IP Policy

IPR policy of the Institute is here:

INDIAN INSTITUTE OF TECHNOLOGY ROPAR

Version: V5, June 2019

Developed and maintained by Intellectual Property Rights (IPR) cell, IIT Ropar

IPR cell website: http://www.iitrpr.ac.in/iprcell

INTELLECTUAL PROPERTY RIGHTS (IPR) POLICY

Contents

1. Objectives of the Intellectual Property (IP) Rights Policy ............................................................... 3

2. Scope of the Intellectual Property (IP) Rights Policy....................................................................... 3

3. What constitutes an intellectual property? .................................................................................... 3

4. Intellectual Property Rights (IPR) Cell ............................................................................................. 4

5. Ownership ....................................................................................................................................... 5

6. Technology transfer ........................................................................................................................ 5

7. Copyrightable Work ........................................................................................................................ 7

8. Assessment of Innovation(s) for Protection ................................................................................... 8

9. Revenue sharing .............................................................................................................................. 9

10. Infringements, damages, liability and indemnity ....................................................................... 9

11. Conflict of interest ...................................................................................................................... 9

12. Dispute Resolution .................................................................................................................... 10

13. Jurisdiction ................................................................................................................................ 10

14. Mapping patent with journal publications (for internal use only) ........................................... 10

15. Definitions related to IPRs ........................................................................................................ 10

16. Other definitions ....................................................................................................................... 11

1. Objectives of the Intellectual Property (IP) Rights Policy

The IP policy of the Indian Institute of Technology Ropar (IIT Ropar) has the following objectives:

1. To foster innovations in the areas of technology, sciences, and humanities by nurturing new ideas, research, and scholarship in an ethical environment.

2. To protect intellectual property (IP) rights generated by faculty, students, and staff of IIT Ropar, by translating their creative work into IP rights, with least possible conflict of interest.

3. To lay down an efficient, fair, and transparent administrative process for ownership control and assignment of IP rights and sharing of revenues generated by IP, created and owned by IIT Ropar.

The overall aim is to nurture the spirit of innovation and translate these into products, processes, and services for commercial exploitation in wider public good.

IIT Ropar urges all faculty, staff and students to document their IPs, so that these could be protected and applied to the gain of the country, the institute and inventors. All employees of IIT Ropar should inform the IPR cell about any IPRs before filing them either through the cell or through any other means. Additionally, they should mention their affiliation of IIT Ropar in all IPR filing in aid in the process of commercialization, if possible later.

IIT Ropar is keen to facilitate faculties and staff of IIT Ropar in a proactive manner in the generation, protection and transaction of Intellectual Property which offer potential and scope for shared benefits to both institute and inventors. Through this policy, a system will be in place to bring order into the process of knowledge generation and commercial exploitation.

2. Scope of the Intellectual Property (IP) Rights Policy

This policy covers all staff, faculty members, students and also persons engaged in sponsored schemes and projects, through different funding sources such as TBI and any other initiatives of the Institute as well as visiting scientists/professors/personnel who participate in the research work being carried out at the Institute. The IP rights policy is to be followed in all matters related to IP at IIT Ropar (“Institute”).

3. What constitutes an intellectual property?

Intellectual Property (IP) is an intangible knowledge product resulting from the intellectual output of the inventors, namely faculty, staff and students of the Institute. IP thus is an outcome of in-house or sponsored research, industrial consulting or other forms of collaborative R & D.

Any product of the human intellect which is novel, inventive, unobvious, industrially applicable and which qualifies for protection under relevant acts of the Government governing patent, copy right etc. and developed at IIT Ropar belongs to the Institute.

IP 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.

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 Institute. It can then be protected within the country or abroad. The office of the Intellectual Property Cell (IPR Cell) deals with all activities relating to Intellectual Property of the Institute.

The product of the intellect can have potential for faculty entrepreneurship. Such activities will ensure that the intangible IP reaches a tangible form that can be marketed. Cells such as TBI might help inventors to market it.

The intellectual properties can be broadly listed as:

1. Patents

2. Copyrights

3. Trade/Service marks

4. Industrial designs (or Design registration

5. IC layout designs (Layout-Designs or Topographies of Integrated Circuits

6. Plant Variety Protection (New plant variety)

7. Geographical indication

8. Trade secrets

4. Intellectual Property Rights (IPR) Cell

The Intellectual Property Rights Cell (“IPR Cell”) at IIT Ropar, is constituted by the Director, IIT Ropar to evaluate and make recommendations regarding IP-related issues, including filing of patents by the institute. The cell is supported by PSCST (Punjab State Council for Science and Technology). The cell is currently under Dean (Industrial Consultancy, Sponsored Research and Industry Interaction). The cell is the nodal agency for all IP-related issues at the institute.

