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www.iprhelpdesk.eu IP management in Horizon 2020 European IPR Helpdesk Get your ticket to innovation! Alejandra Aluja IP Advisor European IPR Helpdesk 2 March 2018 Paola, Malta
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IP management in Horizon 2020
European IPR HelpdeskGet your ticket to innovation!
Alejandra Aluja
IP Advisor
European IPR Helpdesk
2 March 2018 Paola, Malta
www.iprhelpdesk.eu
Who are we?
www.iprhelpdesk.eu
European IPR Helpdesk team
Infeurope
Project Coordination, Website & Helpline
Intellectual Property Institute Luxembourg
Publications, Training & Stakeholder Relations
Eurice GmbH
Communications and Training
European IPR Helpdesk @ Brussels:
Rue du Trône 98
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Services
Bulletin
Publications
Training
Helpline
Newsletter
Awareness Raising
Website
All free of charge
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Websitewww.iprhelpdesk.eu
Approx.600,000/year views
More than 12,000 users
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Helpline
Personalised answers to specific questions
First-line support (participants are advised to get professional legal support)
Answers in 3 working days
Deals with a wide range of IP topics (e.g. IP Protection, IP Management, IP negotiation, licensing, IP exploitation, comments and revision of IP agreements…)
No legal terminology, user friendly and «to the point» approach
+352 - 25 22 33 – 333 [email protected]
Approx. 1,000 questions/year
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Training
“Capacity building“
Practical and comprehensive training approach
Individual organisation of training events
Online (webinars and self studies) and on-site training
Just in one year:70 training sessions
Over 4,700 participants
21 March: Technology transfer
11 April: IP in EU-funded projects/Horizon 2020
2 May: Consortium agreements
23 May: IP management in H2020 with a special focus on MSC Actions
Upcoming webinars
Check our event
calendar
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Roadmap
IP basics:
• What is Intellectual Property?
• Some IP protection tools
• The importance of IP
IP management in H2020:
• Key terms in H2020
• Proposal stage
• Grant Preparation stage
• Implementation and exploitation
STOP
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What is Intellectual Property?
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Such creations are of an intangible nature
Results of creative efforts from the human intellect
Intellectual Property
Intellectual Property
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Intellectual Property
SOFT IPConfidential Information(e.g. Trade Secrets or
Know-How)
INDUSTRIAL PROPERTYTrade Marks
PatentsPlant varietiesUtility Models
Industrial Designs…
RE
GI
ST
RA
BL
E
COPYRIGHT AND RELATED RIGHTS
Literary and Artistic WorksPerformers’ rights
Databases…
UN
RE
GI
ST
RA
BL
E
STOP
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Some IP protection tools
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Patents
What is a patent?
EXCLUSIVE RIGHTS
To prevent or stop others from commercially
exploiting (making, using, selling and importing) the
patented invention
INVENTION
Industrial application
Novelty
Inventive step
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Trade Marks
SIGNS
GOODS &
SERVICES
EXCLUSIVE RIGHTS
identify and
distinguish
To use and prevent others from using
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Trade Marks
What can be protected as a trade mark?
• Words• Letters• personal names• Logos• Shapes
• Colours• Sounds• Smells• and their combinations
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Industrial Designs3D features, such as the shape of an article, or two dimensional features, such as patterns, lines or colours.
What can be protected?
APPEARANCE
Ornamental
Aesthetic
Non-functional
EXCLUSIVE RIGHTS
to exclude others from making, importing, selling, hiring or
offering for sale articles in which the design is embedded.
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Copyright
LITERARY, SCIENTIFIC &
ARTISTIC CREATIONS,
generally referred to as “works”.
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Copyright
• No formal registration process is required
• For works to be protected by copyright they must exist in some form and they must beoriginal.
IDEAS, as such, cannot obtain copyright protection. It is the form of expression of
those ideas that can be copyrighted, provided
that it is an ORIGINAL creation by the author.
