The IIS University Intellectual Property Policy
2. SCOPE OF THE POLICY
3. OBJECTIVE OF POLICY
4. APPLICATION OF IP POLICY
5. IP ADMINISTRATION & PROTECTION
5.2 Intellectual Property Disclosure
5.2.1 IDF – Invention Disclosure Format
5.2.2 CAR – Copyright Application Request
5.2.3 DAR – Design Application Request
5.2.4 TAR – Trademark Application Request
5.3 Evaluation of IP
5.4 Confidentiality Agreement
5.5 Record Keeping Procedure
6. IP EXPLOITATION & COMMERCIALIASTION
6.2 First-refusal Option for Sponsors
6.3 Distribution of the Proceeds
7.1 Right to Regulate Policy
7.2 Secrecy and Confidentiality
7.3 Provisions for Penalty on Violation of Policy provisions
7.4 Dispute Resolution
This policy document is the source document for all Intellectual Property Rights (IPR) management of IIS University. IPR matters and activities will be governed by this policy. This is version 1.0 of the policy and will be in from the date of notification of the university. It may be revised from time to time by the University.
Intellectual property (IP) can be characterized as the property in the expression/innovation of the ideas/technology. It is a creation of the mind, for example, an innovation, technology, a poem, or a design. In the university’s context, IP can be considered broadly as the results from research or creative projects. It protects the rights of individuals and institutions / business organization who have transformed their ideas into property by granting rights to the owners of those properties.
The current and stated IP policy of IIS University aims to cover all conceivable aspects of intellectual property created by and for the university in the course of its educational endeavour’s, from the stage of locating and identifying them to their management, protection and commercialization.
The University acknowledges its responsibility to generate knowledge, create innovation and disseminate the information. Further, it supports and encourages efforts directed towards bringing the fruits of the university research in diverse fields of knowledge to public use and benefits.
The University is dedicated in providing an innovative environment where innovator can flourish and can be adequately rewarded for their innovative contribution. This may be possible by the recognition of intellectual property created by/through the University, protecting it and commercialize/gains by exchange of such intellectual property created. The generator of IP is inferred as an inventor/creator/researcher that holds the right of IP together with the university.
In order to establish the respective intellectual property rights and obligations of the University, its faculty, students, employees and other stakeholder in intellectual Property, the University needs to adopt a Intellectual Property Policy. Further, the Policy is meant to provide guidance for all concerned persons including academic and non-academic staff, students and outside sponsors, on the intellectual property practices and rules of the University. For this purpose, the IIS University has established this Intellectual Property Rights Policy (herein referred as “Policy”) to manage its IP.
This Policy document discusses various IP issues in order to safeguard the interest of the University stakeholders by adhering to the principles of academic freedom, allocate a fair share of the benefits to all those involved in the creation of IP, and encourage the drive to conduct research, protect IP, exchange of IP assets by transferring the technology and other innovations and enjoy the revenue obtained thereto. Thus, the policy laid down in this document is expected to provide an environment where scholarship and innovation, including expression of ideas, creative and artistic works, tangible results of research and developmental work, can flourish, leading to the development of intellectual property. It will also enable the University to make “quid pro quo” use of such developed intellectual property for the utilitarian benefit to the creators vis-a-vis public and the University.
The IP Policy shall sets forth transparent guidelines and benchmarks for ownership, protection and exchange of the developed Intellectual Property while, at the same time, upholds the core moral values of students, academic researchers and faculty, such as integrity, merit, academic freedom, and pursuit of excellence.
1.1“The University" shall mean The IIS University, Jaipur.
1.2 The "Intellectual Property " shall mean any invention, discovery, know-how, process, material, manuscript, original data, other creative or artistic work, multimedia presentation, model, machine, device, prototype, design, drawing, apparatus, instrumentation, circuit, computer program, database, biological material or specimen, chemical compound, record or laboratory notebook, whether now known or developed in the future and shall be referred herein as “IP”.
1.3 "Creator"/”Inventor”/”Researcher” shall mean the person(s) who has/have made substantial creative or authorship contributions to a work-giving rise to intellectual property rights.
1.4 "Employee" shall mean faculty, staff and any person employed full or part-time by the University in any capacity.
1.5 "Student" shall include any person enrolled for any course offered by the University in a program for an academic degree.
1.6 "Sponsor" shall mean any external party, entity or agency with which the University has an agreement for services or other compensation.
