive 2009/24 seeks to harmonise Member States’ legislation in the field of legal protection of computer programs by defining a minimum level of protection. Member States protect computer software as such by copyright, by analogy to the protection given to literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works.
Copyright will protect only the computer program in the form written by a programmer i.e. its source code. Neither the functionality of a computer program, nor the programming language or the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program, and thus, those are not protected by copyright.
Article 52 of the European Patent Convention excludes software from patentability to the extent that a patent application relates to a computer program as such. A distinction is, however, made between “software patents” which are excluded according to Article 52 EPC and so called computer-implemented inventions which are accepted at the European Patent Office. In this respect, “computer-implemented inventions” can be defined as inventions whose implementation involves the use of a computer, a computer network or other programmable apparatus, having one or more features realised by means of a computer program. It seems therefore that patentability must not be denied merely because a computer program is involved. You could seek patent protection if the subject matter of your invention as a whole, i.e. a machine with related software, has a technical character - this technical character must be present in all variants covered by the patent claim.
In the meaning of the European Union Directive 96/9/EC on the legal protection of databases,the term database refers to a collection of independent works, data or other materials, which have been arranged in a systematic or methodical way, and have been made individually accessible by electronic or other means. In the meaning of the Directive the data or materials:
- must not be linked, or must be capable of separation without losing their informative content;
- must be organised according to specific criteria, which means that only planned collections are covered;
- must be individually accessible – mere storage of data is not covered by the term database.
A database can be protected by copyright as a literary work and/or by a sui generis database right:
- under the rules of international law - Berne Convention, the WTO/TRIPs Agreement and under the WIPO Copyright Treaty (WCT), original and creative databases enjoy copyright protection as literary works.
- under Directive 96/9/EC on the legal protection of databases, which creates a specific property right for databases, that is unrelated to other forms of protection such as copyright. This new form of “sui generis” protection applies to those databases, which are not “original” in the sense of an author’s own intellectual creation (“non-original” databases), but which involved a substantial investment in their making.
Both rights only apply to the arrangement of data – neither database copyright nor the sui generis right creates an additional protection for the individual elements of the database.
Copyright protection applies to databases that are creative/original in the selection and/or arrangement of the contents and constitute their authors’ own intellectual creation.
Copyright protection is granted to the author and expires 70 years after the author’s death.
Copyright protection has an international character – databases are protected by copyright in almost all countries in the world. The modalities of such protection may however vary from jurisdiction to jurisdiction.
The sui generis protection of databases applies if a substantial investment was made in obtaining, verifying and presenting its contents. A substantial investment is to be understood as a financial and/or professional investment, which may consist in the deployment of financial resources and the expending of time, effort and energy made in obtaining and collecting the contents.
The collection of data should be contained in a fixed base, which includes technical means – electronic, electromagnetic or electro-optical processes or other means – index, table of contents, plan or method of classification, to allow the retrieval of any independent material contained therein.
Database protection can apply to both electronic and non-electronic (paper) databases as well as both static and dynamic databases.
The term of protection of the sui generis right is 15 years following the database’s completion. However, if the database is published during this time, the 15-year term will start running from the publication date.
If a new substantial investment is made to an existing database (updates or supplements), the creator will have a new right to the altered database or its substantial part.
The sui generis right grants its holder two categories of rights:
1. the right to extract all or a substantial part of the database. The term “extraction” refers to the permanent or temporary transfer of the whole or a substantial part of the contents of the database to another medium, by any means or in any form. It implies that some degree of choice or individual appreciation of the content to be extracted is made.
2. the right to re-use all or a substantial part of the database. The term “re-utilisation” refers to any form of making available to the public the whole or a substantial part of the contents of the database by distributing or renting copies, through on-line or other forms of transmission.
The expression “substantial part” of the contents refers to a part that could be substantial in quantitative or qualitative terms – therefore a part may be considered substantial even if it is quantitatively small.
The sui generis right protects, as an intangible asset, the results of the financial and/or professional investment carried out towards the methodical and systematic classification of independent data. This right is not a right over the information stored in the database and does not constitute an extension of the copyright protection which may apply to the contents of the database.
The holder of the sui generis database right is the person who undertakes the initiative of creating the database – the producer of the database – and takes the risk of investing. The investment’s substantial quality has to be proven by the producer, for example by providing invoices or information on the persons/employees involved in the work.
No universal licening agreement model exists. Licence agreements will vary depending on the subject of the licencing activity, on the corresponding applicable law used to construe its provisions and on the circumstances of each specific case.
We draw your attention to the following issues:
In general, the scheme of a licence agreement is simple: the licensor (owner of IP rights) allows the licensee to use its IP rights. The licensee may use the licensor's IP rights to the extent established in the licence agreement; however, the formal IP rights remain with the licensor.
- While drafting a licence agreement do not forget to cover its core issues, such as: the subject of the licence (all IP rights, future IP rights, know-how), territorial scope of access rights, commercial scope and field of use of licensed rights, exclusivity/non-exclusivity of the licence, duration of effects of the licence, compensation (payments, shares, cross-licenses, etc.), royalties, applicable law (especially important in case of transnational agreements), consequences of the breach of the licence agreement, etc.
- Negotiating and drafting of an efficient licence agreement might be quite complex and sometimes requires independent professional advice so that potential legal pitfalls can be avoided.
In order not to miss the most important elements that a licence agreement should include, we suggest that you get acquainted with the guide Healthcheck booklet (in the series: Licensing Intellectual Property) which is available on the UK Intellectual Property Office homepage.
Examples of templates that may help you outline the likely content of a licencing agreement can be, furthermore, found in the ipHandbook of Best Practices.
The Framework Programmes for Research have two main strategic objectives: one is to strengthen the scientific and technological base of the European industry and the second is to encourage its international competitiveness, while promoting research that supports EU policies.
The complete name of FP7 is the 7th Framework Programme for Research and Technological Development. It spans seven years from 2007 until 2013. This programme is a reflection of the high priority of research in Europe.
Most of the funds will be spent on grants to research actors all over Europe and beyond, in order to co-finance research, technological development and demonstration projects. Grants are determined on the basis of calls for proposals and a peer review process, which are highly competitive.
In order to complement national research programmes, activities funded from FP7 must have a “European added value”. One key aspect of the European added value is the transnationality of many actions: research projects are carried out by consortia which include participants from different European (and other) countries; fellowships in FP7 require mobility over national borders. Indeed, many research challenges (e.g. fusion research, etc), are so complex that they can only be addressed at European level.
FP7 is open to support a wide range of participants, from universities, through public authorities to small enterprises and researchers in developing countries.
Potential participants can come from:
- Private companies – such as small and medium sized enterprises (SMEs), private research institutes or other industrial participants.
- Public organisations – for example, universities, regional authorities, public research organisations (PROs).
- Individual researchers – from both public and private sectors.
- Researchers and organisations from outside the European Union – whether from Candidate Countries, Associated States, International Cooperation Partner Countries (developing countries, emerging economies or industrial nations).
The "coordinator" has a very specific role amongst the participants in a given project. It has to "monitor the compliance by participants (or beneficiaries) with their obligations under the grant agreement, which includes the participants' obligations regarding IPR, dissemination and use issues."
FP7 is the natural successor of the FP6. The new FP7 was established after consultation with the research communities from both public and private sectors, economic actors and with decision takers in the European Union. FP7 is both larger and more comprehensive than its predecessors. It is also more flexible and with simplified procedures. For detailed information on the previous FP6 programme, please click here.
