The term "pre-existing know-how" is defined in Article 2 (21) of EC Regulation no 2321/2002 (Rules for Participation) and in Article II.1 (18) of the FP6 model contract. It comprises any information and intellectual property rights (IPR) that the contractor brings to the project (the so-called "background") as well as any information and IPR that may be developed in parallel to the FP6 contract (so-called "side-ground").

Thus, the term "pre-existing" does only not identify something that is previous to the project, nor does the term "know-how" only refer to know-how.

There are cases where some contractors will consider certain pre-existing know-how as "background" and others as "side-ground", due to the different dates on which they have joined the project compared with the date on which the pre-existing know-how was generated. In all cases it will be considered pre-existing know-how and governed by the relevant provisions (e.g. on access rights) of the FP6 model contract and the Rules for Participation.

Pre-existing know-how will always remain the property of the contractor who has brought it into the project, although access rights to the pre-existing know-how shall be granted to other contractors where the holder is free to grant them and they are necessary to carry out the project or for use purposes.

"Knowledge" is a term defined in Article 2 (22) of EC Regulation no 2321/2002 and in Article II.1 (14) of the FP6 model contract. It refers to the results of the project, (whatever they may be, i.e. including information), whether they can be protected or not, and any IPR that may correspond to such results.

Broadly speaking, the results of the project (knowledge) are the property of the contractor who has generated them.

However, there will be situations where it will not be easy to determine ownership, due to the fact that different contractors have worked together on the results:

- Where several contractors have jointly carried out work generating such results and their respective share of the work cannot be ascertained, they shall have joint ownership thereof. However, they shall agree among themselves on the allocation and terms of exercising the ownership of the knowledge in accordance with the FP6 model contract. This can be established, for example, in the consortium agreement or, better still, in a separate agreement.

For example, contractors should agree on:

- The assigning of share of the rights;

- Cost sharing;

- Management of the jointly owned IPR, if so:

(Obtaining and maintaining patents and other intellectual property rights in effect. Payment of fees for registration, maintaining procedures - in which country and from whose account);

- Responsibility for detecting and taking civil or criminal actions against third parties who in any way infringe the IPR;

- Licensing third parties to use the knowledge;

- Decision-making processes;

- Marketing of the knowledge;

- Possible creation of a new entity in charge of the management of the IPR, etc.

For further information, you may refer to : Joint Ownership in IPR (updated)

- Regarding cooperative (CRAFT) or collective research projects, the results will be the joint property of the SMEs or enterprise groupings, which shall agree on the allocation and terms of exercising such ownership of the knowledge in conformity with the provisions of the model contract. This can be established, for example, in the consortium agreement.

• Joint Ownership in IPR (updated)

If the improvement and / or refinement of pre-existing know-how reaches such a degree as to be considered knowledge arising from the project, then the rules relating to knowledge defined by the rules for participation and the EC contract will apply.

If the owner of the pre-existing know-how made the improvements, they will be its property. If one or several other contractors have contributed or have made such improvements, the question could be more complicated. For this reason, it is advisable to include a rule on the allocation and terms of exercising such ownership in the consortium agreement, or in a separate agreement (particularly, in these cases, joint ownership could be considered).

This is a sensitive issue that all contractors must consider carefully, but which is particularly important for universities or public research bodies, which may have specific rules regarding ownership of the results generated by employees, researchers or collaborators.

In the case of a specific piece of knowledge generated by the personnel of a contractor who, according to contractual or national legal provisions, may claim rights to such knowledge, the contractor shall take steps or reach appropriate agreements to ensure that these rights are exercised in a manner that is compatible with its obligations under the project and towards the other contractors.

The same thing applies to doctoral students and other persons who work without being employees and whose rights must also be considered.

It is therefore important to have clear ideas and commitments included in the consortium agreement, to ensure that in any case, whatever the particular rules a contractor has to respect in relation to internal staff (employees and any other person that is not an employee but works for the contractor, like doctoral students, temporary collaborators or personnel on temporary secondment, trainees or grant holders, etc.), it is in compliance with the FP6 obligations at all times.

