Written by Violaine Bigot and Isabelle Chéry
The consortium agreement makes it possible to organise the rights and obligations relating to the execution of a research project (A like consortium agreement, the fundamentals).
A major issue of this type of agreement is to organise access to the project's own knowledge (FAQ: what is prior, parallel and own knowledge?) and to the results of the research.
As a reminder, own knowledge is the knowledge held by a partner that is NECESSARY to carry out the project. It includes prior knowledge and parallel knowledge.
Prior knowledge is the knowledge held by a partner BEFORE entering the project and NECESSARY to carry out the project.
Parallel knowledge is the knowledge developed by a partner IN PARALLEL and INDEPENDENTLY of the project, and NECESSARY for the realisation of the project.
Access rights to own knowledge:
During the project, and only for the project’s needs, the consortium organises a right of access and use of the partners’ own knowledge. Each partner gives the others the right to use their own knowledge. This right is free of charge.
At the end of the project,
In a research context: partners give the other partners access to their own knowledge for the needs of internal research or research with third parties, and for the duration determined in the contract, often 12 to 18 months. This access is free of charge.
In an exploitation framework: in principle, the owner of the own knowledge remains free to use her own knowledge, to exploit it directly or indirectly.
However, in the framework of a consortium, partners give access to their own knowledge if IT IS NECESSARY FOR THE EXPLOITATION OF A PROJECT RESULT. This access is made under certain conditions:
During the access period, the owner of the own knowledge cannot refuse a licence request from a partner unless a restriction to the right of access to the own knowledge was mentioned in the agreement. Indeed, access to and use of own knowledge is always “subject to third parties’ rights”, which means that if the owner of the own knowledge has already granted a third party an exclusive licence, access conditions to the own knowledge will have to meet the obligations of the licence already granted and a licence, even a non-exclusive one, might not be granted for exploitation purposes. These restrictions must be made known to partners as soon as the own knowledge is added to the consortium agreement.
Here are two examples of the constraints generated by the access rights to the laboratory’s own knowledge in a partnership project under a consortium agreement:
Example 1:
The assumptions are as follows:
The laboratory’s scientific leader includes software for the project needs in a consortium agreement. Subsequently, an industrial partner A, a member of the consortium, asks him for a licence to be able to exploit a result from the project:
Case 1: The software is not licensed to a third party, a licence can then be granted to Industrial Partner A.
Case 2: The software was licensed to a third party from the beginning of the project, the Laboratory is able to refuse this request if the restriction was indicated in the consortium agreement as soon as the own knowledge was added. If this restriction was not mentioned, industrial partner A is entitled to demand to obtain a licence.
Example 2:
The assumptions are as follows:
The laboratory scientific leader includes software for project purposes in a consortium agreement with his own knowledge at the start of the collaboration. At the beginning of the project, there are no restrictions on software exploitation. It is freely available for possible exploitation by a partner. During the project, the laboratory wishes to develop this software through a maturation financing (M for Maturation) from SATT Linksium. In this case, the software must be licensed exclusively to SATT. It is therefore compulsory to add this restriction on software exploitation to the appendix dedicated to the consortium’s own knowledge. This restriction must therefore be validated by all partners.
Case 1: One of the project partners needs the software to exploit the results of the consortium agreement and refuses the restriction. The application to SATT will therefore not be accepted, as the software to be matured must be exclusively licensed to SATT.
Case 2: All project partners accept the restriction. The laboratory can apply for maturation funding and the exclusive licence on the software can be granted to SATT.
This is why it is important to inform a lawyer when the laboratory’s own knowledge is included in a project. Your legal contact: violaine.bigot@grenoble-inp.fr
- Own project results are obtained by one party only and are of that party’s sole property.
- The project common results are obtained jointly by some partners: the latter will be co-owners of these common results.
During the project, each partner undertakes to grant the other partners the right to use its own or common results for the purposes of their tasks. This access is free of charge.
At the end of the project:
- Within the research framework: a partner will be able to freely use the other partners’ own or joint results for its own research needs for a period determined in the contract (often 2 years). This access is free of charge.