The duration of FP7 is longer than FP6 and it has a much larger budget. It also has a different structure, introduces the European Research Council to oversee the funding of basic research, and includes the new Joint Technology Initiatives (JTI) funding instrument. Another change is that the international dimension is integrated into the various programmes of FP7. The duration of the Framework Programme has been extended from four to seven years; FP7 runs from 2007 to 2013, while FP6 ran from 2002 to 2006. The overall budget has increased significantly for FP7.
As a general principle, FP7 is open to participants from any country in the world. However, the procedures for participation and funding possibilities vary for different groups of countries:
- EU Member States;
- Associated countries (e.g. Israel, Iceland, Switzerland);
- Candidate countries;
- Third countries.
For further information, please click here.
International Cooperation Partner Countries (ICPC) (e.g. Russia and other Eastern European and Central Asian states, developing countries, Mediterranean partner countries, Western Balkans countries) may participate in the FP7. Participants from these countries are entitled to receive funding under the same conditions as the EU Member States. The one additional requirement for the projects including ICPCs is that the determined number of participants from the EU Member States or from the Associated Countries must be included. Participation from industrialised high-income countries is also possible on a self-financing basis, with EU funding granted only in exceptional cases.
You should look at the case studies and results on the CORDIS website where you will find success stories on the FP7 and earlier programmes.
FP7 consists of four Specific Programmes:
- Cooperation – concerns collaborative research in 10 priority areas.
- Ideas – European Research Council.
- People – Human Potential, Marie Curie Actions.
- Capacities- research for the benefit of SMEs and specific activities of international cooperation.
- A fifth specific programme under the Euratom Framework Programme concerns nuclear research. The non-nuclear research activities of the Joint Research Centre (JRC) are grouped under a specific programme.
The core of FP7, representing two thirds of the overall budget, is the Cooperation programme. It fosters collaborative research across Europe and other partner countries through projects by transnational consortia of industry and academia.
The 10 Thematic Priorities within the Cooperation Programme are:
- Food, agriculture and fisheries, and biotechnology
- Information and communication technologies
- Nanosciences, nanotechnologies, materials and new production technologies
- Environment (including climate change)
- Transport (including aeronautics)
- Socio-economic sciences and the humanities
For further information, please click here.
The People Programme contains 12 types of “Actions”. The most interesting to companies are Marie Curie Industry-Academia Partnerships and Pathways (IAPPs), partnerships between the public or non-commercial sector (including universities, research institutes, NGOs) and the private, commercial research sector (including SMEs, manufacturing and other industries), based on common research. However, Marie Curie Initial Training Networks (ITNs), aimed at the initial training of researchers, may also be of interest to the industry; initial training is offered to researchers through this action in order to improve their research and complementary skills, help them join established research teams, and enhance their career prospects in both the public and private sectors.
The Capacities programme strengthens the research capacities that Europe needs if it is to become a thriving knowledge-based economy. It covers among others research for the benefit of SMEs and specific activities of international cooperation.
For further information, please click here.
The term "Intellectual Property Rights" refers to the legal rights granted with the aim to protect the creations of the intellect. These rights include Industrial Property Rights (e.g. patents, industrial designs and trademarks) and Copyright (right of the author or creator) and Related Rights (rights of the performers, producers and broadcasting organisations).
Participants are strongly encouraged to consider and tackle IPR issues as soon as possible during the preparation of their project and to negotiate any relevant questions with the other participants before starting the project. Indeed, IPR issues can affect both the way a project is conducted, and the exploitation of results after the end of a project. Moreover, certain provisions foresee a default regime if no alternative agreement has been reached.
FP7 was adopted by the European Union (EU) with clear objectives, in particular to strengthen industrial competitiveness and to meet the research needs of other EU policies. It is therefore natural that the EU shaped this funding programme with regulations, some concerning IP, aimed at better achieving those goals. Hence, participants should be familiar with the specific IP rules related to the programme in question. It is of particular importance in terms of IP to consider the following documents:
- the Rules for Participation, for the general legal framework;
- the Model Grant Agreement concerning the specific programme (by reading this document, in particular Annex II, applicants may anticipate the specific IP rules they would have to comply with in case the proposal is accepted);
- the call fiche (to verify whether there is any special clause to be included in the Model Grant Agreement related to IP);
- the Guides for Applicants applicable to the specific call which may help to identify the concrete evaluation criteria that may require the consideration of IP related matters;
- Guide to Intellectual Property Rules for FP7 Projects, which explains important aspects that participants may encounter when they are preparing and participating.
The basic regulation of issues related to intellectual property (IP) rights in a project funded under FP7 is established in the Rules for participation and, more specifically, in the Grant Agreement (essentially, Annex II), which participants conclude with the Commission in order to carry out the project. Furthermore, participants may develop this basic regime in internal agreements, particularly in the Consortium Agreement. Note that the latter cannot contradict the Grant Agreement; it can only further detail it and integrate it.
Most of the provisions can be found in Annex II, Part C, Section 1 and 2 of the Grant Agreement. However, for certain types of FP7 projects, more specific IPR provisions may be found in Annex III, such as the ones applicable to research actions for SMEs or for SME associations. In specific cases, "special clauses" may also be included in Article 7 of the core Grant Agreement with rules concerning IP. A list of all “special clauses” is available with the Model Grant Agreement.
Moreover, it is important to be aware that in addition to the standard Model Grant Agreement, separate models have been adopted for the parts of the 'Cooperation' (Space, Security), the 'Capacities' (Research for the benefit of SME's) and the 'People' (Marie Curie) Specific Programmes that are under REA responsibility, and for the 'Ideas' (European Research Council) Specific Programmes.
Knowledge, a basic term of Intellectual Property Rights (IPR), means the results, including information, whether or not they can be protected, as well as copyrights or rights pertaining to such information following applications for, or the issue of, patents, designs, plant varieties, supplementary protection certificates or similar forms of protection.
Background is information and knowledge (including inventions, databases, etc.) held by the participants prior to their accession to the Grant Agreement, as well as any intellectual property rights which are needed for carrying out the project or for using foreground.
Foreground means the results, including information, materials and knowledge, generated in a given project, whether or not they can be protected. It includes intellectual property rights (such as rights resulting from copyright protection, related rights, design rights, patent rights, plant variety rights, rights of creators of topographies of semiconductor products), similar forms of protections (e.g. sui generis right for databases) and unprotected know how (e.g. confidential material).
Thus, foreground includes the tangible (e.g. prototypes, micro-organisms, source code and processed earth observation images) and intangible IP results of a project. Results generated outside a project (i.e. before, after or in parallel with a project) do not constitute foreground. Results generated in parallel with a project are often informally referred to as "sideground".
In some cases the Grant Agreement foresees that third parties may carry out some work in the project, for example as subcontractors, affiliates or members of a joint research unit. Nevertheless, even in these situations third parties do not become participants.
A department or university faculty can be a participant in a project if it is considered as a legal entity. Nevertheless, when a department or university faculty (with no legal entity status) participates in a project, the participant will be considered to be the legal entity to which the department or university faculty in question belongs, that is, the private company, university, institution or organization.
Partners acting together under the implementation of the same project form a consortium. Consortium members conclude amongst themselves an agreement (consortium agreement) that allows them to determine detailed provisions necessary to carry out their project. It shall also include rules regarding the settlement of internal disputes between the consortium members. Depending on the arrangements of all consortium members, the jurisdiction chosen to settle disputes can be a national court or an alternative dispute resolution mechanism such as mediation or arbitration. If arbitration is chosen, the consortium agreement will have to determine some or all characteristics of the procedure to be followed. Partners themselves choose the competent jurisdiction for the conflicts arising under, out of or relating to the consortium agreement.
