Last updated April 2006

Generally speaking, joint research efforts may lead to the joint ownership of the results either because the entities collaborating on a research project so desire or because legislative provisions establish a joint ownership regime in certain circumstances1.

With regard to Sixth Framework Programme (FP6) projects in particular, Annex II of the EC contract establishes a default rule stating that when it is not possible to ascertain the individual contributions of several contractors working together for the generation of knowledge, the contractors in question shall have joint ownership of that knowledge (article II.32.2). Additionally, a specific ownership regime applies to cooperative (CRAFT) and collective research projects, i.e. FP6 actions that specifically concern SMEs. In collective research projects, knowledge is the joint property of the enterprise groupings (see article III.5 of the relevant Annex III), while in CRAFT, knowledge is the joint property of the SME contractors (see article III.5 of the relevant Annex III).

Consequently, two or more contractors (even all the contractors of an FP6 consortium) could become joint owners of research results. This is particularly true when the research work implies a high degree of integration of the contractors' pre-existing know-how and research efforts.

Annex II, but also standard practices, require joint owners to conclude agreements in order to define the allocation and the terms of exercising joint ownership (article II.32.2). Such agreements should deal with a number of issues related to the exploitation and utilisation of the commonly owned knowledge, as explained below.

In the absence of such an agreement, the applicable national legislation will govern the relationship between joint owners and the exercise of the joint ownership. For instance, if the joint owners of an invention protect it by a patent in Germany, Portugal and Estonia, the respective national law will define the joint ownership regime of each national patent. Joint owners are strongly advised to avoid the practical difficulties that arise when dealing with several legal systems, and they normally prefer to define the joint ownership regime by their own agreements simply because the national law provisions are unknown or incompatible with their interests.

First of all, it is important to remember that the joint ownership agreement is not the consortium agreement. It is true that most consortium agreements contain a clause on joint ownership that implements the provision of article II.32.2 mentioned above. Moreover, some consortium agreements or consortium agreement models provide a basis for future agreements on joint ownership, defining for example if and under what conditions a joint owner may individually license the commonly owned knowledge2. Nevertheless, a separate agreement is generally required and/or advised.

Broadly speaking, the basic content of a joint ownership agreement could be:

• Parties and object: Identifying the contractors - joint owners - as well as the object of the joint ownership, i.e. the FP6 project knowledge in question.
  
  
• Shares: Assigning shares of the joint ownership. The shares can be equally split among all joint owners, or proportional to their contribution in the generation of the common knowledge if they so agree.
  
  
• Management: Determine the contractor/s that will be responsible for filing and/or maintaining the eventual intellectual property rights (IPR) protecting the results. Even if decisions are taken together and protection is obtained in the name of all joint owners, one of them is usually designated to handle all administrative issues related to the protection. Filing costs are normally covered by all joint owners, unless otherwise agreed.
  
  
• Defence of the rights: Determine who will be responsible for tracking down any violation of the IPR and take all necessary measures against infringers. Although all joint owners are generally required to report any infringement and decisions on actions against it are jointly taken, one of the joint owners may be designated to conduct legal or other actions against infringers.
  
  
• Research: Determine if and under what conditions each joint owner is allowed to apply the jointly owned knowledge in research work carried out with third parties. For instance, joint owners could be required to inform the rest of the owners of such plans and sign confidentiality agreements with the third parties in order to maintain the secrecy of the information related to the common knowledge.
  
  
• Individual exploitation: Determine if and under what conditions each joint owner is allowed to exploit the common knowledge individually. For instance, if the object of the common knowledge is a patent, the joint owners may agree that each one of them has the right to manufacture and commercialise the corresponding products but also the obligation to compensate the joint owners that do not exploit the patent commercially.
  
  
• Licensing: Determine if and under what conditions each joint owner may license the common knowledge individually. Once again, this possibility may be totally restricted (i.e. licensing upon agreement of all co-owners) or subject to certain conditions, for instance the obligation to inform the rest of the joint owners, obtain their consent and/or compensate the joint owners that do not license.
  
  
• Transfer of shares: Determine if and under what conditions a joint owner may transfer its right to the joint ownership to third parties. For instance, the rest of the joint owners could reserve the right to be informed of any such plans and/or a first refusal right.
  
  
• Additional clauses: As with any other international contract, joint ownership agreements should contain provisions related to the law applicable to the agreement and competent jurisdiction to solve possible conflicts amongst them. Contractors may, however, wish to opt for alternative dispute resolution systems.