During a given period of employment, an employee is likely to generate various creations which can be protected by IPR.

For example, IPR rules could intervene in the following creations made by an employee in RTD projects: texts (reports, press articles, text books etc.), user manuals, web sites, computer programs, photos, databases, logos, inventions, product designs, fashion patterns, slogans, etc.

Various instruments of protection could be used in order to protect these creations. For a complete overview, see General Overview of IP Protection Tools.

These may notably consist of:

Copyright: copyright protects creations of the mind in so far as they are original and expressed in a particular form. Copyright traditionally protects literary and artistic works such as books, musical works, cinematographic works, paintings, architecture and sculpture. Copyright also protects new technological creations such as software and databases.

Patent law: patent law protects new inventions involving an inventive step, in so far as they are capable of industrial application.

Trademark law: trademark law protects signs used in commerce to distinguish the origin of goods or services.

Designs and models: design law protects the ornamental or aesthetic aspects of a product.

According to national law or the employment contract, the creation generated prior the conclusion of the EC contract may be owned by the employer or by the employee. The question of ownership is closely related to whether the employee's creation qualifies as pre-existing know-how.

• If the employer is the owner of its employee's creation, it will be deemed to be "pre-existing know-how" since the employer is an FP6 participant.
  
  Pre-existing know-how always remains the property of the participant concerned.
  
  
• If the employee owns the rights to his/her creation, it will fall outside the scope of the pre-existing know-how regime since the employee is not an FP6 participant.
  
  

It is important to avoid any misunderstandings with other FP6 project participants, who may believe that the IP rights to the creations are owned by the participant who employs the owner of the rights in question. Indeed, the fact that a creation is considered to be "pre-existing know-how" allows the other participants to claim access rights to the information insofar it is needed to carry out their contractual duties or to use their own knowledge (see Article II.35.3. a) of the EC Model Contract), provided the participant concerned is free to grant access rights to it (see Article II.35.1. c) of the EC Model Contract).

If a participant is aware of the existence of a creation made by another participant's employees and notices that this creation is not expressly excluded from the granting of access rights by the concerned participant, he may reasonably believe that it has to be considered a piece of "pre-existing know-how" to which he may claim access rights. It is for the participant concerned to clarify the situation as the EC contract provides all of the necessary tools to do so.

The only way to exclude an element of pre-existing know-how from the mandatory granting of access rights is to state this refusal before the signing of the EC contract. Please note, however, that this has to be agreed upon, in writing, by the participants, who may refuse if they can prove that their legitimate interests or the interests of the project may be significantly undermined. It is, therefore, very important that the participants in an FP6 project clearly identify the legal situation of creations made by their employees and which are not owned by them.

It the employer wants the creation to constitute pre-existing know-how, he will have to enter into an agreement with his employee to receive the rights to the creation through assignment.

The creation of a participant's employee after the conclusion of the EC contract which is generated as a result of carrying out the project will be considered "knowledge".

Note that any information acquired in parallel by the contractors between the signing of the contract and the end of the project and which is not generated as a result of carrying out the project, will be considered pre-existing know-how.

Pursuant to the EC Regulation, the knowledge (the project result and any intellectual property rights thereto) is the property of the participant who generates it.

Nevertheless, depending on the type of creation and the relevant national law, if the employee is the creator, he could be the owner of the rights. Therefore, prior to signing the EC contract, the employer should refer to the relevant national law(s) or contractual agreement(s) to determine the ownership of the employee's creation.

• If the employer owns the rights to its employee's creation, the usual knowledge regime will apply.
  
  
• If the employee owns the rights to his/her own creation, as participant, the employer must follow some specific rules.
  
  

Pursuant the EC Regulation and the EC Model Contract, "if personnel employed by a participant are entitled to claim rights to knowledge, the participant shall take steps or reach appropriate agreements to ensure that these rights can be exercised in a manner compatible with its obligations under this contract" (see Article 21.5 of the EC Regulation and Article II.32.3 of the EC Model Contract).

In other terms, the participants must ensure that contractual arrangements with their employees do not conflict with the EC contract.

This question is particularly crucial with regard to access rights.

Indeed, a participant must grant access rights to any participant in the same project if the knowledge is needed to carry out the project or to use it's the participants own knowledge, as occurs with pre-existing know-how.

This requirement can only be satisfied insofar as the participant owns the rights to its employee's creation. Indeed, an employee will not be bound by the obligation to grant access rights since he/she is not party to the EC contract.

In conclusion, in order to avoid any conflict with the EC contract and to ensure the possibility of obtaining access rights, the participant could provide for appropriate IPR assignment clauses in its employment contract, whereby the participation of an employee in a creation entitles him to legal protection. In this way, the employer would be the owner of the rights to the creation.

Employees' creations often incorporate pre-existing materials, which have been made by third parties.

For example, if an employee wants to create a website for the project, he may need pictures or photos made by third parties (pre-existing materials). The employee should seek the consent of the copyright owners of the pictures before incorporating them in the website.

In such a case, it is necessary for the employer to check whether the employee has duly obtained authorisation for this incorporation from the third parties concerned. Otherwise, even when the employer owns the rights to the works made by his employee, exploitation of the employee's creation could be paralysed by a third party complaint.

An employer wishing to exploit its employees' creations therefore has to check, as a preliminary measure,

• whether the creations incorporate third parties' works;
  
  
• if so, whether the prior consent of these third parties has been properly obtained;
  
  
• whether the authorisation obtained permits the planned use of the third parties' creations.
  
  

These preliminary steps can be greatly reduced by giving employees an adequate basic training on intellectual property law in order to enable them to identify possible problematic situations (works whose author cannot be identified, creations presented as "copyleft" 1 but whose use in fact requires the observation of very strict rules, etc.).

Within the context of the FP6, a subcontractor is a third party who carries out minor tasks not related to the core work of the project, by means of a subcontract with one or more participants.

A subcontractor will generally employ people in the performance of its tasks. In some circumstances, the subcontractor's employees could claim rights to their contribution.

The participant therefore needs to oblige subcontractors to provide adequate provisions in their employees' contracts in order to avoid any difficulties when executing the FP project.

Concerning copyrighted works, moral rights aim to protect the creator's personality which is expressed through the work. The author has a moral right which enables him/her to decide whether to have his/her name on the work.

The most important moral right, from a practical point of view, is that which enables the author to refuse any modification of the work (or its context) or its re-use.

In some countries, the creator (natural person) remains the owner of the moral rights to his/her creation despite transferring the economic rights to the employer. To avoid any disputes concerning moral right infringement, it is recommendable to reconcile the employment contract with the European Commission contract, in order to ensure that the employee cannot object to the uses required by its employer to perform the duties set out in the EC contract.