co-financed by the european commission intellectual property rights helpdesk dr. michael bohne,...
TRANSCRIPT
co-financed by the European Commission Intellectual Property Rights Helpdesk
Dr. Michael Bohne, University of Muenster, Institute for Information, Telecommunications and Media Law (ITM)
co-financed by the European Commission Intellectual Property Rights Helpdesk
First IPR-Helpdesk:Launched in 1998
New IPR-Helpdesk:2002-2004
History
co-financed by the European Commission Intellectual Property Rights Helpdesk
RTD performers
RTD results
Results’application
IPRHelpdesk
EuropeanCommission
The IPR-Helpdesk service
Role
Website
Helpline
Activities
Monitoring and
Info-service
IPR-Helpdesk
RepresentativeOffice
Newsletter
(IPR Bulletin)Action Lines
www.ipr-helpdesk.org
Webseitewww.ipr-helpdesk.org
Intellectual Property Rights Helpdesk
Kontakt
IPR Assistance
HELP-LINE(34) 96 590 97 18
Info on the Helpdesk
Representative Office(32) 2 649 53 33
www.ipr-helpdesk.org
European Research Projects
and
Intellectual Property Law
Title
I. Introduction
II. Ownership of knowledge
1. Intellectural Property Law
2. Employees‘ Inventions/Creations Law
3. IP-Management
4. Joint ownership
III. Protection of knowledge
IV. Use and dissemination
V. Access rights
1. General principles
2. Exclusion of pre-existing know-how
Table of contents
I. Participation Rules (Regulation (EC) No 2321/2002) Direct applicable and legally binding for everyone
II. Project Contract (Model Contracts) Agreement between the Commission and the participants on
rights and duties
III. Consortium Agreement (CA) Agreement among the partners
NEW! Duty to agree on a CA, unless otherwise specified in the call
- Shall not affect perticipants’ obligations to the Community and to another arising out of the Regulation or the contract- Agreement on Intellectual Property Rights should definitely be part of the CA - Internal organisation of the consortium- Settlement of internal disputes, pertaining to the Consortium Agreement- etc.
Introduction - Hierarchy of law
I. Pre-existing know-how
Information which is held by participants prior to the conclusion of the contract (background) or acquired
in parallel with it (sideground) as well as any intellectual property rights (patents, copyrights etc.)
Always remains the property of the participant concerned
II. Knowledge Results and information generated under the
project, including any intellectual property rights (patents, copyrights etc.)
foreground
Introduction- Pre-existing know-how and knowledge
I. Principle: “sole ownership”The knowledge arising from work carried out under the project is exclusively owned by the partner who executes the work leading to that knowledge.
II. Exception: “joint ownership”
Knowledge from Cooperative and Collective RTD Projects SMEs or enterprise groupings
Knowledge from work jointly carried out by several participants/share of work cannot be ascertained every contributing partner
Ownership of knowledge - Ownership under FP6
I. National IP-Rights (e.g. national Patent Acts, Copyright Acts etc) Doctrine of territoriality
The national Intellectual Property Rights are limited to the state, where protection is applied for
Doctrine of treatment as nationals Inventions/Creations of persons who are nationals of other
states are treated the same way as those of nationals
II. International IP-Rights unitary, EU-wide IP-Rights, e.g.:
- Community Trade Mark - Community Design Patent
- Community Plant Varieties Protection - Community Patent (planned)
unitary proceedings of granting, bundle of national IP-rights, e.g.:
- World Patent (PCT) - European Patent (EPC)
Applicable law- Overview IP-Law
II. IPR-preliminary questions (doctrine of territoriality) no choice of law What kind of national or international IP-Rights have to
be considered? Who is the original owner/inventor etc? Which Employee‘s Creative/Invention Law is
applicable?
