Foreground IP - Ownership
As a general rule the contractor will own all IP arising from work performed under the contract and has the right to apply for registered IPR (39.1).
However, to encourage both the registration of intellectual property and exploitation, certain exceptions may arise if the contractor fails to apply for registration, abandons or does not exploit the intellectual property (see below).
Foreground IP - Registration
The contractor must inform ESA as soon as possible if the results of the contract can be protected as registered IPR, stating whether it intends to do so (40.1).
If the contractor wishes to apply for IPR:
For inventions, the contractor may request a period of 12 months non-disclosure by ESA of data or information to allow for a patent to be filed (40.1). During this period ESA may continue to use the IP for its Own Requirements (40.3).
The contractor must inform ESA of any application to register IPR within 2 months of the date of filing. Details to be communicated to the Agency are contained in Clause 40.2.
If protection is granted the contractor must inform ESA of any subsequent invalidity proceedings brought by a third party against the IPR (40.2).
If the contractor does not wish to apply for IPR:
The contractor shall first inform ESA. There will be a consultation process.
If ESA finds a Third Party interested in registering the IPR then it can require the contractor to assign the rights to register to the Third Party on Favourable Terms (40.4). Otherwise, ESA may require the contractor to assign the rights to the Agency free of charge (40.5).
Foreground IP – Access by ESA, Participating States and other persons or bodies
Clause 41.1 contains 4 rules mandating conditions of access and use for foreground IPR arising out of a fully funded contract. Such IPR shall be available:
– to ESA, Participating States and any person or body under their jurisdiction on a free worldwide licence (with the right to grant sublicences) for the Agency’s Own Requirements;
– to Participating States and any person or body under their jurisdiction to use, under Favourable Conditions, for a Participating State’s Own Public Requirements;
– to academic and research institutions to use under a free licence without the right to grant sublicences for their own scientific research purposes, providing the licence is not contrary to the contractor’s legitimate commercial interests;
– to any third party at market conditions for purposes other than the Agency’s Own Requirements or a Participating State’s Own Public Requirements, providing the contractor agrees that the use is not contrary to its legitimate commercial interests.
Foreground IP – Exploitation by the contractor
The contractor shall use reasonable endeavour to exploit IPR so as to promote space research and technology (44.1).
In the 10 years following ESA’s acceptance of work arising from the contract, fees may be payable to the Agency if the contractor exploits foreground IPR outside Participating States or for non-space applications or research. The contract states if and when fees are payable (46).
Following ESA’s acceptance of work performed under a contract, the contractor must provide written reports on the exploitation of IPR within 3 and 10 years.
If the contractor does not effectively exploit, does not intend to exploit or wishes to abandon registered IPR:
The contractor shall inform ESA (44.2 & 40.4). There will be a consultation process.
If ESA finds a Third Party interested in exploiting the IPR then it can require the contractor to grant a licence to the rights to the Third Party on Favourable Terms. Otherwise, ESA may require the contractor to assign the unexploited rights to the Agency free of charge (44.2).
If the Contractor assigns the IPR to another party:
It must give ESA 4 weeks advance notice. Further, the contractor must ensure that the terms of the assignment bind the assignee to grant access to the IPR in accordance with the ‘4 Rules’ above (39.4).
Background IP - Ownership
Ownership of background IPR is not affected by any terms or conditions of ESA contracts (43.2).
Background IP – Use in ESA contracts
The contractor must inform ESA of any background IPR it intends to use at any stage during contractual negotiations or performance (43.1). The contractor warrants that use of background IPR will not infringe any IPR held by Third Parties (43.9).
ESA is to be granted free access, on an irrevocable worldwide basis, to background IPR owned by the contractor needed for the project specified in the contract but not for any other purpose (43.4).
If a third party requires the background IP to use or modify a product of the contract for some other ESA project the contractor shall grant a licence on Market Conditions unless contrary to the contractor’s legitimate commercial interests (43.4).