It is, furthermore, advisable to set rules regarding the settlement of internal disputes between potential participants already in the proposal phase. In the proposal phase potential project partners develop ideas for joint research activities and already at this stage certain disputes regarding Intellectual Property may arise. In order to be prepared for such eventuality it is recommended to conclude an agreement which defines the framework of the negotiations between applicants and determine competent jurisdiction in case of a dispute (e.g. a memorandum of understanding). Depending on the intentions of the potential project partners, the jurisdiction chosen to settle this kind of dispute can be a national court or an alternative dispute resolution mechanism such as mediation or arbitration.
Subject to the conditions established in the Grant Agreement, appointment letter or contract, the Commission and the participants shall keep confidential any data, knowledge and documents communicated to them as confidential.
When applicants send proposals to the European Commission they set out details of the work, which is intended to be carried out under the project. Many ideas are therefore put forward by participants when submitting their proposals to the European Commission. This information is not only disclosed to the European Commission, but also to the independent experts, who assist in the evaluation of proposals.
Even though ideas are generally not protected under intellectual property rights, this does not mean that you do not have any type of tool you may use to protect them. In fact, you may rely on confidentiality to make sure that your ideas are not disclosed to the public, that is, that the people to whom you disclose your ideas have the obligation to keep them secret (i.e. not reveal them to anyone else).
Thus, all proposals and related data are treated under the principle of confidentiality by the European Commission. Independent experts must, therefore, sign an appointment letter binding them to maintain confidentiality of any document and data received.
The Rules for Participation and the standard model Grant Agreement establish that the European Commission and participants undertake to keep confidentiality of any data, documents or other material concerning the execution of the project that has been communicated to them as confidential.
The level of confidentiality, however, may differ depending on the people to whom the data, documents or other material may be disseminated. The European Commission has established the following codes to distinguish between these different levels of confidentiality:
PU = Public
PP = Restricted to other programme participants (including the Commission Services)
RE = Restricted to a group specified by the consortium (including the Commission Services)
CO = Confidential, only for members of the consortium (including the Commission Services)
One of the requirements of inventions’ patentability is novelty. To be regarded as new, generally, an invention cannot be disclosed or made available to others before the date on which an application was filed. Moreover, there are some types of information that are not patentable, such as methods and many forms of know-how, which may only be protected if they are kept confidential.
However, such inventions and information can be disclosed to others if under confidence. A NDA is the tool that allows confidentiality obligations to be in place. Indeed, a NDA is a written agreement that establishes the conditions under which information or ideas are disclosed in confidence.
To see a checklist of the most common issues that should be considered when drafting such an agreement, please click here.
The preparation and submission of a proposal usually requires meetings and exchange of information among the project’s partners. At this point, among other issues, applicants should define the work packages and describe the research idea, which may result in the disclosure of valuable information.
To avoid any eventual misappropriation and use of such information, which could undermine its value and protection as an Intellectual Property Right (i.e. patent), it is advisable to conclude a non-disclosure agreement or NDA before entering in negotiations for the submission of a proposal.
Thus, we suggest applicants, in particular the coordinator, to explain the other partners of the project the advantages of having a NDA in place and propose a draft agreement to be negotiated before further discussions.
As any other agreement, a NDA must be adapted to the circumstances of each project. Hence, there is not a standard NDA. Nevertheless, there are some issues that in most cases should be considered by the parties involved, such as the following:
- Identification of the parties;
- Indicate the intentions of the parties in order to explain the context of the agreement;
- Identify the call and the name/acronym of the project;
- Clarify what should be considered as confidential information (e.g. all information or just information marked as “confidential”);
- Define very precisely the permitted purpose of the disclosure in order to restrict the use of the information;
- Consider the need to disclose the confidential information to employees;
- List the obligations of the party receiving the information;
- List any information considered as excluded;
- Determine the entry into force of the NDA;
- Determine the period of time of the confidentiality obligation (e.g. 3, 5 or 10 years);
- Determine applicable law and jurisdiction
Yes, it is. Before the evaluation process at the European Commission (EC), both evaluators and observers have to sign a contract with the EC that specifically includes a confidentiality clause as well as well as a no conflict of interest declaration.
They are required to commit themselves by an “appointment letter for independent experts” (based on the model given in Annex F of the “Rules for submission of proposals, and the related evaluation, selection and award procedures”), stating that they will conform to the principles outlined therein and will follow the rules and procedures set by the EC. This includes keeping all information gained during the evaluation process confidential and not retaining (or copying) any materials that pertain to proposals or the evaluation.
Foreground resulting from a project is owned by the participant generating it. For further details, applicants should read the General Conditions of the Grant Agreement and related documents. When Foreground is generated jointly (i.e. where the separate parts of some result cannot be attributed to different participants), it will be jointly owned, unless the participants concerned agree on a different solution.
Where several participants have jointly carried out work generating foreground and where their respective share of the work cannot be ascertained, they shall have joint ownership of such foreground.
Joint owners must agree among themselves on the allocation and the terms of exercising the ownership of the foreground in accordance with the terms of the Grant Agreement. In the absence of such an agreement (or pending its conclusion), a default joint ownership regime generally applies.
Transfers of ownership of foreground are allowed, although the obligations regarding that foreground must be passed on to the transferee. In principle, as long as the participant concerned is required to grant access rights, notification must be given to the other participants, which may object within a specified period. However, they may agree in advance that no prior notification is necessary with regard to a specifically identified third party.
The owner of foreground may transfer it to any third party, subject to the following obligations:
(i) that it passes on to the assignee (i.e. new owner) its obligations concerning dissemination, use and access rights over that foreground;
(ii) that it ensures that the assignee is under the obligation to also pass on to any subsequent assignee the above mentioned obligations;
(iii) that it gives prior notice to the other participants and, in some cases, to the European Commission.
Before the envisaged transfer takes place, you have to inform the other participants about your intention to transfer the ownership of the foreground you own. This communication must also include sufficient information concerning the identity of the assignee to allow the other participants to exercise their access rights directly to the new owner of the foreground. All this information is communicated to the other participants at least 45 days before the transfer of ownership. Please note, however, that a different notice period may be agreed by participants through a written agreement, often the Consortium Agreement.
Such prior notice is not required, however, in the following cases:
(i) agreed transfers to a specifically identified third party (article II.27.2 of the Grant Agreement);
(ii) overriding confidentiality obligations (article II.27.2 of the Grant Agreement).
There is no obligation to notify the European Commission before an intended transfer of foreground’s ownership takes place. However, in some projects a special clause may be introduced in article 7 of the Grant Agreement in order to establish the obligation of such a notification when the owner of the foreground intends to transfer it to a third party established in a non-associated country.
Nevertheless, according to the Rules for Participation, “participants shall ensure that the Commission is informed of any event which might affect the implementation of the indirect action or the interests of the Community.” Additionally, the Commission has the right to object to a transfer of ownership of foreground to a third party established in a third country not associated to FP7. Thus, even though it may not be mandatory, it is advisable to inform the Commission of an intended transfer, in particular when the third party is in a non-associated country.
In FP7 there is a general rule establishing that the foreground generated jointly by the participants will be jointly owned. This is stated both in the Rules for Participation (RfP) and in the Grant Agreement (GA). In case of joint ownership, the joint owners shall establish an agreement regarding the allocation and terms of exercise of that joint ownership. Joint owners may do it by incorporating appropriate provisions in their CA regarding joint ownership or entering into an additional joint ownership agreement. In absence of such an agreement, a default joint ownership regime applies. The joint owners may also agree not to continue with joint ownership but decide on an alternative regime, e.g. appoint a single owner and simultaneously establish more favourable access rights for the remaining beneficiaries that transferred their ownership share or any other fair counterpart.
