INTELLECTUAL PROPERTY POLICY FOR KNUST

(DRAFT DOCUMENT)2ND KNUST SUMMER SCHOOL

Outline of PresentationIntroductionKNUST Policy StatementsCommercial DevelopmentFaculty, Student, Staff and Visitor

obligations/Researcher obligations

Administration

Introduction

The purpose of KNUST’s institutional policy on patents, copyrights, and other Intellectual Property is to create an environment that encourages and expedites the dissemination of discoveries, creations and new knowledge generated by researchers for the greatest benefit of the public.

Introduction Specific objectives:To make available research output to industry

and others for the benefit of the public, while providing recognition and reward to individual inventors, innovators and creators of intellectual property.

To encourage the prompt and open dissemination of research findings and other creative works.

To promote, preserve, encourage and support scientific research and creative works.

To protect the rights of scholars to control the products of their scholarly work.

IntroductionSpecific objectives cont:To ensure fair and equitable distribution of

earnings from commercial results and other benefits in a manner that recognizes the inventors, KNUST and other stakeholders.

To ensure efficient and timely development, transfer and the commercialization of technologies, creative works and research results to the public and other beneficiaries.

To ensure the awareness of the different IP systems and the acquisition of such rights.

IntroductionSpecific objectives:To sensitize students, faculty members on

IP and tap creativity among the youthTo create an enabling environment that

will position KNUST as a globally competitive and attractive partner for collaborative research and creative works.

To ensure compliance with applicable laws and regulations, and to enable KNUST obtain sponsored research funding as much as possible at all levels of research

Scope of the Policy

This policy applies to full-time and part-time staff of

the university, visiting academics and students.

General Policy

The prompt and open dissemination of the results of KNUST research and the free exchange of information among scholars are essential to the fulfillment of KNUST’s obligations as an institution committed to excellence in education and research. Matters of ownership, distribution, and commercial development, nonetheless, arise in the context of technology transfer, which is an important aspect of KNUST’s commitment to public service. The dissemination of information must, therefore, not be delayed beyond the minimal period necessary to define and protect the rights of the parties. The material set forth in this document therefore covers the ownership, distribution, and commercial development of technology developed by KNUST faculty, staff, and students and others participating in KNUST programmes.

Ownership of IPFaculty, staff, or students of KNUST shall

own Intellectual Property provided that:◦The Intellectual Property is not developed in

accordance with the terms of a sponsored research or other agreement.

◦The Intellectual Property is not created as a commissioned work prepared by an employee within the scope of his or her employment or as a specific assignment by KNUST.

◦There is no significant use of funds or facilities administered by KNUST.

Ownership of IPOwnership of all other Intellectual Property will be

as follows:◦ Intellectual Property developed in accordance with the

terms of a sponsored research or other agreement will be determined according to the terms of such agreement.

◦ Copyrightable works created as commissioned work, or as a work prepared by an employee within the scope of his or her employment or pursuant to a written agreement with KNUST providing for the transfer of any Intellectual Property or ownership to KNUST will be owned by KNUST.

◦ Intellectual Property developed by faculty, technicians, staff, and others participating in KNUST programs, including visitors, with the significant use of funds or facilities administered by KNUST will be owned by KNUST.

Ownership of IPStudents shall own copyright in theses unless:The theses were generated by research that

is performed in whole or in part by the student with financial support in the form of wages, salaries, scholarships, or grant from funds administered by the University shall be determined in accordance with the terms of the support agreement, or in the absence of such terms, shall become the property of the University. 

Ownership of IPThe theses that were generated by research

performed in whole or in part utilizing equipment or facilities provided to the University under conditions that impose copyright restrictions, Ownership shall be determined in accordance with such restrictions. Questions regarding restrictions imposed on any of the University’s facilities or equipment may be addressed to the administrative officer of the laboratory or department or to the appropriate contract administrator in the department.

Ownership of IP – student thesesStudents will own the copyrights

to theses not within the provisions of a and b above; however, a student must, as a condition to a degree award, grant royalty-free permission to the University to reproduce and publicly distribute copies of his/her thesis.