STOP
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The importance of IP
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Intellectual Property Rights (IPR)
Promote INNOVATION
WIN-WIN
Limited MONOPOLY
by encouraging invention and creativity, and
thereby benefitting society
in return for disclosing
details of the new creation
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IP is all around One product – many IP rights
Trade marks Brand name Nokia jingle
Copyright Software User manuals Ringtones Images
Designs Form of overall phone Arrangement and
shape of buttons Position and shape of
screen
Trade secrets Some technical know-how kept
"in-house" and not published
Patents and utility models
Data-processing methods Operating system Operation of user
interface Touch screen
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European IPR HelpdeskGet your ticket to innovation!
IP Management in Horizon 2020
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The basic principle underneath:
€ 80 billion funding
• One single programme• One single set of
participation rules• Easier access to all EU and
international participants• Strong market orientation• Coupling research with
innovation• 3 priorities• Focus on innovative SMEs
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Generation of new knowledge
and IP
EU funded collaborative
action
Knowledge and IP of the participants
80 bio EUR
Why IP is important in EU-funded projects?
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Where to find the IP rules?
The IP rules in Horizon 2020 are mentioned in:
the Rules for Participation (Art. 41)
the General Model Grant Agreement and its Annotated version (Section 3)
the applicable work programme
Where to find: Participant Portal / Online Manual
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Background
Results
Access rights
Exploitation
Dissemination
...what are you bringing to the project?
...what will be generated during the project?
...to background and to results (foreground)
...how to effectively make use of the results
...public disclosure
Things that you need to discuss and agree on
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Proposal Stage
Grant Preparation
Implementation and Exploitation
From the publication of the call until the submission of the proposal
From the reception of the notification of the “time to grant” until the signing of the GA
From the signing of the GA until the end of the project
STOP
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Key terms in Horizon 2020
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Key terms in Horizon 2020 Actions
Background – data, know-how, information, IPR held bythe beneficiaries before they enter into action, identifiedas background and needed to implement the action orexploit the results;
Results – any tangible or intangible output of an action,as well as IP that is generated in the action;
Exploitation – use of results;
Access rights - rights to use results or background ofproject partners under the conditions set forth in theGA/CA.
STOP
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Proposal stage
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Confidentiality
H2020 requires partners to share information with the purpose of defining theresearch idea.
There is therefore the risk that confidential information, such as inventions not yetprotected by patents, is disclosed to the other partners.
To avoid misappropriation and dissemination of confidential information, it is the bestpractice to enter into a non-disclosure agreement.
Proposal Stage
Model non-disclosure agreements are available in the European IPR Helpdesk online Library!
www.iprhelpdesk.eu
Assess the state-of-the-art
It is essential to describe to what extent the proposed work is beyond the state-of-the-art by examining:
scientific literature
patent databases (Espacenet or private patent attorney)
Proposal Stage
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Consider third parties’ rights
Patents:
Commercialising a product incorporating a third party’s patented technologywould:
• hamper the planned exploitation of results
• increase the cost of the project
Trade marks:
Refrain from using a project name or acronym identical or similar to aregistered trade mark!
Proposal Stage
Perform TM and patent searches!
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Submit the PEDR – A strategic document for beneficiaries
A good PEDR contains:
a clear vision on the objectives of the project
a well-planned strategy for protection, exploitation and dissemination of results
Proposal Stage
Assessed under the IMPACT section!!!
Highlight the link between the proposed dissemination and exploitation measures and the expected impact!
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Objectives of the project
• What kind of needs does the project respond to?
• What kind of problem the proposed solution will solve?
• Why this solution will be better than existing ones?
• What kind of results the project will generate?
• Who will use these results?
Proposal Stage
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Exploitation and dissemination activities
Potential geographic coverage
Potential users and main competitors
Description of the exploitation roadmap
Description of the planned dissemination activities
Proposal Stage
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Proposal Stage
STOP
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Grant Preparation stage
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Coordinator(p1)
(p4)
(p3)
(p2)
The Consortium
Consortium Agreement(CA)
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Proposal Stage Grant Preparation
The IP assets that each applicant is potentially bringing to the project.Inventions, databases, know-how, secret-knowledge, methods...
