N. 20, March - April 2005 
IP & RTD: Articles 

Transfer of ownership within FP6 research contracts
Maria-Francisca Brunet Company
European Commission
Directorate General for Research
 
Under the FP6 Model Contract1, any contractor that intents to transfer ownership of the knowledge it has generated under the project to another party ("assignee"), whether another contractor or a third party (including affiliates of the contractor), shall ensure that the assignee complies with the obligations of the EC contract, in particular the provisions on access rights and dissemination and the use of knowledge. In the case of joint ownership, co-owners should agree on the terms of transfer of ownership among themselves, either in the consortium agreement or in a separate agreement on IPR issues. This is particularly important for SME-specific actions (cooperative and collective research projects) where the results generated under the FP6 project jointly belong to the SME contractors and to the enterprise groupings2. Further, where it is impossible to distinguish the contributions made by each contractor3, or where joint ownership is unavoidable, it is necessary for contractors to agree on how the resulting Intellectual Property Rights will be managed.

Under the contract, the Commission and the other contractors must be given at least 60 days prior notice of a planned transfer of knowledge, including the assignee's name and address (Article II.32 of Annex II of the EC model contract). The Commission and other contractors must keep this information confidential, if it has been identified as such (Article II.9 of Annex II of the EC model contract). Confidentiality issues should, ideally, be covered in the consortium agreement or in a separate agreement.

Given the aforementioned obligations, automatic transfer (for example, from one contractor to its affiliates or to its mother company) is not possible under the current Framework Programme rules. Even if the contractors waive their right to be informed of each specific transfer (for instance, by means of the consortium agreement), the Commission must still be informed of every transfer. Otherwise, it would be unable to determine whether each proposed transfer is in accordance with the interests of developing the competitiveness of the dynamic, knowledge-based European economy or with ethical principles. The Commission studies this question on a case-by-case basis. Therefore, as a minimum in cases of transfer of ownership, the other contractors' access rights and any other relevant provisions of the EC contract must be respected, unless the other contractors agree to waive their rights. The Commission must always be notified of any transfer of knowledge.

Nevertheless, it is suggested that contractors should refrain from waiving their right to be informed of transfers because they also have the right to object if they consider that a given transfer would adversely affect their access rights. If they are not kept informed they are not in a position to determine this. Furthermore, in the case of a transfer of knowledge, the other contractors have to know who owns the results and who to contact in order to request access rights, either with a view to carrying out their project work or to using the results (i.e. to commercialise the results or to do further research).

For all the above-mentioned reasons, before transferring any piece of knowledge generated under an FP6 project, the assignor must ensure that the legal framework is respected, in particular Article II.32 of Annex II of the EC model contract.





1. Article II.32 of Annex II of the EC model contract states that:(«)

  1. "Where a contractor transfers ownership of knowledge, it shall take steps or conclude agreements to pass on to the assignee its obligations under this contract, in particular regarding the granting of access rights, dissemination and use of the knowledge. As long as the contractor is required to grant access rights, it shall give at least 60 days prior notice to the Commission and the other contractors, of the envisaged assignment and the name and address of the assignee.

  2. The Commission or the other contractors may object within 30 days of notification to such a transfer of ownership. The Commission may object to transfer of ownership to third parties, in particular to those not established in a Member State or an Associated State, 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. The other contractors may object to any transfer of ownership, if that transfer would adversely affect their access rights."


2. Article III.5 of Annex III of collective/cooperative projects states respectively that:

"Paragraphs 1 and 2 of Article II.32 are replaced by the following:(«)

  1. Knowledge arising from work carried out under the project shall be the joint property of the enterprise grouping(s)/ SME contractors.

  2. The enterprise grouping(s)/ SME contractors shall agree amongst themselves on the allocation and the terms of exercising the ownership of the knowledge."
3. Article II.32 - Ownership of knowledge sets out that:(«)

  1. "Knowledge shall be the property of the contractor carrying out the work leading to that knowledge.

  2. Where several contractors have jointly carried out work generating the knowledge and where their respective share of the work cannot be ascertained, they shall have joint ownership of such knowledge. The contractors concerned shall agree amongst themselves the allocation and terms of exercising ownership of that knowledge in accordance with the provisions of this contract."