I. Contractual rights and duties concerning IPR possibilities of chosing the law Duties concerning acquisition of IP-Rights Duties concerning applying for protection of knowledge Duties concerning access rights Duties concerning use and dissemination
Applicable law - Choice of law
Inventions(technical solutions)
NoveltyInventive StepIndustrially applicable
max. 20 years
National PatentsEuropean Patent Community Patent (planned) PCT-application
National patent offices European patent officeWIPO
Duration of protection
Subject of protection
Legal requirements
Instruments
Competent authorities
Application yes
Ownership of knowledge- Overview IP-Rights I
Patents Copyright Law
Trade Marks
Design Patent
Original Works(Aesthetic Creations)
Distinctive Signs
Expression in particular form OriginalityIndividual character
Distinctive PowerGraphical representative
National Trade MarksEuropean Trade Marks Intern. Registrations
No registration
(in principle) yes (in principle) yes
Lifetime of creator + 70 years
Designs and Models (Aesthetic Creations)
NoveltyOriginalityUseful function
max. 20 years
National Design PatentsEuropean Design PatentIntern. Registration
National OfficesOHIMWIPO
10 years
National Copyrights Laws
no
National OfficesOHIMWIPO
I. Employees‘ Inventions Law Left to national legislation, great differencies Employer: either original owner or owner by implied cession or right to obtain rights over
invention/patent within a certain period of time from contract or statutory law Employee: Duty to inform, Right to a special compensation Some Member States: special rules for universities (e.g. Italy: „free“ invention, Germany: Right to
refuse, higher compensation)II. Employees‘ Creations Law
Largely left to national legislation (except software protection) Moral rights are generally not transferable economic rights transferable (great differencies)
- Employer: orginial owner (e.g. UK) or automatic transfer of rights (e.g. Germany, UK, NL), software always
- Employee: remain by the creator (e.g. France, Belgium, Portugal, Italy): need for special clauses in employment or separate contract
- Some Member States: special legal situation for universities (e.g. Germany: „free creations“)III. External Inventions/Creations (subcontractors, doctorands, students etc):
Regularly no automatic transfer to the participant Need for a contractual transfer of economic rights
Ownership of knowledge- Employees‘ Inventions/Creations Law
Project Contract/CA are insufficient!!!
Participants are obliged to „take steps or reach appropriate agreements to ensure that these rights can be excercised in a manner compatible with its obligations under this Regulation and the contract“ IP-Management:
Appointment of an „IPR-Manager“
Monitoring and documenting all required rights
What types of exploitations are foreseen? Scope of exploitation?
Which needed IP-Rights are already owned?
Acquisition of all further needed rights as wide as possible - from all employees and external persons/entities- on the ground of the concerned national or international IP-Law- In consideration of the envisaged exploitation
New types of exploitation planned: subsequent acquisition of additionally required IP-Rights?
Ownership of knowledge- IP-Management
Ownership of knowledge- Joint ownership under FP6
I. Joint Ownership
Knowledge from Cooperative and Collective RTD Projects SMEs or enterprise groupings
Knowledge from work jointly carried out by several participants/share of work cannot be ascertained every contributing partner
II. Duty to agree on allocation of ownership terms of exercising ownership in accordance with regulation and contract, particularly AR
III. Applicable Law? No unitary European Law, left to national legislation Difficult to ascertain in cross-border relationships therefore: agreement on detailed rules in CA necessary
What should be ruled?
Allocation of ownership
Responsibility for the administration of IP-Rights
Determination of the partners who apply for a protection right (e.g. one partner, jointly, by territories, markets, by a joint company etc.)
Responsibility and rights to prosecute IP-Rights-infringements (jointly by all owners, on behalf of other owners etc)
Sharing-model for accruing costs (e.g. compensation costs for inventors, filling costs, maintenance costs, administration costs, prosecution costs, etc.)
Licences for other partners, affiliates, third parties
Rights to licence (jointly by all owners, every owner on its own etc.)
Types of exploitation (commercial, non-commercial etc.)
Rights to exploit (jointly by all owners, every owner on its own etc.)
Legal consequences in case of termination of participation in the contract of an owner or change of control of a owner
Arbitration court agreement, jurisdictional clause
Ownership of knowledge- Consortium Agreement
I. Principle: Joint protection right application by all joint owners
II. Other possibilities
Protection right application by one partner/several partners which grant licences to the other partners
Foundation of an joint entity (e.g. Ltd., GmbH, EEIG etc.) and transfer of ownership to the joint entity
Ownership of knowledge- Models for allocation of joint ownership
I. Copyrights as a whole are not transferable (only licences), but patents, utility models, trademarks etc.
II. Ruled by concerned national or international law EP: in writing and signature of parties
III. Requirements under FP6
1. Duty to report the planned assignment and the assignee to the Commission and other contractors
at least 60 days in advance
2. Duty to pass on obligations under the contract to the assignee in particular concerning AR and dissemination and use
3. Right to object within 30 days of notificationCommission:
- Transfer to entities not established in Member State or Associated State
- Conflict with economic interests of the CommunityContractors affecting to their AR
Ownership of knowledge - Transfer of ownership
On what terms is the protection (filling of a patent etc.) of knowledge mandatory?
