Indian Institute of Science Intellectual Property and Technology Transfer Policy and Guidelines 2019Contents 1. OBJECTIVES, 2 2. DEFINITIONS. 2 3. TO WHOM IS THE IP POLICY APPLICABLE.......c00nnnnnnnnnnd 4. IP OWNERSHIP (GENERAL PROVISIONS). . 2 5. IP OWNERSHIP (PROVISIONS PERTAINING TO MODE OF FUNDING) 4 6. COPYRIGHT.......... snnnnennnnnssn 19 7. INTELLECTUAL PROPERTY ADMINISTRATION......0nnnnnnnnsnin20 8. COMMERCIALIZATION/ UTILIZATION OF IISc IP 21 9. ASSIGNMENT/TRANSFER OF OWNERSHIP 28 10. INSTITUTE PERSONNEL IP RIGHTS AND DUTIEE.............. 30 11, REVENUE SHARING WITH INVENTORS... ssn 32 12. RESEARCH & DEVELOPMENT (R&D) AGREEMENTS 34 13, GENERAL SECTIONS 37 Annexure 1: Procedure for Disclosure and Evaluation of IP by IPTeL......39 Annexure 2: Procedure for Licensing and Commercialization ... AS Annexure 3: Mechanism, fees and royalty for commercialization through lSc Start-up’s. 49 Annexure 4: Procedure for determining cost of invention and license fees. ssn - 50 Annexure 5: Due Diligence Document........ 52 Annexure 6: Terms and Conditions of Licensing and Mechanism of Payments 561. OBJECTIVES Through this official Intellectual Property (IP) Policy and Guidelines, the Indian Institute of Science (the “Institute"), intends to put in place a system that brings order to the process of protection of IP including inventions, and the utilization of IP through processes of technology transfer and entrepreneurship. Within the above broad objectives, the specific objectives of this IP Policy are as follows: 14. 12. 13. 14, 24 22 2.3. Undertake the mining, and identification of IP in the various research, consultancy, educational, and all other academic activities of the Institute; Encourage, create awareness, and facilitate the process(es) of securing and protecting the IP rights of all Institute personnel; Initiating and pursuing all actions and deeds to maintain, prosecute, and keep in vogue the secured IP rights of the Institute; and Pursuing all the necessary procedures and actions to facilitate, catalyze, and bring to bear the Transfer of Technologies (ToT), including the commercialization, licensing, and other means of disseminating the technologies developed by the Institute DEFINITIONS “Applicant” refers a person or an organization, who owns the rights to the IP generated/ developed and makes a formal application before an IP office for grant of the respective right such as Patent, Industrial Design or Copyright. Institute is usually the Applicant for all IP generatedideveloped by the Institute Personnel. “Assignee” refers to a person or an organization like the Institute to whom/which ownership right(s) to the IP is legally transferred. “Assignment” refers to the act of transferring the ownership rights including the title and interest in the IP generated/developed. Under this IP policy all Institute Personnel by virtue of their engagement with the Institute assign or transfer Ownership rights to the Institute24. 25. 26. 27. 28. “Background IP" refers to any IP/IPR that's created, invested, authored or developed prior to or independently owned or controlled by the parties before the date of the agreementicontract. In simple words, the Background IP is preexisting IP that a party brings to a research project. The parties include Institute, funding agencies, collaborators or Government of India (hereinafter referred to as “GO!"). “Confidential Information” shall mean and include any and all proprietary information whether commercial or technical of the Institute and shall without limitation, include Trade Secrets, data, Know-how, software programs, processes, specifications, drawings, marketing plans, financial, strategies, forecasts, any or all Intellectual Property, product development plans, marketing, sales leads and work in progress; engineering, technical, manufacturing, service, financial and personnel information relating to all transactions of IISc, evaluation material, internal discussions and all nonpublic information whether the information is in print, written, electronic form or oral that is valuable to IISc and not generally known to outsiders. “Collaborative R&D": refers to projects that are jointly conceived, planned, and executed by the Institute Personnel, in collaboration and partnership with, the representatives, personnel, and staff of the collaborator such as an Industry, sponsors, universities, NGO's, research organizations, hospitals or any other third party interested in R&D. Such projects will be characterized by substantial inventive and financial contributions from these entities. In addition, in the case of Collaborative R&D work carried out by the Institute and the Industry, the latter shall also make substantial inventive contributions, in tandem with the financial contributions made by it. “Copyright” is a type of IP and refers to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture and films, to computer programs, algorithms databases, advertisements, maps and technical drawings. “Commercialization”: refers to the various activities, processes, and steps undertaken by the Licensee, under the terms of the Technology Licensing Agreement, to put the Technology/ Invention/ IP to commercial use, in29. 2.10. 2.11 2.12. 2.13. 2.14. 