The IP assets should be identified without ambiguity!
Not limited to “owned” information Can extend to anything legally held (e.g. patent licences)
Who is the owner? simple principle: who brings it owns it!
IMPORTANT Project partners must identify their background in writing (RfP, Art.45)
Can be in any form (positive/negative list, separate agreement, in the CA…)
Background
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Proposal Stage Grant Preparation
The beneficiaries must give each other access to background needed to implement their
own tasks under the action.
No obligation to give access, if there are restrictions or limits (legal or otherwise) and the
beneficiary has informed the other partners (e.g. A pre-existing agreement)
Access right to Background
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Proposal Stage Grant Preparation
Results (Foreground): The outcomes generated through the project
Inventions, databases, know-how, secret-knowledge, methods...
Who is the owner? simple principle: who generates it owns it!
Results
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Proposal Stage Grant Preparation
Access Rights to Results: The beneficiaries must give each other access to results when needed.
Access rights are not automatic. They must be requested in writing.
Default rule for access rights to results:
• for the implementation of action tasks (during the project): royalty - free
• for the exploitation of the results: under fair and reasonable conditions (also includes royalty-free)
Fair and reasonable conditions? Monetary (lump sum, royalty percentage) or non-financial (in return for
a new cooperation in a different project)
Royalty fees paid for access are eligible costs - under certain conditions
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Ownership
Proposal Stage Grant Preparation
Results arising from the project remain the property of the beneficiary that has generated them.
To avoid or resolve ownership disputes, beneficiaries should keepdocuments such as laboratory notebooks to show how and when theyproduced the results.
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Automatic Joint Ownership
Proposal Stage Grant Preparation
If beneficiaries have jointly generated results and it is not possible to establish their respectivecontribution (or to separate them for protection), the beneficiaries automatically becomejoint owners.
In this case, the beneficiaries concerned must conclude a joint ownership agreement (inwriting) stating:• How ownership will be divided• How the joint results are protected• How the joint results are exploited and disseminated• Specific conditions for granting licenses (if different from the GA)• Criteria, principles, and conditions for “fair and reasonable compensation” to be provided
to the other joint owners, if a non-exclusive license is granted to a third party• Dispute settlement mechanism.
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Automatic Joint Ownership
Proposal Stage Grant Preparation
The joint ownership agreement can be included in the CA.
Joint owners may abandon joint ownership only after the jointly-owned results have been produced.
E.g. Once the results have been produced, the joint owners may transferownership to a single owner and agree on more favourable access rights.
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Obligation to protect, exploit and disseminate the results
Proposal Stage Grant Preparation
Although these obligations are provided in the GA, consortium partners mayinclude specificities concerning the procedures to follow for the protection,exploitation and dissemination of project results.
E.g. Establishing pragmatic rules to follow (additional to those set in the GA)before disclosing any information in order to preserve the novelty of a certaintechnology.
STOP
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Implementation and exploitation
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Implementation and Exploitation
Proposal Stage Grant PreparationImplementationand Exploitation
Asserting the ownership of results
Protecting results by IPRs or other means (e.g. trade secret protection)
Exploiting results
Disseminating results
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Obligation to protect results
Each beneficiary must examine the possibility of protecting its resultsfor an appropriate period and with appropriate territorial coverage, if:
the results can reasonably be expected to be commercially orindustrially exploited and
protecting them is possible, reasonable and justified.
Proposal Stage Grant PreparationImplementationand Exploitation
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Protection by subject matter
Subject Matter Patent Utility ModelIndustrial
DesignCopyright
Trade
Mark
Confidential
Information
Invention (e.g. products,
processes)X X X
Software X* X X
Scientific article X
Design of a product X X X
Name of a
technology/productX
Know-How X
Website X X
*Software patentability is still a debated issue given its exculsion as subject matter as by Article 52(2)(c) and(3) EPC.
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Obligation to protect results
Proposal Stage Grant PreparationImplementationand Exploitation
IP protection costs (of project results), and royalties paid for access rightsneeded to implement the action are eligible under project budget!