Sponsored Research and Other Agreements

PATENTS: Research contracts sponsored by the

Government of Ghana are subject to the condition that KNUST retains ownerships and takes effective steps to develop the practical applications of the invention by licensing and other means.

The government shall be granted a non-exclusive licence.

Sponsored Research and Other AgreementsContracts with industrial sponsors may:Indicate that research output be

donated for public useIndicate claim of ownership by sponsor

with a licence-free use and other rights by KNUST;

Assign the rights to KNUSTKNUST may retain ownership of patents

while the sponsor is granted an option to acquire licence rights. (Type of licence is negotiable).

Sponsored Research and Other Agreements

COPYRIGHT: Copyright shall vest with KNUST with the

grant of a royalty-free licence to the government.

When a work is created under the terms of other sponsored research agreements, authors of copyrightable works should be aware that there may be contractual terms relating to the form of the report, advance notice to the sponsor before publication, and the like.

Ownership – trade and service marksTrade and Service MarksTrade and service marks relating

to goods and services developed at KNUST will be owned by KNUST.

IRRESPECTIVE OF WHO OWNS THE INTELLECTUAL PROPERTY, THE INVENTOR/AUTHOR/ CREATOR SHALL BE MENTIONED/ASSOCIATED/NAMED WITH THE WORK.

THE INVENTOR/ AUTHOR/CREATOR SHALL ENJOY HIS MORAL RIGHTS IN PERPETURITY

Significant Use of KNUST Administered ResourcesSignificant use: use of institutional

resources in connection with the project by the creator beyond that normally provided to a typical faculty member at KNUST for activities within the scope of regular employment. Examples of non-significant use include:

Payment of salariesUse of officeOrdinary use of desktop computers KNUST’s librariesCommunication and storage servers

Significant Use of KNUST Administered ResourcesTextbooks developed in conjunction with

class teaching are also excluded from the "significant use" category, unless such textbooks were developed using KNUST administered funds paid specifically to support textbook development.

Generally, an invention, software, or other copyrightable material will not be considered to have been developed using KNUST funds or facilities if:

(1) only a minimal amount of unrestricted funds have been used; and

Significant Use of KNUST Administered Resources (2) the invention, software, or other

copyrightable material has been developed outside of the assigned area of research of the inventor/author under a Research Assistantship or sponsored project; and

(3) only a minimal amount of time has been spent using significant KNUST facilities or only insignificant facilities have been utilized. Use of office, library and traditional desktop personal computers are examples of facilities that are not considered significant; and

(4) the development has been made on the personal, unpaid time of the inventor/author.

Works created in the course of employment/commissioned work/work –for- hire

EMPLOYEES: Copyright of the work created in the course

of employment belongs to the employer. For example, results of work assigned to

staff programmers or writers of university publications are considered to have been created in the course of the author's employment and are the property of KNUST.

It is the policy of KNUST that it shall own all works created in the course of employment.

Works created in the course of employment/commissioned work/work –for- hire

Under the Copyright Act 2005, Act 690, copyright of commissioned works is owned by the commissioning party unless there is a written agreement to the contrary.

Where non-employees are contracted, KNUST personnel are cautioned to ensure that they agree in writing that ownership of the commissioned work is assigned to KNUST, except where special circumstances apply and it is mutually agreed that the author will retain ownership.

Independent Works

KNUST does not claim ownership of copyrights in scholarly books and textbooks, articles and other scholarly publications, nor to popular novels etc provided that such works are:

(i) created by the personal effort of faculty, staff and students; and

(ii) do not make significant use of KNUST-administered resources; and

(iii) are not governed by the terms of a sponsored research or other agreement.

Independent Works

In those situations when such a copyright resides with KNUST but does not constitute a work created in the course of employment, KNUST will upon the author's request and to the extent consistent with the intent of the sponsor and the center director or department head, convey copyright to the author of such work. An author requesting a waiver should submit a form to IPUK.

Software Acquisition

When software and databases used at KNUST are owned by users or third parties and are protected by copyright and/or other laws, or subject to license or other contractual arrangement, it is the policy of KNUST that users abide by any legal restrictions imposed by the owner of the software or database.

