ANNEX V Guidelines on intellectual property rights for research and development test cases conducted within the feasibility study

• in the Terms of Reference for international cooperation in advanced manufacturing agreed upon by the PARTICIPANTS (term as defined hereunder), the IIPRC has been given the mandate to develop guidelines for the creation, protection and equitable dissemination of intellectual property created from such cooperation - therefore guidelines have to be established which must be followed by the PARTNERS and GROUPS (terms as defined hereunder) in their cooperation agreements for R&D test cases within the feasibility study for such cooperation;
• such guidelines must be based on those Terms of Reference, and therefore must support that contributions to and benefits from such cooperation are equitable and balanced.

• the following Guidelines are recommended to the ISC by the IIPRC in view of the R&D Test Cases to be carried out within the framework of the feasibility study on international cooperation in advanced manufacturing, subject to adaptation and elaboration in the light of the experience gained therein, with a view to establish guidelines for information sharing and intellectual property rights for future international cooperation in advanced manufacturing.

I DEFINITIONS

• 1 PARTICIPANT: Any six participants: Australia, Canada, the EC, the group of participating EFTA countries, Japan, and the USA, who have agreed to conduct a feasibility study on international cooperation in advanced manufacturing.
• 2 PROJECT: Any of the test cases, carried out by a CONSORTIUM, and agreed between the PARTICIPANTS in the feasibility study on international cooperation in advanced manufacturing.
• 3 GROUP: The set of all PARTNERS in a given PROJECT from the geographic area of one of the PARTICIPANTS, with a coordinating PARTNER responsible for communication and negotiation with other GROUPS belonging to the same CONSORTIUM.
• 4 CONSORTIUM: Three or more GROUPS who have agreed to carry out jointly a PROJECT.
• 5 AFFILIATE: Any legal entity directly or indirectly owned or controlled by, or owning or controlling, or under the same ownership or control as, any PARTNER. Common ownership or control through government does not in itself create AFFILIATE status.
  • Ownership or control shall exist through the direct or indirect ownership of more than 50% of the nominal value of the issued equity share capital, or ownership of more than 50% of the shares entitling the holders to vote for the election of directors or persons performing similar functions, or right by any other means to elect or appoint directors, or persons performing similar functions, who have a majority vote, or ownership of 50% of the shares, and the right to control management or operation of the company through contractual provisions.
  • PARTNERS will promptly notify each other of those AFFILIATES which will be involved in the PROJECT, initially and at any changes during the life of the PROJECT.
• 6 PARTNER: Any legal person and any natural person, participating as a contracting party to the cooperative agreement for the PROJECT, including its AFFILIATES.
• 7 FOREGROUND INFORMATION: All information first created or accumulated in concrete form in the course of work in a PROJECT.
• 8 FOREGROUND RIGHTS: All intellectual property rights, including but not limited to patents, copyrights and applications therefor directly resulting from a PROJECT.
• 9 BACKGROUND INFORMATION: Information owned or controlled by a PARTNER which is necessary or directly useful for the work in a PROJECT and which is not FOREGROUND INFORMATION.
• 10 BACKGROUND RIGHTS: Patents for inventions and design and utility models, and applications therefor, as soon as made public, owned or controlled by a PARTNER, a licence for which is necessary for the work in a PROJECT or for the exploitation of FOREGROUND, and which are not FOREGROUND RIGHTS.
• 11 R&D RIGHTS: The rights to use FOREGROUND INFORMATION and to be licensed under FOREGROUND RIGHTS for R&D purposes without the right to disclose these to third parties or to grant sub licences.
• 12 COMMERCIAL RIGHTS: The rights to use FOREGROUND INFORMATION and to be licensed under FOREGROUND RIGHTS for commercial exploitation (including manufacturing, having manufactured and selling), without the right to disclose FOREGROUND to third parties or to grant sub licences other than, in the normal course of business, the disclosure of FOREGROUND INFORMATION in confidence solely for the purpose of having manufactured, or the sub licensing of any software forming part thereof in object code or the rightful sale of products that inherently disclose UNDISCLOSED INFORMATION.
• 13 UNDISCLOSED INFORMATION: BACKGROUND INFORMATION or FOREGROUND INFORMATION not made generally available and which is only made available subject to written confidentiality agreements.
• 14 SUMMARY INFORMATION: A description of the objectives, status and results of a PROJECT which does not disclose UNDISCLOSED INFORMATION.