The IPR cell consists of Chairman as designated by the Institute, and IPR cell members. The chairman is also designated as the nodal officer by the Punjab State Council for Science and Technology (PSCST). IPR cell members may consist of both internal and external members as constituted by the Director of the institute.

The cell provides expert inputs on patent applications, under consideration of the institute and templates and guidelines for contracts, agreements, and MOUs governing the effective exploitation of IP created by the institute. Agreements and matters relating to confidentiality, infringements, damages, liabilities, and compliance are administered by the IPR cell.

The IPR cell provides guidance, support, and resources to all institute personnel on IP-related issues. To create awareness about issues like ownership, confidentiality, disclosure, patentability, technology transfer, revenue sharing, and conflict of interest, etc., the IPR cell organizes workshops on a regular basis often supported by PSCST. It implements the IP policy of the institute in efficient, fair, and transparent manner and is responsible for periodic review of the IP policy at the institute.

5. Ownership

Institute (IIT Ropar) will own invention(s) and would have IPRs unless otherwise stated. The IP would be in the name of Registrar, IIT Ropar and the Assignee/Applicant’s Name is IIT Ropar. However, the inventors’ names would be as per the actual inventors of the IP. The primary inventor or the point of contact would mostly be a faculty or a staff of the institute.

All inventors of an innovation must be credited in the filing of any IPR. Additionally, all people associated or working for IIT Ropar must file application for IPR through IPR cell or externally after taking permissions.

In-house research: All rights in respect of investigations carried out at the Institute shall vest in and be the absolute property of the Institute except in respect of the activities carried out jointly with other institutions or agencies or under a sponsorship by an agency, in which case the ownership will be decided and agreed upon mutually.

Sponsored research: Intellectual Property Rights (IPR) of inventions arising out of research projects undertaken on behalf of the sponsoring agencies shall be taken jointly in the name of the Institute and sponsoring agencies; when the sponsoring agencies bear the cost of filing and maintaining of the IPR equally. If the sponsoring agencies are not forthcoming, the Institute at its discretion may file the application with absolute ownership and Institute will meet the entire cost of filing and protection of IPR. The inventors would be as usual the people who developed the technology.

Collaborative research: All intellectual property jointly created, authored, discovered, invented, conceived or reduced to practice during the course of collaborative research undertaken jointly by Institute with Collaborating Institutions, shall be jointly owned; and the Collaborating Institutions may also be requested to bear the cost of filing and maintenance of the IPR. In case the Collaborating Institutions are not forthcoming to bear fully the cost of filing and maintenance, if considered expedient by the Institute, the Institute will share the cost equitably with the Collaborating Institutions. Where the Collaborating Institutions are not forthcoming for filing joint IPR application, the Institute at its discretion may file the application with absolute ownership and Institute will meet the entire cost of filing and protection of IPR. The inventors would be as usual the people who developed the technology. In the event of commercialization, the Institute may share the profit with the inventors of the collaborating institute apart from those of the institute. For sponsored and collaborative, the MoU or such document shall state the IP rights and royalty through commercialization.

For Institute-private collaborative/funded/partnership works, ownership would be decided through negotiation and considering the existing policy of the Institute. For Institute - government (such as DST/CSIR) organization group/funded/collaborative/partnership, ownership would be decided based on the policy of the government organization.

6. Technology transfer

The Director of IIT Ropar has the power to decide on all issues on IPRs. As stated above a patent filed through IPR cell, will belong to IIT Ropar and the inventors will get the credit for the invention including review sharing.

Commercialization of the inventions will be promoted. Any patent purchased or leased from IIT Ropar should be launched within five years from the date of signing of the lease or purchase document. Failing which, the company could be debarred from all further interaction.

The Intellectual Property of the Institute held either in the name of IIT Ropar or jointly with other Institutions/Industry will be marketed for commercial exploitation under agreements involving technology transfer, licensing and revenue sharing models.

The net earnings from the commercialization of IPR owned by IIT Ropar will be shared as follows:

• The inventor(s)/creator(s) share will be declared annually (or as revenues received) and disbursement will be made to inventor(s)/creator(s), their legal heir, whether or not the creators are associated with IIT Ropar at the time of disbursement.

• The revenue sharing ratio between the inventor team and IIT Ropar will be a fixed 70:30 in the favor of the inventor team.

