India houses a variety of talent. There is high competition to get into the most coveted of institutions, many of which perform high level research and development making us one of the fastest developing countries. So as researchers, or as a part of an entity involved in intellectual property laws, have you ever wondered what the policy regarding IPR is?
In this write up I have tried to read the policies of some of the popular universities. The information here was taken in around November, 2013
Happy reading. If you have further queries, please leave a comment.
INTELLECTUAL PROPERTY RESEARCH POLICY IN INDIA:
Developing countries have a dual responsibility of diffusion of knowledge and protecting innovative ideas. Most of the times, a country which is growing in terms of education and economy tries to maintain a weak IPR policy so that its people can gain through it.Once a country reaches technological maturity to achieve major breakthroughs, the benefits of protecting knowledge through strong IPR (incentive to innovate) might outweigh the benefits of diffusion.
India launched Science, Innovation and Technology Policy in 2013, with an aim to access and form National goals to promote IPR. But there is no National Intellectual Property Policy in the country so far. The Policy notes that India’s R&D investment is less than 2.5% of the global investments. It has been under 1% of the GDP.
INTELLECTUAL PROPERTY RIGHTS OF A UNIVERSITY:
Intellectual Property Rights in an educational institution can be brought into existence by the works of a faculty, or a student or any other authorised person who uses resources of the university.
The Research and development undertaken in a University can be broadly categorized as:
1. Research under the university with or without using its resources.
2. Research under a sponsored programme.
3. Research under joint/collaborative programmes.
There are contracts between the university and the private body sponsoring a programme regarding distribution, usage of funds and the rights of the parties, if there is an invention which can be commercialised.
According to the WIPO guidelines, Intellectual property policy should bring harmony to the conflicting interests of all the stakeholders in the generation and commercialization of a patent. Universities and R&D institutions should be dedicated to teaching and research, and to the dissemination of all new knowledge generated. The basic goal of an intellectual property policy should therefore be:
- to provide for the intellectual property generated at the institution;
- to promote the progress of science and technology;
- to ensure that discoveries, inventions and creations generated by staff and students
are utilized in ways most likely to benefit the public
PRESENT POLICIES OF UNIVERSITIES:
In India, universities have a huge potential to innovate. Universities that are listed in WIPO for high numbers of patents filed by them include the IITs, IISc Bangalore, Delhi University, Goa University,GB Pant Agricultural University, AIIMS and Mahatma Gandhi University, Kottayam.
All these institutes have their own Intellectual Property policies, but the basic features of these policies are similar. They have in place a separate department for Intellectual Property management, like: IP Cell (IPC) in BHU as well as IISc, Bangalore; Institute Intellectual Property Committee(IPCC) in IIT-Roorkee and Industrial Research and Consultancy Centre (IRCC) in IIT-Bombay.
The important features of IPR Policy of an Indian University compared with the model guidelines given by the WIPO are:
1. Ownership determination: Ownership of the following rights are determined by the policy:
i. Copyright: Any literary or artistic work that has been done either by the teachers, students or other permitted persons is a copyright. Usually the authors are the owners of copyrightable work but there are certain exceptions:
a. A question paper or study material made by the teacher is property of the University but commercial rights are given to the teachers.
b. If the work is produced during the course of sponsored and/or collaborative activity, specific provisions related to IP, made in contracts, shall determine the ownership of IP.
c. When the material, including software is developed using considerable resources of the university, the owner of such material is the university.
Whereas in BHU, the ownership as a general rule is jointly held by the author and the university except in the above mentioned circumstances.
ii. Invention(s), Design(s), Integrated circuit layouts, and other creative work(s): These rights usually belong to the author unless significant resources of the University has been used, in which case University will be the owner. In case of joint/collaborative efforts, terms of the contract will determine ownership. In every other case, the university owns the invention.
iii. Trademark and service marks etc: Trademark and service marks developed for the university are the property of the university, unless contrary is written in the contract between the parties.
In IISc, Bangalore, in a sponsored or a collaborative research, the ownership is held jointly by the sponsor and institute if the sponsor is ready to bear the costs of protection of IPR with the Institute otherwise the institute at its own discretion can protect and own the invention.
2. Disclosure by the creator/inventor regarding the IP: When the creators believe that they have generated patent-able or commercialise-able intellectual property using Institute-supported resources, they shall report it promptly in writing along with relevant documents, data and information, to the Institute in specific forms by the university for this purpose. Disclosure is a critical part of the IP protection process for claiming the inventor-ship.By disclosure the inventor assigns his/her rights to the institute. The information when shared by any individual in the process of disclosure shall be treated as a confidential information, both by the inventor as well as the people to whom disclosure is made.
