Académique Documents
Professionnel Documents
Culture Documents
Annexure (s)
Suggestive Guidelines on Ownership of IPR and Revenue Sharing Mechanism I
Form for Submitting Proposal for IPM Cell II
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Acronyms
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I. Background
1.1 Property has been at the very core of long struggle for rights. Generally,
this right to property refers to tangible property like land, building and other
resources. Realizing the potential of knowledge as main creator of wealth in the
new knowledge economy, the focus is now on protecting and managing
Intellectual Property (IP)1. So much so that this led to incorporation of Trade
Related Aspects of Intellectual Property Rights (TRIPS) within the framework of
World Trade Organization (WTO) in the 1994 in context of cross-border trade
between nations.
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Intellectual Property is a general term covering patents, copyrights, trademarks, industrial
designs, geographical indications, protection of layout design of protection of undisclosed
information (Trade secrets).
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Intellectual Property Rights are legal rights that results from intellectual activity. The
intellectual activity may include any activity in industrial, scientific, literary and artistic fields.
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System, there is a need to put in place this system to cover the universities in the
country.
II. Introduction
2.1 In view of the above, all universities need to be encouraged to set up
Intellectual Property Management (IPM) Cells. UGC shall facilitate 50 (fifty)
universities having research focus to set up such cells. IPM Cells shall create their
own corpus with a view to become financially sustainable over a period of time.
UGC shall establish a National IPR Facilitation Centre (preferably at one of the
universities in Delhi) and four (4) Regional IPR Facilitation Centres (RIFCs) in
four universities located in the four regions of the country with a view to create
awareness, facilitate and protection and management of IPRs from the university
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system in the country. Location of National / Regional Centres in the universities
shall be finalized on competitive basis. Though, under these guidelines,
2.2 IPR Facilitation Centres under the UGC will work closely in association
with the National Patent Office and the Regional Patent Offices under the
Ministry of Industrial Policy and Promotion, Government of India. Attempts
shall be made so that Patent Information System of the Ministry could be
extended to the IPM Cells or at least to the National / Regional Centre(s) in the
university system. UGC shall provide funding support to enable the universities
to file both Indian and the International patents. Whereas funding for filing
Indian patents shall be provided through the Regional Centres, funding support
for filing International / US patents shall be provided through the National
Centre. A panel of Patent attorneys shall be maintained and fee structure laid
down to enable the universities to use their services for filing of patents. Similar
processes shall be adopted for other types of IPRs.
2.3 IPM Cells in the universities and the IPR Facilitation Centres at the
national level and the regional levels will work closely with the IPR Chairs [Four
established by the Ministry of HRD and two by CSIR] for promotion of IPR
education and training in the country. For this purpose, standard model
curriculum and learning material (both in print and multi-media formats) for
regular academic programs as well as short-duration training courses shall be
prepared. Support of Consortium of Electronic Communication (CEC) could also
be sought for the purpose. IPR Cells / Centres shall facilitate for launch of full-
fledged academic programmes aimed at development of manpower in the area of
IPR. These Cells in the universities and the IPR Facilitation Centres at the
national level and the regional levels shall also work closely with the Ministry of
HRD, Patent Facilitating Cells under TIFAC, IPR Cells under the Ministry of
Electronics, CSIR, ICMR and ICAR for creation of awareness on need for IPR
protection and its effective management in the new world order.
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2.4 IPM Cells in the universities and the IPR Facilitation Centres at the
national level and the regional levels will also work with the NRDC in the process
of obtaining IPR and also for ensuring successful transfer and commercialization
of technologies. WIPO University Interactive Program shall be effectively utilized
for awareness building and basic training on IPR issues in the university system
in the country.
