A. Law Applicable to the EC Contract and Intellectual Property Rights issues

1. The Sixth Framework Programme (FP6) IPR-related rules are established within the rules for participation (Regulation (EC) No 2321/2002).

Those rules are reflected within the EC Contract 1 and, in addition, the Consortium Agreement (CA) must comply with them.

The law applicable to the EC contract is always the law of Belgium or Luxembourg (depending on where the relevant Commission department is established). If a contractual clause is breached (e.g. the dissemination of knowledge affects its protection), the law of Belgium or Luxembourg shall be applicable. The contracting parties can choose the applicable law for their CA (even though they can choose, it may be advisable to select the same law applicable to their EC contract for consistency).

2. The applicable law which governs the grant procedure and the rights conferred by an intellectual property right (IPR), e.g. a patent or a utility model, may be different from the one applicable to the EC Contract or to the CA: IPRs are territorial and, therefore, they are enforceable only within the country for which they have been granted. Consequently, the national law under which an IPR has been granted establishes the rights conferred by it.

B. Patents & Utility Models

Inventions arising from work carried out under FP6 projects can be protected i.a. by means of patents or utility models (UM).

A patent is granted to protect inventions that are novel, based on an inventive step and industrially applicable.

The term of protection of a patent is generally of 20 years counted from the date the application is filed.
A UM is granted to protect 'smaller inventions' (i.e. with a lower inventiveness degree) that are novel, based on an inventive step and susceptible to industrial application.

The UM term of protection is shorter than the one established for the patent (generally 10 years).

This IPR does not exist in all EU Member States (e.g. not in Great Britain, Luxembourg or Sweden). In other States, (e.g. Belgium, Ireland, the Netherlands or Slovenia) a comparable protection right can be claimed 2.

C. International treaties and Community law

Several international agreements aim to solve the problems arising from the principle of territoriality of IPRs. The signature of these treaties results in the harmonisation of the different national IP laws (e.g. the Paris Convention for the Protection of Industrial Property or the TRIPs Agreement) or in the establishment of a uniform application or grant procedure for the contracting states (e.g. the Convention on the Grant of European Patents or the Patent Cooperation Treaty).

At the EC Law level, the protection of IPRs is achieved by the harmonisation of the laws of the Member States (e.g. the Directive 89/104/EEC to approximate the laws related to trade marks) and the creation of unitary systems of protection with Community-wide effects (e.g. the Community trade mark).

D. Intellectual Property rules under the FP6

1. Ownership of knowledge

According to the EC Contract, the results arising from the project shall be the property of the participants carrying out the work leading to that knowledge. When the knowledge is generated jointly and the respective shares of the work cannot be distinguished, it will be jointly owned (e.g.: a new pharmaceutical substance made up by a research team the members of which all belong to contracting parties, shall be jointly owned by all of the latter).

The allocation and the terms of exercising of joint ownership of the results are open to the agreement of the parties involved; who can agree on the national law applicable to their joint ownership.

2. Protection of Knowledge

The owner of results that may be industrially or commercially applied has to provide for their adequate protection by means of IPRs, i.a. a patent application.

Publication of the results is allowed provided that it does not affect the protection of that knowledge (e.g. where a consortium is considering patenting some results, a journal publication concerning the invention in question must be made after the patent application has a filing date).

3. Use and dissemination of knowledge

The participants must use the results generated by a project in research activities and by means of developing, creating, marketing and providing a product, a process or a service; e.g. a chemical formula could be used for further research developments or an innovative design could be incorporated into a new product.

Dissemination of the knowledge must be ensured by the participants if it does not adversely affect its protection or use (e.g. a training course, a lecture or a conference to analyse the nature of the outcomes of the project and its feasibility within the industry framework).

4. Access rights

Participants in a project shall grant each other access rights 3 to their pre-existing know-how 4 and their knowledge. For example, a contracting party ('licensor') is able to grant a non-exclusive patent licence of a specific production method to another contracting party ('licensee').

The granting of access rights is compulsory when the participants need them to execute their work within the project or to use their own results. However, pre-existing know-how may be excluded from this obligation by means of a written agreement before the signature of the EC contract or before a new contracting party joins the project (e.g. if a contracting party has a secret invention it wants to keep from other contracting parties).

The EC Contract establishes the economic conditions for granting access rights; however, in some cases, the conditions are flexible and require negotiation among the participants.

(For further information, please see the extended version of this document.)