- In an exploitation framework:
An example of the constraints on access rights to a laboratory’s own output from a project under a consortium agreement:
Assumptions are as follows:
1°) You have collaborated with companies in an ANR funding framework. The consortium agreement that frames your collaboration stipulates that your own or joint results from this collaboration must be accessible for 18 months from the end of the agreement by the project partners who wish to obtain a non-exclusive licence.
2°) You have obtained your own research results from the programme of this consortium agreement and you think that these results could be valorised through a maturation financing by SATT Linksium.
Do you have any questions? Please feel free to contact Violaine Bigot, legal officer at DRIVE violaine.bigot@grenoble-inp.fr in charge of consortium agreements
You can also find all the definitions in our Research & Development Primer.
The consortium agreement makes it possible to organise the rights and obligations relating to the execution of a research project (A like consortium agreement, the fundamentals).
A major issue of this type of agreement is to organise access to the project's own knowledge (FAQ: what is prior, parallel and own knowledge?) and to the results of the research.
I- Right of access to partners’ own knowledge
As a reminder, own knowledge is the knowledge held by a partner that is NECESSARY to carry out the project. It includes prior knowledge and parallel knowledge.
Prior knowledge is the knowledge held by a partner BEFORE entering the project and NECESSARY to carry out the project.
Parallel knowledge is the knowledge developed by a partner IN PARALLEL and INDEPENDENTLY of the project, and NECESSARY for the realisation of the project.
Access rights to own knowledge:
During the project, and only for the project’s needs, the consortium organises a right of access and use of the partners’ own knowledge. Each partner gives the others the right to use their own knowledge. This right is free of charge.
At the end of the project,
In a research context: partners give the other partners access to their own knowledge for the needs of internal research or research with third parties, and for the duration determined in the contract, often 12 to 18 months. This access is free of charge.
In an exploitation framework: in principle, the owner of the own knowledge remains free to use her own knowledge, to exploit it directly or indirectly.
However, in the framework of a consortium, partners give access to their own knowledge if IT IS NECESSARY FOR THE EXPLOITATION OF A PROJECT RESULT. This access is made under certain conditions:
o The partner must request it;
o This access is limited to the duration established in the contract (often from 12 to 18 months). Companies sometimes wish to have very long access periods to their own knowledge, which can be crippling if the laboratory wishes to embark on a valorisation project where exclusivity is necessary (such as a SATT project for example).
o The licence is non-exclusive and is negotiated on “normal commercial terms for the application sector in question”, i.e., for a financial compensation.
o This access is limited to the duration established in the contract (often from 12 to 18 months). Companies sometimes wish to have very long access periods to their own knowledge, which can be crippling if the laboratory wishes to embark on a valorisation project where exclusivity is necessary (such as a SATT project for example).
o The licence is non-exclusive and is negotiated on “normal commercial terms for the application sector in question”, i.e., for a financial compensation.
During the access period, the owner of the own knowledge cannot refuse a licence request from a partner unless a restriction to the right of access to the own knowledge was mentioned in the agreement. Indeed, access to and use of own knowledge is always “subject to third parties’ rights”, which means that if the owner of the own knowledge has already granted a third party an exclusive licence, access conditions to the own knowledge will have to meet the obligations of the licence already granted and a licence, even a non-exclusive one, might not be granted for exploitation purposes. These restrictions must be made known to partners as soon as the own knowledge is added to the consortium agreement.
Here are two examples of the constraints generated by the access rights to the laboratory’s own knowledge in a partnership project under a consortium agreement:
Example 1:
The assumptions are as follows:
The laboratory’s scientific leader includes software for the project needs in a consortium agreement. Subsequently, an industrial partner A, a member of the consortium, asks him for a licence to be able to exploit a result from the project:
Case 1: The software is not licensed to a third party, a licence can then be granted to Industrial Partner A.
Case 2: The software was licensed to a third party from the beginning of the project, the Laboratory is able to refuse this request if the restriction was indicated in the consortium agreement as soon as the own knowledge was added. If this restriction was not mentioned, industrial partner A is entitled to demand to obtain a licence.