2.6 In these guidelines, IPRs would include not only patents but also plant
varieties protection, design and integrated circuits and other innovations that
require mandatory registration for protection
III. Objectives
3.1 University Grants Commission (UGC) is committed to maximize the
benefits that the universities get from their intellectual capital by stimulating
higher levels of innovation through a comprehensive system of rewards, ensuring
timely and effective legal protection for their IP and leveraging and forging
strategic alliances for enhancing the value of their IP. This scheme has been
conceived with the following objectives:
To create awareness and develop a culture for protection and management
of IPRs in the universities.
To facilitate protection and management of IPR created in the University
system in the country by creation of an enabling environment that fosters
innovation.
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To assist researchers and faculty members to have access to best practices
for identification, protection and management of IPRs in order to
maximise the benefits and returns from investments in research.
4.2 The IPM Cell shall be responsible for the entire portfolio of intellectual
property of the university. The Cell would put in place an enabling policy
environment, proper structures and processes and also provide financial support
to encourage creation of intellectual property, its capture, documentation,
protection, evaluation and its commercialization. The IPM cell will be
empowered to manage the University’s intellectual property (IP) and to provide
patenting, licensing and other IPR related services to all departments / centres of
the university. IPM cell will be authorized, on behalf of the university, to file
patent applications and execute other documents; execute license and technology
transfer agreements enter into unilateral and bilateral confidentiality and non-
disclosure agreements, and execute other documents related to patents and
confidentiality. More specifically it should encourage innovation in the university
by supporting inventor(s) to file patents and assist them in its commercialization
either directly or through an outside agency. Similar processes shall be followed
for other kind of IPRs.
4.3 When an invention is made, the inventor(s) should submit the following
documents to the IPM Cell for objective evaluation of the invention and its
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patentability - The nature of invention; the name(s) of the inventor(s); complete
patent search and potential use of the invention along with such other details as
may be required.
4.4 The IPM Cell will accept all proposals for patents and scrutinize them with
the help of the Advisory Committee and then recommend suitability of the
proposal. While presenting the invention in front of the committee, the Principal
Inventor must have a confidentiality agreement between all the members of the
IPM cell and the inventing group. The Principal Inventor must submit a list of
inventors in the group to the IPM cell to avoid any future misunderstanding. In
case the cell cannot decide on the national and/or international patentability of a
particular invention, the outline of the invention (particulars about the
process/product without going into technical details of invention) may be sent to
an expert for the comments about the patentability of the invention. Principal
Inventor’s suggestion may also be forwarded to the expert(s) for consideration.
4.5 The decision of the IPM cell should be communicated to the inventor(s)
with maximum clarity about the status of the invention i.e. patentability and
about filing national/international patent applications. Normally the inventor(s)
should work through the IPM cell for patenting their inventions. Considering
urgency of filing a patent the IPM Cell may be empowered to file a Provisional
Patent through the University or University approved patent attorney and the
final decision about filing the full specification should be taken at the earliest.
4.6 It is important to realize that a patent has a value only if it has commercial
potential and viability. R & D effort is expensive and transfer of its results to
users is a complex process. The University should preferably grant non-exclusive
license for commercialization. Exception may be made on case-to-case basis.
Any technology transfer will be associated with an agreement between the
University or the agency through which the University is transferring the
technology and the recipient of the technology. The University should decide the
payment terms before the agreement is made. The royalty and the revenue will
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be shared according to the policy decided by the University. On matters of
ownership of IPR and revenue sharing mechanism, an arrangement has been
suggested at Annexure I.
4.7 Generally the University shall seek indemnity from any legal proceedings
while transferring know-how in case of manufacturing defects, production
problems, up gradation and debugging obligation which can be done only by a
commercial organization. There may be a situation where in spite of all
indemnity clauses litigation may arise. A part of the revenue earned from the
technology transfer should therefore be kept separately for addressing such legal
cases. If the technology transfer is through some other agency, the responsibility
of bearing legal expenses will lie with that agency.
