Draft Model Guidelines on implementation of IPR policy for Academic Institutions

The Cell for IPR Promotion and Management, under the Department for Promotion of Industry and Internal Trade (DIPP) floated a 23 page model guidelines booklet on the implementation of IPR policies in Academic Institutions, in early September, 2019. In a bout to foster creativity and innovation, the CIPAM has taken this task up to themselves to add structure and a framework to the interaction between academia and academic institutions in relation to creation of Intellectual Property. For an easy understanding, we have highlighted the crux of these draft model guidelines below.

• Scope of Guidelines

1. The guidelines shall apply to all IP, owned and associated with the institution.
2. These guidelines shall apply to any/all individuals/entities that share a legal relationship with the institution.
3. These guidelines shall not apply where there is an explicit agreement to the contrary or under an earlier contradictory agreement.

• Ownership of IP (via 2 tier classification)

IP generated from research conducted by utilizing resources of the Academic Institution

1. Patents

All inventions made by “researcher” by utilizing the resources of the institution in furtherance of his/her responsibilities, shall vest with the academic institution unless the institution finds that the said invention did not utilize resources/ time of the institution being unrelated to the responsibilities of the individual.

2. Copyright

The ownership rights in any literary, artistic or other works commissioned by the institution shall be vested in the academic institution but moral rights for the same shall be vested in the author, where applicable. However, for any other scholarly or academic works generated by the researcher; even if created through the use of the institution’s resources; the ownership rights shall vest in the author.

3. Trademark

The ownership rights in all trademarks shall vest in the institution who may also formulate guidelines for the usage of the same. Where the institution finds that the said trademarks were a product of an individual’s creation unrelated to his/her responsibilities, in which case the ownership rights shall be vested in the said individual.

4. Industrial Designs

All industrial designs made by any researcher by utilizing the facilities of the institution shall vest in the institution unless the institution finds the said designs were made otherwise; being unrelated to the responsibilities of the individual; in which case, the rights shall be vested in the individual.

5. Semi-conductor and Plant variety

The ownership rights over integrated circuits and plant varieties made by the researcher by utilizing the facilities of the institution shall vest in the institution unless the institution finds otherwise; being unrelated to the individual’s responsibilities; in which case, the rights shall be vested in the said individual.

IP generated from research conducted in collaboration with external partners

The ownership between an institution and an external partner shall be determined as per the agreement between the parties and in the absence of a provision to the contrary, the Institution shall have perpetual, royalty-free license to use IP for education and research.  In case of absence of the agreement, ownership shall be shared as elucidated in the “Licensing and Revenue Sharing” section of these guidelines.

• Commercialization and Benefit Sharing

Types of IP licensing and assignment

It is encouraged that the institution incline towards licensing as a form of IP transfer to maximize commercialization while still retaining IP. Some types of licensing that may be used include but not limited to

1. Exclusive licensing (To be avoided to the extent possible)
2. Non-exclusive licensing
3. Sub-licensing (Permissions and restrictions to be expressly indicated in the agreement)

Encouraging Entrepreneurship and Start-ups

1. In order to promote entrepreneurs and start-ups, the institution may reassign the ownership to individuals who wish to control use of the said IP with minimal support from the institution, provided the required fees for licensing and patenting and royalties including equity or others received by the individual in relation to the said IP is duly paid to the institution.
2. Where the institution wishes to exploit the IP created by the researcher, it may and the same can be reassigned to the researcher by express agreement after a holding period.
3. A start-up/venture is exempted from paying any fee upfront or for a certain period to the institution as encouragement.

• Licensing Agreements and Revenue Sharing

Research outputs generated as a result of the utilization of resources of the Academic Institution

1. In case of commercial exploitation of the IP, the institution, as per the advice of the IP cell, may enter into an agreement of revenue sharing and details of the same shall depend on the nature of the IP and the commercialization. The institution may adopt any model it deems fit. A suggestive ratio is listed below:

Revenue sharing ratio- 60% with researcher; 40% with the institution

Division of royalty/technology transfer amount:

Net earnings	Inventor’s share	Institution’s share*	Service account**
1st amount Q	65%	25%	10%
2nd amount Q	45%	45%	10%
3rd amount Q	25%	65%	10%

*Where, in case of IIT Kanpur, Q is fixed at 100 lakhs.

