23
AAL Consortium Building Workshop 11 th of March 2015 Brussels. The basics of IPR issues and their importance in the successful exploitation of results. Carmen Ceinos
AAL Consortium Building Workshop
11th of March 2015
Brussels.
The basics of IPR issues and their importance in
the successful exploitation of results.
Carmen Ceinos
212/03/2015 2
Content
Basic definitions
Why IPR?
The basics of IPR for :
Access Rights
Exploitation of results
IPR rules under the AAL Programme
Other main issues linked to IPR
Ownership of results
Protection of results
Transfer of results
Dissemination
Conclusions
312/03/2015 3
Some Basic Definitions
IPR (Intellectual Property Rights) are the rights
given to persons over the creations of their minds.
They usually give an exclusive right over the use of
his/her creation for a certain period of time.
Two main categories:
Industrial property: patents, which relate mainly to
protect ideas, designs, inventions, trademarks,
trade names that have industrial value in the
classical sense
Copyright: applies, above all, to literary and
artistic, musical and so on. Extended to software (in
Europe).
412/03/2015 4
Why IPR In Active Assisted Living funded
projects?
Joint research & innovation projects are expected to produce results with potential significant economic value
Valuable results (capable of industrial or commercial application) from funded projects have to be protected
Partners as well as public funding bodies should be interested in recovering the effort and the money invested
IPR affect the way the project is conducted and exploited later
512/03/2015 5
Terminology used when addressing IPR issues
The three main concepts
Background: Information, knowledge and IPR hold
by partners, generated previously to the project and
needed for the project.
Access Rights: rights to use the results or the
background
Results: output of the project generated during its
execution. The subject of the exploitation
612/03/2015 6
Access Rights
Access Rights may be needed during the life of the project
(Project Implementation) and at the Exploitation (use of results)
During the Project Implementation: without the access rights concerned,
some of the R&D tasks would not be possible.
At the Exploitation: without the necessary access rights, the use of the
Result is likely to be technically or legally not viable.
Before the start of the project it can be difficult to define in detail
the features of marketable results, but it is convenient to define
in the CA (Consortium Agreement) the criteria that will be used
for Joint Ownership of Results.
Full definitions: AAL Consortium Agreement Skeleton
http://www.aal-europe.eu/documents-resources/resources-for-project-coordinators/
712/03/2015 7
Access Rights in the project
812/03/2015 8
Exploitation of Results
Exploitation in the AAL environment is the use of
project results in
further research activities
developing, creating and marketing a product or process
or service
standardisation activities
912/03/2015 9
IPR during the projects' life
1012/03/2015 10
IPR rules under the AAL Programme
Current status:
IPR rules (provisions) in AAL projects are governed by
the rules of each National Funding Body
Each partner has to make sure that nothing in the
Consortium Agreement contradicts its own National
Funding Body’s rules
IPR basic rules of the Horizon 2020 applies to AAL too
1112/03/2015 11
IPR and ownership of Results
Two possible scenarios:
1. Results from the project are owned by the Party
which generates them
2. Results are jointly generated and jointly owned
1212/03/2015 12
Ownership of Results
1.- Results from the project are owned by the Party which generates them
Importance of keeping evidence of the generation of Results, so to be able to prove their ownership and the date of their generation (for instance “Laboratory Notes” used by scientists in research activities).
Agreements with employees and other personnel (subcontractors, students, end-users actively involved in the project etc.) are important when the applicable national law has a specific type of “professor’s privilege” regime (Sweden, Italy). Again, it is important to check the national laws applying
1312/03/2015 13
Ownership of Results
2.- Results which are jointly generated derive
on Joint Ownership
Joint owners are responsible for setting out a suitable
ownership regime.
Two possibilities: agreement or no agreement among
the partners
1412/03/2015 14
Ownership of Results
If no agreement on joint ownership
Default regime applies:
Each of the owners can exploit their jointly owned
Results
Each of the joint owners can grant non-exclusive licences
to third parties, with the following (obvious) conditions:
prior notice must be given to the other joint owner(s);
fair and reasonable compensation must be provided.
1512/03/2015 15
Ownership of Results
If there is a joint ownership agreement
Joint owners establish an agreement on the allocation and
implementation of the joint ownership.
The owners have freedom to agree on alternative
regimes.
Best practice! To agree on a joint ownership agreement
adapted to each jointly owned result.
1612/03/2015 16
Ownership of Results
Joint Ownership (JO) Agreement should: Identify joint owners
Assign shares
Set rules for protection (sharing cost of legal protection, when and how to protect, who bears the costs)
Establish obligation to report any IPR infringement
Set rules for exploitation and licensing
If applicable, establish geographical division of exploitation markets
JO is a complex issue. It is recommended to avoid JO whenever possible
Alternative regimes:
A single owner of the results, with other partners transferring their ownership share. All keeping their Access Rights
1712/03/2015 17
Transfer of Results
Transfer of ownership of Results to any third party
is possible by:
Transferring as well the obligations regarding those Results to the assignee
Notifying the other Partners (who can exercise their access rights)
1812/03/2015 18
IPR and protection of Results
Results have to be protected in an adequate and effective manner taking into account the legitimate interests of all project partners.
Good practices: Identify the partners (usually the owner) responsible for
the protection
To create and maintain an IP repository/file with data of all knowledge produced within the project
Create a management body (IPR Manager) in charge of monitoring the progress towards the protection of results.
Any other necessary agreement should be agreed upon and signed: Confidentiality agreements
Joint ownership agreements
Technology transfer agreements……
1912/03/2015 19
IPR and Dissemination
Dissemination activities shall be compatible with intellectual property rights, confidentiality, and with the rules on dissemination applied by each National funding body
Dissemination of results owned by another Party, it has to be previously approved in writing
The conflict resolution mechanism in case of objections has to be defined in the Consortium Agreement
2012/03/2015 20
Need support?
The European Commission has made available an
IPR Helpdesk
http://www.iprhelpdesk.eu/node/691 (IPR rules to be updated)
In case of questions related to intellectual property contact the
European IPR Helpdesk free of charge helpline service
[email protected] or call to +352 25 22 33-333 or Fax
to +352 25 22 33-334 or visit to http://www.iprhelpdesk.eu.
2112/03/2015 21
Need support?
IPR Helpdesk website
2212/03/2015 22
Final remarks
IPR are crucial for the exploitation of Results. To be
taken into account when signing the CA and in
subsequent negotiations and agreements on
Results.
Make sure no IPR agreement contradicts your
National Funding Body rules. Consult your NCP
Information and support to be found at the EC IPR
Helpdesk