Funding
4.9 UGC will provide seed funding to the Universities for setting up of the IPM
Cells on a selective basis. Non-recurring grant of a maximum of Rs. 5 lakh and a
recurring grant of a maximum of Rs.2 lakh per year per Cell for a period of five
(5) years) would be provided. Later, it would be reviewed. IPM cells would be
required to be self-sufficient on a long-term basis.
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4.10 Ideally patent filing costs should be borne by the project funding authority.
In case, it is an industry sponsored project, the industry should take the
responsibility of filing and maintaining the patents. Such an arrangement has an
inherent advantage of self-correction. Initially, UGC would provide full cost of the
patenting expenditure (both Indian and international as the case may be) till the
University generates sufficient corpus fund to become self sufficient. Normally,
one third portion of the money out of overhead expenses from the project grants
may be set aside for the IPM cell. Patent filling costs will be paid in any of the
following ways;
• IPM Cell’s own resources;
• From recurring grants received from the UGC. (To supplement this, some
funds would be available with National Centre for international patent
filing and some funds with the Regional Centres for patent filing within
the country by the UGC.)
• Paid by the inventor through project grants; (Some of the funding
agencies sanction grants only on the condition that the technology
developed as a result of the project funded by them will belong to the
funding agency. In that case the IPM cell will have to follow the
conditions laid by the funding agency.)
• Through external agencies like NRDC; (If an external agency like NRDC,
(National research and Development Corporation) a Govt. of India
enterprise, will fund the patent filling and licensing cost. In that case the
income will also be shared with the external agency.)
4.11 After considering a request from the researcher for filling patent or other
IPR, the IPM Cell may decide not to file an application but permit the researcher
to file an application on his own on such terms and condition laid down in this
guidelines regarding sharing of benefits. In such cases the researcher takes the
responsibility of filing the application. The University may financially assist the
researcher in deserving cases.
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4.12 In case the IPM Cell decide to file an application on behalf of the
University the IPM Cell may take immediate steps to file the application directly
to the Patent or other offices concerned with the help of lawyers identified for this
purpose. The cost of the same shall be met by the University from their funds and
later claimed from the RIFC.
4.13 In case the IPM Cell decides to file the application on behalf the University
without utilizing the funds of the University the IPM Cell shall forward the
application to the RIFC for filing.
5.1 UGC will set up four (4) Regional IPR Facilitation Centres (RIFC). These
shall be located in four different regions of the country and hosted by university
to be identified on competitive basis in that region. RIFCs will have Faculty
Coordinator (Incharge) and Associate Faculty Coordinator on part-time basis to
be assisted by full time project staff to be appointed on contractual basis.
5.2 The RIFCs will have trained staff with appropriate computing and internet
facilities to access patent databases. The concerned RIFC will extend all help to
the university faculty for detailed patent searching and provide access to the
other patent related data bases. The regional centres will coordinate with the
Indian patents filed in region. These will be equipped with rich collection of IPR
related books and literature, CDs and useful information brochures / forms of the
Indian Patent office. These Centres would facilitate and promote the intellectual
property generation, patent filing and networking with the Universities in a
coordinated manner. These will organize short duration awareness programmes
for the universities of that region per year. The awareness Programme may be
held in different universities on rotation basis. The Regional Centres will receive
the patent application from the universities duly approved by the Intellectual
Property Management (IPM) cells and would initially take 100% financial and
administrative responsibilities for filing the patents in India including post patent
liabilities. In case the inventor(s) need to be personally present at the patent
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attorney’s office for consultation, the travel and local stay expenses would be
borne by the RIFC.
Funding
5.4 Financial resources needed to establish RIFCs would initially be provided
by the UGC. UGC would provide a non-recurring grant of Rs. 15 lakh and a
recurring grant of Rs.8 lakh per year per centre for a period of five (5) years.
Thereafter, it would be reviewed for extension of support. RIFCs should work
towards becoming self-sustaining over a period time. Additional recurring grant
may be provided to the RIFCs towards e-imbursement of cost of filing patents in
India by the universities.