** Money used for promotion and to upgrade IP and in case of excess, the amount shall be dedicated to commercialization and protection of the IP

2. Where the initial filing costs were borne by the researcher alone, he/she may deduct the said amount from any income accruing from the commercial exploitation of the IP and the remaining income is liable to be shared with the institution.

3. The researcher’s share shall be paid irrespective of his continuance at the institution.

4. In the case of multiple researchers, they shall unanimously agree upon the percentage of IP-earnings proportional to their contribution and the same can be revised upon approval from the institution.

5. Of the IP-related revenues earned by the institution, 50% shall be allocated to the IP management fund which shall be utilized for the commercialization, maintenance, protection and obtainment of IP. Of the 50%, 10% shall be allocated for administrative charges and 40% shall be allocated to the concerned department to use as they deem necessary.

6. Where the copyright in the IP vests with the author, no consideration shall accrue to the institution for the utilization of such IP under fair use. The same shall apply vice versa.

Research outputs generated in collaboration with external partners

1. Revenue sharing between the institution and external partners may be based on the agreement signed by both parties.
2. Where steps are not being taken to commercialize the IP owned by the institution by the external partner, the institution; by due process; may revoke any such agreement. This clause is to be added to agreements relating to the commercialization of technologies.

• Limitation of Liability

The institution shall be indemnified and protected against all liability arising from commercialization and development of IP, the above must be specified in all agreements.

• Sharing of costs in IP protection

1. The costs of protecting the IP are to be borne by all parties involved. Where the institution refuses to pay such costs, the inventor shall be reimbursed for the costs incurred in such protections made in applications in the name of the institution.
2. Where ownership is shared with external partners, costs may be shared per the signed agreement.
3. Costs incurred in the transfer of the IP like licensing, assignment may be borne by the person/entity acquiring the IP.

• Waiver of IP rights by the Academic Institution

1. Subject to any agreements, the institution may waive rights to the IP within a period as fixed by the institution upon sufficient disclosure by the researcher to the institution.
2. Where the institution forgoes its rights to the IP, the same must be communicated sufficiently to the researcher within the stipulated time. Without prejudice to the above, the institution retains the right to consideration-free fair use of the IP.

• Use of Academic Institutions’ IP Resources

Conditions for use of IP (including IP in existence and trademark) by third parties is as under:

1. It must be used only in public interest.
2. Must be used responsibly conforming to environmental safety and social norms without liability on the institution in case of misuse.

• Dealing with IP owned by third parties

Use of technology (Patents & Designs)

Due care in avoiding infringement of third party IPR must be ensured and avoiding overstepping of restrictions in agreements.

Use of Copyrighted materials

Fair use of copyrighted materials must be observed. The researchers are encouraged to license their IP for fair use.

• Promotion of the use of Free and Open Source Software (FOSS)

Keeping in mind the National IPR policy, 2016, the institution must encourage the use of FOSS in the areas of research, training programs, all official purposes to the extent possible and licensing its IP software as open licenses.

• Confidentiality, Data Protection, and Privacy

All users of information/documents or other data within the institution shall secure them and all related activities shall be kept confidential.  The institution shall protect all data and personal information from unauthorized access/use to the extent possible. Such confidentiality may be possible by virtue of non-disclosure agreements with users.

Without prejudice to the above, any information falling under categories listed below shall not be confidential information:

1. Information under public domain
2. Required by law to be disclosed
3. Independently developed by the researcher
4. Obtained without confidentiality obligation to the disclosing party

• Publications

1. Any publication arising from research shall be jointly owned by the researcher and the institution and it is suggested that the decision to publish, be made jointly.
2. The use of any trademark/logo of the institution for said publication shall be with prior permission from the institution.
3. The institution may have the right to exclude certain portions of said publication. Due care must be taken in matters involving pending patents.

• Disputes & Appeals

1. For the purposes of addressing the concerns of the aggrieved, a committee may be appointed. The decision of such a committee shall be made within a prescribed time, beyond which the relevant provisions of law shall apply.
2. Appeals can be made to this committee in case of disputes between the institution, inventor/creator or any third party.
3. Where the aggrieved is not satisfied with the decision of this committee, he/she may choose other forms of dispute resolution including Alternate Dispute Resolution (ADR) or appeal to the Court of Adjudicature nearest to the institution. The above-listed alternatives shall be per the laws of India.