The exclusion of pre-existing
know-how
What is it all about?
The Sixth Framework Programme (FP6) rules offer contractors the
possibility of excluding specific pre-existing know-how from their obligation
to grant access rights to other contractors
(see Article II.35.1.d of Annex II).
In practice, this means that every FP6 contractor has the
possibility of reserving a specific piece of the information it holds prior to
the beginning of the project or has developed in parallel to it for himself,
and that the other contractors will not be able to ask for access rights to the
information excluded, even if they need it in order to carry out their work
under the project or to use their knowledge.
Why is it important?
Simply because all pre-existing know-how that has not been excluded
may be the subject of access rights, which you are obliged to grant to the
other contractors if they need them in order to carry out their work under the
project or to use their knowledge.
When should I exclude my pre-existing
know-how?
You may exclude pre-existing know-how:
- either before signing the EC contract,
- or before a new contractor joins the consortium.
It goes without saying that in many cases no new contractors join an
existing consortium. Therefore, you should always check your pre-existing
know-how and decide if you want to exclude a specific part of it
before signing the EC contract,
because otherwise you might not have this possibility until the end of the
project.
How should I exclude my pre-existing know-how?
In order to exclude specific pre-existing know-how, you will have to
sign an agreement with the rest of the
contractors. In fact, this means that the exclusion of pre-existing
know-how requires specific negotiations. The other contractors may withhold
their agreement if they can prove that the implementation of the project or
their legitimate rights will be negatively affected.
The exclusion can be done in your consortium agreement, or in a
separate one.
What about the positive and the negative list?
As already mentioned, the FP6 rules provide for the possibility of
explicitly excluding
specific pre-existing know how.
The idea is thus to draft a document listing all the pre-existing
know-how that participants want to exclude. The identification of the
pre-existing know-how to be excluded should be precise enough to ensure that
everyone understands what pre-existing know-how is referred to, while at the
same time it is important to avoid disclosing sensitive information relating to
this pre-existing know-how. This may be tricky, so take time to study the
identification of the pre-existing know-how to be excluded in detail.
The list where the excluded pre-existing know-how is described is
known as the negative list.
Nevertheless, some consortia only identify the pre-existing know-how
that they are planning to bring into the project, and provide for the exclusion
of all the rest.
The list where the pre-existing know-how to be brought into a
project is described is known as the positive
list.
In fact, the positive list is not fully compatible with the FP6
rules as these only permit the exclusion of specific pre-existing know-how. The result of the
positive list seems rather like the inclusion of specific pre-existing
know-how.
Therefore, we recommend that you draft a negative list, taking into
consideration all the above, and we would like to draw your attention to the
fact that any alternative will not be in full conformity with the FP6 rules,
which may of course bring about problems in the future.
Further information
The European Commission document
“Guide to Intellectual Property Rights for FP6
projects” contains a section related to this question (see
section 6.1, page 8).
In the European Commission's
Frequently Asked Questions related to the FP6, you will
find some interesting questions on the exclusion of pre-existing know-how (see
point 2, page 20).
The
IPR-Helpdesk Consortium Agreement web section contains
a number of Consortium Agreement models, where you can see some examples of
clauses providing for the exclusion of pre-existing know-how. Be aware of the
fact that some of these models opt for the positive list, and please keep in
mind the considerations set out above.
The IPR-Helpdesk document
“Identification of ‘Pre-existing know-how’: a
strategic issue under the FP6” provides a detailed analysis
of all the relevant issues.
|