Participants in the collaborative research projects are usually free to decide on the research results ownership regime. Sole ownership is an option when one participant generates a project result. Alternatively, joint ownership may occur when participants work together upon the results and the impact therein may not be clearly determined. In such cases participants should agree on the terms of the joint ownership, preferably before the project starts and in a separate agreement, which shall cover at least issues outlined below:
- Parties: identification of the participants - joint owners;
- Object of the contract: the joint ownership of the project results (foreground);
- Shares: assignment of shares within the joint ownership;
- Shares split equally among all joint owners or
- Shares split in proportion to the joint owners contributions;
- IP management: indication of the partner responsible for filing and maintaining (including the costs incurred) of the IP rights over the foreground;
- Protection of rights: obligation imposed on all participants to monitor and report any infringements of the foreground; indication of the partner empowered to conduct legal actions for protection of the foreground;
- Conditions of the use of the foreground;
- Use in further research: conditions for use of the foreground for further research carried out with third parties, i.e. joint owners may be required to inform each other of such plans and sign respective confidentiality agreements with the third parties;
- Individual exploitation: conditions for exploitation of the common foreground individually in participant’s own commercial activities;
- Licensing: possibilities to license (sublicense) the common foreground. This possibility may be totally restricted (i.e. licensing upon agreement of all joint owners) or subject to certain conditions;
- Transfer: Determining whether and under what conditions a joint owner may transfer its share to third parties. The rest of the joint owners may reserve the right to be informed of any such plans and/or be given a right to object such transfer;
- Additional clauses: standard contractual matters, i.e. applicable law, jurisdiction or alternative dispute resolution systems.
Joint ownership may cause conflicts between co-owners, which usually takes place if they fail to define in detail the rules with respect to their co-owned IP. Even though most countries provides for basic rules governing joint ownership, these rules may not be sufficient to safeguard the interests of all the participants coming from different jurisdictions. It is therefore essential to have a joint ownership agreement (or joint ownership clauses in the consortium agreement) that would clearly stipulate the jointly owned IP.
Where knowledge created in FP projects is capable of industrial or commercial applications, its owner shall provide for its adequate and effective protection, in conformity with relevant legal provisions, including the contract and the Consortium Agreement, and having due regard to the legitimate interests of the contractors concerned.
Valuable foreground should be protected. Protection is not mandatory in all cases, although the decision not to protect foreground should preferably be made in consultation with the other participants, which may wish to take ownership. If valuable foreground is left unprotected, the Commission may take ownership.
According to the Rules for Participation and the standard model Grant Agreement, foreground resulting from the project is owned by the participant “carrying out the work generating that foreground”. In case participants have carried out the work jointly and their respective share cannot be ascertained, such foreground is generally jointly owned.
Maintaining records, such as laboratory notebooks, illustrating the progress of the creation of results is generally the most practical and effective way to easily demonstrate that you carried out the work generating the foreground. In addition, those laboratory notebooks may assist you in case you need to define your share of the work performed in the creation of a jointly owned foreground.
The standard model Grant Agreement (GA) does not establish the obligation to formally inform or consult the other participants before taking measures to protect the foreground (for example by filing a patent application) or before deciding not to protect it. Nevertheless, it is advisable to inform them in advance, so they be in a position to express possible legitimate interests. Furthermore, Article III.28.3 states explicitly that, where a participant does not intend to protect its foreground, it may first offer to transfer it to another participant or even to certain third parties, which may consider it worthwhile protecting such piece of foreground.
The commitment to provide such information and the terms under which it should be done by participants may be included in detail in the Consortium Agreement or other further agreement.
In the proposal phase potential participants develop ideas for joint research activities. Potential project partners should know what knowledge they each bring, what they may need from others, what the state of the art is in the field of the project, and should develop a strategy on protection, use and dissemination of the future results. Such activities require discussions, exchange of information and ideas between the potential participants. Exchanging information with other potential partners is, thus, a necessity while planning a project proposal.
To avoid any eventual misappropriation and use of such information it is therefore advisable to conclude a non-disclosure agreement (also known as confidentiality agreement) before entering in negotiations for the submission of the proposal. This agreement establishes the conditions under which partners disclose information in confidence. Confidentiality obligations may be also included in a so called memorandum of understanding (MoU). This agreement defines the framework of the negotiations between applicants and is generally concluded in the very beginning of the negotiations for submitting a proposal.
Yes. They can.
However prior notice about the intention to transfer the foreground must be given to the other project partners together with sufficient information concerning the future owner so as to permit them to exercise their access rights. Transfer of ownership is generally allowed, as long as the obligations regarding that foreground are passed on to the transferee.
Where a participant does not intend to protect a piece of foreground, it should firstly offer to transfer it to other partners. Whether none of the participants intend to protect foreground, they might transfer it to third parties (the inventor, for instance) which may consider worthwhile protecting it, rather than leaving it unprotected and available for use by competitors (Article 44.2 of the Rules for Participation and Article II.28.3 of the Standard Grant Agreement)
These issues may be covered in detail within the consortium agreement or through specific separate arrangements.
Where foreground is capable of industrial or commercial application, it must be protected in an adequate and effective manner by its owner.
However, in case a participant decides not to do so or to abandon protection, it is advisable to inform the other participants in the project “so that they be in a position to express (and substantiate) possible legitimate interests… These issues may be covered in detail within the consortium agreement or through specific separate arrangements” (in Guide to Intellectual Property in FP7).
The European Commission must also be informed so as to be able to assume ownership of the concrete foreground and take measures to protect it on behalf of the European Union, with the consent of the participant concerned.
Another option that participants may consider is to first transfer the foreground to the other participants or to third parties, along with the associated obligations, who may wish to protect it instead.
Use means the direct or indirect utilisation of knowledge in research activities or for developing, creating and marketing a product or process or for creating and providing a service.
Dissemination means the disclosure of knowledge by any appropriate means (e.g. publications, conferences, workshops, web-based activities). Each participant shall ensure that the foreground it owns is disseminated as swiftly as possible. However, any dissemination (including publications or release of information on web pages) should be delayed until a decision about its possible protection has been made (through IPR or trade secrets).
Proposals will have to contain a "plan for the use and dissemination of foreground" to show that the knowledge generated will be taken through to application. This plan will be updated as a part of the periodic and final reports to reflect the evolving intentions for the protection, use and dissemination of the knowledge generated under the project.
Any dissemination (including publications on web-pages) should be delayed until a decision about its possible protection has been made (through IPRs or trade secrets).
The other participants may object to the dissemination activity if their legitimate interests, in relation to their foreground or background, could suffer disproportionately great harm. Therefore, no dissemination of foreground may take place before a decision is made regarding its possible protection.
The other participants must be given at least 45 days prior notice in writing of any planned dissemination activity (including new web-pages divulging any results obtained), together with sufficient information about the intended dissemination.
The participants may agree in writing (for example in the consortium agreement) on different time-limits to those set out above, which may include a deadline for determining the appropriate steps to be taken to ensure that for example publications relating to a specific piece of foreground are not postponed or delayed unreasonably.
Under FP7, the Commission only needs to be notified ex-ante of dissemination intentions when the foreground to be disseminated is capable of industrial and commercial application and has not been formally protected. Where this is the case, no dissemination activities can take place before the Commission has been informed, in order to give the Commission an opportunity to protect that foreground on its own behalf.