It is the responsibility of the owner of the protected software or database to make the nature of the restrictions known to KNUST.

Waiver of Rights to KNUST Inventors and Authors

KNUST may, at the request of inventors or copyright authors, and at its discretion, "stand aside" in those situations where KNUST believes that it would enhance the transfer of technology to the public, as consistent with KNUSTs’ obligations to third parties, and does not involve a conflict of interest as set forth below.

By "standing aside", KNUST agrees not to exercise its contractual rights to the technology, clearing the way for the KNUST inventors and authors to seek ownership. Inventors and authors may request that KNUST "stand aside" by submitting a letter to IPUK.

In the case of industrial sponsorship where the sponsor acquires license rights, KNUST usually must seek approval of the sponsor prior to releasing its ownership rights in favour of the inventor or author.

Technology Evaluation and ProtectionIPUK is responsible for managing

research output – evaluating the patentability, protection and the commercial exploitation of a research output

Disclosure◦Sponsored programmes◦Other inventions

Commercial DevelopmentIPUK in consultation with the Business

Development centre will identify markets and potential investors

IPUK in consultation with the legal office will negotiate licensing agreements

IPUK will monitor progress and distribute royalties as spelt out in the policy

IPUK upon request by inventor/author shall pursue the development of independently-owned technology

Commercial Development of Research OutputKNUST will not normally commit

future inventions to licenseesIPUK will not negotiate consulting

contracts for individual inventors/authors as part of a licence arrangement

KNUST may give rights to inventors/authors to commercially develop their KNUST-owned IP provided that:

Commercial development of research outputThe licensing will enhance

technology transfer; It is consistent with KNUST’s

obligations to third parties; and It does not involve a conflict of

interest

Benefit sharingDistribution of royalties shall be done at the

end of each academic year.The royalty shares are calculated as follows:Deduct (10%) - administrative cost from the

gross incomeDeduct any other costs (patent filing,

maintenance fees, and marketing costs) from the gross income.

The inventor is awarded 60% of the net income.

The department or research centre is awarded 20% of the net income.

Benefit sharingThe college and faculty is awarded 10%The university is awarded 10% of the net

income.If IPUK determines that an inventor or

author has caused a material breach of a sponsored research agreement, he or she may after investigation, but at the office’s discretion, deny the inventor or author a portion of the royalty income (after negotiation) from any inventions arising from such sponsored research agreement.

Benefit sharingExcept as might otherwise be dictated by

research contract obligations, the distribution of Department and Centre royalties shall be based on ◦ the organization (Department or Centre) that

administered the research contract from which the invention arose, and

◦ the academic Department affiliation of the inventors, if any.

If a research contract was administered by two or more departments, the Department/Centre share shall be split between the Department(s) or Centres with which the inventor(s) are affiliated.

Benefit sharing – special casesDistribution of royalties for

departmental/centre/team projects shall be done in consultation with the principal investigator.

NB: generally, royalties will be split between the centre or department and the KNUST general IP fund.

Conflict of interest or commitmentCONFLICT OF INTEREST IN WAIVING RIGHTS TO

TECHNOLOGY.Any of the following factors may signify a conflict

of interest which will be taken into account prior to waiving or licensing KNUST’s rights to inventors:◦ An adverse impact on KNUST educational

responsibility to its students;◦ An undue influence on the employment

commitment of the inventor/author to KNUST in terms of time or direction of effort;

◦ A detrimental effect on KNUST’s obligation to serve the needs of the general public;

◦ Potential conflict of interest as defined in KNUST’s Policies and Procedures. 

Conflict of interest and commitment – startup companiesKNUST will not accept research funding

from a licensee in which KNUST, through IPUK, or a KNUST inventor has an equity interest (including stocks, options, warrants or other financial instruments convertible into equity) unless:◦The research is not likely to result in

inventions dominated by the claims of the licensed patent or in software that is a derivative work of the licensed software; and

◦The research will not be conducted in the inventor's laboratory group; and

Conflict of interest and commitment – startup companies

◦ The inventor's students will not participate in any project funded by the licensee. When an inventor/author desires to avoid equity in order to obtain research funding from a small company, KNUST will generally also avoid taking equity through a license agreement. In such cases, the TLO will require in its license agreements that the inventor not make any arrangements to obtain equity at a later date and avoid negotiating for equity until at least two years following the termination of the research agreement.

