IPR POLICY

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Transcript of IPR POLICY

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IPR POLICY

2019

Intellectual Property Rights (IPR) Cell

DEENBANDHU CHHOTU RAM UNIVERSITY OF

SCIENCE & TECHNOLOGY, MURTHAL (SONEPAT)

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Preface

The Intellectual Property Rights (IPR) Cell was established in Deenbandhu Chhotu Ram

University of Science & Technology Murthal by Hon’ble Vice Chancellor on 23.10.16

(Sunday) for volarization of research potential of faculty, researchers and students

dedicated to intellectual property.

Government of India is investing a huge finance on R & D each year but a very less

research efforts could be transformed into fruitful products/processes. In our

University, numerous research works are being produced, yet most of the research

extractions dumped into libraries in the form of thesis, dissertations, and journal

articles.

Prof. (Dr.) Rajendrakumar Anayath, Hon’ble Vice Chancellor, strongly emphasizes that in

modern world, where the ornate knowledge is readily available for everyone at every

time, the innovative and creative transformation of existing knowledge into new

knowledge becomes imperative towards societal benefits at large.

Towards converting this new knowledge into fruitful product and sellable intellectual

property, IPR support must be essential. In this regard, the first legislation in India for

patentization was enforced via Act VI of 1956, which was based upon the United

Kingdom Act of 1852. The Act 38 of 2002 (amendment) came into force on May 20,

2003 with the introduction of the new Patent rule 2003 by replacing the earlier Patent

rules 1972; while last amendments are made effective from May 5, 2006(source- www).

The prime objectives of these rules are encouraging the inventor to secure their

inventions in terms of revenue, when a manufacturer or “licensee” adopts their

inventions.

The meticulousness with which Dr. J.S. Saini, Professor & Chairman Electrical

Engineering Department & Dean of Faculty and Technology, DCR University of Science &

Technology, Murthal; Sh. Ajay Panwar, Sr. Counsel Intellectual Property at GE New

Delhi Area, and Sh. Vinit Tushir, ALO & Sh. Ketan Antil, Advocate, Punjab and Haryana

High Court Chandigarh have read and made constructive comments on this policy to

improve the clarity and enrichment of contents is gratefully appreciated. During

preparation of the policy, the efforts of Dr. Vinod Kumar, Co-coordinator, IPR Cell and

Sh. Azad Singh Panwar, Assistant Technical Officer are also greatly acknowledged.

Hopefully, this policy will guide the inventors to the new world of trade and R&D, and

shared benefit to inventors, the prestigious University and manufacturer or “licensee”.

-Dr. Avdhesh Kr. Sharma

Coordinator, IPR Cell &

Professor, Mechanical Engineering Department

Deenbandhu Chhotu Ram University of Science & Technology, Murthal

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IPR CELL BODY

PROF. (DR.) AVDHESH KR. SHARMA

Coordinator, IPR CELL Deenbandhu Chhotu Ram University of Science & Technology, Murthal

DR. VINOD KUMAR

Co: coordinator, IPR CELL Deenbandhu Chhotu Ram University of Science & Technology, Murthal

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INDEX

S.No. CONTENTS Page No

1. PREAMBLE……………………………………………………………………………………………………… 1

2. OBJECTIVES………………………………………………………………………………………………… 2

3. STAKEHOLDERS AND POLICY COVERAGE………………………………………… 2

4. INTELLECTUAL PROPERTY……………………………………………………………………… 3

4.1 Intellectual Property (IP)…………………………………………………………… 3

5 5. OWNERSHIP CRITERIA…………………………………………………………………………… 4

5.1 Patents……………………………………………………………………………………………… 4

5.2 Copyrights………………………………………………………………………………………… 5

5.3 Patentable copyright works………………………………………………………… 7

6. TECHNOLOGY TRANSFER………………………………………………………………………… 8

7 7. REWARDS………………………………………………………………………………………………………. 9

8. IPR FUND ……………………………………………….…………………………………………………… 9

9. PATENT MANAEMENT COMMITTEE …………………………………………………. 9

10. REVENUE SHARING…………………………………………………………………………………… 10

11. INFRINGEMENTS, DAMAGES, LIABILITY AND INDEMNITY…. 10

12. NONCOMPLIANCE AND CONFLICT OF INTEREST………………………. 11

13. DISPUTE RESOLUTION……………………………………………………………………………. 11

14. JURISDICTION…………………………………………………………………………………………… 11

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Intellectual Property Rights Policy

