1. Laurence DUMOULIN LEGAL TEAM 6 4 - 6 6, a v e n u e V i c t o r H U G O L - 1 7 5 0 L U X E M B O U R G Tel. (+352) 47 11 11 1 Fax (+352) 47 11 11 60 info@ipr-helpdesk.org www.cordis.lu/ipr-helpdesk

2. IPR issues within FP5 Model contracts Consortium Agreements IPR issues within FP5 Model contracts Consortium Agreements PROGRAMME

3. RTD Project (cost reimbursement) Cooperative Research (CRAFT) RTD Project (cost reimbursement) Cooperative Research (CRAFT) R & D P r o j e c t s u n d e r t h e 5 F P

4. Definitions Rights resulting from the contract Obligations resulting from the contract R & D P r o j e c t s u n d e r t h e 5 F P

5. Structure of an RTD Project (Cost Reimbursement) Principal Contractor A Principal Contractor B Principal Contractor C Principal Contractor D Assistant Contractor Legal agreements Model Contract Consortium agreement Contract between Principal Contractor s and Assistant Contractor(s) Technical Supervision EUROPEAN COMMISSION R & D P r o j e c t s u n d e r t h e 5 F P

6. Pre-existing know-how Definitions Knowledge Access rights R & D P r o j e c t s u n d e r t h e 5 F P

7. Pre-existing Know-how and Knowledge Pre-existing Know-how Knowledge " Pre-existing know-how" means information, other than knowledge, held by the contractors prior to the conclusion of the contract or acquired in parallel with it and necessary for carrying out the project, as well as copyright or rights attaching to such information following applications for, or the issue or registration of, patents, designs and models, plant varieties, additional certificates or other similar forms of protection. Knowledge means results, including information, arising from any project of the 5FP, as well as copyright or rights attaching to the results following applications for, or the issue of registration of, patents, designs and models, plant varieties, additional certificates or other similar forms of protection. R & D P r o j e c t s u n d e r t h e 5 F P

8. Ownership of pre-existing know-how: Ownership Ownership of knowledge: Remains the property of the partner who has bring it into the project Is the property of the contractors who have generated it R & D P r o j e c t s u n d e r t h e 5 F P

9. … will be given to RTD Project partners upon request Access rights …are granted on a non- exclusive basis (general principle) …can be refused …can be granted under more favourable conditions Duration of access rights Access rights... R & D P r o j e c t s u n d e r t h e 5 F P

10. Access rights: Pre-existing Know-How For carrying out the project For use Principal contractors Assistant contractors Any principal contractors in the same specific programme Complementary contractors (both principal and assistant except case above) Favourable conditions if necessary to carry-out their work in the project Favourable conditions if necessary to use the knowledge of the project Favourable conditions to the pre-existing know-how of their principal contractor(s) or its assistant contractor(s) of their principal contractor(s) if necessary to carry-out the project. Market Condition to the pre-existing Know-how of other Principal contractors or other assistant contractors. Favourable conditions to the pre-existing know-how of their principal contractor(s) or its assistant contractor(s) of their principal contractor(s) if necessary to carry-out the project. Market Condition to the pre-existing Know-how of other Principal contractors or other assistant contractors. Subject to arrangements between parties (determination of the knowledge, duration, financial conditions) R & D P r o j e c t s u n d e r t h e 5 F P

11. For carrying out the project For use Principal contractors Assistant contractors Any principal contractors in the same specific programme Complementary contractors (both principal and assistant except case above) Royalty-free basis to knowledge necessary to carry-out their work in the project Royalty-free basis to all knowledge resulting from the project. Favourable conditions to knowledge generated out of the project if necessary to use knowledge resulting from the project. Subject to arrangements between parties (determination of the knowledge, duration, financial conditions) Royalty-free basis to the knowledge of their principal contractor(s), or its assistant contractors, necessary to carry-out their work in the project. Preferential conditions to the knowledge of other principal contractors or other assistant contractors. Preferential conditions to the knowledge of the principal contractor(s) or its (their) assistant contractors necessary to use the knowledge they have generated. Market conditions to the knowledge of other principal contractors or other assistant contractors. Preferential conditions and subject to legitimate interests to the knowledge necessary to carry out their work in their own projects. Not applicable to participants from third countries. Market conditions and subject to legitimate interests to the knowledge generated by the project necessary to use the knowledge generated by them. Not applicable to participants from third countries. Access rights: Knowledge R & D P r o j e c t s u n d e r t h e 5 F P