According to article II.30.4 of the standard model grant agreement, participants must include in all dissemination actions the following statement acknowledging the financial support of the European Union:
The research leading to these results has received funding from the European Union's Seventh Framework Programme (FP7/2007-2013) under grant agreement n° xxxxxx.
In case the dissemination is provided in another language, participants should use the correspondent translated version of the sentence. In annex V of the Guide to Intellectual Property Rules in FP7 projects, you can find the translations of the statement in European Union languages other than English.
Moreover, in case of publicity material participants must in addition display the European emblem and specify that the content “reflects only the author’s views and that the Union is not liable for any use that may be made of the information contained therein” (see article II.12.1 of the standard model grant agreement).
Access rights, a basic term relating to Intellectual Property Rights (IPR), means those rights (e.g. licences or user rights) to use knowledge or pre-existing knowhow given by the owners of the knowledge or pre-existing knowhow to others.
According to article II.1.2 of the standard model Grant Agreement, an affiliated entity means “any legal entity that is under the direct or indirect control of a beneficiary, or under the same direct or indirect control as the beneficiary, control taking any of the following forms:
(a) the direct or indirect holding of more than 50% of the nominal value of the issued share capital in the legal entity concerned, or of a majority of the voting rights of the shareholders or associates of that entity;
(b) the direct or indirect holding, in fact or in law, of decision-making powers in the legal entity concerned.”
A parent company, i.e. a company holding enough percentage of the nominal value of the issued share capital of another company to control its management, should therefore not be considered as an affiliated company. Indeed, parent companies are either under the control of a beneficiary (they are in the opposite position, i.e., controlling the beneficiary) or under the same direct control.
Nevertheless, the general principle according to which beneficiaries may agree on more favourable or broader access rights also applies here. For example, beneficiaries could agree in their consortium agreement to grant access rights to affiliates other than those mentioned above, including parent companies. The IPCA Model of Consortium Agreement foresees this possibility, since it establishes a broader definition of affiliated companies, which encompasses entities controlling the beneficiary.
Access rights to another participant’s foreground or background are only to be granted if they are needed in order to carry out the project (for its implementation) or to use one's own foreground.
Access rights needed in order to implement the project shall be granted at least until the end of the project, even by the participants that leave the project before its complexion.
However, access rights for use purposes of foreground (exploitation and further research) may be granted up to one year after the end of the project or the termination of the involvement of a participant in a project.
Note that the actual duration of such access rights might be negotiated by the participants concerned and agreed differently (e.g. shorter, longer period or for instance, it might be extended until the expiry of a patent).
The owner of a foreground may grant exclusive licence to a third party, provided that the other participants agree by written means to waive their access rights thereto.
Such a waiver can only be made on a case-by-case basis, and after the concerned foreground has been generated. Participants should be able to assess carefully which specific access rights they are able or willing to renounce. They should also avoid waiving broader access rights than those exactly required to allow granting such an exclusive licence.
The standard model Grant Agreement (GA) establishes provisions relating to access rights to foreground which are “minimal" provisions. The “minimal” access rights mandatory under the GA concern, on the one hand, access rights to beneficiaries and, on the other hand, access rights to affiliated entities established in a Member State or Associated country. These affiliated entities enjoy access rights to foreground under the same conditions as the beneficiary to which it is affiliated, unless otherwise provided for in the GA or Consortium agreement.
Under the mandatory regime of the GA, Non-European affiliate would not be entitled to have access rights to foreground as the provisions of the Article 50.3 of Rules for Participation and Article II.34.3 of GA refer explicit only to affiliated entities established in a Member State or an Associated country.
Nevertheless, the general principle according to which the participants may agree on more favorable or broader access rights also applies here. It is always possible to set provisions extending access rights to affiliates from outside of a Member State or Associated country in further agreements, subject to consensus of relevant project participants.
In this instance it is important to emphasize that the European Commission retains the right to object to the grant of an exclusive license to a third party established in a third country which is not associated to FP7 if it considers that this is not in accordance with the interests of developing the competitiveness of the European economy or is inconsistent with ethical principles or security considerations (Article 43 of Rules for Participation and Article II.32.8 of GA)
In case the of transfer of the whole ERC single beneficiary project, the new host institution will have no obligation towards the previous host institution concerning grant of access rights to the foreground generated after the project transfer, as the latter will be considered a third party to the project once such transfer succeeds.
The European Union in FP7 projects may contribute to a maximum of 100% of the total costs of activities concerning protection, dissemination and management of IPR.
The Financial Guide to FP7 projects includes examples of intellectual property activities which may be reimbursed up to 100% of eligible costs. These are “filing and prosecution of patent (and other IPR) applications, including patent searches and legal advice”.
Thus, the following costs concerning patent protection might be considered as eligible:
- patent application fees;
- expenses for patent searches;
- remuneration paid to patent attorneys or other legal practitioners with regard to the filing and prosecution of a patent.
Intellectual property activities are “other activities” in accordance with the Article II.16 of the Grant Agreement. Their costs, in order to be eligible, shall fulfill the prerequisites of the Article II.14.1 of the Grant Agreement. In particular, they must be charged during the contractual period.
Finally, bear in mind that contracting of a legal practitioner for filing and prosecution of patent may be considered to be subcontracting in accordance with the Article II.7 of the Grant Agreement.
On 10 April 2007 the European Commission adopted the general model Grant Agreement to be used in research projects funded under the 7th Framework Programmes. This model Grant Agreement is applicable to the indirect actions under the Cooperation and Capacities Specific Programmes of FP7. It consists of a core text and several annexes. There is also a list of special clauses to be introduced in the Grant Agreement where necessary.
Separate model Grant Agreements have been adopted for the parts of the Cooperation (Space, Security), Capacities (Research for the benefit of SMEs) and People (Marie Curie) Specific Programmes that are under Research Executive Agency (REA) responsibility and for the Ideas (European Research Council) Specific Programmes.
The Grant Agreement establishes the respective rights and obligations of the participants with regard to access rights, use and dissemination. For those purposes, it requires the submission to the Commission of a plan for the use and dissemination of foreground.
The European Commission adopted a standard model Grant Agreement to be used in projects under the Cooperation Specific Programme of FP7. The same model is also applicable to projects under the Capacities Programme. It consists of a core text, several annexes and a list of special clauses to be introduced in the Grant Agreement where necessary.
Projects under the Cooperation (Space, Security) Specific Programme, which are under the responsibility of the Research Executive Agency (REA) do not follow the standard model, there is a specific model Grant Agreement for these projects.
The European Commission adopted a standard model Grant Agreement to be used in projects under the Cooperation Specific Programme of FP7. The same model is also applicable to projects under the Capacities Programme. It consists of a core text, several annexes and a list of special clauses to be introduced in the grant agreement where necessary.
The projects under the Capacities (Research for the benefit of SME's) Specific Programme, which are under the responsibility of the Research Executive Agency (REA) do not follow the same standard model, there is a specific model Grant Agreement for these projects.
There is a specific model Grant Agreement to be used in projects under the Ideas Programme supported by the European Research Council (ERC). It consists of a core text and several annexes. There is also a list of special clauses and a template for supplementary agreement (Legal Entity - Principal Investigator).
There is a specific model Grant Agreement to be used in projects under the People Programme (Marie Curie) conducted by the Research Executive Agency (REA). It consists of a core text, several annexes and a list of special clauses.