• The IP protection costs will be part of the license revenue sharing agreement between the institute and inventor(s)/creator(s).

• The inventors may at any time by mutual consent revise the distribution of IP earnings agreement.

Commercializing of an IPR by a company in which no inventors of IIT Ropar is involved: A company (in which no inventors of IIT Ropar are associated) can either lease or buy an IP for further commercial exploitation. The company should express such intension in writing to the Institute through the IPR cell.

Leasing: In the event of leasing of the invention to any commercial organization at least 4% of the profit should be shared with the institute as “Royalty or Lease money”. There may be a nominal licensing fee in this case consisting of the charges incurred by the Institute for the IPR filing and maintaining. The inventors will get 70% of this lease money. The inventors will be intimated about the leasing of their inventions through the email ID provided to the institute at the time of patent filing. The inventors have to provide their bank details within six months from the date of first intimation. Failing this the institute bears no further responsibility. The company would continue sharing the “lease money” till the life of the patent. Slabs should be set keeping in mind the revenue forecasted with some increase in percentage every year.

Buying IPR: A company can buy an IPR from the institute by paying a lump sum amount as decided in agreement. This lump sum amount could be at least ten times the charges incurred by the Institute for IPR filing and maintaining. The inventors will get 70% of this amount.

Between leasing and buying option, buying option is preferred by the institute as profit is often difficult to calculate. A MoU could be signed for this if required or possible.

The percentage of profit sharing is to be decided by the inventors or as stated in the MoU, whether it should be distributed equally or in different proportions as per the work done by individuals. This decision should be unanimous among all the inventors.

Joint patent between IIT Ropar and an Industry: In case, the patent is a joint patent between IIT Ropar and an Industry, the Industry would get higher preference for commercializing the patent. Other terms and conditions would be decided by the institute on case to case basis or through a MoU.

Inventors intend to commercialize: If the inventors intend to commercialize the invention then they have two options:

i) They can lease the invention from IIT Ropar with usual procedure as stated. The inventors can opt for reimbursement of licensing fees within 2 years.

ii) The inventors can buy back the patent. The buyback value will be finalized by the IP cell after consultation with the IPR cell and the Director, IIT Ropar. The buyback value would be decided by a committee for case to case basis or through a MoU.

7. Copyrightable Work

Ownership of copyright of all copyrightable work, including books and publications, will rest with the author(s), with following exceptions:

If the work is produced during the course of sponsored and/or collaborative activity, specific provisions related to IP made in contracts governing such activity will determine the ownership of copyright.

IIT Ropar will be the owner of the copyright on all teaching material developed by institute personnel as part of any of the academic/distance learning programs at the institute. However, the authors will have the right to use the material in her/his professional capacity.

All Ph D /Maters’ theses will be copyrighted with copyright note: © Indian Institute of Technology Ropar (Year). All rights reserved. The authors of other work like B. Tech. or M. Tech. project report may request to copyright on behalf of the institute. Authors may request for delayed achieving of thesis with Intellectual Property with commercial potential, for a year.

In all instances, it is the responsibility of creators/authors to ensure that contents do not violate copyright rules and prior permission has been taken, if diagrams, tables, and text have been reproduced from other copyrighted work.

In all instances stated above, creators/authors will have the right to use the copyrighted material in his/her professional capacity.

The ownership of the copyrights will not deprive authors from publishing their contributions in scholarly and intellectual work and of authority to improve, publish, and propagate the work. The employee / students may transfer the copyrights to journal or conference proceeding publishers that has accepted their scholastic/intellectual contributions for publication.

Faculty, students and scholars will be allowed to copyright their work and institute reserves the right to waive copyrights its own in favor of authors/contributors upon request.

Ownership of trade mark(s), service mark(s), and logos created for IIT Ropar will be with the institute.

If the institute foresees a gainful return from copyrights, it may initiate steps to file and protect such copyrights and share the financial benefits with the inventor on terms and conditions of the institute.

If the technical material is prepared by the author on behalf of a funding agency, then the copyright will be equally shared between the institute and the funding agency.

As a traditional exception, IIT Ropar shall not claim ownership of copyright on books and any kind of publications authored by IIT Ropar personnel.

Any IP generated when an Inventor from the institute works in a university or company abroad/in India on EOL/sabbatical leave/earned leave, may be jointly owned by IIT Ropar and the University/Company. When significant use of funds or resources of IIT Ropar were not used, the inventors from the institute working in a university or company abroad/in India as intern/visiting faculty in sabbatical may be allowed to hold IP along with the members of external University/Company.

