Instruct-ERIC IPR Policy and Guidelines
- with relation to Instruct-ERIC activities involving academic and commercial users
Date: 16 October 2020
Author: Ray Owens
Instruct-ERIC (European Research Infrastructure Consortium) is an international infrastructure that brings together leading European structural biology centres (www.Instruct-eric.eu). Through access to the facilities of Instruct-ERIC centres, research and development awards and sponsored internships, Instruct-ERIC supports the provision of advanced structural biology techniques and expertise to the scientific (academic and industrial) communities of its members (currently Belgium, Czech Republic, Denmark, Finland, France, Italy, Israel, Latvia, Lithuania, Netherlands, Portugal, Slovakia, Spain, UK as countries, and EMBL as an intergovernmental institution).
Instruct-ERIC is an independent legal entity and may, in particular, acquire, own and dispose of intellectual property, conclude contracts and be a party to legal proceedings.
This policy sets out the approach of Instruct-ERIC to intellectual property (IP) rights (IPR) arising from Instruct-ERIC activities including but not limited to the provision of services, technology and expertise to users from academia and industry and should be read in conjunction with the Instruct-ERIC Statutes (2017/C 230/01).
Instruct-ERIC seeks to allocate IPR associated with its activities in a manner that advances the Instruct-ERIC mission and encourages innovation and future participation in Instruct-ERIC activities.
Instruct-ERIC seeks to ensure that IP is protected and exploited in a manner that recognises the contributions of individual inventors, their organisations and those of any other parties.
Instruct-ERIC disclaims all representations and warranties of any kind related to the use of any products and/or intellectual property resulting from Instruct-ERIC activities.
Terms and phrases in this policy shall have the meanings ascribed to them below.
“Academic and Research Purposes” means research, teaching or other scholarly use which is undertaken for one of the User’s principal objects of the advancement of learning by teaching and research and its dissemination by any means;
“Background IP” means any IP which is owned by any User or Centre prior to the commencement of a Research Programme or any other activity under the Instruct-ERIC project;
“Confidential Information” means all information in whatever form or mode of transmission, which is disclosed in accordance with clause 1 of the Confidential Information Policy set out below;
“Co-workers of the Research Programme” means researchers and students actively engaged in the design, execution or analysis of, and working on, a Research Programme;
“Disclosing Party” means any individual or entity participating in Instruct-ERIC in any capacity who discloses Confidential Information;
“Exercising Party” means any researcher requesting the use of Background IP from another party in order touse its Programme IP for Academic and Research Purposes;
“Funder” means any entity which provides financial support for the whole or significant part of any Research Programme;
“IP” means all copyright, database rights, rights in designs, rights in trademarks and service marks, rights in inventions, rights to apply for patents, rights in patent applications and granted patents, rights in and in relation to patents, topography rights, semi-conductor rights, rights in plant varieties; and any rights of similar kind in any jurisdiction, in all cases whether registered or not, and whether or not capable of registration; all rights in relation to know-how, techniques and results;
“Other Party” means the owner of Background IP to whom a request has been made to use their Background IP for Academic and Research Purposes;
"Project IP" means any IP developed in connection with a Research Project excluding any IP which would, if exploited commercially, infringe a User or Centre’s Background IP;
“Receiving Party” means any individual or entity participating in Instruct-ERIC in any capacity who receives Confidential Information from a Disclosing Party;
“Research Programme” means a set of related research activities with a particular long-term aim;
“Research Project” means a project to be undertaken by a User, in the course of which it will use Instruct-ERIC-Related Facilities and in relation to which a proposal to use Instruct-ERIC-Related Facilities has been approved by Instruct-ERIC;
“Users” means those applicants including the Principal Investigator and his/her team whose proposal to use Instruct-ERIC-related Facilities for a Research Project has been accepted by Instruct-ERIC;
4. Background IP
4.1 All “Background IP” used in connection with any “Research Programme” shall remain the property of the party introducing the same. No party will make any representation or do any act which may be taken to indicate that it has any right, title or interest in or to the ownership or use of any of the Background IP of other parties. Any improvements or modifications to a party’s Background IP arising from a Research Programme which are not severable from that Background IP will be deemed to form part of that party’s Background IP.
4.2 If a party (the “Exercising Party”) requires the use of Background IP belonging to another party (the “Other Party”) in order touse its “Programme IP” for “Academic and Research Purposes” the Other Party will grant the Exercising Party a royalty-free, non-exclusive licence to use any of its Background IP for such purposes, provided that the Other Party is free to license the Background IP in question.
4.3 If the Exercising Party requires the use of Background IP belonging to the Other Party in order to exploit commercially its Programme IP then, provided the Other Party is free to license the Background IP in question, the Other Party will not unreasonably refuse or delay granting a licence on reasonable commercial terms to the Exercising Party so that the Exercising Party may use such Background IP for the purpose of exploiting commercially its Programme IP.
