As noted last month, the Horizon Europe framework programme is now fully under way, with many calls currently open to applicants – which means that our Helpline is receiving an increasing number of inquiries related to Horizon proposals. We will try to address common concerns and good practices regularly, through this blog.
This month, we would like to focus on confidentiality – a key aspect of the proposal stage which is too often overlooked.
Protecting your project idea
There is a scenario that we have unfortunately heard several times: early talks surrounding a potential proposal submission, a prospective partner leaving the negotiations table, the consortium submitting the research proposal without them. Months later, the proposal is rejected, but the consortium notices that the leaving partner submitted a proposal based on the same ideas… and that this one was successful. What can be done then, once you realise that your research ideas have been “stolen”?
As a starting point, it is important to know and remember that a research idea is as such not protectable by intellectual property rights… because intellectual property rights never protect mere ideas. So, in a situation where you would be pitching the project to parties interested in joining the proposal, be mindful of the fact that the disclosure of key ideas in that setting and without any safeguard in place can be risky. Indeed, in such cases, absolutely nothing would prevent a prospective partner from dropping out of the negotiations and submitting a competing proposal with a competing consortium, based on the same ideas. There are no IP rights involved in such situations, meaning that – contrary to a common misconception – there will be no “IP theft” here and certainly no possibility of enforcing any rights. Running away with someone else’s research concept may be unethical or unscrupulous, but it does not constitute IP theft or infringement. Ideas are free to use. In the scenario described above, it is too late to act – regrettably, there is nothing to do.
Bad news? Perhaps. The good news is that there is one way to prevent this from happening – or, at least, to get a means of legal recourse against such unwanted leaks and disclosures. Indeed, while it is virtually impossible to be sure that your ideas or information will not be leaked or re-used against you (you cannot control third parties’ actions), you can protect them contractually, which will give you a recourse for breach of contract in case leaks happen anyway.
The tool? A confidentiality agreement, most commonly referred to as an NDA (non-disclosure agreement). An NDA is typically concluded between a disclosing party (for example, the entity or scientist scouting out potential partners and describing the project’s main ideas) and a recipient (here, the partners interested in joining the proposal and assessing whether and how they could contribute). It is a contract, identifying specific information as confidential and outlining the recipient’s obligations with regard to such information: not using it for purposes other than the proposal, not disclosing it to third parties without the disclosing party’s prior consent… The failure of the recipient to comply with the terms of the agreement (e.g. failure to keep the information confidential) would result in the possibility for the disclosing party to start a legal action for breach of contract. In the absence of any possibility of invoking IP theft or infringement, setting up contractual liability mechanisms is essential: this is how to protect your information and ideas.
Of course, NDAs also act as deterrents – someone who signs an NDA will be aware of the legal consequences of breaching it. So while you can never be sure that such agreements won’t be breached, using them does reduce the likelihood of seeing your confidential information leaked or used against you in a competing proposal.
Safeguarding the novelty of future IP filings
At the same time, some intellectual property rights (patents, utility models, industrial designs) require novelty as a filing condition. Therefore, disclosing detailed information about a planned innovative research result (product or process), without any safety net in place, may put at risk its future protectability. You may not be able to claim novelty of your invention further down the road (once the project is advanced enough and you are ready to lodge an application) if its key enabling elements were disclosed at the proposal stage… even to just one person. Here again, the solution lies in safeguarding confidentiality until the necessary protection steps are taken.
Thus, requesting that an NDA be signed before starting any talks will help you ensure that future IPR filing possibilities are preserved, that your core innovative ideas remain confidential, and that the parties contacted cannot further use or disclose them, including in competing proposals, in the event that negotiations fall out.
Finally, let us highlight that:
- Disclosures do not only happen in large, official meetings or roundtables. The same risk of disclosure / early leak of confidential information exists just as much in bilateral meetings or informal settings (e.g. meeting up with a former colleague or partner to discuss their potential involvement in the project or their ideas about the feasibility of certain tasks). Here again, although it may seem counterintuitive, it is best practice to conclude an NDA before any key project information is divulged.
- The safest way to protect confidential information is not to disclose the information at all. It is recommended to always try and disclose research ideas on a need-to-know basis – even with an NDA in place, it is always safer to disclose less than too much. As mentioned above, NDAs offer a means a legal recourse, which means that they have a dissuading effect. But an additional “layer” of safety is always to disclose no more than what is really needed for the purpose of your meeting or presentation.
Once in the hands of the European Commission, your proposal and the information it contains will be treated confidentially. EC staff and evaluators are indeed bound by confidentiality obligations and all proposals are kept secret. If the proposal is successful and funding is granted, confidentiality matters will then be covered by dedicated clauses in the grant agreement and the consortium agreement.
Once the GA and CA clauses take over, you will be on the safe side with regard to the disclosures made within the consortium – simply, do not forget that the risk exists before those agreements are signed, and that the way to manage it is to set up dedicated confidentiality agreements covering you from the proposal stage to the grant signature date. At the same time, it will be necessary to keep using NDAs with any external parties joining the project on a punctual basis, such as external experts or advisory board members.
For more information about confidentiality, do not hesitate to visit our online library. It contains useful documents and tools designed to help you manage and safeguard your confidential information, including:
- A model Memorandum of Understanding to help you frame H2020 negotiations (this document can also be used for Horizon Europe proposals)
- Templates of one-way and mutual NDA
- A fact sheet on trade secrets and the management of confidential information
Good luck to all proposers!
- Publication date
- 14 October 2021
- European Innovation Council and SMEs Executive Agency