3. Assessment of the creation/ invention by the authority:The authorized/ designated office/ committee of the Institute( IP-cell, IRCC etc) will evaluate the disclosure made by the creator on the prescribed Invention Disclosure Form and determine whether there is a good prima facie case for believing that the intellectual property has economic value and it needs IPR protection. The Institute shall communicate to the creator its decision whether the:
i. Institute wishes to own and commercialise the intellectual property.
ii. Institute is unwilling to commercialise the intellectual property.
iii. The ownership of the intellectual property is in doubt.
Further steps are taken accordingly. Where the institution refuses to own the property, all the rights related to it shall invest with the owner.
4. Contractual relationship with the Sponsor/collaborator outside the university: When the invention occurs under a joint or collaboration research and development, any decision to exploit the IPR shall be made according to the contract between the parties. Usually the right of first refusal is given to the sponsor or a collaborator.
5. Commercialisation process and procedure: All expenses for obtaining and maintaining statutory rights in Institute owned intellectual property are usually borne by the Institute. The Institute will take steps to commercialise all Institute-owned property according to a time schedule.If the Institute opts to protect the creative work, it shall provide an IPR Advisor/Patent Attorney for drafting the IP application as appropriate. The institute shall pay for access to the relevant IP information databases and other associated costs. The inventor(s) shall conduct IP searches, study the present state of art and provide the necessary inputs to assist in the drafting of the IP application. The Institute shall bear all costs of drafting and filing an Indian IP application. If the institute/creator chooses to file IP applications in other countries, then it shall bear the cost of application and other associated costs. The revenue sharing model is based on the fact that the institute paid for the commercialisation.
6. Licensing: The Institute will license at its discretion the Institute-owned intellectual property for commercialisation through third parties who may or may not be the creator through the grant of exclusive/ non-exclusive licenses, or assign its ownership rights to third parties/ creator safeguarding the interests, financial or otherwise, of the Institute.The Institute shall be free to enter into agreements with overseas institutions for protection and licensing of the IP.Thesis of students or teachers would be licensed without any royalty to the institutes like in BHU.
7. Sharing of revenue: Any revenue generated by the exploitation of IPR, will be shared between
the creator/inventor, his or her faculty or department/centre and Institute after deduction of agreed costs borne by the Institute on the prescribed terms and conditions. This is explained by following models:
Model 1: In IIT-Bombay, revenue sharing system is follows:
It is suggested that amount Q be initially fixed at Rs. 100 lakhs. The creator(s) share would be declared annually and disbursement will be made to the creator(s), their legal heir, whether or not the creators are associated with IITB at the time of disbursement.
For the first amount Q
For the next amount Q
For amounts more than 2Q
When ITB reassigns the rights of the IP to its creator(s) for any country, the creator(s) shall reimburse the costs incurred by IITB for the protection, maintenance and marketing and other associated costs from the cumulative earnings from successful commercialization in that country as under:
Upto twice the cost incurred by IITB for protection, marketing and other associated costs.
Co-creators of IP shall sign at the time of disclosure, a Distribution of IP Earnings Agreement, which shall specify the percentage distribution of earnings from IP to each co-inventor. The inventors may at any time by mutual consent revise the Distribution of IP Earnings Agreement.
Model 2: In IIT-Roorkee:
The guideline for sharing the net earnings generated from the
commercialisation of Institute-owned intellectual property will be taken in slabs as
For the first slab of amount “X”
For the slab of next amount “X”
For amounts more than “2X”
Model 3: In IIsc:
The revenue arising out of licensing of IP and royalty would be shared in the appropriate ratio (currently, this ratio is 60:40 ) between the inventor(s) and the Institute. Where IISc reassigns the right of the IP to its investor(s), the inventor(s) shall reimburse all the costs incurred by IISc, which include protection, maintenance, marketing and other associated costs.
8. Dispute resolution: In case of any disputes between the Institute and the inventors regarding
the implementation of the IP policy, the aggrieved party may appeal to the authority mentioned. Efforts shall be made to address the concerns of the aggrieved party. The decision in this regard would be final and binding. In case of IIT- Bombay and IIT- Roorkee, the authority is Director of the institute, In BHU, the dispute is referred to a tribunal, consisting of one member appointed by the Vice-Chancellor, one member nominated by the other party(s) and the Dean Faculty of Law as Umpire.
