Every Horizon Europe project application must present an IPR (Intellectual Property Rights) strategy. Should the project be selected for funding, this IPR strategy is expected to be reflected in the Consortium Agreement. The strategy must reflect potential IPR issues that may result from the suggested project. Unfortunately, more often than not, applicants tend to view the IPR strategy as an unwanted necessity and do not invest the necessary time and effort required to address this highly important issue in an efficient way. Many applicants choose the ‘easy way out’ by stating in the proposal that IPR will be addressed at a later stage. In reality, they address IPR strategy when preparing the consortium agreement (typically done after the project is selected for funding) or even later on, during the project’s execution. In this article, we’ll focus on when and how to develop a truly successful IPR strategy for Horizon Europe projects.
What does IPR refer to?
Essentially, anything that was developed prior to or during the project may be considered intellectual property (IP). The list of such IPs can include, but are not limited to:
- Copyright and related rights
- Trade marks
- Trade secrets
- Methods of research and developments
- Documented data
- Description of inventions and discoveries
Once any of the above-mentioned items are created – someone either owns the rights to the specific IP or can/should own these rights.
Why is it crucial to properly prepare an IPR strategy ahead of time?
Clearly, when we refer to collaborative research projects, it is of the utmost importance to clarify who owns which IPR to begin with, and then settle any (potential) disputes that may result from the collaborative development of new Intellectual Property (IP). Properly attending to the above IPR issues during the proposal development process is important for the following reasons:
- Many Projects depend on the use and development of IP provided by some partners.
- The consortium will be well aware of the potential IPR arrangements and potential conflicts ahead of time, and there will be sufficient time to discuss and agree on any issues if needed.
- In case there are any conflicts, it is advisable to resolve them as soon as possible. Attending to conflicts only when the project is already funded may lead to unwanted IPR-related disputes and may not enable a smooth execution of the project.
- During the evaluation phase – a well prepared IPR strategy leaves a better impression on the reviewers. Not only that, it may also reflect on the overall presentation of the project.
- Last, but not least, the IPR strategy presented in the project proposal will serve as the best basis for forming the IPR chapter in the Consortium Agreement.
What is an IPR strategy?
Having established the absolute need for an IPR strategy, the next point of focus is exactly what one should consider when planning the project’s IPR strategy.
First and foremost, the project’s IPR strategy is relevant to some, if not all, of the members of the project. Therefore, this strategy must be discussed between the partners as early as possible. Our recommended method for discussion is to interview the project’s partners with the help of guiding questions that bring to the foreground all crucial points to consider. This will allow the project’s coordinator to collect all relevant information and inputs that are needed to form the project’s IPR strategy.
Below are some of the guiding questions that we recommend asking the partners :
- Baseline questions:
- Are you bringing any IPR to this project? If Yes – what does it include?
- Are you able to provide free access rights to all project’s partners during the project?
- What about future rights of use after the project is completed?
- Are there any requirements from your side with regards to the management of this IPR? If so, what are these requirements?
- Questions related to the proposed Horizon Europe project:
- Do you foresee that you will develop, or be involved in the development of new IP in the scope of the project?
- If you do, how would you be interested in protecting this IPR?
- In case of mutual development of IP with other project’s partners, what would be your requirements in regards to protection of the developed IP?
- In case of joint ownership, how do you expect it to be treated? Do you have any specific requirements?
- In case the IPR developed by you during the scope of the project is linked to existing IPR that you have (prior to the project) – what are your IPR management plans / requirements?
- Is there any 3rd party (external to the said project) that is involved in any of your IP, which is relevant to the project? If so, how do you foresee the management of the IPR under these circumstances?
- Once the project produces results eligible for IP protection:
- How will you exploit the results?
- In case you are the sole owner or a joint owner of the IPR developed in the project, will you enable free access rights to the partners once the project is through? If so, for how long?
- Are there any technology licensing considerations which are relevant to this project?
- When relevant to IPR – which confidentiality measures have been and will be put in place?
Once you have all the answers in place it will help you to clearly map the IP distribution in your project, identify which partners are providing valuable IP and on which terms, which partners are going to develop new IP during the project, and spot any potential issues or conflicts that you may need to resolve. After collecting the answers and drafting the IPR strategy, make sure to send it to all partners for approval (or further negotiations, as needed).
Legal counseling for IPR strategy
As detailed above, IPR has many legal aspects which must be considered when the strategy is formed. Since the list above is not exhaustive, and can be expanded to fit the needs of a specific project, we highly recommend seeking professional legal counseling when addressing IPR issues. A legal advisor that is expert in the field of IPR strategy will properly assess the unique needs and attributes of the project at hand, and know-how to fully address all necessary issues correctly. Failing to curate an IPR strategy that successfully handles all the crucial points will lead to many unwanted issues and require time, resources and additional funds to handle.
The article above clearly outlines the importance of the IPR strategy as part of the Horizon Europe application. Most importantly, it shines a light on the timing for drafting this strategy. That is – during the proposal preparation. Establishing a professional and well thought out IPR strategy that takes into consideration previous, current, and potential IP of all consortium members can help prevent or mitigate many potential issues.