1. PREAMBLE

Deenbandhu Chhotu Ram University of Science and Technology, Murthal (erstwhile C.

R. State College of Engineering) was established through an Act of Haryana State

Legislature on November 6, 2006 to facilitate and promote studies and research in

emerging areas of higher education with focus on new frontiers of Science,

Engineering, Technology, Architecture and Management studies. The University is

recognized under 12 (B) of the UGC Act, 1956. The University has been accorded

‘Affiliating Status’ by Act of Haryana State Legislature on August 3, 2011. The

University provides an outstanding learning & research environment for multifaceted

development of students, thus emerging as a centre of excellence. The University is

spread over 273 acres with ample built up space in a contemporary architectural idiom.

It has 16 teaching departments under 6 different faculties. In addition to research

facilities leading to enrolment of numbers of research scholars, the University is

presently running 31 postgraduate and 9 undergraduate programmes on regular basis.

The University has highly qualified faculty, the departments/centers have been well

equipped and spacious laboratories with modern facilities, very grand and spacious

library, computer centre with high speed internet facility, faculty rooms, classrooms,

& substantial sports facilities, etc. The University has received grant under TEQIP I,

II and III of MHRD of Government of India and Various departments have

successfully undertaken UGC/AICTE/DST/DBT sponsored research and development

projects. University is known in the region not only for students with technical,

analytical & soft skills but also for its strong placement statistics. As a result, the

University was accredited ‘A’ Grade by NAAC in 2017, while several of the PG & UG

programmes are accredited by NBA.

In this context, numerous research works are being published by the DCRUST

personnel(s) as a result of their deep engagement in research and development

activities, yet most of the research outcomes end in thesis, dissertations, and in

journal or conference articles. In order to convert the novel knowledge into fruitful

product and sellable intellectual property, IPR support is essential. It not only

promotes dissemination of the new knowledge (such as know-how, inventions, brands,

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designs and other creative and innovative products) in public domain but also provides

revenue generation opportunity to the innovator(s). Further, the IPR is not merely a

tool to protect the creativity and novelty, and revenue generation but also helpful to

build strategic alliances for the socio-economic and technological growth.

In this background, an IPR Cell was established in the University in the year 2016 with

objectives for promoting academic freedom, safeguarding the interests of inventors

of the University in creation and commercialization of IP of the University

personnel(s) including faculty, staff, students, research scholars, visiting scientists

and non-university personnel (involved in the sponsored/collaborative work);

furthermore, to propagate awareness on IP among the University personnel(s) and the

affiliated colleges/institutions by organizing workshops, seminars and training

programmes; and also to facilitate them in obtaining IPR by providing technical and

other support/help.

In order to protect the intangible knowledge (i.e., IP) created and smooth functioning

of IPR Cell, a need to formulate an IPR policy is felt. To this end, the Intellectual

Property Rights Policy has been prepared, which highlights the practices and the

guidelines of IPR and obligations depending upon the nature of IP, requirements of its

ownership, its confidentiality, licensing, technology transfer and revenue sharing. This

IPR policy document is expected to fulfill the commitment of the University to

promote academic freedom and conducive environment for research and development

of commercial importance.

2. OBJECTIVES

The Intellectual Property Rights (IPR) policy of the Deenbandhu Chhotu Ram

University of Science & Technology, Murthal (herein referred to as “DCRUST”) aims

to promote the academic freedom and safeguard the interest/outcome of the

creative & scientific efforts of the researchers and innovators (i.e., staff, faculty,

students) of this University and non-university personnel (involved in collaborative

work with the University) along with the legal support, whenever necessary. The IPR

Policy offers full potential and scope of shared benefits of process of knowledge

creation and commercial exploitation to both the innovator and the University as well.