The Grant Agreement has the main rules concerning IP that you must follow under your project. Additionally, you should consider the provisions of the Consortium Agreement you have signed with the other participants in the project. Both agreements provide you the main framework of your IP obligations under your project.
Generally, the provisions of the Grant Agreement concerning IP can be found in Annex II. For specific projects, such as the actions for SMEs and for SMEs associations, you may also need to consider Annex III of the Grant Agreement. In addition, in some specific projects, clauses from the list of special clauses may be introduced into the core Grant Agreement.
A Consortium Agreement refers to the internal organisation of the consortium. Depending on the area or sector of the each project and of the grade of technical complexity that are involved, the Consortium Agreement might generally contain the following:
- provisions on the governance structure of the consortium;
- technical provisions (e.g. the tasks of each party and the project schedule);
- managerial provisions (e.g. coordination and management);
- financial provisions (e.g. the distribution of the Community financial contribution, the financial plan, etc);
- provisions regarding IPR and related issues such as dissemination, use and accessibility of the results, confidentiality provisions, as well as arrangements on the settlement of disputes and liability and confidentiality.
The Consortium Agreement models are developed by different organisations concerned in the proper management of projects under FP7. As these models respond to different areas, they may vary in content and in particular with regard to the provisions relating to intellectual property rights. All parties should fully read and understand the model that they are going to use, confirm that it serves their interests, and adapt it to specific needs if required.
There are several models of Consortium Agreements that have been created by different entities and that may be used by participants under FP7 projects.
The European Commission, however, has not drafted any model. Indeed, it has been only made available a check list with non-binding guidance on the issues that participants may consider in their Consortium Agreements.
The Grant Agreement establishes the main rights and obligations of participants towards the European Commission and is, generally, based on models prepared to be applied in all projects. This agreement does not have, therefore, detailed provisions on the specific project and consortium.
Thus, it is highly recommended (if not mandatory) that participants sign between them a Consortium Agreement aimed to establish in detail the rules on the internal management of the consortium. This agreement shall have inter alia additional ruleson dissemination, use and access rights.
When you submit your proposal it is not necessary to have a Consortium Agreement already signed between all potential participants. Generally, you will only have to conclude the agreement before signing the Grant Agreement with the European Commission (on behalf of the EU).
It is highly recommended (if not mandatory) that participants sign between them a Consortium Agreement aimed to establish in detail the rules on the internal management of their consortium.
According to the Rules for Participation, this agreement shall include inter alia additional rules on dissemination, use and access rights. In particular, and following the guidance of the European Commission in its publication “Checklist for a Consortium Agreement for FP7 projects”, the following IPR related clauses may be included in the Consortium Agreement:
(i) Ownership of foreground – to deal with the ownership of foreground developed in the project, including possible joint ownership;
(ii) Transfer of foreground – to deal with, for example, the procedure to give prior notice to other participants in the project;
(iii) Protection of foreground – to deal with, for example, possible patent application;
(iv) Use of foreground – to deal with the obligation to use the foreground commercially or in further research;
(v) Dissemination of foreground – to deal with the obligation to disseminate foreground as swiftly as possible;
(vi) Access rights – to deal with, for example, conditions and time limits.
The Ideas programme will support “frontier research” solely on the basis of scientific excellence. Research may be carried out in any area of science or technology, including engineering, socio-economic sciences and the humanities. In contrast with the Cooperation programme, there is no obligation for cross-border partnerships. Projects are implemented by “individual teams” around a “principal investigator”. The programme is implemented via the new European Research Council (ERC). It is primarily targeted at academics.
Marie Curie Industry-Academia Partnerships and Pathways help commercial and non-commercial research organisations work together. Partners include universities and companies of all shapes and sizes. Focussing on joint research projects, IAPPs aim to boost skills exchange between the commercial and non-commercial sectors.
To qualify for an IAPP, your proposal must include one or more universities or research centres, and one or more enterprises. The industrial partners must be operating on a commercial basis. An IAPP project proposal must come from partners in at least two different EU Member States or Associate Countries. Partners from Third Countries can also join in, but only if enough EU members or associates are also represented in the partnership.
The specific model Grant Agreement applicable in Marie Curie actions establishes in its Annex II the main IPR rules applicable to beneficiaries. In particular, Part C of this annex lays down provisions on foreground and access rights, while in Part A you can find the relevant provision on confidentiality.
It is also important to consider Annex III, since it defines the basic framework for the relation between the beneficiaries and researchers, as well as the associated partners. Please note that you must use the specific model of Annex III available for your action.
Pursuant to the Grant Agreement, beneficiaries have to make sure that researchers enjoy, on a royalty - free basis, access rights to the background and foreground in order to allow them to develop their work under the project. However, these access rights are granted on a “need” basis, which means that they must be granted only if they are necessary for researchers to be able to carry out their research under the project.
In case there is a restriction that might affect the granting of those access rights, researchers must be informed as soon as possible.
In Marie Curie actions, beneficiaries must sign written agreements with the researchers they appoint under the project. This agreement, which must be in accordance with the provisions of the Grant Agreement, is intended to determine the conditions of implementation of the project, as well as the rights and obligations of both the researcher and the beneficiary under the project. The agreement is, therefore, a complement to the Grant Agreement and, in particular, its Annex III.
In terms of Intellectual Property related issues, the Grant Agreement establishes that this agreement shall specify, in particular, the access to the background, the use of foreground, publicity and confidentiality. Thus, it is common to see in these types of agreements clauses concerning the transfer of ownership of the results generated by researchers to the beneficiary, since under the Grant Agreement the results of the projects shall belong to beneficiaries. Confidentiality clauses are also very common in these agreements, since beneficiaries must make sure that researchers also comply with the same confidentiality obligations imposed to the concerned beneficiary.
Pursuant to the Grant Agreement, beneficiaries are bound by confidentially obligations. Such obligations include, for example, the following commitments:
a) to preserve the confidentiality of any data, documents or other material that is identified as confidential in relation to the execution of the project (“confidential information”) during the project and for a period of five years after its completion or any other period thereafter as established in the Consortium Agreement;
b) where confidential information was communicated orally, to confirm its confidential character in writing within 15 days after disclosure;
c) to use the confidential information only in relation to the execution of the project unless otherwise agreed with the disclosing party.
These obligations are also extended to researchers, since the Grant Agreement clearly establishes that beneficiaries shall ensure that researchers have the same rights and comply with the same obligations as the concerned beneficiary. For this reason, the agreement signed between researchers and the appointing beneficiary generally includes a clause concerning confidentiality.
According to the model Grant Agreement foreground shall be the property of the beneficiary carrying out the work generating that foreground. Furthermore, according to the model Grant Agreement foreground means the results, including information, whether or not they can be protected, which are generated under the project. Such results include rights related to copyright; design copy rights; patent rights; plant variety rights; or similar forms of protection.
The results/Intellectual Property generated by the researcher under the project shall, thus, belong to the beneficiary who is considered to be his employer during the secondment period in the host beneficiary's premises.
It is, furthermore, possible that the researcher employed and dispatched by one beneficiary, together with employees of the host beneficiary, creates jointly some results. In such case, the ownership shall be jointly as well. Beneficiaries in such case may create their own regime on the allocation and the terms of exercising the ownership of foreground or agree on an alternative solution (e.g. a single owner with favourable access rights for the other beneficiary that transferred its ownership share).
It is a good practice to include in the Consortium Agreement or Partnership Agreement a clause containing rules for allocation, terms of exercising and management of ownership of the project results within the secondment period.
