Preamble:
The vision of IIT Bombay is 'to
be the fountainhead of new ideas and of innovators
in technology and
science' and its mission 'is to
create an ambience in which new ideas, research
and scholarship flourish
and from which the leaders and innovators of tomorrow
emerge'. In fulfillment of its vision
and mission, IITB has taken the initiative to promote
innovations
and to facilitate protection of Intellectual Property
(IP) thus generated at IITB. Consequently, the
protection of inventions and other creative works
of its faculty, other employees and students as
IP has been growing.
Processes to support these efforts have been evolving
over time and now have attained a level of maturity.
A formal Framework to guide the implementation
of these processes is now a clearly-felt need.
Towards this goal an Intellectual Property Policy
for IIT Bombay has been formulated. This policy
aims to lay down, the processes for promotion and
support available to innovators at IIT Bombay for
translating their creative works into IP. Parties
engaged in creations of original and innovative
work at IITB include faculty, staff and other employees
of IITB, including staff working on various projects,
registered students of IITB, students from other
institutions, personnel from other organisations
or any other individuals working in IITB. This
policy also aims to set forth guidelines for ownership
of IP developed at IIT Bombay by IITB personnel
and non-IITB personnel and its commercialization.
The aim of the IP Policy is to sustain and grow
creativity in an ethical environment in IIT Bombay
that recognizes the importance of innovations and
assists in translating them into products, processes
and services for commercial exploitation and to
achieve the widest public good.
Top The Role of IRCC in IP
Protection:
The Industrial Research and Consultancy Centre
(IRCC) at IIT Bombay provides guidance, support
and resources to all IITB personnel and facilitates
protection and deployment of intellectual property.
In achieving this goal, IRCC creates awareness
of the importance and role of IP Rights, implements
the IP policy, ensures transparency and fairness
of the IP policy to encourage compliance, solicits
feedback regarding the fulfillment of the IP
policy and periodically reviews the Policy to
improve upon any shortcomings, strengthens the
infrastructure and resources for protection and
exploitation of IP and makes available expert
inputs.
Issues of ownership, confidentiality, disclosure,
patentability, technology transfer, revenue sharing,
and conflict of interest among others play a very
important role in any IP management. IRCC conducts
workshops to enhance awareness on related issues.
IRCC also provides templates and guidelines for
the contracts, agreements and MOUs governing the
effective exploitation of the IP produced by IITB.
All such agreements and matters relating to confidentiality,
infringements, damages, liabilities and compliance
are administered by IRCC.
Top The IP Policy:
This policy is applicable to
all IITB personnel, as well as non-IITB personnel
associated with any activity of IITB such as, but
not limited to, Continuing Education Programme
and covers different classes of Intellectual Property
-- Patent, Copyright, Trade Mark / Service Mark,
Design Registration, Trade Secret, Confidential
Information and Integrated Circuits Layout.
- Ownership:
I(a) Invention(s), Designs,
Integrated Circuit Layouts and other
creative works:
Invention(s) including software, designs and integrated circuit layouts,
created by IITB personnel without the use of significant IITB resources
and not connected with the profession for which employed at IITB, shall
be owned by the creator(s).
For invention(s) including software, designs and integrated circuit
layouts, produced during the course of sponsored and/or collaborative
activity, specific provisions related to IP made in contracts governing
the collaborative activity shall determine the ownership of IP.
IITB shall be the owner of all invention(s) including software, designs
and integrated circuit layouts created by teams of IITB and non-IITB
personnel, associated with any activity of IITB. Non-IITB personnel,
who create invention(s) including software, designs or integrated circuit
layouts at IITB but without intellectual contribution of IITB personnel
or significant use of IITB resources, shall be the owner of such invention(s).
Except as stipulated above, IITB shall be the owner of all invention(s)
including software, designs and integrated circuit layouts created
at IITB.
Top
I(b) Copyrightable Work:
Ownership of copyright of all copyrightable work shall rest with the
author(s) with the 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 shall determine the ownership of IP.