Example 2:
The assumptions are as follows:
The laboratory scientific leader includes software for project purposes in a consortium agreement with his own knowledge at the start of the collaboration. At the beginning of the project, there are no restrictions on software exploitation. It is freely available for possible exploitation by a partner. During the project, the laboratory wishes to develop this software through a maturation financing (M for Maturation) from SATT Linksium. In this case, the software must be licensed exclusively to SATT. It is therefore compulsory to add this restriction on software exploitation to the appendix dedicated to the consortium’s own knowledge. This restriction must therefore be validated by all partners.
Case 1: One of the project partners needs the software to exploit the results of the consortium agreement and refuses the restriction. The application to SATT will therefore not be accepted, as the software to be matured must be exclusively licensed to SATT.
Case 2: All project partners accept the restriction. The laboratory can apply for maturation funding and the exclusive licence on the software can be granted to SATT.
This is why it is important to inform a lawyer when the laboratory’s own knowledge is included in a project. Your legal contact: violaine.bigot@grenoble-inp.fr
II- Right of access to project results
Project results can be distinguished as own or joint results:- Own project results are obtained by one party only and are of that party’s sole property.
- The project common results are obtained jointly by some partners: the latter will be co-owners of these common results.
During the project, each partner undertakes to grant the other partners the right to use its own or common results for the purposes of their tasks. This access is free of charge.
At the end of the project:
- Within the research framework: a partner will be able to freely use the other partners’ own or joint results for its own research needs for a period determined in the contract (often 2 years). This access is free of charge.
- In an exploitation framework:
o Concerning joint results exploitation, the consortium agreement sets out the terms of exploitation and provides in particular for a financial return for the co-owning parties who will not exploit or who are not meant to exploit (as is the case for the laboratory).
o Each partner holding own and/or joint results must be able to grant during the duration of the project and for a fixed period after the end of the project (generally between 12 and 18 months) a non-exclusive licence of its own and/or joint results to a partner, if the latter needs it for the exploitation of the own or joint results. Owners of own or joint results cannot therefore grant exclusive exploitation rights during this period. This licence is negotiated on “normal commercial terms for the sector of application concerned”, i.e., for a financial consideration.
o Each partner holding own and/or joint results must be able to grant during the duration of the project and for a fixed period after the end of the project (generally between 12 and 18 months) a non-exclusive licence of its own and/or joint results to a partner, if the latter needs it for the exploitation of the own or joint results. Owners of own or joint results cannot therefore grant exclusive exploitation rights during this period. This licence is negotiated on “normal commercial terms for the sector of application concerned”, i.e., for a financial consideration.
An example of the constraints on access rights to a laboratory’s own output from a project under a consortium agreement:
Assumptions are as follows:
1°) You have collaborated with companies in an ANR funding framework. The consortium agreement that frames your collaboration stipulates that your own or joint results from this collaboration must be accessible for 18 months from the end of the agreement by the project partners who wish to obtain a non-exclusive licence.
2°) You have obtained your own research results from the programme of this consortium agreement and you think that these results could be valorised through a maturation financing by SATT Linksium.
Solutions:
a) You wait until 18 months after the end of the agreement to engage in a SATT project. Indeed, in order to engage in a SATT project, the knowledge provided at the beginning of the maturation project must be exclusively licensed to SATT. Here, before the 18 months, the results you wish to mature may be requested in non-exclusive licence by the consortium partners preventing the granting of an exclusive licence to SATT Linksium.
b) You explicitly ask the consortium partners’ agreement to renounce to ask for non-exclusive licenses on the obtained results in order to free the intellectual property and to be able to commit it in exclusive license to SATT Linksium.
a) You wait until 18 months after the end of the agreement to engage in a SATT project. Indeed, in order to engage in a SATT project, the knowledge provided at the beginning of the maturation project must be exclusively licensed to SATT. Here, before the 18 months, the results you wish to mature may be requested in non-exclusive licence by the consortium partners preventing the granting of an exclusive licence to SATT Linksium.
b) You explicitly ask the consortium partners’ agreement to renounce to ask for non-exclusive licenses on the obtained results in order to free the intellectual property and to be able to commit it in exclusive license to SATT Linksium.
Do you have any questions? Please feel free to contact Violaine Bigot, legal officer at DRIVE violaine.bigot@grenoble-inp.fr in charge of consortium agreements
You can also find all the definitions in our Research & Development Primer.
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