In Marie Curie actions, beneficiaries are the owners of the project’s results (unless otherwise agreed). These persons are the entities signing the Grant Agreement with the European Union and therefore entitled to the rights and obligations under this agreement. Thus, researchers do not have ownership of the project’s results, including any intellectual property rights such as a patent.
For this reason, often beneficiaries request the researchers to sign an agreement dealing with the transfer of rights from the researcher to the beneficiary, in order to make sure that the beneficiary complies with its obligations under the Grant Agreement.
When beneficiaries sign the Grant Agreement with the European Union they agree to provide the researcher with access rights, on a royalty-free basis, to the background and to the foreground, if that background or foreground is needed for his/her execution of the research project.
This means that researchers can use, for free, background and foreground if they need to use it with the purpose to carry out their tasks in the project. Hence, access rights of researchers over the project’s foreground are limited to the lifetime of the project.
Nevertheless, the obligations under the Grant Agreement are minimal and consequently additional access rights may be granted to researchers. Yet, those additional access rights would have to be negotiated between the researcher and the beneficiary owning the results.
The aim is to strengthen the “innovation capacity” of small and medium-sized enterprises (SMEs) in Europe and their contribution to the development of new technology based products and markets. The programme will help them outsource research, increase their research efforts, extend their networks, better exploit research results and acquire technological knowhow, bridging the gap between research and innovation.
SMEs represents 99% of all enterprises in Europe; they contribute more than two thirds of European GDP and provide 75 million jobs in the private sector. They are therefore key to the implementation of the renewed Lisbon strategy for economic growth and employment.
The European Commission in its Recommendation 2003/361/EC of May 6, 2003 established the following criteria, which enterprises have to fulfill to be considered as SMEs.
Balance sheet total
≤ € 50 million
≤ € 43 million
≤ € 10 million
≤ € 10 million
≤ € 2 million
≤ € 2 million
In FP7 Euratom there are two associated specific programmes, one in the fields of fusion energy research and nuclear fission and radiation protection, the other in the nuclear field undertaken by the Commission's Joint Research Centre (JRC). The JRC has become a leading institute of nuclear research in Europe.
FP7 Euratom aims to address the major issues and challenges in nuclear research and to contribute to the further consolidation of the European Research Area (ERA) in the nuclear energy sector.
F4E is the ‘European Joint Undertaking for ITER and the Development of Fusion Energy’. It is the EU domestic agency responsible for providing Europe’s contribution for the implementation of ITER (International Thermonuclear Experimental Reactor). This international project aims to demonstrate that fusion may be a viable and sustainable source of energy for human consumption. ITER initiative is the world’s largest scientific partnership which brings together seven parties: the EU, Russia, Japan, China, India, South Korea and the United States.
F4E also supports fusion research and development initiatives through the Broader Approach Agreement (signed with Japan) which aims to complement the ITER Project, and the development of advanced technologies for the construction of demonstration fusion reactors (DEMO).
The F4E Joint Undertaking was created under the Euratom Treaty by a decision of the Council of the European Union. It was established for a period of 35 years (from 19 April 2007) and it is located in Barcelona, Spain.
For the implementation of its tasks, and in order to work together with European industry, SMEs and research organisations, F4E uses two contract mechanisms: grant agreements (grants) and procurement contracts (procurement),which are underpinned by the principles of transparency, proportionality, equal treatment and non-discrimination
Procurement contracts are awarded to contractors in order to obtain the supply of assets, the execution of works and/or the provision of services. These contracts are granted according to calls for tenders that may take one of the following forms: open procedure, restricted procedure, negotiated procedure or competitive dialogue. Procurement results in a proper commercial agreement which provides contractors with 100% of the financial contribution from F4E.
Grants are direct financial contributions that fund beneficiaries, by way of donation, for research and development actions in order to support F4E’s tasks. Co-financing and non-profit rules are mandatory in accordance with F4E’s financial regulations. In contrast to procurement contracts, grants are limited to 40% of financial contribution, the remaining part being borne by the beneficiaries.
The different funding rates between grants and procurement imply different rules for the management of IP in the related projects.
The Competitiveness and Innovation Framework Programme (CIP) is one of the main EU funding instruments to support research and innovation. It aims, in general, to achieve the following objectives:
- foster the competitiveness of enterprises, in particular of SMEs;
- promote all forms of innovation including eco-innovation;
- accelerate the development of a sustainable, competitive, innovative and inclusive information society;
- promote energy efficiency and new and renewable energy sources in all sectors, including transport.
The CIP is divided into three operational programmes. Each programme has its specific objectives, aimed at contributing to the competitiveness of enterprises and their innovative capacity in their own areas, such as ICT or sustainable energy:
The EIP, one of the specific programmes under the CIP, seeks to support enterprises, in particular SMEs, entrepreneurship, innovation including eco-innovation and industrial competitiveness.
This programme aims to achieve the following objectives:
(a) improve access to finance for the start-up and growth of SMEs and investment in innovation activities;
(b) the creation of an environment favourable to SME cooperation, particularly in the field of cross-border cooperation;
(c) all forms of innovation in enterprises;
(e) entrepreneurship and innovation culture;
(f) enterprise and innovation-related economic and administrative reform.
The Information and Communication Technologies Policy Support Programme (ICT-PSP) aims at stimulating a wider uptake of innovative ICT based services and the exploitation of digital content across Europe by citizens, governments and businesses, in particular SMEs.
The programme addresses obstacles hindering further and better use of ICT based products and services and barriers for the development of high growth businesses, notably SMEs, in this field. In addition to illustrating and validating the high value of digital technologies for the economy and society, it will foster the development of EU-wide markets for innovations enabling every company in Europe to benefit from the largest internal market in the world.
Funding goes mainly to pilot actions in areas such as:
- ICT for health, ageing and inclusion
- Digital Libraries
- ICT for improved public services
- ICT for energy efficiency and smart mobility
- Multilingual web and Internet evolution
Yes. The European IPRHelpdesk´s services are conceived to raise awareness of IPR and to provide tailored support on IP issues within research, development and innovation EU funded programmes. The European IPR Helpdesk provides, thus, free of charge expertise and IP related information concerning consortium agreements to the users.
Nevertheless, it does not provide legally binding advice. Users should contact competent authorities, organisations, private consultancies or experts in case any additional advice is needed.
For further information, please visit our services’ homepage.
The Grant Agreement establishes the main rights and obligations of participants towards the European Commission and is, generally, based on models prepared to be applied in all projects. This agreement lacks, therefore, detailed provisions on the specific project and consortium.
Thus, it is highly recommended (if not mandatory) that participants sign between them a Consortium Agreement aimed to establish in detail the rules on the internal management of the consortium, namely in terms of IP matters.
They are Eco-Innovation pilot and market replication projects for the testing in real conditions of innovative products, processes and services that are not fully marketed due to residual risks and that are aimed at reducing environmental impacts, preventing pollution or achieving a more efficient use of natural resources. Through the Eco-Innovation funding scheme, the EU wants to support innovative products, services and technologies that can better use our natural resources and reduce Europe's ecological footprint. With its objective to bridge the gap between research and the market, CIP Eco-Innovation contributes to the implementation of the Environmental Technologies Action Plan.
This initiative provides funding for projects in various sectors that mitigate environmental impacts or promote a more efficient use of resources. Priority areas include material recycling, buildings, the food and drink sector as well as greener business. It helps good ideas for innovative products, services and processes that protect the environment to become commercial prospects, ready for use by business and industry.
Calls are open to all legal persons that are based in eligible countries but the priority will be given to small and medium-sized enterprises (SMEs). Clusters of applicants and projects which demonstrate a European added value and have a high potential for market replication are strongly encouraged.
