Another month, another IP post! Taking a break from our Metaverse series, we have decided to put the spotlight back on Horizon Europe; as we did before, we are basing this post on questions received by our Helpline team in the past few weeks.
This month, the topic we will delve into is one of the “Horizon basics”: ownership of results and what it means in practice. This issue can indeed be a source of misunderstandings for people / companies who are new to Horizon, and we therefore hope that this post will help clear a few misconceptions.
Starting from the beginning: in Horizon Europe, the ownership rules are laid down in the model grant agreement under article 16.2, complemented by the provisions of Annex 5 (section “Ownership of results”). Accordingly:
- Results are owned by the beneficiaries that generate them;
- Two or more beneficiaries will own results jointly if they have jointly generated them and it is not possible to establish the respective contribution of each beneficiary, or separate them for the purpose of applying for, obtaining or maintaining their protection. In case of joint ownership, the joint owners have the obligation to conclude a joint ownership agreement.
Keeping these principles in mind, let us answer some common questions and concerns:
We are a Turkish company taking part in a Horizon Europe project for the first time. Since we are not an EU company, is the EU going to own our results?
No. The ownership rules above apply to all beneficiaries regardless of their place of establishment. A beneficiary from Turkey or any other non-EU country will own the results that it generates in the project, just like its consortium partners.
Note that in principle and unless the call conditions clearly state an exception, the EU / European Commission does not own any project results.
Can the Coordinator request to own all project results due to its function?
This is also a recurring concern; the answer is no. The role of coordinator is very much an administrative one in the consortium – the coordinator does not benefit from specific legal prerogatives (e.g. representation of the other beneficiaries, right to sign IP agreements on their behalf…) and is subject to the standard rules regarding ownership: it will own what it generates in the project, just like its consortium partners.
While it is always possible to deviate from the default ownership rules and reach different arrangements (see below), these arrangements should be negotiated and agreed upon by all project partners – the coordinator cannot impose anything to this regard.
As the main researcher in the project, do I have any right to retain ownership of project results?
This will depend on your national law and/or on the agreement (employment contract or similar) that you have signed with the relevant beneficiary. In some countries (e.g. Sweden), researchers own the results of their research by law; in most countries however it is the institution that will own them.
So it is important to check the rules – legal or contractual – applicable to your own situation with your institutions’ legal office, as Horizon rules do not state anything specific on this topic. As mentioned above, the default principle is that the beneficiary (institution) owns the results – but Horizon rules are flexible and allow for other arrangements if third parties such as research staff can claim rights based on their national law. In such cases, the beneficiary will have to ensure that it retains at least minimum rights (e.g. licence with a right to sublicense) to use the results in the project and fulfil its obligations under the grant agreement.
Finally, also know that even if you do not have any automatic rights to your results (e.g. if they vest in your institution by law), it is always possible for you to try and negotiate them with your institution.
Can my subcontractors retain ownership of the work I subcontracted to them for my work package?
The same rule as above applies: in principle, the beneficiary owns the results it generates in the project. If third parties (here, subcontractors) may claim rights to the results, the beneficiary has the obligation to find a solution allowing the use of the results in the project and the fulfilment of its obligations under the grant (licence with right to sublicense, transfer of ownership). If these arrangements are not possible then the beneficiary should refrain from involving the subcontractor in question.
Note that unlike research staff (that may benefit from ownership rights by law), subcontractors usually won’t benefit from such “overriding” legal rules. In such circumstances, the easiest way to proceed is then to contractually ensure (via a clause in the subcontracting agreement) that all IP rights in the subcontracted work vest in your institution.
Is it possible to agree that all results will be owned jointly by all partners, even though not every partner will contribute to everything?
Yes. In Horizon Europe, the ownership and joint ownership rules are default ones and thus different arrangements can be reached contractually.
It is therefore absolutely possible to decide that all results will be owned by everyone jointly – you can decide this in the consortium agreement or by way of later agreements.
Is it possible to agree that all results created by the consortium are owned by only one partner?
Yes. Just as described above, it is possible to apply other ownership rules than the default ones foreseen in the grant agreement. Therefore, deciding that only one partner (e.g. exploitation partner) will own all results is absolutely possible as long as everyone agrees. This can be formalised by way of a clause in the consortium agreement, or later on via assignment agreements (transfers of ownership).
What is the ROL?
The Results Ownership List is a new requirement in Horizon Europe projects. The annotated model grant agreement describes it as “a template to be filled out in the final periodic report listing the owner of the results (be it a beneficiary or other legal entity). (…) The results ownership list provides a snapshot in time meaning
that ownership changes may happen after the submission of the final periodic report”.
Note that failure to fill in the ROL will block the submission of the final report and hence the final payment. For this reason, it is important to keep an eye on ownership issues throughout the project – in particular to keep track of ownership claims and try to solve disputes early – in order not to block the final report’s submission and the subsequent exploitation steps.
We wish you good luck in your Horizon projects – stay tuned next month for a new post in our Metaverse series!
Photo by Clem Onojeghuo on Unsplash
Details
- Publication date
- 25 April 2022