- IITB shall be the owner of the copyright
of work, including software, created
by IITB personnel with significant use
of
IITB resources.
- IITB shall be the owner of the copyright
on all teaching material developed
by IITB personnel as part of any of the
academic
programs
at IITB. However, the authors shall have the right
to use the material in her/his professional
capacity. As the traditional exception,
IITB
shall not claim ownership of copyright on books and
publications
authored by IITB personnel.
- IITB shall be the owner of copyright
of work produced by non IITB personnel
associated with any activity of IITB
with the intellectual
contribution of IITB personnel. However, the authors
shall have the right to use the material
in her/his professional capacity.
I(c) Trade
Mark(s) / Service Mark(s):
Ownership of trade mark(s) / service
mark(s) created for IITB shall be with
IITB.
In cases of all IP produced at IITB,
IITB shall retain a non-exclusive, free,
irrevocable license to copy/use IP for
teaching and research activities, consistent
with confidentiality agreements where
entered into by IITB.
Top
(II) Disclosures,
Confidentiality
and Assignment of Rights:
For sponsored and/or
collaborative work the provisions of
the contract pertaining to
disclosure of creative work are applied.
For all other invention(s)
produced at IITB, if the inventor(s)
wish to protect the invention(s) they
produce, then they are required to
disclose the creative work to the IRCC
at the earliest date using an Invention
Disclosure form (IDF).
Disclosure is a critical
part of the IP protection process and
it formally documents claims of inventorship,
the date of the invention and other
details of the invention. The inventor(s)
shall assign the rights of the disclosed
invention to IITB.
All
IITB personnel and non-IITB personnel
associated with
any activity of IITB
shall treat all IP related information
which has been
disclosed to the IRCC
and/or whose rights are assigned to IITB,
or whose
rights rest with IITB
personnel, as confidential. Such confidentiality
shall be maintained
till the date as
demanded by the relevant
contract, if any, between the concerned
parties
unless such knowledge
is in the public domain or is generally
available to
the public.
Top
(III) Assessment
of Innovation(s) for Protection:
To
facilitate assessment,
an IP Assessment Committee (IPAC)
shall be formed
by the Dean
(R&D) consisting of a chairperson,
the IRCC Technical Officer (Secretary)
and at least three additional faculty
members with domain expertise or
familiarity/experience in areas
related to the creative work. The
creator(s) would be free to suggest
names of faculty who are qualified
to evaluate the creative work who
may be invited by the Dean (R&D)
to be a part of the IPAC.
The IPAC shall assess the disclosure in a timely manner and shall make recommendations
to the Dean (R&D) about the patentability of the invention according
to the provisions of Section(I) of this policy. The IPAC may make one of the following recommendations:
-
that IITB shall
take the responsibility of protection of the IP, in which case, IITB
will initiate appropriate processes.
-
that IITB shall
not take the responsibility of protection
of the IP, in which case,the rights
to the disclosed invention
shall be promptly reassigned to the
creator(s). The creator(s)
may then choose to protect the creative
work on their
own.
Filings of IP Applications in
foreign countries: Within six
months of filing the Complete
IP Application in India, IITB
shall, based on
available information decide
on the suitability of protection
of the invention in foreign countries.
If IITB opts not to undertake
such
protection in any specific
country requested by the inventor(s),
IITB shall assign rights of the
IP in that country to the creator(s)
for
the purpose of such protection.
Renewal
of IP
Rights: A decision on the annual renewal
of IP rights will
be
taken by a committee constituted
by
the Dean (R&D). If IITB decides
not to renew the IPR in any country,
then it will assign the
rights
of the IP in that country to the creator(s)
upon a request
to
that affect from the creator(s).
In
case of patents, the process of reassignment
will be completed
in a period of three months before
the due date for its
renewal.