3. STAKEHOLDERS AND POLICY COVERAGE

The several stakeholders in the process of development of innovative research,

acquiring patents and its commercialization are: University itself, research scholars

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and inventors (i.e., staff, faculty and students), visiting scientists from other

institutions or industry, sponsors, licensee and state government. The DCRUST is a

major stakeholder.

This IPR policy of the DCRUST covers all staff, faculty members, and students and

also persons engaged in in-house research projects or externally funded projects such

as UGC, DST... and other initiatives of the University as well as visiting

scientists/professors/personnel who participate in the research work being carried

out at the University.

Further, the University reserves the rights to amend the IPR Policy as and when such

need arises.

4. INTELLECTUAL PROPERTY

4.1 Intellectual Property (IP):

Intellectual Property (IP) is an intangible knowledge product (which is unique, novel

and unobvious and which qualifies for protection under relevant acts of the

Government governing patent, copyright etc.) including literary, artistic and

scientific works; innovations in all fields of human endeavor; scientific discoveries;

industrial design; trademarks, service marks, commercial names and designations;

performances of artists, photography works, etc. It can be of the following forms:

know-how, and other proprietary concepts, solutions, processes, including an

invention, scientific or technological development, and even computer software,

genetically engineered microorganisms and business models and other forms as the

need arises. IP may be scientific outcome of in-house or sponsored research,

industrial consulting or other forms of collaborative research and development

activities. The above forms of IP can be protected, under domestic and

international patent office, if protection of IP is seen necessary both by the

inventor and the University.

Patent specifically belongs to an invention; which may be a product or a process

that provides a new way of doing something or offers a new technical solution to a

problem. The criteria for granting the exclusive right “Patent” for an invention

depends on novelty, inventiveness and usefulness.

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Copyright is an exclusive right granted to the creator for his/their creative work

such as work of authorship (i.e. books, articles, monographs,

lectures/speeches/video-presentations, technical manuals, software, specifications,

formulae, schematics, and documentation including Ph.D. thesis/M.Tech.

dissertation/project work), know-how (e.g., expertise, skilled craftsmanship,

training capability, understanding of how something works), trade secrets (such as a

protected formula or method, undisclosed customer or technical information,

algorithms, etc.), trademarks (i.e., logos, distinctive names for products and

services), industrial designs (e.g., the unique way a product looks), and

semiconductor mask works (the physical design and integrated circuit layouts.) for

its use and distribution.

5. OWNERSHIP CRITERIA

The ownership criteria for various types of IPs have been described in this section as:

5.1 Patents

The ownership of the Patent will be in accordance to following criteria:

5.1.1 For in-house research, all IP rights in respect of investigations carried out at

the University shall vest in and be the absolute property of the University

except sponsored/collaborative research. Thus,

(a) Patent is owned by University with researcher(s) named as inventor(s), if the

invention involves use of university resources and University will meet the

entire cost of filing and protection of IPR.

(b) Patent is owned by individual inventor(s) of IP created, if the invention is not

involving considerable use of university resources (i.e., time, cost, laboratory

facilities or any other resource of University). In such cases, the inventor is

bound to take permission from the University before applying for patent.

He/she will meet the entire cost of filing and protection of IPR.

5.1.2 For sponsored research, IP arising out of research projects undertaken on

behalf of the sponsoring agencies, shall be taken jointly in the name of the

University and sponsoring agencies, when the sponsoring agencies bear the cost

of filing and maintaining of the IPR equally with researcher(s) named as

inventor(s). However, if the sponsoring agencies are not forthcoming, the

University at its discretion may file the application with absolute ownership of

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patent and then the University will meet the entire cost of filing and protection

of IPR.