12. Refusal to grant access rights for exploitation (Details may be defined in the consortium agreement) Refusal to grant access rights for exploitation (Details may be defined in the consortium agreement) Access rights If contractor is exploiting it himself Refusal shall only be justified, however, when it is economically indispensable in view, in particular, of the market, the risks and the investment required to exploit the knowledge Refusal shall not affect the obligation, in accordance with Article 13(1), first and third subparagraphs, of Annex II, to grant access rights to a requester for the use of his own knowledge. If contractor is exploiting it himself Refusal shall only be justified, however, when it is economically indispensable in view, in particular, of the market, the risks and the investment required to exploit the knowledge Refusal shall not affect the obligation, in accordance with Article 13(1), first and third subparagraphs, of Annex II, to grant access rights to a requester for the use of his own knowledge. R T D P r o j e c t s u n d e r t h e 5 F P

13. Principle: non-exclusive basis Access rights on exclusive basis? Exceptionally: Exclusive access rights to their knowledge resulting from the project for exploitation purposes: In compliance with competition policy, and Article 81(3) Treaty Exceptionally: Exclusive access rights to their knowledge resulting from the project for exploitation purposes: In compliance with competition policy, and Article 81(3) Treaty Provided that they are economically indispensable,taking into account in particular the market, the risks involved and the investments required. They must be granted on market conditions Information of the other contractors in good time Principal contractors may indicate their commitment to exploit such knowledge. In that case, the access rights may not be granted on an exclusive basis Provided that they are economically indispensable,taking into account in particular the market, the risks involved and the investments required. They must be granted on market conditions Information of the other contractors in good time Principal contractors may indicate their commitment to exploit such knowledge. In that case, the access rights may not be granted on an exclusive basis R T D P r o j e c t s u n d e r t h e 5 F P

14. Duration of Access Rights For carrying out of the project For use Principal and Assistant Contractors (period of time) Principal contractors of the same specific programme (period of time during which the AR can be requested ) Knowledge and Pre-existing Know-how For the duration of the project 2 years after the end of their project For the duration of their project 5 years after the end of the project R T D P r o j e c t s u n d e r t h e 5 F P

15. CRAFT: The Concept SME A SME B SME C SME D Consortium agreement EUROPEAN COMMISSION RTD Performers Model X CRAFT Contract R & D P r o j e c t s u n d e r t h e 5 F P

16. Ownership of knowledge: Ownership MODEL X: Knowledge resulting from work carried out under co-operative research projects shall be the joint property of the SMEs who act as Principal Contractors in the project. A standard subcontracting agreement concluded between the SME contractors and the RTD Performers is proposed in the Model X in order to define the project and the financial aspect relating to it. The provisions of this agreement are the "minimum" required on determining the agreement between SME contractors and the RTD Performers. (May be completed in a Consortium Agreement) A standard subcontracting agreement concluded between the SME contractors and the RTD Performers is proposed in the Model X in order to define the project and the financial aspect relating to it. The provisions of this agreement are the "minimum" required on determining the agreement between SME contractors and the RTD Performers. (May be completed in a Consortium Agreement) R & D P r o j e c t s u n d e r t h e 5 F P

17. Access Rights - Craft project Principal Contractors (SME) RTD - Performers RTD - Performers Knowledge For the execution of the project For exploitation AR on royalty-free basis for knowledge necessary to carry out their work in the project (in case of no joint ownership). AR on royalty-free basis to all knowledge resulting from the project (in case of no joint ownership. AR under favourable conditions for knowledge generated out of the project if necessary to exploit knowledge resulting from the project. AR on royalty-free basis to all knowledge resulting from the project (in case of no joint ownership. AR under favourable conditions for knowledge generated out of the project if necessary to exploit knowledge resulting from the project. AR on royalty-free basis for knowledge necessary to carry out their own work in the project. Under the decision of the SME contractor notably for the purpose of subsequent research activities and under which conditions. R & D P r o j e c t s u n d e r t h e 5 F P

18. Access Rights - Craft project Pre-existing Know-how For the execution of the project For exploitation AR on royalty free basis for the pre-existing know-how necessary to carry out their own work in the project AR on royalty-free basis for the pre-existing know- how necessary to carry out their work in the project. AR under favourable conditions to the pre- existing know-how necessary to exploit the knowledge of the project. Under the decision of the SME contractor notably for the purpose of subsequent research activities and under which conditions. Principal Contractors (SME) RTD - Performers RTD - Performers R & D P r o j e c t s u n d e r t h e 5 F P