1.7 “UIPC” - University Intellectual Property Committee
1.8 “IPMC” - Intellectual Property Management Cell
2. SCOPE OF THE POLICY:
The policy will cover all university personnel including the faculty, staff or visiting faculty, researchers and scientists. The policy shall be deemed to be a part of the conditions of employment for every employee of the University and a part of the conditions of enrollment of students at the University, and shall be made available to the faculty and staff prior to appointment, to scholars and students on enrollment and to all the existing staff and students. It is also the policy of the University that all potential creators who participate in a sponsored research project and/or make use of University-supported resources shall be informed of this policy and shall accept the principles of ownership of intellectual property as stated in this policy unless an exception is approved in writing by the University. All the creator/inventor/researcher of intellectual property shall also execute appropriate documents as may be required to set forth effectively ownership and rights as specified in this policy. Further, this policy itself shall be amended as and when needed to effect changes deemed to be fit in the best interest of this university.
The types of intellectual property that may be considered by the university in its IP Policy would be patents, industrial designs, copyrights, trademarks, etc and all other forms of intellectual property as enumerated as per the “law of the land” (for the time being) below:-
1. The Patents Act, 1970, as amended by The Patents (Amendment) Act, 2005;
2. The Trade Mark Act, 1999;
3. The Copyright Act, 1957;
4. The Design Act, 2000;
5. The Geographical Indications Act of Goods (Regulation and Protection) Act, 1999;
6. The Semiconductor Integrated Circuits Layout Design Act, 2000;
7. The Protection of Plant Varieties and Farmers Rights Act, 2001;
8. The Biological Diversity Act, 2002;
3. OBJECTIVE OF THE POLICY:
The objective of the Policy is to create an enabling environment that helps in recognition and valuation of research, creativity and innovation by the faculty, scholars, supervisors and researchers in the University and simultaneously assists in translating the outcome of such creativity, research and innovation in an orderly fashion into products, processes and technology useful to the industry and commerce, which ultimately transform in to service for the widest public good. It will deal with the ownership, protection and commercialisation of intellectual property and know how created by the employees of the university. The policy will ensure that any intellectual property arising from the works of its creator/inventor/researcher/employees is managed effectively throughout its life cycle. The policy is intended to serve as set of guidelines for university faculty, staff, students and the partners/sponsors.
The objectives of this Intellectual Property Policy Document of the University are:
4. APPLICATION OF IP POLICY:
The prime objective of the policy is to promote innovation culture among University employees/students and commercialization of IP from the University to industry while generating income to support further research and education. As a condition of their employment, enrolment or participation in University programmes or their use of funds, space, staff or facilities, all employees of the University, whether appointed full or part-time, and all faculty shall be bound by this Policy, unless stated otherwise in a written agreement between such person and the University. Faculty shall be included with in the term “Employee”. This Policy shall apply to all students of the University.
Determining the ownership of IP depends on various factors as well as on an individual circumstance. It all depends as how the research is carried out in the University. There could be a single invention where many people contributed differently or the project is sponsored by external agencies.
It is therefore important to establish ownership and assignment rights for creative works produced during the course of sponsored and/or collaborative activity or based on specific provisions related to Intellectual Property assets resulting from contracts governing sponsored and/or collaborative activity.
The University where its resources are used significantly shall own all IP. In case, where the terms of such ownership and assignment rights are not expressed clearly prior to the creation any creation/innovation at the University, created singly or jointly, with or without significant contribution by the University, the Intellectual Property Rights shall lie with the University.
However, the ownership of IP shall be determined as under:
The creator of IP shall disclose all invention and related work belonging to the university as described in the Policy promptly and in timely manner. The creator shall keep all records of inventions such as notebooks, digital recordings related to the research activities and shall provide to university on demand. He/she shall also assign the IP rights to the University and shall cooperate in technology transfer activities as well as in legal actions relating to the IP as required in the Policy. The creator shall promptly disclose all potential conflicts of interest to the UIPC.
5. IP ADMINISTRATION & PROTECTION:
The Policy shall be administered by a “University Intellectual Property Committee” (UIPC) consisting of eight members appointed by the Chancellor/President of the University. The composition of the UIPC shall be as follows:
i. The Vice Chancellor
ii. Three faculty members
iv. Finance Officer of the University
v. Law Officer of the University
vi. One outside expert having experience in IPR matters and technology commercialisation
The Vice Chancellor of the University shall be the chairman of UIPC.
