Efficiently preparing the negotiation of access rights to a patentable invention

BIOCORE was a consortium of 23 partners and lasted for 4 years between March 2010 and February 2014. The project was funded under FP7 and focused on intensive collaborative research on lignocellulosic biorefineries producing chemicals and polymers.

At the exploitation stage one of the BIOCORE partners contacted the European IPR Helpdesk’s Helpline asking for support with regard to a disagreement between two of the project partners. One of them had filed two patent applications, related to an invention which this partner had developed under the project and which was therefore considered project foreground.

These patent applications were withdrawn at the request of one of the other partners. This partner argued that the invention had been developed by using its pre-existing, patented process without permission and that by filing a patent application for the new process, confidential information would be disclosed.

This conflict regarding the ownership of the foreground blocked the partners and put the project at risk. The European IPR Helpdesk was approached for advice and guidance on the rights and obligations of the parties and especially the intellectual property rules on ownership of background and foreground in FP7 projects.

The IPR Helpdesk reminded the project partners that the implementation of a research project usually requires the use of pre-existing knowledge and/or intellectual property, held by the partners and resulting from work carried out prior to the project (background). In the BIOCORE Consortium Agreement the project background was defined by the partners through the use of positive and negative lists of assets, and the pre-existing patented invention owned by the partner who opposed the patent applications was indeed available for access rights in case it was needed to use the foreground generated.

A few months later the BIOCORE partners again contacted the Helpline, stating:  

“Following the IPR Helpdesk’s support, the opposed partner has been contacted for discussions.  The situation has been clarified and a new European patent application has been filed. This experience will also help us to better prepare the next projects and Consortium Agreements.”

The project partners are now awaiting the results of the search report of the European Patent Office.  Depending on the results, the opposed partner will be contacted to request access rights to its background and to take further steps related to the commercial exploitation of the project foreground.


Taking steps to the protection of databases

This new case study published by the European IPR Helpdesk addresses database protection in the EU Seventh Framework Programme by pointing out the difference between the protection of database content and structure, which may benefit from copyright and/or database sui generis protection.

Have a look at this interesting case!

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Allocation of shares of jointly developed results

Ownership over the intellectual property arising as a result of the innovation is one of the most critical issues to resolve in the framework of collaborative projects, especially in cases where two or more partners generate results jointly.

This case study sets out the likely actions to be undertaken in such a situation to avoid any drawbacks and for a proper management of a jointly owned research result.

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Copyright management and Creative Commons in FP7

The Creative Commons initiative is not incompatible with copyright and on the contrary is based on the existence of copyright protection, since it allows the work to be licensed to others interested in using the material.

Take a look at this new case study to see how the use of Creative Commons licences can be beneficial for dissemination of project results, without undermining legal protection.

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Facilitating wide dissemination of results

Fed4FIRE is an Integrating Project under the European Union’s Seventh Framework Programme (FP7) addressing the work programme topic Future Internet Research and Experimentation. The project is performed by a consortium of 17 partner organisations from 8 countries, mainly public research organisations.

In order to enable experimentally driven research, a number of projects for building a European facility for Future Internet Research and Experimentation (FIRE) have been launched, each project targeting a specific community within the Future Internet ecosystem. Through the federation of these infrastructures, innovative experiments can break the boundaries of these domains and infrastructure developers can use common tools of the federation, allowing them to focus on their core testbed activities. Recent projects have already successfully demonstrated the advantages of federation within a community. The Fed4FIRE project intends to implement the next step in these activities by successfully federating across the community borders and offering openness for future extensions.

With this principle of openness in mind, many of the deliverables of this project are public. These deliverables are therefore intended to be widely disseminated outside the project, namely through download in the project’s website. However, during the implementation of the project some partners showed concerns with this dissemination strategy, since they believed this could harm their copyright in those deliverables, which in their understanding must be protected. Moreover, some partners suggested the use of Creative Commons licensing, but there was some disagreement on this possible solution.

Since the partners could not reach a common understanding on this matter, which could potentially affect the timely implementation of the project, the Coordinator of this project, iMinds, contacted the Helpline of the European IPR Helpdesk. According to iMinds “the answer we received from the Helpline helped a lot in our discussion.

With “direct and concise” information that was “understandable for engineers”, the partners in Fed4FIRE “finally came to a solution”. Having started in October 2012, the Fed4FIRE project is currently in its development phase which is expected to run until September 2015.


