1. 1 WIPO – Geneva – 25-26 April 2005 European Commission – Research DG D. Dambois European Patent Attorney denis.dambois@cec.eu.int IPR disputes in international publicly-funded R&D collaborations The example of the EC RTD Framework Programmes

2. 2 Different kinds of disputes in R&D collaborations  True collaborations / contract research  With / without an external “sponsor” such as national (or EC, etc.) authorities (“with”  disputes between participants / with the sponsor)  Before / during / after the project  Regarding financial / organisational issues / IPR / exploitation of results / etc.  “Informal” disputes / arbitration / lawsuits / …

3. 3 The 6th EC Framework Programme for RTD (1/2) 2002-2006 ; about 17 G€ budget (FP7 : 80 G€ ?) Mainly collaborative research projects (typically : 3-50 contractors ; 2-5 years ; 50 % funding) Also innovation-support activities (IPR Helpdesk, Innovation Relay Centres network, ProTon network, …) Calls for proposals  evaluation by independent experts  negotiation  signature of contracts  execution Different “instruments” : integrated projects (IPs), networks of excellence (NoEs), specific targeted research projects (STREPs), cooperative and collective actions (for SMEs), etc.

4. 4 The 6th EC Framework Programme for RTD (2/2) “Model contract” : General conditions, including on IPR, exploitation of results, applicable law (BE + EC), competent jurisdiction (CFI / CJEC), … + specific “technical annex” (work plan of each project) + consortium agreement (required for large projects) Assistance to users : Project officers (assistance / decisions) Guidelines (financial issues, IPR, innovation, …) IPR-Helpdesk (IPR issues) National Contact Points (general info) …

5. 5 IPR in FP6 – General principles Objective : promote the execution of the project and the dissemination/use of their results Compromise between uniformity / flexibility  what to make mandatory in the rules / leave for the contractors to negotiate The IPR provisions are intended to be “self- sustainable”, i.e. a project should be able to run effectively without (or with a minimal number of) additional arrangements between the contractors (ex. of a possible change in FP7 : inclusion of a default joint ownership regime)

6. 6 IPR in FP6 – Basic concepts  Knowledge : generated within the project  Pre-exisiting know-how : includes information generated both before and in parallel with the project (“background” ; “sideground”)  Two main issues to be addressed : –Ownership of the knowledge –Access rights between the contractors (2 * 2 categories) : To knowledge / pre-existing know-how For carrying out the project / for use purposes (use = exploitation + further research) Note : the contract defines only minimal obligatory access rights ; broader access rights may be freely agreed by the contractors

7. 7 The EC Framework Programmes (IPR issues in) (1/3)  Typical (IPR) problems before a FP6 project : –Development of the consortium agreement (CA) suitable to all participants (academic and industrial) – including IPR issues –A few IPR choices have to be made (if at all) before signing the contract (e.g. : exclusion of pre-existing know-how from the obligation to grant access rights to it to other members of the consortium) –Last-minute problems in some organisations (esp. PROs) when the CA, negotiated by researchers, is reviewed by lawyers before signature

8. 8 The EC Framework Programmes (IPR issues in) (2/3)  Typical (IPR) problems during a FP6 project : –Authorising a publication (>< IPR protection first, or confidentiality) –Whether or not to protect results, and how –Conflict with the obligation to grant access rights to other contractors (if they need them), in the event a contractor wishes to grant an exclusive license to a third party –Transfers of ownership and granting of access rights to affiliates of industrial companies (may be necessary to exploit results in a large multinational group)

9. 9 The EC Framework Programmes (IPR issues in) (2/3)  Typical (IPR) problems after a FP6 project : –Residual obligations (during a limited period) : granting of access rights to other (ex-) contractors for exploitation purposes, confidentiality, etc. –In few cases : problems with the name/acronym/logo of the project, if relevant for exploitation purposes  Assistance services : –IPR-Helpdesk (first-line legal assistance, free-of-charge) –IPR guidelines (interpretation of contractual IPR provisions) –Project officers (assistance / decisions in some cases)

10. 10 Summary of typical pitfalls and suggestions for ways out  Clarity of legal provisions (model contract, guidelines, …)  assistance services, guidelines, etc.  Low level of skills (contractual/IPR/…) of some participants (esp. academic – frequent focus on scientific aspects only)  need for more awareness/training  “Relational” problems, in particular between PROs and industry  need for alignment of interests, building trust, understanding each other’s values and missions (example : European Handbook on responsible partnering developed by EIRMA/EUA/EARTO/ProTon)

11. 11 Thank you ! For more information : Legal helpline of DG Research : RTD-A03-questions-juridiques@cec.eu.int FP6 model contract webpages : http://europa.eu.int/comm/research/fp6/working-groups/model- contract/index_en.html