5. Project IP
5.1 Each User will own any Project IP arising from its conduct and that of its Co-workers of the Research Project, subject to any Funders’ rights in such Programme IP.
5.2 In the event that a “User” exploits commercially any of its Project IP it will negotiate with the Centre and/or any other User a fair and reasonable royalty, based upon the value of any products or processes it exploits commercially, but only in the event that: i) those products or processes commercially exploited incorporate, embed or otherwise contain any of the Centre’s and/or other User’s Background IP or Project IP, and/or ii) the Centre and/or other User (as the case may be) can show by written record that they have made a contribution to the development of the User’s Project IP. Furthermore in determining the royalty rate, if any, the parties shall take into consideration the expenses incurred in securing intellectual property protection of the User’s Project IP and the costs of its commercial exploitation.
5.3 A User and a Centre may agree that, taking into consideration the contribution made to a Research Project by employees, students, agents or appointees of a Centre,
The Project IP should be owned jointly by the User and the Centre, upon such terms to be agreed by the User and the Centre.
5.4 These licensing provisions shall not apply to the extent that they conflict with a User's obligations under any relevant agreement with a Funder.
6. Third Party IP
6.1 Before beginning an Instruct-ERIC activity, participants in a project of any sort must disclose any knowledge of an intellectual property claim that may be infringed by the proposed work. This includes knowledge of infringed patents, trademarks and copyrights. This obligation does notrequire participants to perform searches of IP rights, including patent, trademark and copyright searches.
6.2 If an Instruct-ERIC activity, involves the use of Third Party IP, participants must ensure that they have the necessary rights to do so and that any obligation imposed by using the third party IP is consistent with the Principles in section 2.
7.1 All information relating to an Instruct-ERIC proposal and the subsequent research undertaken as Instruct-ERIC access including reports arising from the access will be considered confidential unless otherwise agreed by all parties. The Disclosing Party will ensure that this is confirmed as understood by all parties and as far as possible mark all documents as confidential.
7.2 The Receiving Party will not use Confidential Information otherwise than for the purpose for which it was disclosed.
7.3 The Receiving Party will ensure that internal distribution of Confidential Information shall take place on a strict need-to-know basis.
7.4 The Receiving Party return to the Disclosing Party on demand all Confidential Information which has been supplied to or acquired by it including all copies thereof and delete all information stored in a machine readable form. If needed for the recording of ongoing obligations, the Receiving Party may keep a copy for archival purposes only.
7.5 The Receiving Party will disclose Confidential Information only to its Co-workers who have a need to know such information for the performance of future work with respect to the Research Programme and who have been notified that such information is confidential.
7.6 The Receiving Party will apply the same degree of care with regard to the Confidential Information disclosed within the scope of the Research Programme as with its own confidential and/or proprietary information, but in no case less than reasonable care.
7.7 Term of obligations in respect of Confidential Information shall continue in force for a period not exceeding 5 years.
8.1 The provisions of Clause 7 shall not apply to disclosure or use of Confidential Information if and in so far as the Receiving Party can show that:
- The Confidential Information becomes publicly available by means other than a breach of the Receiving Party’s confidentiality obligations;
- The Disclosing Party subsequently informs the Receiving Party in writing that the Confidential Information is no longer confidential;
- The ConfidentialInformation is communicated to the Receiving Party without any obligation of confidence by a third party who is in lawful possession thereof and under no obligation of confidence to the Disclosing Party;
- The information equivalent to all or part of the Confidential Information was at any time developed by the Receiving Party completely independently of any such disclosure by the Disclosing Party; or
- The Confidential Information was already known to the Recipient prior to disclosure; or the Receiving Party is specifically required to disclose the Confidential Information pursuant to a law or order of any court of competent jurisdiction subject to any exceptions that apply under that law.
8.2 The Receiving Party will promptly advise the Disclosing Party in writing of any unauthorised disclosure, misappropriation or misuse of Confidential Information after it becomes aware of such unauthorised disclosure, misappropriation or misuse.
8.3 If the Receiving Party becomes aware that it will be required, or is likely to be required, to disclose Confidential Information in order to comply with applicable laws or regulations or with a court or administrative order, it shall, to the extent it is lawfully able to do so, prior to any such disclosure notify the Disclosing Party, and comply with the Disclosing Party’s reasonable instructions to protect the confidentiality of the Confidential Information.
9.1 Instruct-ERIC subscribes to the principle of open science for publicly funded research and expects that the results of all non-commercial Instruct-ERIC activity are made available through public events such as conferences and public data depositories and publications, taking into account the requirement to protect any IP arising from Instruct-ERIC activity.
9.2 Instruct-ERIC activity should be acknowledged and in published material by the following statement: "The authors acknowledge the support and the use of resources of Instruct-ERIC."