5.5. The RIFC, may also, in deserving cases refund the cost of filing IPR
applications met by the Universities after complying the procedure for funding
above.
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VI. National IPR Facilitation Centre (NIFC)
6.1 UGC will establish a National IPR Facilitation Centre (NIFC). This will be
hosted by one of the Universities to be selected on competitive basis. NIFC would
be set up in partnership with DST / TIFAC. NIFC would comprise of a Faculty
coordinator (Incharge) and an Associate Faculty Coordinator on part-time basis
to be assisted by full time project staff to be appointed on contractual basis.
6.2 The National Centre through its four regional centres will monitor the
activities of the University’s IPM Cells with policies for ownership, protection and
exploitation of intellectual property and provide appropriate guidance to these
cells for patent filing, ensuring technology transfer etc. NIFC will coordinate
activities pertaining to International patents filed. NIFC will function as a Central
Co-ordinating Agency for RIFC at regional level. It will provide guidance,
assistance and co-ordinate all activities of the Centres under it. NIFC will publish
a Source Book on Innovation Management and newsletters for patent related
information. NIFC shall also create an interactive portal on information sharing
and interaction between different agencies and the universities. NIFC will assist
the universities to frame guidelines on sharing of financial benefits and
professional incentives for the inventors in addition to the royalty obtained from
the technology transfer. The NIFC will advise the universities on issues like
provision for special academic / professional incentives to be given to those
faculty members whose technologies are transferred to industry in India and/or
abroad. For objective assessment on the status of IPR issues NIFC would conduct
surveys and collect and compile information on matters related to IPR in the
university system in the country.
6.3 NIFC will advise the universities on appropriate legal action after
examining any patent related litigation faced by the University such as
infringement, suppression of facts, fraudulent action by third party, and
duplication of patent through insignificant changes. NIFC shall also mobilize
public opinion and influence government decision or policy on diverse IP issues
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through analytical and scientific studies and spearheading the movement towards
formulating a national IP policy for Indian Universities. A website with focus for
dissemination of IPR related information and for interaction between different
Cells and Centres on IPR could be put in place through the National Centres. The
National Centre would also coordinate with other agencies for capacity building
of faculty members and staff associated with the IPM Cells and Regional Centres
through training and development programmes. A comprehensive list of resource
persons with various competences shall be prepared for use in the system.
6.4 NIFC shall suggest policy on sharing IPR between an Indian University
inventor and a foreign collaborator. NIFC will maintain a complete database of
the expertise available in the Universities. Any query from an industry or any
other organization on a specific area of expertise.
6.5 NIFC shall work towards suitably integrating IPR issues in curricula at
appropriate levels in different field of study as may be required. A short but
precise Pre-Ph.D. course could be included in the M.Phil or Pre-Ph.D. curriculum
in each University. NIFC would also advise the universities on appropriate
royalty sharing, confidentiality in case of foreign collaboration projects.
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National Steering Committee
6.7 NIFC would have a small steering committee comprising of NIFC Director,
all four directors from RIFCs, two patent attorneys, and representatives from
TIFAC, CSIR and DBT. The steering committee shall be responsible for steering
different activities taken up the National Centre.
Funding
6.8 Financial resources needed to establish NIFC would be provided by the
UGC. UGC would provide a non-recurring grant of Rs. 15 lakh and a recurring
grant of Rs.10 lakh per year for a period of five (5) years. Thereafter, it would be
reviewed for extension of support. NIFC should work towards becoming self-
sustaining over a period time. Additional recurring grant may be provided to the
NIFC towards re-imbursement of cost of filing international patents by the
universities.
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Table: Level of Financial Support from UGC
VIII. Implementation
8.1 As a first step, the National Advisory Committee shall be constituted. This
committee will invite proposals from the universities for setting up of IPM Cells.