In relation to subcontractors, the same rule should apply to them. That is to say, contractors must ensure that subcontractors' relationships also comply with both the terms of the consortium agreement and the terms of the EC contract.

Yes, it may do so. Contractors are allowed to transfer ownership of the knowledge they own. However, the owner of the knowledge to be transferred ("the assignor") shall take steps or conclude agreements to pass on to the new owner ("the assignee") all obligations relating to the access rights, protection, dissemination and use of that knowledge resulting from the EC contract. The FP6 provisions on IPR now include a system whereby:

- If the contractor is required to grant access rights, it shall give at least 60 days prior notice to the Commission and the other contractors under the project of the envisaged assignment and the name and address of the assignee.

- The Commission or other contractors under the project may object to such a transfer of ownership within 30 days of notification.

The other contractors may object to any transfer of ownership if this would adversely affect their access rights.

- As regards transfers of ownership to third parties, in particular to those not established in a Member State or an Associated State, the Commission may object if such a transfer is not in accordance with the interests of developing the competitiveness of the dynamic, knowledge-based European economy, or is inconsistent with ethical principles .

It is important to highlight that it is not possible to make an automatic transfer of the ownership of all the knowledge resulting from the project. An agreement on an automatic transfer in which the contractors' right to be duly informed of each specific transfer was waived, would not alter this situation, as the Commission would be entitled to review these transfers as well.

• In order to help contractors with these issues, the Commission has published a guidance note: "How contractors can interpret "not in accordance with the dynamic knowledge-based European economy" and "inconsistent with ethical principles" in accordance with the provisions of article II.35.1.b of the model contract for the Sixth Framework Programme".

Inventions made within FP6-funded projects are owned by the contractor or by the contractors who has/have carried out the work generating the knowledge, even if the materials were provided by another contractor.

It is the owner's responsibility to protect the invention using appropriate intellectual property rights if the invention is capable of industrial or commercial application. If several contractors have collaborated on the invention and their respective share of work cannot be ascertained, they must agree amongst themselves upon the allocation and the terms of exercising their joint ownership, including the protection by intellectual property rights. For this purpose, the joint owners can conclude a joint ownership agreement either as a part of the consortium agreement or by a separate contract.

The other contractors who do not own the invention are entitled to request access rights. They can request these rights for the purpose of carrying out their own part of the work under the project on a royalty-free basis; and they are entitled to demand access for the purpose of using their own project results, which includes the utilisation of the inventions in their own further research and development activities, as well as for the exploitation of their own results on a royalty-free basis, if not otherwise agreed before signing the EC contract.

These access rights can be requested for the duration of the project and - with regard to access for the purpose of use - for two years after the end of the project or two years after termination of the participation of the requesting contractor, whichever falls earlier, unless a longer period has been agreed upon by the contractors.

Nevertheless, the joint owners can agree to license the invention to another contractor or to a third party, or even to transfer ownership of the invention to another party. In these cases, it is important to ensure that the access rights mentioned above will be maintained for said duration and to the described extent by means of appropriate agreements between the joint owners and the benefiting (third) party.

Principally, under the Sixth Framework Programme, a participant's knowledge and its means of protection, belong to him. An exception is knowledge resulting from direct actions (carried out by the JRC) and a few indirect actions (SSA governed by the terms applicable to public procurement procedures, or those for evaluation and similar procedures), which belongs to the EC.

Participants have a duty to provide "adequate and effective" IP protection for their own knowledge. In the event that the Commission considers protection is not sufficient, it may intervene. Additional cases are where a participant does not want to seek IP rights in a particular country, or does not want to pay the renewal fee required to maintain an IP registration in force. The model contract with the Commission requires participants to inform the Commission in the above-mentioned cases. The Commission then may request any rights the participant does not want to be assigned to it giving the Commission the right to protect them in the Commission's name. The participant is entitled to object to such as assignment if "it can demonstrate that its legitimate interests will be significantly impaired".