Beneficiaries should consider seeking expert advice to help them decidewhether and how to protect results.
In some cases, it may be advisable to protect the invention by keeping it confidential,or to postpone the filing of a patent (or other IPR) application.
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Proposal Stage Grant PreparationImplementationand Exploitation
Exploitation and Dissemination:
The difference between exploitation and dissemination:
Exploitation: How you use the results (foreground).
Dissemination: How you promote your results (foreground).
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Dissemination of Project Results
“Project partners are obliged to disseminate the results swiftly by any appropriate means”
The beneficiaries may choose the form of disseminating their results.
Classic forms of dissemination:
• website, conference presentation, peer reviewed publication
Proposal Stage Grant PreparationImplementationand Exploitation
Information released in a patent application is not sufficient to comply with this obligation!
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Proposal Stage Grant PreparationImplementationand Exploitation
IMPORTANT TO TAKE INTO ACCOUNT in DISSEMINATION:
• No dissemination of results before the decision of possible protection.
• Do not forget the statement: “the project received financial support from the
European Union”.
• Inform the other consortium partners in writing 45 days before the planned
dissemination activities and wait 30 days for any objection.
• Beware not to infringe third parties' IPR.
• Open Access is a general principle of scientific dissemination.
• List the dissemination activities in PEDR.
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Obligation to exploit results
Each beneficiary must — up to four years after the project completion takemeasures aimed at “exploitation” of its results (either directly or indirectly, inparticular through transfer or licensing) by:
•using them in further research activities (outside the project)•developing and selling own products•creating and providing a services
Where possible, the measures should be consistent with the impactexpected from the action and the ‘plan for the exploitation anddissemination of the results’.
Proposal Stage Grant PreparationImplementationand Exploitation
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Proposal Stage Grant PreparationImplementationand Exploitation
IMPORTANT TO TAKE INTO ACCOUNT in EXPLOITATION:
• Each beneficiary may transfer ownership / grant licenses of his results.
• 45 days (or less if agreed in writing) advance notice to the joint owners or other beneficiaries
that still have (or still may request) access rights to the results.
• Exclusive licences may be granted only if all other beneficiaries have waived their access
rights.
• Beneficiaries can object within 30 days (or less if agreed in writing) of receiving notification
demonstrating the adverse effects on the exercise of its access rights
• A beneficiary who intends to transfer ownership or grant an exclusive license must formally notify the
Commission. The EC may object to transfer, if the transfer/license:
o to a non-EU country not associated to H2020
o not inline with EU interests or is inconsistent with ethical principles or security considerations
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For further information read our fact sheets and follow our regular webinars!
The Plan for the Exploitation and Dissemination of Results in Horizon 2020
IP Management in Horizon 2020: Proposal Stage
How to manage IP in Horizon 2020: grant preparation stage
IP management in Horizon 2020: project implementation and conclusion
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Grazzi!
We look forward to getting in touch with you!
For questions on this presentation, please contact:
For further questions and general IP advice, please contact our Helpline team:
Phone +352 25 22 33-333 (Helpline)
Fax + 352 25 22 33-334 (Helpline)
www.iprhelpdesk.eu
For questions related to our training activities, please send us an email at:
/ European IPR Helpdesk
/ European IPR Helpdesk
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Photos credits
istockphoto.com© istockphoto.com/maridav© istockphoto.com/Daniel Laflor© istockphoto.com/Rtimages© istockphoto.com/Warchi
Disclaimer/Legal Notice
The European IPR Helpdesk project receives funding from the European Union’s Horizon 2020 research and innovation programme underGrant Agreement No 641474. It is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises(EASME), with policy guidance provided by the European Commission’s Internal Market, Industry, Entrepreneurship and SMEs Directorate-General.
Even though this presentation has been developed with the financial support of the EU, its content is not and shall not be considered as theofficial position of the EASME or the European Commission.
The support provided by the European IPR Helpdesk should not be considered as of a legal or advisory nature.
© European Union (2018)