5.1.3 While for collaborative research:

(a) All IP created, researched jointly by University with collaborating

Institutions/Organization, shall be jointly owned. The collaborating

Institution/Organization will be requested to bear the cost for filing and

maintenance of the IPR equally with researcher(s) named as inventor(s). In

case, the collaborating Institutions/Organizations are not forthcoming to

bear the cost of filing and maintenance, the University at its discretion, may

file the application with absolute ownership of patent and then the University

will meet the entire cost of filing and protection of IPR itself.

(b) Furthermore, if any employee or student of this University creates IP while

working with another Institute/Organization, where the latter claims IP

rights, it should be jointly owned by the University and that

Institute/Organization with researcher(s) named as inventor(s).

5.1.4 Surrender of Patents: Prior permission of Vice-Chancellor before giving notice

to the patent facilitation center/organization (refer to see 63 of Patents Act,

1970)

5.1.5 Restoration of lapsed Patent: Renewable fee and other expanses to be incurred

by the University or Inventor or Co-inventor(s) or on sharing basis at the time of

agreement.

In order to protect the originality and creativity of IP, the researcher/innovator should

maintain the secrecy and confidentiality of the relevant details of IP strictly until the

patent application has been filed and published.

Any IP generated by an inventor from the University/non-university personnel (s) when

he/she works in other University/Organization in India or abroad on extra ordinary

leave/sabbatical leave/earned leave/child care leave etc, will be jointly owned by the

University and the respective University/Organization in India or abroad.

5.2 Copyrights:

Ownership of the copyright of all copyrightable work including software, designs

and integrated circuit layouts etc., will be in accordance to following criteria:

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5.2.1 The University shall be the owner of copyright of the copyrightable work other

than literary/authorship work created by University/non-university personnel(s)

associated with any activity of the University which involves significant use of

the University resources. As a tradition, the University is not claiming the

copyright in work produced by University personnel such as books, monographs,

lectures, speeches, video presentations and other communications produced by

faculty or staff in course of teaching and research without using University

resources.

5.2.2 The University shall be the owner for all teaching materials developed by

University personnel(s) as a part of any of the academic programme at the

University. However, the author(s) shall have the rights to use the non-funded

technical material in his/her professional capacity/use. If the technical material

is prepared by the author on behalf of a funding agency, then the copyright will

be equally shared between the University and the funding agency.

5.2.3 The texts and work derived out of the thesis, dissertations and projects written

by the research scholars/students for fulfillment of the requirement for an

academic degree will be considered “exempted scholarly works”. The ownership

of copyright in exempted scholarly works will be shared by the student and

supervisor jointly. However, the supervisor and student will grant a non-

exclusive, non-transferable, royalty-free license to the University for their non-

commercial academic activities. All usage under this sub-clause will be governed

by the relevant fair use provisions laid down by the Indian Copyright Act in force

at the time of submission of the thesis/dissertation/project report. Thus,

supervisor(s)/author(s) of creative work will hold all rights.

5.2.4 The University will be the owner of all software, designs and integrated circuit

layouts created by the University or non-university personnel(s) in the

University. If such work is produced during the course of sponsored and/or

collaborative activity, specific provisions related to IP, made in the contracts

governing the collaborative activities may decide the copyright ownership.

Further, if such work is created by University personnel without using the

University resources and not connected to his/her domain area, the inventor may

be the owner of the copyright.

5.2.5 In all such cases especially where the University is not claiming the copyright, it

will be entitled to a non-exclusive, non-transferable license to use the

copyrightable work within the University for noncommercial, educational and

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research purposes, or to possess a limited number of copies for such purposes,

depending on the relevancy.

5.3 Patentable copyright works

(a) If the author/supervisor files a patent based on high value copyrightable

work expecting patentability especially thesis/dissertation/project work, it

may be disclosed partially via minimum publications in form of research

papers to fulfill the basic requirement to award of any degree. For

maintaining the secrecy and confidentiality, the experimental test-setups

dedicated to research work can’t be shared with any another research

scholar until the research work is over, even after many scholars have been

registered with the same supervisor, as it may be in-secured (i.e., originality,

novelty) the issues related to grant of patenting, if any. The researcher is

bound to file the application for patenting within the time period between the

submission of thesis/dissertation/project work for evaluation (or even

earlier) and final submission of thesis/dissertation/project report in the

department/library.