The owners of any project research results will be the contractor(s) to whom the third party resources are made available. Nevertheless, it is advisable for specific arrangements to be made between the third party and the receiving participant(s) on Intellectual Property management issues, insofar as these are in conformity with the provisions of the EC contract and do not hamper the performance of the project. The arrangements can be set out in the consortium agreement or in separate, specific agreement(s) throughout the course of the project, providing flexibility.

Notwithstanding the basic rule that each contractor shall have ownership of the knowledge it generates (article II.32.1 of Annex II), contractors are free to decide that they will share the ownership of every piece of knowledge generated during the project.

The provisions concerning the conditions for exercising joint ownership may be included in the consortium agreement of the project. Alternatively, it may be simply stated that knowledge shall be the property of all contractors and that specific agreements shall be reached on a case-by-case basis regarding the allocation and exercise of joint ownership.

The only way to protect secret information to be brought into an FP6 project is to sign the appropriate confidentiality agreements with the contractors of the consortium. Such agreements serve to identify the confidential information that is communicated and ensure that its confidential character will be preserved.

Contractors that manage such secret information shall carefully design their contractual strategy to ensure that participating in the project will not result in the loss of such information. Confidentiality agreements may need to be signed before the beginning of the project (in order to protect information communicated during negotiations) and during the project (either as part of the consortium agreement or separately). Moreover, the obligation of confidentiality normally lasts several years (3, 5 or more) in order to ensure that confidential information will not be misused by another contractor even after the end of the project.

The results generated by FP6 projects are considered "knowledge", a term that encompasses any and all results arising from the project, as well as intellectual property rights pertaining to these results without distinction.

The results are owned by the contractors who generated them, either solely or jointly, without differentiating categories of results. In SME specific projects (cooperative research and collective research), results without differentiation belong to the SME contractors or enterprise grouping(s).

The owners carry responsibility for the protection of the results achieved by intellectual property rights and for the use of their results. Joint owners need to agree among themselves on the terms of their joint ownership (joint ownership - agreement).

The following elements are the minimum requirements for such notification. Additional information might be necessary depending on the case, and the Commission and the other contractors may ask for further explanations.

• Identification of the knowledge in question. What are the exact rights to be transferred.

• Identification of the assignee. Name, address, etc.

• Date of transfer, which is the date on which the contractor plans to conclude the transfer agreement with the assignee.

• Measures to protect the other contractors' access rights. What are the agreements that will be reached with the assignee in order to guarantee that the other contractors will enjoy their access rights as defined in the EC contract.

• Measures to ensure the use and dissemination of knowledge. What are the agreements that will be reached with the assignee in order to ensure that knowledge will be used and disseminated in accordance with the EC contract.

See also the FAQ May a contractor transfer the ownership of its knowledge?

The ownership regime is provided for in the FP6 Rules for participation which are the directly applicable law in the Member States. These rules are reflected in Annex II to the EC Model contract which is concluded for every FP6 project between the Commission on the one side and the coordinator of a consortium on the other side.

Since the coordinator of a consortium concludes the contract also on behalf of all other contractors, the ownership regime set up in Annex II of the EC model contract becomes binding for all contractors even if a consortium agreement is not concluded between them.

Art.21.2.2 and art.21.2.3 of the Rules for Participation / art.II.32.1 and art.II.32.2 of Annex II of the EC Model contract provides for ownership by the contractor who generated the results concerned, or, in case of joint generation of results, joint ownership by the contractors who jointly created the results, if their shares cannot be ascertained.

• FP6 Rules for participation

• Annex II to the EC Model contract

According to the EC contract, participants are not obliged to inform each other if they want to grant a licence to third parties. For a transfer of ownership, once the time limit to request access rights has lapsed there would be no need either to inform the other participants.

• See also the FAQ May a contractor transfer the ownership of its knowledge?

• EC model contract