8. Assessment of Innovation(s) for Protection

Filings of IP Applications in India: Creator(s) / inventors(s) of IP, who wants to get patent for their patentable IP, are required to make an application for the purpose to the Chairman IPR cell, by completing an invention disclosure form (“IDF”). The IPR cell will forward the IDF along with supporting documents to Punjab State Council for Science and Technology (PSCST) or empaneled IPR attorneys for international patent search, with requisite fee.

Based on the results of the international patent search, creator(s) / inventors(s) will decide whether to file a patent application or not. If creator(s) / inventors(s) decide to file a patent application, they will complete the required forms and send it to the IPR cell, which will then send it to PSCST. The PSCT will forward it to the Technology Information, Forecasting, and Assessment Council (TIFAC), which after evaluation will send it to patent attorney for filing a patent application. Creator(s) / inventors(s) will receive a letter confirming the filing of a patent application. The above process is the ‘Normal” process of filing.

Creator(s) / inventors(s) may request expedited processing of a patent application. The creator(s) / inventors(s) of IP will make an application for this purpose to the Chairman, IPR cell. The IPR cell will promptly evaluate the application with the involvement of faculty members (within or outside the institute) with domain expertise or familiarity/experience in areas related to the creative work (usually the departmental representative) and make recommendations to the Dean (IRIAA). If the application is accepted, the application will be directly send to a patent attorney engaged by the institute. Both for non-provisional and as well as provisional patent filing, prior art search is recommended.

All inventions irrespective of the inventors association with the Institute would go through an evaluation process after the receipt of the international patent search report. An internal committee consisting of the chairman IPR, and experts of which, at least one domain expert, within the Institute would decide if the patent should be applied by the Institute.

The IPR cell of the institute is responsible for evaluating, protecting, marketing, licensing, and managing IP rights generated at the institute, along with the inventors or other agencies.

Filings of IP Applications in Foreign Countries: The institute may consider for registration of patents in foreign countries, based on the merit (commercial potential) of IP. While registering the IP in foreign countries, the institute may decide to not file for IP protection in a particular country. In such cases, the institute will assign the rights for the IP in that country to creator(s) / inventor(s), who can protect the IP in that country either on their own or in partnership with the sponsor. The inventors are supposed to share a part of the filing fees for

foreign filing through any grant or fund. Any revenue accrued as a result of commercial exploitation of IP in that county will be subject to the rule of revenue sharing. The creator(s) / inventor(s) may seek the reimbursement of protecting patent in that country, prior to sharing the revenue.

Renewal of IP Rights: The institute will pay the patent fees for the first seven years in all cases, from the date the patent is being granted, where patent is taken by the institute. If it is a joint patent with a sponsoring agency, the patenting costs will be equally shared with the sponsoring agency. If the patent has been commercially exploited within the first seven years, the institute will pay the patent fee for the remaining period of the life of the patent. If the patent has not been commercially exploited within the first seven years, the patents renewal cost for subsequent years will be shared by the institute and creator(s) / inventors(s) on 50:50 basis. If the inventor is not interested in renewing the IP rights, the institute may decide to continue paying the fee for its full term or withdraw the application at its own discretion.

9. Revenue sharing

The revenue arising out of licensing of IP and royalty would be shared in the appropriate ratio (currently, this ratio is 70:30) between the inventor(s) and the Institute.

10. Infringements, damages, liability and indemnity

As a matter of policy, IIT Ropar shall, in any contract between the licensee and IIT Ropar, seek indemnity from any legal proceedings including this, but not limited to manufacturing defects, production problems, design guarantee, upgradation and debugging obligation.

IIT Ropar shall also ensure that IIT Ropar personnel have an indemnity clause built into the agreements with licensee(s) while transferring technology or copyrighted material to licensees.

IIT Ropar shall retain the right to engage in or desist from or not in any litigation concerning patent and license infringements.

Any software developed and distributed by the institute either through public domain or commercially, will have explicit disclaimer against any liability resulting from the use of software by any user.

11. Conflict of interest

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

The inventor(s) are required to disclose any conflict of interest or potential conflict of interest. If the inventor(s) and/or their immediate family members have a stake in a licensee or potential licensee company then they must disclose the stake that they and/or their immediate family members have in the company.

12. Dispute Resolution

In case of disputes between IIT Ropar and the inventor(s) regarding the implementation of the IP policy, the aggrieved party may appeal to the IPR cell and then if not resolved to the Director of IIT Ropar. Efforts will be made to address concerns of the aggrieved party. The Director’s decision in this regard will be final and binding to all.