(b) Moreover, the novel contribution out of high value research work should be

restored by the research scholar and supervisor for amicably have the

rights, strictly for maintaining the secrecy and confidentiality of the

relevant details of research work. The university may ensure the secrecy and

confidentiality of such work and don’t disclose any part of such research

work (either it is submitted in central library or departmental library) to any

person without written authorization from author with non-disclosure

agreement (NDA) until unless the patent application has been filed and

published.

(c) Any prior disclosure, directly or indirectly, either during the period of work

or after its completion, should render prosecutable personally as per laws.

(d) If any IP work including Patent or copyrightable work foresees a gainful

return from Patent or copyrights, the University may initiate steps to file

and protect such Patent or copyrights and share the financial benefits with

the inventor on terms and conditions of the University.

(e) If inventor leave the University or complete the project he should assigned

their rights to the university as per the agreement.

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6. TECHNOLOGY TRANSFER

After successful IPR protection, the process of utilization or commercialization of the

invention (referred here as “Technology Transfer”) needs to be initiated. Herein, the

information or knowledge related to technological aspects of IP disseminate within the

group or between the Institute/Organizations or Entity. It includes skill transferring,

methods of manufacturing, physical aspects, know-how, and other technical aspects,

and henceforth helps in further development of the technology and innovation. IP

technology can be transferred to user via a “license” which is an agreement between

an IP owner (i.e., licensor) and user of IP (i.e., licensee) after making the payment of

fee or royalty as per the agreement, while the licensor continuously maintaining the

ownership of the patent in addition to enjoying the revenue in form of royalty. The

criteria of technology transfer for various types of IPs in the University will be

governed as:

6.1 The IP of the University held either in the name of the University or jointly with

other Institutions/Organization will be marketed for commercial exploitation under

agreements involving technology transfer, licensing and revenue sharing models. The

license may be implemented from the first date of such commercial exploitation for

a period that will be decided by the mutual agreement/contract.

6.2 The inventor(s) may identify and contact the potential licensee(s) by maintaining

confidentiality through appropriate agreement such as Non-Disclosure Agreement

(NDA). In case the deal is not finalized, the confidentiality agreement/NDA will be

continued.

6.3 In order to facilitate the inventor(s) for showcasing their IPs, the IPR Cell of the

University may organize specific industrial interactions or may contact with other

such agencies.

6.4 In case of joint ownership, the Organization/Industry which has sponsored the

activity:

6.4.1 Organization/Industry will have the “first right” to commercially utilize and

exploit IP emanating from the collaboration activity, whether that research

work have been formally protected for the patent(s).

6.4.2 In the event of the collaborating organization/industry not undertaking the

commercial exploitation within a reasonable period (such as two years from the

first date of development of the technology), the University reserves the right

to transfer the said know-how to a “third party” for its commercial exploitation

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and use. In such instance, however, the University shall share the net profits

with the collaborating organization/industry in equal ratios.

6.4.3 Prior notice to the university regarding the issuance of license in case of joint

ownership.

6.5 The liability of expanses in respect of any legal proceedings/suit for the

protection of Patent/Copyright will be borne by the Inventor and Co-

inventors/University/ collaborating organization/industry.

7. REWARDS

7.1 In order to promote and encourage the IPR activities in the University, a

reward (for instance, Rs. 5,000/- at national level and Rs 8000/- at

international level) of patenting activity may be offered to the inventor (s)

in two phases. The first phase (i.e., at the time of filing the application for

patent) 50% of total amount of reward may be offered to innovator(s) while

remaining 50% may be offered when the patent is granted at the

national/international level.