In all cases where
IP rights in any specific country
have been reassigned to the inventor(s),
IITB shall not claim any share
of proceeds earned through that
IP in that country excepting for
the costs already incurred by IITB.
Filings
of IP Applications in foreign countries:
Within six months of filing the Complete
IP Application in India, IITB shall,
based on available information decide
on the suitability of protection of the
invention in foreign countries. If IITB
opts not to undertake such protection
in any specific country requested by
the inventor(s), IITB shall assign rights
of the IP in that country to the creator(s)
for the purpose of such protection.
Renewal
of IP Rights: A decision on the annual
renewal of IP rights will be taken
by a committee constituted by the Dean
(R&D).
If IITB decides not to renew the
IPR in any country, then it will assign
the
rights of the IP in that country
to the creator(s) upon a request to that
affect
from the creator(s). In case of patents,
the process of reassignment will
be completed in a period of three months
before the
due date for its renewal.
In all
cases where IP rights in any specific
country have been reassigned to the inventor(s),
IITB shall not claim any share of proceeds
earned through that IP in that country
excepting for the costs already incurred
by IITB.
Top
(IV) Support:
(IVA) Contracts
and Agreements:
All agreement including but not limited
to the following categories, undertaken
by any IITB personnel and students need
to be approved by IITB.
- Allegiance,
Affirmation & Confidentiality
Agreement
- Consultation
Agreement
- Evaluation
Agreement
- Research
and Development Agreement (R&DA/MOU)
- License
Agreement
- Technology
Transfer Agreement
- Alternative
Dispute Resolution Agreement
- Classified
Information Non-disclosure (specific)
Agreement
Dean
R&D
acts as a final signing authority in
all the categories of
agreements listed above. IRCC
facilitates the process of framing such
agreements
by way of providing templates
and services of professional consultants.
Dean
R&D
acts as a final signing authority in
all the categories of
agreements listed above. IRCC
facilitates the process of framing such
agreements
by way of providing templates
and services of professional consultants.
Top
(IVB) Obtaining
IPR:
If IITB opts to
protect the creative work, it shall
provide an IPR Advisor/Patent Attorney
for drafting the IP application as
appropriate. IITB shall pay for access
to the relevant IP information databases
and other associated costs. The inventor(s)
shall conduct IP searches, study
the prior art and provide the necessary
inputs to assist in the drafting
of the IP application. IITB shall
bear all costs of drafting and filing
an Indian IP application. If IITB
chooses to file IP applications in
other countries, then it shall bear
the cost of application and other
associated costs. IITB shall be free
to enter into agreements with overseas
institutions for protection and licensing
of the IP.
Top
(V) Technology
Transfer:
IITB shall strive
to market the IP and identify potential
licensee(s) for the IP to which it
has ownership. The creator(s) are
expected to assist in this process.
IITB may contract
the IP to a Technology Management
agency, which manages the commercialization
of the IP.
For the IP for which
exclusive rights have not been already
assigned to a third party, the creator(s)
may also contact potential licensee(s)
on their initiative maintaining confidentiality
and taking all necessary care so
as not to affect the value of the
IP through appropriate agreements
such as Non Disclosure Agreement
(NDA) with the potential licensee(s)
during technology marketing discussions.
If IITB
is not able to commercialize the IP in
a reasonable time, then it may reassign
the
rights of the IP to the creator(s)
of the
IP. Optionally, If IITB has
not been able to commercialize the creative
work in a reasonable time
frame, the creator(s) may approach
the
Dean
(R&D) for the assignment
of rights of the invention(s)
to them.
Top
(VI) Revenue
sharing:
The net earnings from
the commercialization of IP owned by
IITB would be shared as 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.
Case
|
Net Earnings
|
Inventor(s)
share
|
IITB's
share
|
1
|
For the first amount Q |
70%
|
30%
|
2
|
For the next amount Q |
50%
|
50%
|
3
|
For amounts more than 2Q |
30%
|
70%
|
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:
|
|
Cumulative Earnings |
Inventor(s)
share
|
IITB's
share
|
A
|
Upto twice the cost incurred by IITB
for protection, marketing and other associated
costs. |
50%
|
50%
|
B
|
Beyond A |
100%
|
0%
|
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.