Proposals from universities for hosting the Regional Centre (s) and the National
Centre shall also be invited. Whereas for the IPM Cells, only seed funding shall be
provided by the UGC. In case of National / Regional Centres, total cost shall be
borne by the UGC. Norms for funding of National / Regional Centres shall be
decided by the National Committee.
8.2 Grants to the Regional Centres and the IPM Cells will be disbursed
through the National Centre. National Centre will in turn receive lump sum grant
from the UGC for this activity. However, before the National Centre is set up,
these grants may be given directly by the UGC. Universities seeking assistance
from the UGC for setting up of IPM Cells will have to make an application
(through the Regional Centre) to the National Centre in the format given at
Annexure II. The National Committee after assessing the research profile and
potential of the University would recommend the grant to the University. Eighty
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percent of the non-recurring grant would be released immediately on approval of
the IPM Cell for the University and the balance twenty percent would be released
on receiving report of having set up the Cell. Recurring Grant would be released
in the beginning of each financial year on receipt of the return and a statement of
expenditure for the previous year and the work programme and financial
estimates for the current year. Same process hall be adopted for the Regional
Centres. Proposals for re-imbursement of expenditure on patenting will be
decided at RIFC level for patent in India and for international patents by the
NIFC. If there is any doubt/dispute regarding suitability of the proposal
decision of the NIFC will be final. Permanent teachers/researchers working in
the University/Research Organisations are eligible for the financial assistance
provided their parent organizations are recognized under Section 12B of the UGC
Act.
8.3 UGC will release, in the first year, an on-account grant of Rs.50 Lakh to
the National Centre. Subsequent grant will be released on receipt of statement of
expenditure, utilization certificate and detailed progress report of the activities
undertaken by the National / Regional Centres and the IPM Cells.
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Annexure I
Guidance on Matters Relating to Ownership of IPR and
Revenue Sharing Mechanism
Sometime the industry is willing to collaborate with the University scientist for
optimization of an invention which has already been partly or fully developed as
'Proof of the Concept' but has not been protected through IPR and therefore, has
not reached to a stage of disclosure. Under such circumstances, the university
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should ask the inventor to make a confidentiality agreement with the collaborator
so that the intellectual property generated by the inventor or through
collaboration should not be misused by either of the collaborating partners. Even
the research students associated in that collaborative project should also be
brought under that confidentiality agreement. No information under such an
invention should be published or made part of the student's thesis until patent
application is filed.
Any collaborative work funded partially or entirely by industry should have the
following components of understanding.
- Confidentiality agreement
- Exclusive/ non-exclusive nature of ownership of know-how
- Period of agreement
- Phase of payment
- Royalty sharing/ one-time payment
- Deputation of manpower and terms of agreement
- Facilities from industry to be extended to university deputed staff in terms of
salary and other benefits
- Any other specific terms that may be required.
A compendium for the purpose may be prepared.
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Case 1: When IPM cell is funding the patenting in India and licensing cost
Case 2: When IPM cell is funding the patenting abroad and licensing cost
Case 3: When the inventor is paying the patenting and licensing cost through
his/her research grants
Case 4: When NRDC or nay any External Agency is funding the patenting
and licensing cost
In case there is more than one inventor, the inventors’ share shall be divided
among all inventors as per mutually agreed terms between them. When the
revenue has to be shared with an external agency, such as NRDC etc, the agency’s
share should be decided through a MoU between the University and that agency
for a particular invention.
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Annexure II
Form for Submitting Proposal for IPM Cell
1. Name of University
2. Address
Phone Number
Fax
E-mail
3. Whether the University is qualified under Section 12-B
4. Head of the Institution
5. Nodal Person on IPR Related Matters
6. Academic Profile of the University
No. of courses No. of students on Broad subject area
rolls
Under Graduate
Post Graduate
Doctoral
8. Research Activity
10. Citations
11. Patents
Whether having Indian Patents
Whether having International Patents
12. Would you like to be considered for Regional Centres, if so please provide
justification why your university should be considered to host the Regional
Centre?
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