Intellectual Property (IP) management is one of the aspects that are required in F4E contracts and grants. In this section of the F4E Industry Portal you can find useful information to help you to fulfil the requirements in F4E contracts. You can also visit the Frequently Asked Questions of the IP section in case you have any doubts about IP and F4E contracts or grants.
A comprehensive guide on how to fill in the foreground declaration and an example can be found below.
Frequently Asked Questions
What is the background of a contract?
The definition of background used in F4E contracts stems from the Annex on Information and Intellectual Property of the ITER Agreement. The definition establishes that background is any information or IP which is held by the contractor or developed outside the scope of the contract, i.e. not funded by F4E, which is necessary to carry out the contract or for using the services or goods supplied under the contract. There are two main aspects to be highlighted in the definition. On the one hand IP held by the contractor may consist in IP rights on its own, i.e. patents or copyright, but also it may consist in rights acquired through a license or any other analogue agreement for using the IP rights. On the other hand, Know-How may be considered as background.
What is a good background declaration?
A good background declaration is a declaration which includes the following:
- All items which fall under the definition of background
- A proper technical description of each item
- Enough information to allow to establish the origin of each item
- Enough information to allow to establish the rights or limitations associated to the item, e.g. if the contractor was granted a license to use the item but the license permissions do not include certain technical or industrial fields
What is a good foreground declaration?
A good foreground declaration is a declaration which includes the following:
- All IP or information items which were developed under the contract and which have an IP relevance
- A proper technical description of the item
- A list of deliverable references which are related to the item
- Any link between this item and any item included in the background declaration
- Information related to any future use of the item by the contractor outside the scope of this contract
Why is it important to make the supplier declare the foreground IP?
The foreground declaration has a defined use, which is to clarify the IP situation for a contract. This is particularly relevant when the foreground of the contract will have to be used by another supplier and/or IO. By supplying a proper declaration the supplier is allowed to establish a clear relationship about how some background may be incorporated in the foreground.
How do you declare a design (type of protection)?
A design should be declared using a formulation in the title and/or the description such as “design of…” the type of protection should be at least ‘copyright’. It is necessary to point out that a design may be protected in different manners. Thus, if the design includes any invention or there is a patent application covering at least part of the design, then the relevant patent box should be checked. Additionally, if the design is confidential or it includes confidential components or parts, then ‘trade secret’ should also checked.
How do you declare a drawing (type of protection)?
A design should be declared using a formulation in the title and/or the description such as “drawing of…” The type of protection should be at least ‘copyright’. It is necessary to point out that drawings may be protected in different manners. Thus, if the design includes any invention or there is a patent or patent application covering any element in the drawing, then the relevant patent box should be checked. Additionally, if the design is confidential or it includes confidential components or parts, then ‘trade secret’ should also checked.
How do you declare a software (type of protection)?
A software should be declared using a formulation in the title and/or the description such as “software for…” The type of protection should be at least ‘copyright’. It is necessary to point out that drawings may be protected in different manners. Thus, if the software includes any invention or there is a patent or patent application covering any functionality in the software, then the relevant patent box should be checked. The description should also include the following information:
- Main functionality of the software
- Language in which it was written
- Whether the software provided includes the source code or it is in binary/object form
- Whether the software includes some open source or any other elements with a particular license that F4E needs to be aware of.
Why can an IP asset be protected both by copyright and trade secret at the same time?
Copyright is an IP right which is generated by the mere act of the creation of the work (publication, software, etc.). Whether the work is kept confidential or not is irrelevant to the copyright. For example it is common for software developing companies to keep the source code of their applications, which is protected by copyright, secret from competitors, i.e. as a trade secret.
Why can an IP asset be protected both by patent application and trade secret at the same time?
While a patent application eventually is published, this only happens 18 months after the filing date of the patent application. Thus, if the patent application is declared during this period, it has to be considered as confidential until publication.
Who decides if an item declared in the foreground declaration is confidential or not?
It depends on who is the owner of the foreground. In case F4E is the owner, then F4E gets to decide whether the item is kept confidential or not. If the contractor is the owner, then the contractor decides whether the item is kept confidential or not. It is important to note, though, that even if the contractor decides that the item is confidential, F4E keeps enough access rights to carry out its tasks for the ITER project. This is particularly important in respect of communications to ITER IO.
How do I use the declarations so it is possible to tell foreground from background?
The foreground declaration includes a field where the contractor can communicate the relationship between the foreground item and any declared background item. Thus, the foreground includes everything that was not included in the background item.
Is a “Nothing to declare” statement enough?
This depends on whether there is anything to declare or not. The effect of this statement depends on whether it was included in the background declaration or the foreground declaration. For a background declaration this statement has the effect of establishing.