Intellectual Property Management in European funded projects

The new European Research and Innovation Funding Programme, Horizon Europe runs from 2021 to 2027 with a budget of € 100 billion. This program provides funding in the form of grant to perform Research, Development and Innovation projects by European entities and Associated counties.

As in previous innovation framework programmes, the European Commission (EC) considers the intellectual property management as a key aspect to be considered from the proposal stage to the exploitation of final results. It increasingly seeks the development of know-how, technologies, solutions and commercial products and services, having in general, an IP component to manage, especially when it is developed jointly by several entities.

The importance of the IP management relies on the proper distribution and acknowledge of the rights of consortium members over the creations or inventions that both are a background of consortium partners (IP background) or that may appear as a result of the project execution (IP foreground), avoiding potential inconveniences that may occur while using and exploiting the technology and knowhow provided and generated during the project.

Prior to the project execution, each project partner provides IP background to the project in the form of proprietary know-how, mainly know-how generated in R&D& activities.

On the other hand, the IP Foreground is defined as the outcomes of the project that might be of exploitable interest.

When developing a project funded by the European Commission, the contractual document called Grant Agreement (GA) defines the terms and conditions regarding the Intellectual Property. The GA deals with the rights and obligations between the beneficiaries themselves, been its compliance mandatory for all the partners. The main clauses are the followings:

1. Agreement on background- The beneficiaries must identify and agree on the background for the action (‘agreement on background’). To exercise access rights, this must first be requested in writing (‘request for access’). Unless agreed otherwise, access rights do not include the right to sub-license.
2. Access rights for other beneficiaries – The beneficiaries must give each other access — on a royalty-free basis — to background needed to implement their own tasks under the action, unless the beneficiary that holds the background has — before acceding to the Agreement —:
   • informed the other beneficiaries that access to its background is subject to legal restrictions or  limits, including those imposed by the rights of third parties (including personnel), or;
   • agreed with the other beneficiaries that access would not be on a royalty-free basis.
3. Ownership by the beneficiary that generates the results – Results are owned by the beneficiary that generates them.
4. Joint ownership by several beneficiaries- The joint owners must agree on the allocation and terms of exercise of their joint ownership (‘joint ownership agreement’), to ensure compliance with their obligations under this Agreement. Unless otherwise agreed in the joint ownership agreement, each joint owner may grant non-exclusive licences to third parties to exploit jointly-owned results (without any right to sub-license) under fair and reasonable compensation. Once the results have been generated, joint owners may agree (in writing) to apply another regime  than joint ownership.
5. Obligation to protect the results- Each beneficiary must examine the possibility of protecting its results and must adequately protect them — for an appropriate period and with appropriate territorial coverage — if:
   1. the results can reasonably be expected to be commercially or industrially exploited and;
   2. protecting them is possible, reasonable and justified.
   3. When deciding on protection, the beneficiary must consider its own legitimate interests and the legitimate interests (especially commercial) of the other beneficiaries.
6. Agency ownership, to protect the results –  If a beneficiary intends not to protect its results, to stop protecting them or not seek an extension of  protection, the Agency may  assume ownership to ensure their (continued) protection.
7. Information on EU funding – Applications for protection of results (including patent applications) filed by or on behalf of a beneficiary must — unless the Agency requests or agrees otherwise or unless it is impossible —  include the following: “The project leading to this application has received funding from the European Union’s Horizon 2020  research and innovation programme under grant agreement No 101000527”.