Top
(VII) Infringements,
Damages, Liability and Indemnity Insurance:
As a matter of
policy, IITB shall, in any contract
between the licensee and IITB,
seek indemnity from any legal proceedings
including without limitation manufacturing
defects, production problems, design
guarantee, upgradation and debugging
obligation.
IITB shall also
ensure that IITB personnel have
an indemnity clause built-into
the agreements with licensee(s)
while transferring technology or
copyrighted material to licensees.
IITB shall retain
the right to engage or not in any
litigation concerning patents and
license infringements.
Top
(VIII) 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 have a stake in a licensee or
potential licensee company then they
are required to disclose the stake
they and/or their immediate family
have in the company.
A license
or an assignment of rights for a
patent to a company
in which the inventors have
a stake shall be subject to the approval
of the Dean (R &D) taking
into consideration this fact.
Top
(IX) Dispute
Resolution:
In case of any disputes
between IITB and the inventors regarding
the implementation of the IP policy,
the aggrieved party may appeal to
the Director of IITB. Efforts shall
be made to address the concerns of
the aggrieved party. The Director?s
decision in this regard would be
final and binding.
(X) Jurisdiction:
As a policy, all agreements to be
signed by IITB will have the jurisdiction
of the courts in Mumbai and shall
be governed by appropriate laws in
India.
Top
Glossary:
- 'Author' means faculty, students,
staff or visiting faculty who has/have
written or created a creative work.
- 'Collaborative Activity' is the research
undertaken by IITB personnel in cooperation
with industry and/or another researcher(s)
who are not IITB personnel.
- 'Confidential Information' Information
not in the public domain and declared
confidential by parties as such in
a MOU/Agreement that has been 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 creative work or influence
for unmerited personal or family gain.
- '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.
- '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.
- 'Creators' are persons who have produced
any original work
- 'Cumulative Earnings' from a patent/patent
application are the total earnings
to date obtained from the commercialization
of the patent/patent application.
- 'Design Registration' Registration
of the novel non-functional features
such as shape, or ornamentation of
a product.
- 'IITB personnel' includes but is
not limited to the faculty, students,
staff or visiting faculty, researchers
and scientists at IIT Bombay.
- 'Intellectual Contribution' means
original technical or artistic contributions.
- '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.
- 'IP
Assessment Committee
(IPAC)' is a committee
formed by the
Dean (R&D),
which decides on the
issues of ownership and patentability
among others
consisting
of a Chairperson, the
Technical Officer (Secretary)
of the IRCC and at
least
three additional faculty
members.
- '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 produce an invention.
- 'Licensing' is the practice of renting
the intellectual property to a third
party.
- 'Net Earnings' Earnings resulting
from the licensing or commercialisation
of the IP, reduced by the outstanding
actual expenses incurred in obtaining
and commercialization of the IP.
- 'Patent' means the exclusive right
granted by law for making, using or
selling an invention.
- 'PCT Application' A PCT is a system
of filing 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 Organisation
(WIPO) in Geneva. It is not a patent
granting system.
- 'Protection of Layout of Integrated
Circuits' Layout scheme of Integrated
circuits that are functionally important.
- 'Royalty' is the payment made to
an inventor/author or an institution
usually for legal use of a patented
invention or any Intellectual Property
when licensed.
- 'Significant Use of IITB Resources'
is any usage of IITB?s resources in
the creation of the invention(s), excess
of the routine use of office facilities,
computers, library resources and resources
available to the general public.
- 'Software' means anything executable
in a computer.
- 'Teaching material' means any material
that aids the process of teaching
- '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' Usually some information
such as know-how of commercial or strategic
value that is not disclosed to all
and is used in a restricted manner.
|