Although priority will be given to SMEs and private beneficiaries, the calls for proposals are open to all legal people located in one of the following countries:
- 27 EU Member States
- Norway, Iceland, Liechtenstein
- Albania, Croatia, former Yugoslav Republic of Macedonia, Israel, Montenegro, Serbia and Turkey
- Other non-EU countries provided they have an appropriate agreement with EU in force
Potential applicants should carefully check their suitability for this initiative.
Eco-Innovation as a cross-cutting issue through three subprogrammes: Entrepreneurship and Innovation, Information and Communication Technologies, and Intelligent Energy Europe.
It aims to foster the competitiveness of enterprises and promote eco-innovative, market oriented activities which benefit the environment.
Yes. Under article II.3.2 of the Grant Agreement, beneficiaries grant EACI the right to make free use of the results of the action as it deems fit, provided it does not thereby breach its confidentiality obligations or existing industrial and intellectual property rights.
Thus, beneficiaries should have this obligation in consideration when making arrangements concerning the ownership and use of results.
There is no general model grant agreement which would be applicable to all projects under the Competitiveness and Innovation Framework Programme (CIP). Depending on the respective CIP-sub-programme (e.g. Eco-Innovation, IEE, ICT-PSP) a specific standard model agreement is foreseen. The appropriate model Grant Agreement can be found in the the documentation for each call.
Each specific CIP sub-programme (e.g. Eco-Innovation, IEE, ICT-PSP) makes available a specific standard model agreement, which can be downloaded from the pertaining websites:
- Intelligent Energy – Europe Programme (IEE)
- ICT Policy Support Programme (ICT-PSP)
- Eco-Innovation Programme
For other projects, please seek information in the specific call.
The Intelligent Energy Europe Programme (IEE) helps to deal with the climate change and to achieve energy targets that the EU set for itself. The programme supports concrete projects, initiatives and best practices via annual calls for proposals.
The IP rules applicable to CIP projects are mainly established in the Grant Agreement applicable to the specific programme (for instance: Eco-Innovation, ICT PSP, etc.).
Potential participants in these projects should, therefore, check the model Grant Agreement, as well as all the documentation provided by EACI in the webpage for specific calls.
It is very important that potential participants first define which information is going to be used and shared in the project according to its purposes. Registration of IP rights is generally needed to get legal protection and exclusive use of intangible assets. Thus, potential participants should also verify whether the IP assets they identified have been protected as IPR (e.g. patent, industrial design).
Once IP assets are defined and protected, it is essential to consider the appropriate conditions to use and share them within the project, for instance, any economic terms if applicable. In case it is necessary to use any IP belonging to a third party, it is advisable to get adequate authorisations to avoid any future infringement.
Finally, before exchanging information consortium partners should enter in appropriate confidentiality agreements.
At the proposal stage, participants are likely to exchange valuable and confidential information about their assets with others partners. To avoid losing such information, it is advisable to conclude a confidentiality agreement before disclosing any information. Regarding the transmission of the proposal to the EACI, no special agreement is necessary since the experts who evaluate proposals are bound by a confidentiality obligation.
Moreover, during the project, both the project participants and the EACI are bound by the confidentiality obligations incorporated into the specific grant agreement.
Generally, the participants are the owners of the results they generate under the project, including any IP rights involved.
Nevertheless, in every case it is recommended to revise the specific rules of each project, particularly the IPR clauses included in the grant agreement.
In some projects it is necessary to grant access rights to the pre-existing information (results, know how, etc, all these named “background”) and/or to the results generated under the project (“foreground”) when the other consortium partners need them to carry out their own work under the project or to use and exploit their own foreground.
Thus, it is advisable to consult the applicable Grant Agreement in order to check whether in your concrete project it is or not mandatory to grant such rights.
In accordance with the provisions of the model Grant Agreement (when applicable), valuable results (capable of industrial or commercial application) should be protected. Protection is not mandatory in all cases, though the decision to leave results without protection should preferably be made in consultation with the other project partners, which may wish to overtake ownership. Results should be, furthermore, protected in an adequate and effective manner in conformity with the relevant legal provisions, having due regard to the legitimate interests of all project partners.
Horizon 2020 has a number of new features that make it fit for purpose to promote growth and tackle societal challenges. These include:
- Major simplification through a simpler programme architecture, a single set of rules, an easier-to-use cost reimbursement model, a single point of access for participants, less paperwork in preparing proposals, fewer controls and audits, with the overall aim to reduce the average time to grant;
- An inclusive approach open to new participants, including those with ideas outside of the mainstream, ensuring that excellent researchers and innovators from across Europe and beyond can and do participate;
- The integration of research and innovation by providing seamless and coherent funding from idea to market;
- More support for innovation and activities close to the market, leading to a direct economic stimulus;
- A strong focus on creating business opportunities out of the EU's response to the major concerns common to people in Europe and beyond, i.e. ‘societal challenges’;
- More possibilities for new entrants and young, promising scientists to put forward their ideas and obtain funding.
As was the case under the Seventh Framework Programme (FP7), the rules applicable to Horizon 2020, including in particular intellectual property rules, have been included in the Rules for Participation.
The rules on intellectual property rights in Horizon 2020 are based on the FP7 rules, with some further improvements and clarifications. There are however a few differences, such as:
- Open access to research publications has more emphasis than in FP7 as is now a general requirement, the specificities of which will however be further defined in each grant agreement. In order to help potential participants, the European Commission has published a fact sheet dedicated to open access in Horizon 2020. This fact sheet can be downloaded here.
- In parallel, the Open Research Data Pilot has been launched with the aim to improve and maximise access to and re-use of research data generated by certain specific projects. For more information as to the core areas of Horizon 2020 participating in the Open Research Data Pilot as well as to the types of data which the pilot will be applied to, you can read the European Commission’s fact sheet on open access in Horizon 2020 available here.
- The model grant agreement for Horizon 2020 now foresees access rights to project results for the European Union, and in the field of security research also for Member States. Such access rights are limited to certain uses and provided for specific purposes only.
- Some definitions (e.g. definition of background or affiliated entities) have been slightly changed.
The European Commission has created an online manual for Horizon 2020, which will feature an intellectual property guide.
The H2020 online manual is currently being updated and can be accessed from the following URL:
The general rules concerning intellectual property rights can be found in the Rules for Participation, which apply to all funding programmes carried out under Horizon 2020, as well as in the grant agreement signed between the beneficiaries and the European funding body. A company participating in Horizon 2020 and concluding an agreement with a funding organisation or the Commission, for example signing a grant agreement with the Commission, will have to comply with these rules.
The general IPR rules and requirements applying to Horizon 2020 participants are in many ways similar to those applying under FP7:
- In terms of ownership of project results, the general principle is that such results are owned by the beneficiary which generates them.
- In the case where results have been generated by two or several partners jointly, and if it is not possible to establish the joint contribution of each beneficiary or to separate the results for the purposes of applying for, obtaining or maintaining their protection, the model grant agreement establishes a default joint ownership regime.
- Similarly to FP7, the model grant agreement for Horizon 2020 provides for a general obligation for beneficiaries to exploit and disseminate the project results that they own.
- The new model grant agreement also provides the obligation for project partners to grant access rights to their background and foreground, for implementation and exploitation purposes.
Specific additional rules concerning intellectual property rights may also be laid down in the grant agreement and work programme applicable to particular projects, for example in areas related to security, infrastructures, ERC, training and mobility, coordination and support, SMEs and EIT.