19. Duration of Access Rights For carrying out the project For use SME contractors and RTD Performers Knowledge and Pre-existing Know-how For the duration of the project 2 years after the end of the project R & D P r o j e c t s u n d e r t h e 5 F P

20. Obligation resulting from the contract Obligation to use results, otherwise to disseminate Obligation to protect the knowledge obtained Technological implementation plan 1. 2. 3. R &D P r o j e c t s u n d e r t h e 5 F P

21. Technological implementation Plan 1/2 Synthetic joint preamble: Project and results description Names of participants and owners Submitted by the coordinator

22. 2/2 Individual estimate of distribution and valorization modalities Intentions Submitted by each contractor individually Achievements Indicative schedule Planned resources Necessary documentation R & D P r o j e c t s u n d e r t h e 5 F P Technological implementation Plan

23. Reimbursement of protection costs only if... Compatibility with the competition rules Prior written agreement of the Commission Reimbursement of Protection Costs R & D P r o j e c t s u n d e r t h e 5 F P

24. Which costs can be reimbursed ? Under some specific conditions and for a limited amount, costs related to Preliminary search on patent documents Official fees to obtain a patent or a patent extension patent agent services Reimbursement of Protection Costs R & D P r o j e c t s u n d e r t h e 5 F P

25. Which costs will NOT be reimbursed ? Costs related to the creation and Translation costs Costs related to access rights commercialisation of products and services Reimbursement of Protection Costs R & D P r o j e c t s u n d e r t h e 5 F P

26. Consortium Agreements for Participants in R T D P r o j e c t s u n d e r F P 5 I P R - H e l p d e s k

27. Warning!Warning! The EC model contract is used for hundreds of projects that have important differences between them. The CA should develop and supplement the aspects that are particular to the specific project and that are not contemplated in the standard contract. The CA will need to cover all the major management issues, especially in the area of intellectual property: ownership, management and access to rights. The EC model contract is used for hundreds of projects that have important differences between them. The CA should develop and supplement the aspects that are particular to the specific project and that are not contemplated in the standard contract. The CA will need to cover all the major management issues, especially in the area of intellectual property: ownership, management and access to rights. Consortium agreement

28. Should not conflict with the EC contract. In case of conflict formal recognition of the supremacy of the EC contract Should not conflict with the EC contract. In case of conflict formal recognition of the supremacy of the EC contract Sign by the participants in a project, not by the Commission Sign by the participants in a project, not by the Commission Consortium agreement = agreement concluded between contractors in order to specify or supplement, between themselves, the provisions of the EC model contract Consortium agreement = agreement concluded between contractors in order to specify or supplement, between themselves, the provisions of the EC model contract It is not obligatory, but strongly recommended by the Commission

29. References to the CA within the RTD contract Article 1 of part A of Annex II of the model contract Article 2.2.B of Annex II of the model contract Article 8.2 of Annex II of the model contract Article 9.3 of Annex II of the model contract Article 11.6 of Annex II of the model contract Article 15 of Annex II of the model contract …... Consortium agreement

30. Consortium agreements:  Checklist for Consortium Agreements  Tutorial on Consortium Agreements Guidelines on the conformity of Consortium Agreements with the EC Model Contract Consortium agreement Available on our Website (www.ipr-helpdesk.org)

31. Sections that should be included in a CA 1. Title 2. Preamble 3. Parties/Partners 4. Definitions 5. Purpose and scope 6. Nature of the agreement Consortium agreement

32. Sections that should be included in a CA 7. Organising how the structures put into place by the agreement work 7. Organising how the structures put into place by the agreement work Coordination Project Coordination Committee Task leader 8. Ownership of results 9. Access rights Consortium agreement

33. Sections that should be included in a CA 10. Protection 12. Confidentiality 13. Responsibilities (and sanctions for failing to carry out contractual obligations/terminating contractual relations) 13. Responsibilities (and sanctions for failing to carry out contractual obligations/terminating contractual relations) 11. Exploitation and Dissemination of Results 11. Exploitation and Dissemination of Results Consortium agreement

34. Sections that should be included in a CA 14. Force majeure 16. Subcontract 17. Duration, termination 15. Assignment (transfer) 18. Settlement of disputes Consortium agreement

35. Sections that should be included in a CA 19. Language 21. Amendments 20. Applicable law Consortium agreement

36. Consortium agreement FAQs Is there a model consortium agreement? Is it obligatory for RTD contractors to sign a consortium agreement? Why should the contractors of an RTD project sign a consortium agreement? Could you please check the conformity of our consortium with the EC model contract? Consortium agreement

37. Drawn up by: EITIRT (European IT Industries Roundtable companies e.g. Alcatel, Bull, Ericsson, Nokia, etc.) TNOCG (Telecom Network Operator Contract Group) UNITE (European University Network) European Research Institutes Unified Consortium agreement

38. It is not an official document, neither supported nor recommended by the European Commission To be considered an open text to negotiation between the contractors Highly recommended to read the U-CA carefully and in depth Unified Consortium agreement Warning!Warning!

