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INTELLECTUAL PROPERTY
        POLICY



         P. ILANANGAI
     PATENT DEPARTMENT
       ALTACIT GLOBAL
            CHENNAI
OVERVIEW OF IP POLICY
   Most universities and R&D institutions in developing
    countries are now entering a stage where they will be
    expected to interact more with industry as well as
    governmental and nongovernmental organizations, in
    terms of consultancy, research contracts and
    commercialization of inventions, innovations and
    research findings.
   In the past, many universities and R&D institutions have
    been "amateur" in their relations with sponsors of R&D
    activities. The reason is that most universities and R&D
    institutions do not have intellectual property policies in
    place to safeguard their interests in managing
    collaborative research activities.
IP POLICY EXISTS
 to encourage research and innovation,
 clarify ownership of intellectual property rights,
 create opportunities for public use of University
  innovations,
 provide    for the equitable distribution of
  monetary and other benefits derived from
  intellectual property,
 minimize      the possibility of inadvertent
  infringement of the IPR of third parties.
TO WHOM IT APPLIES
o   faculties, staffs, students, to all persons receiving
    funds administered by the University and any other
    persons employed by the University
o   employees of R&D institution
OBJECTIVES OF IP POLICY
 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 staffs, employees and students are
  utilized in ways most likely to benefit the public.
ISSUES TO BE ADDRESSED BY AN IP POLICY
 coverage of intellectual property policy;
 ownership of intellectual property;

 disclosure of intellectual property;

 marketing, commercialization and licensing of
  patents;
 distribution of income;

 rights and obligations of an inventor and the
  institution.
COVERAGE OF IP POLICY
 Universities and R&D institutions need to define
  intellectual property broadly, and their policies need
  to be comprehensive in their coverage and holistic
  in their approach.
 However, depending on the direction of R&D
  activities, each institution should decide on the type
  of intellectual property to be included in its
  intellectual property policy.
OWNERSHIP RIGHTS
 Participation Agreement
 Service Agreement

 Material Transfer Agreement

 Confidentiality Agreement

 Claim of Ownership by a University or R&D
  Institution
 Claim of Ownership by an Individual
DISCLOSURE OF INVENTIONS
       IMPORTANCE OF A TECHNOLOGY TRANSFER
                             OFFICE
   Universities and R&D institutions should have in place a
    department, unit or section, with an appropriate name,
    such as Technology Transfer Office, Center for
    Technology Management, etc., responsible for the
    protection and commercial development of inventions
    and creations.
         IMPORTANCE OF INVENTION DISCLOSURE
    A disclosure is used to give a formal description of an
    invention that is confidentially made by the inventor to
    his or her employer. It is a document that provides
    information about the inventor or inventors, what was
    invented, the circumstances leading to the invention and
    facts concerning subsequent activities. It provides the
    basis for determining patentability and the technical
    information for drafting a patent application. Such a
    disclosure is the first signal to the university that an
    invention has been made.
HOW TO HANDLE A DISCLOSURE
   Universities and R&D institutions should develop and
    adopt disclosure forms to assist inventors. If a university
    or R&D institution does not have a Technology Transfer
    Unit, there should be a committee responsible for
    receiving and processing disclosures of potentially
    patentable inventions.
       THE KEY INFORMATION REQUIRED ON THE
                      DISCLOSURE FORM :
   invention title;
   names of the inventors;
   description of the invention;
   sponsorship, if any;
   design date and date put into practice;
   publication dates, existing or projected, if any.
MARKET EVALUATION AND LICENSING


 It is essential that any patentable invention be
  analyzed for its industrial relevance and commercial
  potential.
 A license is a contract which awards to a party
  other than the owner of the intellectual property the
  right to make, use, sell or import products or
  services based on the owner’s intellectual property.
  Licenses may be awarded on an exclusive or non-
  exclusive basis and may provide for payment of
  license fees, royalties, or other income to the owner
  of the intellectual property.
REVENUE DISTRIBUTION
  100% of the revenue goes to the institution until all
  out-of-pocket expenses associated with protection
  and exploitation of the patent or copyright have
  been reimbursed.
 thereafter, the net income is shared between the
  inventor and the institution.
 each R&D institution will establish and review the
  thresholds, and revise them as necessary in the
  light of inflation and other economic factors in the
  country concerned.
RIGHTS AND OBLIGATIONS OF AN INVENTOR
              AND THE INSTITUTION

      OBLIGATIONS OF A UNIVERSITY OR R&D
   INSTITUTION DURING AND AFTER INVENTION
                      DISCLOSURE
 When an intellectual property is disclosed by a
  member of staff for possible commercialization, the
  institution is obliged to ascertain its commercial
  potential. The disclosures are considered
  confidential by the institution, and there should be
  no breach of confidentiality. The institution must
  endeavor to obtain written acknowledgement of
  such obligations from the members of the
  Technology Transfer Unit
OBLIGATIONS OF AN INVENTOR DURING AND
          AFTER INVENTION DISCLOSURE
   The inventor of new intellectual property must
    thoroughly and promptly disclose all inventions,
    discoveries and other works that belong to the
    institution. He must provide assistance as may be
    necessary, throughout the technology transfer
    process, to protect and effect the transfer of the
    intellectual property. The inventor must abide by all
    commitments made in license, sponsored research
    and other agreements, and laws relating to privately
    funded research.
RESPONSIBILITIES OF EMPLOYEES AND OTHER
         COVERED INDIVIDUALS
   adhere to the principles embodied in this policy;
   sign, when so requested by the University, R&D
    institutions;
   create, retain, and use intellectual property according to
    the applicable local, state, federal, and international
    laws University and other institution policies;
   disclose promptly in writing intellectual property owned
    by the University, R&D institution;
   cooperate with the University , R&D institution in
    securing and protecting their intellectual property,
    including cooperation in obtaining patent, copyright, or
    other suitable protection for such intellectual property
    and in legal actions taken in response to infringement.
THANK YOU