Conflict of interest – IPUK staff In order to assure no present or potential future

conflict of interest, an IPUK staff member should not personally invest in non-public companies that have licensed KNUST intellectual property.

If a staff member is a partner in a venture fund, that staff member should not engage in licensing negotiations with any company in which that fund is invested, and those who are voting partners should not recommend KNUST companies to that fund.

IPUK staff members also have a special responsibility to assure that their knowledge of a IPUK license to a public company is not disseminated in any way that could affect the company's stock price, and that the knowledge is not used for investment purposes by themselves, their families, friends or business associates.

IPUK Board

Committee on Copyrights and PatentsA standing Committee will oversee the

operations of IPUK. The committee will include representatives from the various colleges generally served by IPUK.

The committee may, from time to time, elect to create a subcommittee of experts in a specific technology whose function is to recommend policy that relates to the exploitation of that technology. 

Research ObligationsGeneral policy: It is the policy of KNUST that individuals

through their employment by KNUST or by participating in a sponsored research project, or using KNUST-administered funds or facilities, thereby accept the principles of ownership of technology as stated under this policy. In furthering such undertaking, all participants will sign Inventions and Proprietary Information Agreements in accordance with the following policy.

Inventions and Proprietary Information AgreementsAll members of the KNUST community who

participate in either sponsored research or University-funded research or who use significant funds or facilities administered by the University must agree to the terms in KNUST’s Invention and Proprietary Information Agreement and sign the agreement.

By accepting such funds or using such significant facilities, the individual agrees to assign to KNUST or its designate, his or her title to Intellectual Property created through the use of such funds or facilities.

Inventions and Proprietary Information AgreementsThe administrative officer of each research

centre, laboratory or department must distribute these forms and to collect signed copies.

The forms should be signed in triplicate: one copy to be retained by the individual, one by the laboratory, research centre or department, and one forwarded to IPUK.

Any questions regarding the meaning of any terms in this agreement should be addressed to IPUK. Copies of the form are appended to the policy or may be obtained from either the administrative officer in each laboratory or department or IPUK.

Administration of Invention and Proprietary Information Agreements

Each KNUST Research Centre and department, through its Administrative Officer, is responsible for ensuring that the agreements are signed by all faculty, students, technicians and visitors, who may be or are involved with sponsored projects or who may have opportunities to use significant KNUST funds or facilities administered by that Centre or department.

All Inventions and Proprietary Information Agreements should be signed in triplicate with one copy retained by the signatory, one copy retained in the Centre/department files and one copy sent to IPUK.

Inventions and Proprietary Information Agreement forms may be obtained from IPUK which will assist with any questions which arise in connection with such Agreements.

Administration The Office in Charge of ResearchThe designated office in charge of

research in consultation with the legal office of the university shall be the final arbiter of any disputed issues of interpretation relating to this document.

In unusual circumstances, the Vice Chancellor’s Office may also authorize exceptions to the normal procedure.

Administration International Programmes OfficeThe International Programmes Office (IPO) is

responsible for the negotiation, execution, and administration of all KNUST agreements and memoranda of understanding with external sponsors of research grants and contracts and for ensuring that the rights of the sponsors in technology developed under external grants and contracts are protected.

Grants or contract terms which inhibit the utilization of research results at KNUST by the public should not be accepted.

Administration Intellectual Property Unit, KNUST The Intellectual Property Unit, KNUST (IPUK) seeks to

provide the right type of protection to staff for their creation or invention. IPUK has two principal goals. ◦ The first is to protect and facilitate the transfer of

technology developed at KNUST for public use and benefit. ◦ The second is to provide an additional source of

unrestricted income to support research and teaching at KNUST.

PUK will work with the KNUST developers of technology and with industry in a manner which does not interfere with the normal flow of technical and academic information through publications, conferences and consulting.