European IPR Helpdesk Bulletin Issue (11)

We are pleased to inform you that the eleventh issue of the European IPR Helpdesk Bulletin has been released and is now available on-line.

This issue is thicker than the previous ones as our Bulletin comes to the end of its third year of publication. We thus decided to give space to more topics matching the interests of all our target groups. The publication starts with an article on Open Access (OA) in FP7 and Horizon 2020. A policy officer from DG Research & Innovation explains the importance and potential benefits of OA for the European Research Area, together with the activities of the European Commission to foster the utilisation of this dissemination tool in EU-funded programmes. The following article sticks with the EU framework programmes and offers an overview on intellectual property (IP) in Horizon 2020, with a focus on comparison with FP7.

Realising the benefits from IP requires its conscious and appropriate management. The article on IP valuation outlines the principal methods in practice. A INTA contribution points out in ten FAQ how SMEs can effectively use the Madrid System. Small businesses are again the target of two IP tools, providing information on how to use their intangibles.

Our close collaboration with Enterprise Europe Network has produced two other pieces. One introduces the publication of IPR Guidelines, created for the Network advisers to guide their clients through the IP process from idea generation to commercial revenue. The second one is an interview with one of the European IPR Helpdesk Ambassadors from Turkey, who shares with us his thoughts on the benefits and opportunities that the scheme offers to him and his clients.

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New FP7 monitoring report has been published

The Sixth FP7 Monitoring Report focused on the Framework Programme implementation in 2012 was published at the beginning of this month.

In this report, you can see in detail the outputs obtained and the results achieved in FP7 during the period analysed. According to the report, 629 Intellectual property rights were reported in the 3,220 project Final Reports analysed, 80% of which (i.e. 505) being patent applications as you can see in the table below.

To read the report in full, please click here.

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European IPR Helpdesk Bulletin Issue (10)

We are pleased to inform you that the tenth issue of the European IPR Helpdesk Bulletin has been released and is now available on-line.

Traditionally, public funded research was deemed to be focused on questions of essential scientific interest, the so-called basic research. This was intended to merely disclose new scientific and technological knowledge through publications. In the last two decades this scenario has dramatically changed and the support for the commercialisation of publicly funded research results has grown. In this Bulletin, this issue is addressed in two articles. The first one is the outcome of a conference organised by the European Patent Office (EPO) on “Creating markets from research results” and the other is about a report compiled by a group of experts on how the national intellectual property offices can help academic institutions and technology transfer offices enhance their technology transfer activities.

Furthermore, in this issue you can read an interview with an IP expert on the fundamentals of an IP valuation for a proper management of intangible assets. Within the “do-it-yourself” series, the World Intellectual Property Organization (WIPO) highlights some of the salient feature of its e-tutorial on using patent information, i.e. the technical and legal information contained in patent documents. In another article, the Office for Harmonization in the Internal Market (OHIM) tells us the success story of the Registered Community Design (RCD) over the last ten years.

As always, you can enjoy the patent quiz and are informed about IP awareness raising events.

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“Has the Commission ensured efficient implementation of the Seventh Framework Programme for Research?”

The European Court of Auditors (ECA) recently issued a special report entitled “Has the Commission ensured efficient implementation of the Seventh Framework Programme for Research?”. The ECA assessed whether the Commission has ensured efficient implementation of FP7. The audit covered the rules for participation, the Commission’s processes and the setting-up of two new instruments, and its results are likely to be useful not only for the remaining period of FP7, but also for the operational setup of the next research Framework Programme - Horizon 2020.

The report found that although the European Commission has taken a number of steps to bolster its management of the Seventh Framework Programme for Research (FP7), researchers seeking FP7 funding are however faced with unnecessary inconsistencies.

Accordingly the ECA recommended:

a)      Regarding rules for participation, the Commission should make further efforts to ensure that  beneficiaries’ practices can be used in Horizon 2020 and manage FP7 in a more consistent  manner;

b)      To strengthen process management, the Commission should deploy IT tools which will integrate all functionalities and it should examine the imbalances in staff workload;

c)       To reduce processing times, the Commission should make sure that the processes are automated and implemented consistently across its services;

d)      The Commission should make its control activities before and after payment more risk-driven, so as to better focus its control effort; and

e)      The EU Council, European Parliament and the Commission should bring the legal framework of the Joint Technology Initiatives more into line with their staff complement. To maximise the impact of the Risk Sharing Finance Facility, the Commission should demonstrate that it targets those beneficiaries which have limited access to finance.

For further information and to read the special report in full, please click here.

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