8. IPR FUND

University may develop a corpus fund separately to encourage IPR(s) for filing and

registration in addition to revenue generated from licensing and other resources to

support IPR activities in the University. Initially to encourage the inventor(s), a

minimum amount of Rs 1.00 Lakh may be granted to the concerned with the control of

IPR Cell. Thereafter, the revenue generated out of licensing of IP to name of

University would be deposited in this corpus fund for smooth functioning of IPR

activity.

9. PATENT MANAGEMENT COMMITTEE

9.1 Following members may be constituted for acquisition, management, budget

allocation and allotment of intellectual property income and dispute

resolution:

1. Vice-Chancellor : Chair

2. Registrar or its nominee : Member secretary

3. Coordinator, IPR : Member

4. Co: coordinator, IPR : Member

5. Inventor(s) : Member

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6. External expert (Relevant to product) : Member

7. Prosecutor of IPR : Member

8. Member of State Patent Cell : Member

(Patent at National level)

9. Member of National Patent Council : Member

(Patent at International level only)

Note: The inventor(s) may be approached directly to the IPR Cell of the University for

pertaining to IPRs for patenting the product through an appropriate performa

available at web portal of IPR Cell of the University.

10. REVENUE SHARING

The revenue generated out of the commercialization of IP created will be shared

among inventor(s), his team and the University on the following terms and conditions:

10.1 The revenue arising out of licensing of IP and royalty would be shared in the

appropriate ratio of 70:30 between the inventor(s) and the University. If there is

more than one inventor; the principal investigator/supervisor/team leader will get

upto 60% of inventor’s share and remaining 40% will be shared in co-inventor(s) in

the proportion as per mutual agreement.

10.2 Where the University reassigns the right of the IP to its investor(s), the

inventor(s) shall reimburse all the costs incurred by the University, which include

protection, maintenance, marketing and other associated costs.

11. INFRINGEMENTS, DAMAGES, LIABILITY AND INDEMNITY

Infringement of any IPR issue by faculty/staff/student/visitor or any third party,

IPR Cell would first investigate the matter and make recommendations to the Vice-

Chancellor for resolution and/or disciplinary/legal action. Further:

11.1 As a matter of policy, the University shall, in any contract between the licensee and

University, seek indemnity from any legal proceedings including this, but not limited

to manufacturing defects, production problems, design guarantee, upgradation and

debugging obligation.

11.2 The University shall also ensure that the University personnel have an indemnity

clause built into the agreements with licensee(s) while transferring technology or

copyrighted material to licensees.

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11.3 The University shall retain the right to engage in or desist from or not in any

litigation concerning patent and license infringements.

12. NONCOMPLIANCE AND CONFLICT OF INTEREST

All inventors are responsible for compliance with rules of Haryana Government and IPR

Policy of University related to development of IP generated.

12.1 The inventor(s) are required to disclose any conflict of interest or potential

conflict of interest.

12.2 If the inventor(s) and/or their immediate family have a stake in a licensee-

company, then they are required to disclose the stake they and /or their

immediate family have in the company, and license or an assignment of rights for

a patent to the licensee - company in such circumstances, shall be subject to the

approval of the University.

13. DISPUTE RESOLUTION

It would be obligatory for faculty, researchers, students, staff, visiting scientists and

collaborators to follow the IP Policy of the University and abide by various terms and

conditions laid in it. Even if, there is any dispute regarding management of IP,

following guidelines will be followed to resolve the disputes:

13.1 In case of any disputes between the University, Collaborating Organization and

the Inventor(s) regarding the implementation of the IP policy, the Inventor(s)

may appeal to the Vice-Chancellor of the University through IPR Cell. Efforts

shall be made to address the concerns of the Inventor(s) by developing and

instituting an arbitration mechanism and arrangement with the consent of IPR

Cell. The Vice-Chancellor’s decision in this regard would be final and acceptable

to the University, Inventor(s) and Collaborating Organization/Industry.

14. JURISDICTION

As a policy, all agreements to be signed by the University will have the jurisdiction of

the University and shall be governed by appropriate laws in India.

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