Model guidelines on implementation of IPR policy for academic institutions

Intellectual Property (IP) refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce. IP is protected in law, for example, by patents, copyright, and trademarks. The IPRs enable people to earn recognition or financial benefit from what they invent or create. An IPR policy could be proven to be a cornerstone of innovation and creativity for academia. It provides structure, predictability, and framework to create and innovate.

National IPR Policy, 2016 is a giant leap by the Government of India to spur creativity and stimulate innovation. It lays the roadmap for the future of IPRs in India. According to the National IPR Policy, a professionally run Cell for IPR Promotion and Management (CIPAM) has been set up under the guidance of the DPIIT (formerly known as DIPP). CIPAM facilitates promotion, creation and commercialization of IP assets. CIPAM has recently prepared MODEL GUIDELINES ON IMPLEMENTATION OF IPR POLICY FOR ACADEMIC INSTITUTIONS.

The model guidelines promote student-led startups and ventures and help them to protect and respect IP.The overall aim of the guidelines is to nurture the spirit of innovation and translate the innovations into products, processes, and services for commercial exploitation. The guidelines aim to contribute in transforming industry and society, by delivering research-led education, promoting innovation, collaboration and fostering human values.

The objectives of the model guidelines revolve around fostering innovation and creativity, protecting IP rights generated by faculty and students of the academic institution, laying down fair and transparent administrative process for ownership control, assignment of IP rights, and sharing of IP generated revenues, promoting collaborations between academia and industry, and establishment of an IP cell for supporting innovation of students, research scholars, and faculty members.

These guidelines apply to all IP created at the academic institution, as well as, all IPRs associated with them, from the date of implementation of these guidelines. These guidelines further apply to all researchers who signed the employment contracts/agreements or such related documents, unless the researcher entered into an explicit arrangement to the contrary with the academic institution prior to the effective date of the guidelines.

The guidelines throw light on the ownership of intellectual property. According to the guidelines, IP relating to patents, trademarks, industrial designs, and semiconductor integrated circuits and plant variety, whether developed by the students, researchers, or faculty members, shall belong to the academic institution, if they utilized the resources and funds of the academic institution for developing such IP. However, if the academic institution determines that these IPs were created by individuals in their own time and unrelated to their institutional responsibilities, then the IPRs shall vest with the individuals. Therefore, the assignment of all the above-mentioned IPs is governed by the same principle.

Interestingly, when it comes to the assignment of rights relating to Copyright, the guidelines propose a different principle. The guidelines mention that the ownership rights in scholarly and academic works generated, even while utilizing the resources of the academic institution, shall ordinarily be vested with the author. On the other hand, the ownership rights in lecture videos or Massive Open Online Courses (MOOCs), films, plays, and musical works, and institutional materials specifically commissioned by the academic institution, shall ordinarily be vested with the academic institution. However, the moral rights shall continue to vest with the author(s), wherever applicable. Clearly, the proposed guidelines have attempted to ensure that the authors get their due credit for their creativity. Such minute IP-specific considerations as reflected in these guidelines are appreciable and depict the comprehensive and far-sighted nature of these guidelines.

Further, the guidelines describe the Commercialization and Benefit Sharing of IP generated.Licensing and assignment of IPRs to a third party are the most common modes of IP transfer for commercializing IP. The key difference between licensing and assignment is that assignment involves transfer of ownership, while licensing is limited to permitting certain uses. The guidelines recommend licensing the IPRs rather than assigning them, so that ownership rights on the IP may be retained with the academic institutions.

The guidelines also encourage entrepreneurship and start-ups and suggest that the academic institution may reassign the ownership of IP to the creators, who are capable of marketing, protecting and licensing on their own with minimal involvement of the academic institution. The fees to be paid to the academic institution by the assignee consist of all patenting and licensing expenses and appropriate amount of royalties, equity or other value received by the creators.

Otherwise, the academic institution may exploit the IP either by itself or by commissioning an agency. The creator may seek the academic institution, to assign the rights to them after a certain holding period. To promote a start-up/venture set up by a researcher, it may be exempted from any upfront fee and/or royalty accrued to the academic institution for a certain period.

The guidelines further explain how to exploit the research outputs generated as a result of utilization of resources of the academic institution. The academic institution is free to enter into a revenue sharing agreement with the researcher as per the advice of the IP cell. The details of revenue sharing may be decided, based on the type of IP and the nature of commercialization. The academic institution may adopt various models for royalty sharing amongst the inventors and the institution.

Moreover, the guidelines have proposed a utilization model for the IP-generated revenues of an academic institution. As per the model, 50% of the revenue may be used for creating the academic institution management fund, 10% of the revenue may be paid to the academic institution as administrative charges, and 40% may be made available to the concerned department for the purchase of equipment or materials. This seems to aim towards negating the possibility of misappropriation of such funds by the academic institutions, and should be greeted as a welcoming step towards ensuring fair and transparent practices.

Further, it is usually observed that the academic institutions are skeptical of entering into an engagement with external partners, probably, owing to the lack of their knowledge with regard to the scope and consequences of such engagement. The guidelines have attempted to empower the academic institutions on that front by offering a provision for them to consider revocation of the license and assigning it to another party, if the assignee or licensee has not taken adequate steps for the commercialization of IP owned by the academic institution. Therefore, the academic institutions will now have the control over the commercialization of their IP, which will give the required confidence to the academic institutions to actively engage with the external partners. Further, all commercialization agreements must clearly mention that the academic institution is protected and indemnified from all liability arising from development and commercialization of the IP.

The guidelines have empowered the researchers as well by assigning some accountability to the academic institution. As per the guidelines, the academic institution shall take all efforts to convey the decision to the researcher, whether to pursue or not pursue the protection of IP, within a stipulated time period after the sufficient disclosure by the researcher to the academic institution. This responsibility of providing timely response to the researchers would encourage the researchers to innovate. Therefore, it is evident that the guidelines are drafted to empower all the stakeholders in such an environment, which would develop a highly efficient IP ecosystem.

As a welcome initiative, the environmental safety drive of the Indian Government seems to have found its place in the field of IP as well. The guidelines have proposed certain conditions to be fulfilled while allowing the use of IP resources of the academic institutions by third parties. One of those conditions is that the IP resources will be used in a responsible manner to create a product/process conforming to environmental safety and good manufacturing practices promoted by the Government of India and its regulatory bodies. Considering the immediate attention to the environmental damage, this guideline portrays the eco-friendly approach of the Government.

Free and Open Source Software (FOSS) has been a hot topic in the industry for a long time now. Contributing to the ever-continuing discussion, these guidelines encourage the academic institutions to actively promote the use of FOSS among researchers.

The guidelines have also proposed a fast-tracked solution in case of any dispute arising between two parties. The academic institution may appoint a committee of experts to address the concerns of the aggrieved person(s). The committee is expected to take their decision within a prescribed time period.

In addition, Annexure-A specifically refers to the guidelines for IP cells. These guidelines list out the roles, responsibilities, and functioning of the IP Cells. The guidelines also make it clear that the IP Cell in its individual capacity is free to adopt and/or implement other strategies and steps as it deems fit.These guidelines also propose an organization structure for these IP cells, which may include a lead coordinator, a deputy/assistant coordinator, a student coordinator, and an IP ambassador.

As would be gathered, these guidelines have been drafted to empower all the stakeholders of the researcher-academic institution-external partner ecosystem while ensuring promotion of innovation and smooth operations.

Model Guidelines on Implementation of IPR Policy for Academic Institutions by Dr. Ramani V. Marakani