II OWNERSHIP

• 1 FOREGROUND shall be owned solely by the PARTNER or jointly by the PARTNER creating it.
• 2 The PARTNERS shall agree in the cooperation agreement the details of joint ownership of FOREGROUND, and of the rights resulting therefrom.
• 3 The ownership of BACKGROUND is not affected by the PROJECT.
• 4 PARTNERS shall ensure that ownership of FOREGROUND will be in compliance with these guidelines in situations where the PROJECT is organised with government participation or loans or grants.
• 5 The CONSORTIUM will address in its cooperation agreement the transfer of a PARTNER's FOREGROUND, particularly in the event of transfer of ownership and control of a PARTNER or assignment of FOREGROUND.

III SUMMARY INFORMATION AND PUBLIC REPORTS

• 1 SUMMARY INFORMATION shall be available to all PARTNERS in the other PROJECTS, and to the committees formed under the feasibility study on international cooperation in advanced manufacturing.
• 2 The CONSORTIUM will make available at the end of the PROJECT a public report summarising the results achieved in the PROJECT. This report will not disclose UNDISCLOSED INFORMATION.
• 3 Unless otherwise agreed, publications of results of any PROJECT shall be made with the consent of all PARTNERS involved in that PROJECT.

IV RESEARCH AND DEVELOPMENT

• 1 Each PARTNER in a PROJECT shall have royalty free R&D RIGHTS in the FOREGROUND from that PROJECT.
• 2 BACKGROUND INFORMATION shall be supplied and licences to BACKGROUND RIGHTS shall be granted within a CONSORTIUM for R&D purposes for the PROJECT, to the extent and on conditions agreed between the PARTNERS for the PROJECT concerned.

V COMMERCIAL EXPLOITATION

• 1 Each PARTNER in a PROJECT shall have royalty free, or financially equivalent, COMMERCIAL RIGHTS in the FOREGROUND of the other PARTNERS.
• 2 Notwithstanding the provisions of article IV.2, PARTNERS in a PROJECT shall grant at normal commercial conditions a licence under BACKGROUND RIGHTS to the other PARTNERS in the PROJECT if such Licence is reasonably needed for the commercial exploitation of FOREGROUND.

VI LICENSING

• 1 Subject to articles IV.1 and V.1 of these Guidelines, a PARTNER, being the sole owner of FOREGROUND, may grant licences of FOREGROUND to third parties.
• 2 Subject to articles IV.1 and V.1 of these Guidelines, a PARTNER being a joint owner of FOREGROUND, may grant licences of FOREGROUND, to third parties, in accordance with the agreements between the joint owners as per preceding article II.2.
• 3 In the case of PARTNERS in other PROJECTS which are granted licences under articles VI.1 and VI.2 above, favourable conditions may be granted.

VII PROTECTION, SAFEGUARDS

• 1 PARTNERS which own FOREGROUND INFORMATION shall take adequate steps to seek legal protection thereof by means of intellectual property rights and upon making an invention shall notify other PARTNERS in the PROJECT in a timely manner of the protection sought and provide a summary description of the invention.
  • In the event and to the extent that a PARTNER or PARTNERS which own FOREGROUND INFORMATION do not intend to seek such protection, they shall promptly notify all other PARTNERS in the PROJECT, and upon request and on mutually agreed conditions, disclose the invention and reasonably cooperate in such protection being undertaken by another PARTNER in the same PROJECT.
• 2 Any PARTNER who has received UNDISCLOSED INFORMATION shall take all reasonable measures to ensure that UNDISCLOSED INFORMATION is only used or disclosed as far as permitted under the conditions under which it was supplied. The receiving PARTNER shall take all reasonable steps to ensure that any personnel permitted to receive such information are informed of the confidentiality undertakings and held to abide by them. Using the same measures to protect UNDISCLOSED INFORMATION as a PARTNER uses to protect its information of like importance shall be deemed reasonable.
  • The obligation of confidentiality shall cease if the receiving PARTNER can show that the information: was at the time of receipt published or otherwise generally available; has after receipt by the receiving PARTNER been published or become generally available otherwise than through any act or omission on the part of the receiving PARTNER; was already in the possession of the receiving PARTNER at the time of receipt without any restrictions on disclosure; was rightfully acquired by the receiving PARTNER from others without any undertakings of confidentiality imposed on it by the disclosing party, or was developed independently by the receiving PARTNER.

VIII DISPUTES AND APPLICABLE LAW

• 1 Any disputes which may arise in connection with the interpretation and/or application of these guidelines and which cannot be solved in an amicable way shall in first instance be submitted to the International Steering Committee (ISC) for non-binding mediation.
• 2 A CONSORTIUM shall agree in its cooperation agreement how disputes will be settled.
• 3 A CONSORTIUM shall agree in its cooperation agreement by which law the agreement will be governed.

IX COOPERATION AGREEMENT

• 1 PARTNERS shall enter into one or more written agreements that govern their participation in a PROJECT consistent with these Guidelines