13. Jurisdiction

All agreements to be signed by IIT Ropar will have the jurisdiction of the courts in Rupnagar, in the state of Punjab and shall be governed by appropriate laws in India. Exception to this may be allowed in certain cases by the institute.

14. Mapping patent with journal publications (for internal use only)

A published patent may be regarded as a journal publication and a granted patent as two.

15. Definitions related to IPRs

• Patent‐ is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem. 'Patent' means the right to exclusivity granted by law for making, using or selling an invention.

• Copyright means the exclusive right granted by law for a certain period of time to an author to reproduce, print, publish, and sell copies of his or her creative work.

• Trade/Service mark‐ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

• Design Registration is the registration of the novel non-functional features such as shape, or ornamentation of a product. Industrial Design‐ means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but

does not include any mode or principle of construction or anything which is in substance a mere mechanical device.

• IC Layout Designs, means a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit.

• New Plant Variety, a plant variety that is novel, distinct and shows uniform and stable characteristics.

• Biotechnology Inventions, include recombinant products such as vectors, nucleotide sequences, and micro‐organisms (shall be a part of patent).

• Trade Mark / Service Mark is a distinctive word, symbol or picture or a combination of these, which is used by a business entity to discriminate its products and services from those of other business entities.

• 'Trade Secret' is information, like know-how of commercial or strategic value, which is not disclosed to all and is used in a restricted manner.

• Traditional Knowledge is the knowledge developed by the indigenous or local communities for the use of a natural resource with respect to agriculture, food, medicine etc. over a period of time and has been passed from one generation to another traditionally.

• Geographical Indications, means an indication which identify such goods as agricultural goods, natural goods as originating or manufactured in the territory of a country or manufactured in the territory of a country or a region or locality in that territory where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, regions or locality as the case may be.

16. Other definitions

'Author' means faculty, students, staff, or visiting faculty who has/have written or created a creative work.

'Collaborative Activity' is the research undertaken by the institute personnel in cooperation with industry and/or another researcher(s), who are not an IIT Ropar personnel.

'Confidential Information' is the information not in public domain and declared confidential by parties as such in a MOU/Agreement, signed by the parties.

'Conflict of Interest' or a 'Potential Conflict of Interest' exists when an inventor/author is or may be in a position to use either the creative work or influence for unmerited personal or family gain.

'Copyrightable Work' is a creative work that is protectable under copyright laws. Copyright protection is available for most literary, musical, dramatic, and other types of creative work, including software, teaching materials, multimedia works, proposals, and research reports.

'Creator' is the employee of the institute (permanent or temporary) who created the original work or intellectually property, using the facilities of the institute.

'Cumulative Earnings' is total earning from a patent/patent application to date, obtained from the commercialization of the patent/patent application.

'Director' is the Director of the Indian Institute of Technology Ropar.

'IIT Ropar Personnel' or “Institute Personnel” includes but is not limited to faculty, students, staff or visiting faculty, researchers and scientists at IIT Ropar.

'Intellectual Contribution' is the original technical or artistic contribution.

'Intellectual Property' includes but is not limited to copyrights and copyrightable materials, patented and patentable inventions, tangible research results, trademarks, service marks and trade secrets.

'IPR Cell' is a committee constituted by the Director, IIT Ropar, under a Dean, to evaluate and make recommendations regarding IPR-related issues. It decides on the issues of ownership and patentability among others.

'Invention' includes but is not limited to any new and useful process, formula or machine conceived or first reduced to practice in whole or in part, defined within the purview of the Patent Act.

'Inventor(s)' are person(s) who produced an invention. In case, creation of IP is associated with more than one inventor, one of them, from IITRopar, would function as a Lead Inventor.

'Licensing' is the practice of renting the intellectual property to a third party.

'Net Earnings' are earnings from the licensing or commercialization of the IPR, reduced by the outstanding actual expenses incurred in obtaining and commercialization of the IP.

'PCT Application' is a patent application in several countries through a single application, keeping the priority of the first filing in any of the countries within the PCT system. This is administered by the World Intellectual Property Organization (WIPO) in Geneva. It is not a patent granting system.

'Protection of Layout of Integrated Circuits' is the layout scheme of integrated circuits that are functionally important.

'Royalty' is the payment made to an inventor/author or an institution for legal use of a patented invention or any intellectual property when licensed.

'Significant Use of Institute Resources' is any usage of the institute resources in the creation of invention(s), excess of the routine use of office facilities, computers, library resources, and resources available to the general public.

'Software' is anything executable in a computer.

'Teaching Material' is any material that aids the process of teaching

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