The UIPC shall:
i. Periodically review for the IP Policy of the University and shall issue an annual report to the Chancellor/President on its activities
ii. Review and evaluate procedures to encourage the development and commercialization of the University's Intellectual Property;
iii. Resolve the disputes between the Creator or appeals by faculty, staff, other employees, or students subject to this Policy and recommend resolution.
iv. The Chairman, UIPC shall constitute an “Intellectual Property Management Cell” (IPMC) that will look after the management and working of IPMC.
5.2 Intellectual Property Disclosure:
When the creators believe that they have generated commercializable intellectual property in university campus or by using University-supported resources, they shall report it promptly in writing along with relevant documents, data and information, to the University through the appropriate authority using the Intellectual Property Disclosure Form to be provided by the University on request, which are namely as :-
5.2.1 IDF – Invention Disclosure Format
5.2.2 CAR – Copyright Application Request
5.2.3 DAR – Design Application Request
5.2.4 TAR – Trademark Application Request
The information shall constitute a full and complete disclosure of the nature, particulars and other details of the intellectual property, identification of all persons who constitute 'the creator/inventor/researcher' of the property. Typically, the creator(s) also must submit manuscripts, sketches, drawings and all other necessary data as a part of the disclosure to evaluate IP alongwith a statement that the information provided by the creator/inventor/researcher is its original creation and does not copies/plagiarize it from any third party. Where there are different creators of components that make up a system, the individual creators and their contributions shall be identified and treated separately.
Having made the disclosure, the creator shall maintain confidentiality i.e. refrain from disclosing the details, unless authorized in writing by the University, until the University has assessed the possibility of exchange of the intellectual property.
5.3 Evaluation of IP:
The University's Intellectual Property Cell will evaluate the disclosure made by the creator on the prescribed Disclosure Form as mentioned in 5.2 above to suggest the type of IP protection required; determine whether there is a good prima facie case for believing that the intellectual property is commercializable and examine any other relevant information and applicable contractual commitments. For this purpose, the University may consult with creator(s)/inventor(s)/researcher(s) and others as necessary to investigate the type of protection and commercial potential of the IP.
5.4 Confidentiality Agreement:
The creator(s)/inventor(s)/researcher(s) involved in the development of University-owned intellectual property should maintain strict confidentiality in dealing with all relevant information relating to the intellectual property concerned.
The following guidelines should be followed when dealing with confidential information in the context of third parties such as commercial organizations:
5.5 Record Keeping Procedure:
It will be the responsibility of the Heads of Departments/Centers/Schools or persons authorized by the “UIPC” to ascertain for the purposes of this policy which facilities/resources used for the purpose of generation of intellectual property by a creator/inventor/researcher in a given Department should be construed as usual University resources and which should be construed as University-supported resources, and to maintain records of the course of development of intellectual property involving such resources.
All data and details generated by a creator in the course of creation of intellectual property should be systematically recorded in the concerned department as outlined below:
6. IP EXPLOITATION & COMMERCIALISATION
Commercialisation of the developed IP is one of the major objective the University and the goal of the University would be effectively and efficiently transferring the IP in consistent with the Policy. The efforts in this regard would be intended to benefit the University, the creator/inventor/researcher and the society at large. In order to achieve this objective, the IPMC will closely work with creators to pursue commercialisation of IP through licensing or any other suitable means and the royalty received from such licenses shall be distributed in accordance with the Policy.
The University will license at its discretion University-owned intellectual property to third parties through the grant of exclusive/non-exclusive licenses. The creator shall prepare a non-technical note on IP for distribution among prospective licensees and shall also deliver presentation on the same to them. He/she shall also participate in meetings for negotiations of licenses /agreements and other terms and conditions. All such licensing agreements or assignments, in particular where the third party is also the creator, must be carefully examined by the University to determine that no conflict of interest will occur as a result of their ratification. The University may under special circumstances retain a non-exclusive royalty-free license to use the property for teaching and further / future research. The assignment or license may be subject to additional terms and conditions, such as revenue sharing with the University or reimbursement of the cost of statutory protection, when justified by the circumstances of development of the intellectual property licensed.