Some notable disputes regarding ownership of IPR all over the world are as discussed in Ip Advocate website are:
1. University of Western Australia v. Gray (2008) - The university claimed that by reason of his employment with them, it was entitled to rights in Dr. Gray's cancer related research, inventions and related patents. The court ruled that faculty UWA's regulations could not validly appropriate employee's property rights, and that an express 'duty to perform research' was not synonymous with a 'duty to invent.'
2. Chou v. University of Chicago (2001) - Dr. Chou, a postdoctoral student at the University of Chicago co-discovered a vaccine for the herpes virus, then her supervisor, Dr. Roizman concealed and excluded her from his patent application. Chou sued for correction of inventorship, fraudulent concealment and related charges. The state court ruled she had no standing to sue because she was required by her employment contract to assign her rights to the University but the Federal Circuit reversed that decision because she had a pecuniary interest to 25% as an inventor under the policy.
The policies of Indian Universities are different from the policy guideline in WIPO in features such as:
1. The policies do not define what significant use of resources mean: It is very important because the ownership of a property is directly dependent on whether the inventor or creator has used significant resources of the university. In WIPO document, different criteria and probable meanings of the term “ Significant resources have been provided.
2. No provision for protection of trade secrets: Trade secrets are probably not included because for a university, openness of knowledge might have more significance than keeping any invention/creation as a secret.
3. Many University policies, including the policy of IISc, Bangalore have ignored recognising New Plant Varieties as Intellectual Property or providing a policy for discovery/ invention in this field. This is despite the fact that India has an act called The Protection of Plant Varieties and Farmers’ Rights Act, 2001.
PRESENT STATUS OF SPONSORED RESEARCHES IN INDIAN UNIVERSITIES:
Sponsored researches in Indian Universities are conducted either by government body funds ( Like CSIR, DST-SERC etc) or by private companies/bodies.
The government sponsored programmes are not based on commercialisation while the private funded are, making private funding a good oppurtunity for the innovators as well because they get incentives for their products as commercialisation is done.
In India, different ministries, departments and funding agencies have different policies. For example, the department of S&T issued general guidelines regarding the ownership of IPRs that resulted from DST funding. This guideline leaves the question of ownership to the contract made between the inventor and the enterprise. On the other hand, inventions from projects funded by the Department of Ocean Development can be owned entirely by the institutions.
Generally speaking, the concept of IPR policy in Indian academic institutions is still incipient with only a small number of institutions announcing their policies. Most universities just deal with IPR on a case by case basis.
The Science Technology and Innovation policy,2013 talks about an innovative project -Public Private Partnership (“PPP”). A National Science, Technology and Innovation Foundation will be established as a PPP for investing critical levels of resources for innovative and ambitious projects.
Funding of research projects by private bodies is an important aspect in developed countries. For instance a report in Times of India states, The research and development sector is increasingly becoming business-funded in developed countries. For instance, the European Union's R&D programme in 2008 relied 55% on private sector's funds, a third came from the respective governments and around 9% from abroad. In 2007, of the entire amount spent in Japan, 77.7% was bankrolled by the private sector, and in the US, 67.3% was funded by the business houses.
The targets of the policy are set at a good bar and we must strive to achieve the goal. India has declared the decade 2010-2020 as decade of Innovation and this step seems to be in the right direction to achieve the status of a hub of innovations, of which universities are an integral part.
CURRENT SPONSORED PROGRAMMES:
Sponsored programmes are usually not disclosed by the contracting parties due to the nature of Intellectual Property Rights. But certain companies have Open collaborative research programmes where they disclose certain details. For example:
IBM and IIT Madras & IIT Kharagpur: signed an Open Collaborative Research Agreement to develop systems for making power grids more efficient and resilient in a smart grid environment.
IBM and National Institute of Design (NID): signed the Open Collaborative Research agreement that will focus on ethnography and user research to identify the communication needs, preferences and purposes of different user communities from different regions in India.
IDC,IIT Bombay, keeps a list of ongoing sponsored projects. There are a number of public and private sponsored projects going on in this institute. While in BITS Pilani, the ongoing research is funded by government bodies.
Just 220 million rupees (US$4 million) of IIT Bombay's 1.8 billion rupee (US$32.6 million) research fund in 2011 came from the private sector. Dean of R&D at IIT Bombay, was quoted in a news that they want to have a broader linkage with industryIndustry is helping with support for setting up research laboratories, and collaborative projects between faculty and students, and getting research projects sponsored. IIT Kharagpur attracted 1.2 billion rupees (US$21.7 million) in funding from a leading corporation to carry out advanced research in power technology.
The STI policy and Indian Universities, both aim to increase the interest of private bodies towards sponsoring their Research and Development. Realising these goals can change the output in terms of innovation of this country.