Transfer and licensing of results in Horizon Europe projects

Beneficiaries of EU grants must make their best efforts to exploit the results generated during the project directly. Alternatively, they can have them exploited indirectly by another entity through transfer or licensing.

This obligation is laid down in Annex 5 to the  model grant agreement (MGA), where “exploitation” is defined as:

The use of results in further research and innovation activities other than those covered by the action concerned, including among other things, commercial exploitation such as developing, creating, manufacturing and marketing a product or process, creating and providing a service, or in standardisation activities.

When and how long? Results can be exploited during the project or after it finishes. The obligation to exploit the results remains up to four years after the end of the project.

For more information about The meaning of Exploitation in Horizon Europe Projects, you can read this article.

Transfer of ownership

As owner of the results, you can opt to transfer or assign ownership of results generated under the project to another party. These results are often also defined as intellectual property (IP). An IP assignment is a permanent transfer of ownership, like a sale of your IP. The party that acquires the IP (the assignee) becomes the new owner of the transferred IP assets. The main rule in Horizon Europe projects is that this does not affect the compliance with your obligations under the Grant Agreement. Therefore, you must ensure that your obligations are passed on to the new owner.

Granting licenses

As opposed to what happens in an assignment of IP, with a license there is no transfer of ownership. An IP license agreement is a contract that specifies the conditions under which the IP owner (licensor) allows a third party (licensee) to use certain IP assets within the limits set out by the contract. It is like a rental. The licensee typically pays a price, which may consist of a lump sum, royalties and/or other types of payment.

As a holder of IP, you can negotiate the licensing agreement with another entity (licensee). Again, you may grant licenses to your results, even on an exclusive basis, provided this does not affect compliance with your obligations.

Non-exclusive licenses

As a project beneficiary, you have the right to give non-exclusive licenses to other parties, wherever they are located. In principle, your access rights obligations under the GA are not affected; therefore, this is the most straight-forward scenario.

Exclusive licenses

If you opt to grant an exclusive license, you must ensure that all access rights can be exercised and that any additional exploitation obligations can be complied with.

Moreover, if you are planning to transfer your ownership or grant an exclusive license to a party that is outside the EU and that is not associated with Horizon Europe (e.g., Australia, Japan, the US), additional requirements may apply.  In such cases and provided that the call conditions state so, you will have to notify the EC beforehand. The EC may request additional information and reserves the right to object if it considers that the transfer or license is not in line with EU interests.

If you need help to decide how to exploit your results, you can contact us at hello@getpolite.eu.