6.2 First-refusal Option for Sponsors:
Unless the University decides otherwise on the merits of the case, agreements governing sponsored research shall provide that all intellectual property developed as a result of the sponsored research project shall belong to the University. When the creator discloses the generation of such intellectual property to the University, the creator/inventor/researcher or the Department will first receive refusal of the sponsorer on an option to license the resulting intellectual property on terms to be negotiated on a case-by-case basis. The sponsorer has to either accept or refuse its first-refusal option within 30 days of the date of offer of the option by the University to the sponsorer. Confidentiality agreements will continue to apply in that event. The University may at its own discretion contract with the sponsorer to allow them specific rights, whether exclusive or non-exclusive, in the intellectual property whose creation they sponsor, if in the University's opinion the granting of such rights will facilitate the exchange of the intellectual property.
In all cases the terms of licenses or assignment shall be determined through negotiation between the sponsorer(s) and the University once the sponsorer agrees to exercise his or her licensing option. Considerations that must be taken into account are:
6.3 Distribution of the Proceeds:
The proceeds from the commercialisation of IP shall be shared with creators in varying percentages depending upon the type of IP. The gross income from a particular IP owned by the University is reduced by all commercialisation expenses that are directly linked to it. The net income shall be calculated annually. The guideline for sharing such income generated from University-owned intellectual property will be decided as per the assignment deed.
Royalty accruing or any type of payment received from the exchange of University-owned intellectual property will be shared as per the assignment deed between the University and the creator of the Intellectual Property in subject.
In case there is a third party (viz., the funding agency), the University and creator's respective shares will be calculated on the net receipts after deducting the third party's share. The creator's share will continue to be paid irrespective of whether the individual continues to be in the employment of the University or not till the period of license.
7.1 Right to Regulate Policy:
The UIPC shall bear the responsibility of interpreting various aspects of the Policy contained in this document, resolving disputes concerning the interpretation and application of various provisions of this policy document and recommending changes to the policy from time to time, as may be felt necessary out of experience of implementing various provisions of the Policy in different situations. All the changes proposed to be made in the policy shall have to be ratified by the Board of Management/Director.
7.2 Secrecy and Confidentiality:
It is critically important that the Intellectual Property Policy has an unambiguous section dealing with maintaining and enforcing secrecy and confidentiality. This section would have all the conditions for maintenance of secrecy and confidentiality, especially in relation to ongoing R & D work and related laboratory note books, thesis and dissertations, presentation of technical papers in conferences, seminars, and other such events, publishing technical or journalistic articles, and in contracts involving third parties.
7.3 Provisions for Penalty on Violation of Policy Provisions:
Wherein there is a condition not to publish the work without the authority consent before filing the application for concern Intellectual Property, no step may be proceed to statutorily protect such Intellectual Property, burden of the cost in preparing documents for filing, office fees etc would be to the such innovators including student(s)/researcher(s)/creator(s)/inventor(s) and a disciplinary action may be taken by the concern department of the university.
Wherein the Intellectual Property disclosure claimed by student(s)/researcher(s)/creator(s)/inventor(s) is not the genuine and under the search or if objected by other including the right-holder(s), no step may be proceed to protect such Intellectual Property, burden of the cost in preparing documents for filing, office fees etc would be on such innovators including student(s)/researcher(s)/creator(s)/inventor(s) and a disciplinary action may be taken by the concern department of the university, except otherwise the genuine research in the same “field of invention” would be considered exempted from such disciplinary action.
7.4 Dispute Resolution:
In case of any disputes between the University and the inventors / creators / researcher regarding the implementation of the Intellectual Property Policy, such disputed issue that cannot be resolved with the assistance of the UPIC shall be referred to a tribunal of Arbitration at the instance of the University or at the request of the creator/inventor/researcher or sponsor / funding agency. The decision of this tribunal of Arbitration shall be final between the parties for any disputed issue related to intellectual property, revenue sharing or the interpretation of this policy.
The tribunal of arbitrator shall consist of one member appointed by the Vice-Chancellor, one member nominated by the opposite party(s) and an independent expert in the related field.
All agreements to be signed by the University will be subject to the jurisdiction of the courts in JAIPUR and shall be governed by appropriate laws of India.
The University reserves the right to amend this policy at any time as required.
The University may grant a waiver from the provisions of these Ordinances on a case-by-case basis. All waivers must be in writing, supported by reasons and signed by the Vice-Chancellor. Any decision to grant a waiver will take into account the best interest of the University and the facts of the particular situation. Every waiver and reasons for it shall be reported to the Executive Council/ Board of Management in its next meeting.