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.