39. Access right for carrying out the Project MC favourable conditions U-CA established an automatic grant for the project research and always on royalty free basis Access rights for exploitation MC requires use and allows exclusivity and payment to contractors not generally undertaking commercial activities. U-CA requires notice in advance if these rights are to be invoked (Article 10.3.3 and 10.4.1 of the U-CA invoked “as soon as reasonably possible and preferably before submission of the Project proposal to the Commission but in any case prior to entering into the contract” !) and access rights are granted automatically subject to conditions of confidentiality. Access right for carrying out the Project MC favourable conditions U-CA established an automatic grant for the project research and always on royalty free basis Access rights for exploitation MC requires use and allows exclusivity and payment to contractors not generally undertaking commercial activities. U-CA requires notice in advance if these rights are to be invoked (Article 10.3.3 and 10.4.1 of the U-CA invoked “as soon as reasonably possible and preferably before submission of the Project proposal to the Commission but in any case prior to entering into the contract” !) and access rights are granted automatically subject to conditions of confidentiality. Example: Access Rights Unified Consortium agreement

40. Access rights for further research MC allows the possibility of use of results but a duly substantiated request and the conclusion of specific agreement is necessary. U-CA gives automatic rights for internal use and specifies how to deal on research with third parties (2 solutions, they would not give access to the method or source code only they will dispose of the object code and therefore “hermetically sealed”, otherwise in agreement with the owner of the knowledge.) Access rights on software MC does not mention anything in relation to software (open question in whether access right is given to the source code) U-CA gives access rights for carrying out the project and use including the source code form. Access rights for further research MC allows the possibility of use of results but a duly substantiated request and the conclusion of specific agreement is necessary. U-CA gives automatic rights for internal use and specifies how to deal on research with third parties (2 solutions, they would not give access to the method or source code only they will dispose of the object code and therefore “hermetically sealed”, otherwise in agreement with the owner of the knowledge.) Access rights on software MC does not mention anything in relation to software (open question in whether access right is given to the source code) U-CA gives access rights for carrying out the project and use including the source code form. Example: Access Rights Unified Consortium agreement

41. Example: Pre-existing know-how for carrying out the Project Principal contractor (who grants) Principal contractors Assistant contractors Any principal contractors in the same specific programme = Preferential conditions = Market conditions = Royalty-free Access rights EC U-CA Who gets: Unified Consortium agreement

42. Example: Knowledge for carrying out the Project Principal contractor (who grants) Principal contractors Assistant contractors Any principal contractors in the same specific programme = Preferential conditions = Market conditions = Royalty-free Access rights EC U-CA Who gets: EC U-CA Unified Consortium agreement

43. Access rights to affiliates FP4: the Affiliates were included under the concept of contractors. FP5: the Affiliates are not longer included under the concept of contractors. MC the affiliates are out, they are not included any longer under the concept of contractors. U-CA gives a definition of affiliate and concedes access rights to affiliates of contractors provided all such affiliates grant access rights to all Parties and fulfil all confidentiality and other obligations accepted by the Parties under the MC or U-CA as if such affiliates were Parties. Access rights to affiliates FP4: the Affiliates were included under the concept of contractors. FP5: the Affiliates are not longer included under the concept of contractors. MC the affiliates are out, they are not included any longer under the concept of contractors. U-CA gives a definition of affiliate and concedes access rights to affiliates of contractors provided all such affiliates grant access rights to all Parties and fulfil all confidentiality and other obligations accepted by the Parties under the MC or U-CA as if such affiliates were Parties. Example: Access Rights Unified Consortium agreement

44. Website Helpline Tel. (+352) 47 11 11 1 Fax. (+352) 47 11 11 60 info@ipr-helpdesk.org laurence.dumoulin @ipr-helpdesk.org Tel. (+352) 47 11 11 1 Fax. (+352) 47 11 11 60 info@ipr-helpdesk.org laurence.dumoulin @ipr-helpdesk.org www.cordis.lu/ipr-helpdesk IPR-Helpdesk communication tools Intellectual Property Rights (IPR) Helpdesk