I. Capability of industrial or commercial application
II. Adequate and effective protection in regard to the legitimate interests of the contractors concerned
In principal duty to apply for protection rights
Consideration of costs/benefits and prospects/risks– Necessity of protection (e.g. copyright protection sufficient?)– Kind of protection (e.g. patent or utility model?)– Period and extent of protection (nat. patents, EP, how many states etc?)
Limits– Excessive financial demands for the concerned partners– Damage of financial and other interests of another partner
Protection of knowledge - Duty to protect
Protection of knowledge - If a contractor fails to do so
I. Possibility to agree on a right of entry in favor of other contractors in CA Duty to inform the consortium about non-applying Duty to report to the consortium about interested partners Regulations for the case that several partners are interested in a
protection right application Transfer of the right to apply in compliance with the conditions
established for the transfer of ownership (see above)
II. Right to entry of the Commission (Participation Rules/Contract) Contractor does not intend to protect its knowledge in a specific country
or a contractor waives the protection Duty to inform the Commission (45 days prior to the corresponding
deadline) Commission adopts measures to protect knowledge with the agreement
of the contractor Right to refuse only where legitimate interests of the contractor will
significantly impaired Community takes on the obligations regarding AR
Use and dissemination - Duty to use
I. Duty to use knowledge
For research purposes or For commercial exploitation purposes
II. Obligated Contractor Owner/joint owners of knowledge concerned
III. How?
Use by the owner/owners concerned
Pass on the usage to another contractor or third party• by transfer of ownership (see above) • by exclusive or non-exclusive licences (see below)
IV. Plan for using and disseminating
“Terms of use in a detailed and verifiable manner”
Use and dissemination- Models of usage/exploitation
I. Principle: Every partner uses/exploits only its own knowledge Possibly other partners having access rights to use their knowledge Access rights to knowledge and peKH of other partners, if needed
for using own knowledge
II. Other Possibilities Cross licencing
Mutual licencing by all partners and every partner exploits its own and foreign knowledge
One or several partnerstransfer of knowledge or licence to one or several partners which exploit all knowledge
Foundation of a joint exploitation company - national law (e.g. PLC, Ltd., GmbH.) or
- unitary European law (EEIG, Oct. 2004: Societas Europeae) Third Parties
Transfer of knowledge ownership or licence to third parties which exploit
Use and dissemination - Duty to disseminate
I. DisseminationPublication of knowledge by every appropriate means other than publication resulting from the formalities for protecting knowledge (e.g. patent register)
Within a period of two years after end of project Contractor fail to do: Commission allowed to disseminate
II. Obligated Contractor owner/joint owner of knowledge
III. Conditions for publications
Permitted, if it does not affect an IP-Right application- Principle of “absolute” novelty First apply, then publish!!!- No grace period in European Patent Law (unlike U.S.)
Procedure- Written notice of any planned publication to the Commission and partners (30 days prior)- If so requested: copy of data to Commission and/or partners (30
days after notice) - Right to object by Commission and partners, if publication affect
IP-Right application (within 30 days after receipt of data)- Publication interdicted until the end of consultation period
Access rights - General principles
I. Access Rights (AR) licences and rights to use
II. General principles Unitary rules for all partners and instruments (IP,
NoE, STREP etc.) Only within same project Only where contractor is free to grant them Only upon written request No sub-licencing (even for affiliates), if not so
agreed Only if needed for the concerned purpose
(execution or use) No possibility to restrict AR, but to grant additional
AR to partners or third parties Duty to inform about any limitations of potential AR Confidentiality and purpose clauses (not
mandatory, but reasonable)
For the purpose of executing own work
For the purpose of using own knowledge
Royalty-freeunless otherwise agreed before signing the contract
Fair and non-discriminatory conditions
Access rights - Overview
Pre-existing Know-howunless excluded before signing the contract
Knowledge Royalty-freeunless otherwise agreed before signing the contract
Royalty-free
Time for request subject to legitimate interests
Until end of project Until 2 years after end of project
Intellectual Property Rights Helpdesk
Contact
IPR Assistance
HELP-LINE
Info on the Helpdesk
Representative Office(32) 2 649 53 33
www.ipr-helpdesk.org