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Ip policy

  • 1. INTELLECTUAL PROPERTY POLICY P. ILANANGAI PATENT DEPARTMENT ALTACIT GLOBAL CHENNAI
  • 2. OVERVIEW OF IP POLICY  Most universities and R&D institutions in developing countries are now entering a stage where they will be expected to interact more with industry as well as governmental and nongovernmental organizations, in terms of consultancy, research contracts and commercialization of inventions, innovations and research findings.  In the past, many universities and R&D institutions have been "amateur" in their relations with sponsors of R&D activities. The reason is that most universities and R&D institutions do not have intellectual property policies in place to safeguard their interests in managing collaborative research activities.
  • 3. IP POLICY EXISTS  to encourage research and innovation,  clarify ownership of intellectual property rights,  create opportunities for public use of University innovations,  provide for the equitable distribution of monetary and other benefits derived from intellectual property,  minimize the possibility of inadvertent infringement of the IPR of third parties.
  • 4. TO WHOM IT APPLIES o faculties, staffs, students, to all persons receiving funds administered by the University and any other persons employed by the University o employees of R&D institution
  • 5. OBJECTIVES OF IP POLICY  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 staffs, employees and students are utilized in ways most likely to benefit the public.
  • 6. ISSUES TO BE ADDRESSED BY AN IP POLICY  coverage of intellectual property policy;  ownership of intellectual property;  disclosure of intellectual property;  marketing, commercialization and licensing of patents;  distribution of income;  rights and obligations of an inventor and the institution.
  • 7. COVERAGE OF IP POLICY  Universities and R&D institutions need to define intellectual property broadly, and their policies need to be comprehensive in their coverage and holistic in their approach.  However, depending on the direction of R&D activities, each institution should decide on the type of intellectual property to be included in its intellectual property policy.
  • 8. OWNERSHIP RIGHTS  Participation Agreement  Service Agreement  Material Transfer Agreement  Confidentiality Agreement  Claim of Ownership by a University or R&D Institution  Claim of Ownership by an Individual
  • 9. DISCLOSURE OF INVENTIONS IMPORTANCE OF A TECHNOLOGY TRANSFER OFFICE  Universities and R&D institutions should have in place a department, unit or section, with an appropriate name, such as Technology Transfer Office, Center for Technology Management, etc., responsible for the protection and commercial development of inventions and creations. IMPORTANCE OF INVENTION DISCLOSURE  A disclosure is used to give a formal description of an invention that is confidentially made by the inventor to his or her employer. It is a document that provides information about the inventor or inventors, what was invented, the circumstances leading to the invention and facts concerning subsequent activities. It provides the basis for determining patentability and the technical information for drafting a patent application. Such a disclosure is the first signal to the university that an invention has been made.
  • 10. HOW TO HANDLE A DISCLOSURE  Universities and R&D institutions should develop and adopt disclosure forms to assist inventors. If a university or R&D institution does not have a Technology Transfer Unit, there should be a committee responsible for receiving and processing disclosures of potentially patentable inventions. THE KEY INFORMATION REQUIRED ON THE DISCLOSURE FORM :  invention title;  names of the inventors;  description of the invention;  sponsorship, if any;  design date and date put into practice;  publication dates, existing or projected, if any.
  • 11. MARKET EVALUATION AND LICENSING  It is essential that any patentable invention be analyzed for its industrial relevance and commercial potential.  A license is a contract which awards to a party other than the owner of the intellectual property the right to make, use, sell or import products or services based on the owner’s intellectual property. Licenses may be awarded on an exclusive or non- exclusive basis and may provide for payment of license fees, royalties, or other income to the owner of the intellectual property.
  • 12. REVENUE DISTRIBUTION  100% of the revenue goes to the institution until all out-of-pocket expenses associated with protection and exploitation of the patent or copyright have been reimbursed.  thereafter, the net income is shared between the inventor and the institution.  each R&D institution will establish and review the thresholds, and revise them as necessary in the light of inflation and other economic factors in the country concerned.
  • 13. RIGHTS AND OBLIGATIONS OF AN INVENTOR AND THE INSTITUTION OBLIGATIONS OF A UNIVERSITY OR R&D INSTITUTION DURING AND AFTER INVENTION DISCLOSURE  When an intellectual property is disclosed by a member of staff for possible commercialization, the institution is obliged to ascertain its commercial potential. The disclosures are considered confidential by the institution, and there should be no breach of confidentiality. The institution must endeavor to obtain written acknowledgement of such obligations from the members of the Technology Transfer Unit
  • 14. OBLIGATIONS OF AN INVENTOR DURING AND AFTER INVENTION DISCLOSURE  The inventor of new intellectual property must thoroughly and promptly disclose all inventions, discoveries and other works that belong to the institution. He must provide assistance as may be necessary, throughout the technology transfer process, to protect and effect the transfer of the intellectual property. The inventor must abide by all commitments made in license, sponsored research and other agreements, and laws relating to privately funded research.
  • 15. RESPONSIBILITIES OF EMPLOYEES AND OTHER COVERED INDIVIDUALS  adhere to the principles embodied in this policy;  sign, when so requested by the University, R&D institutions;  create, retain, and use intellectual property according to the applicable local, state, federal, and international laws University and other institution policies;  disclose promptly in writing intellectual property owned by the University, R&D institution;  cooperate with the University , R&D institution in securing and protecting their intellectual property, including cooperation in obtaining patent, copyright, or other suitable protection for such intellectual property and in legal actions taken in response to infringement.