2.15. terms of sale, internal use, etc., that result in financial, commercial, economic, or any other material benefit to the Licensee. The terms of the Licensing Agreement will specify the compensation to be paid by the Licensee to the Institute (the Licensor), and such compensation would include a one-time Lump Sum Technology Transfer Fee, as well as deferred Royalty payments. In addition, the Licensee may also offer a certain equity in the start-up venture to the Institute, on terms to be mutually discussed and negotiated. “Consultancy Projects” refers to the work conceived and funded by industries or any third party to the Institute for providing advicelsolution to a specific problem without using Substantial Institute Resources. closure of IP" refers to the Confidential Information such as Invention written up, and revealed by an Inventor to the Institute, to determine whether Intellectual Property Rights for the said disclosure should be sought and obtained by the Institute. The Institute would also ascertain what could be the scope for Technology Transfer, Commercialization, and Licensing of the said Invention. ."Entity” refers to legally recognized business organizations, academic and research organizations or non-profit organizations under the law and includes private limited, public limited, corporations, LLP, partnership firms, proprietorship, research institutes, universities, societies and associations, trusts, NGO's (non-government organizations) etc., established and governed by various laws of the land. “Foreground IP" refers to IP/IPR resulting directly from and authored, conceived, developed, reduced to practice or otherwise created during the performance of the research agreement/contract by the Institute or in collaboration with the collaborating Entity. “IPTeL” refers to the intellectual Property and Technology Licensing office “IPTeL Chairperson” refers to the head of IPTel office appointed by the Director. “IPTeL Technical Committee" refers to the committee set up by IPTeL Chairperson and shall include IPTel Manager and other members to evaluate the inventions received by IPTel. for seeking appropriate IP Protection.2.16."IPTeL Manager” refers to the manager of IPTeL appointed by IPTeL Management Committee. 2.17."Intellectual Property Management Committee” (IPMC) refers to the committee set up by the Director IISc from time to time to oversee the functioning of IPTeL Activities. 2.18."Industrial design” is a type of IP and refers to the rights pertaining to the ornamental or aesthetic featuresidesign of an article, A design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color. 2.19."Invention" refers to an act of inventing something which is novel or unique, typically a device, method, composition, or process. An invention may be an improvement upon an existing product, process, or service, or it may be an entirely new product, process or service. 2.20."Inventor’, creator or an author (Collectively “Inventor’), refers to the Institute Personnel who contributed to the creation/conception or/and development of the IP. In Patents, inventor is the person, or persons who preferably contribute to the claims of a patentable Invention 2.21."Intellectual Property or IP" refers to creation of mind and primarily encompasses inventions; literary and artistic works; designs; symbols and names used in commerce, method or process of manufacture; biological material; drawings, prototypes, integrated circuit, circuit layout or semiconductor chip layout or design; or scientific, technical or engineering information; computer software (in source and object _ format); improvement, modification or development of any of the foregoing; trade secret and Know-how. 2.22."Intellectual Property Rights (IPR)" Intellectual property rights are the rights given to Inventor(s), Applicant or the Assignee for the IP created/generated. The right usually gives the Inventor, Applicant or the Assignee an exclusive right to exercise the monopoly over the use of their creations for a certain period of time. The different types of Intellectual Property Rights include Patents, Copyright, Industrial Design Rights, Trademarks, Integrated circuit design rights or the mask layout rights, Plant Variety Rights, Geographical Indication(Gl) and in some Jurisdictions, Trade Secrets.2.23. 2.24. 2.25. “Intellectual Property (IP) Policy and Guidelines’: IP Policy and guidelines refers to the instant policy along with the Annexures and the previous versions of the IP Policy, if any in force. The instant IP Policy and Guidelines refers to the set of principles, values, and guidelines that will govern all the actions and efforts of the Institute, towards the identification, protection, prosecution, utilization, transfer, licensing, and commercialization of all IP arising out of the R&D work of the Institute Personnel. “in n Institute of Science’/"IISc’/"Institute” refers to an autonomous institution of higher learning and advanced research, founded in 1909, and located in Bangalore. It also includes its other campus situated in Challakere and its research centers or laboratories setup at various places in India, and, unless repugnant, also include all its assigns, heirs, and legal representatives. "Institute Personnel” shall refer to all Faculty ( active, retired or alumni), Students, Staff, (permanent and temporary), retired but continuing faculty, consultants, Ad-hoc appointees, and contract employees, engaging in education and research at the premises of the Institute or off the premises of the Institute, working during leave or on duty from the Institute, including emeritus professor, honorary appointee, visiting fellow, research staff, research associates, post-doctoral researchers, project assistants, students on internship, students enrolled by the Institute in various degree programs of the Institute, regardless of the mode of entry through which they are admitted, such as Undergraduate Admission and Graduate Admission under the M.E./M.Tech./M.Tech.(Research)/M.Mgt./MDes/ M.Se.(Engg.)/Ph.D. programs, the Integrated PhD program, the External Registration Program (ERP), the Quality Improvement Program (QIP), as well as students at the Institute from other Universities (whether in India or abroad) studying/conducting research under exchange programs. Institute Personnel also includes visiting faculty members or scientists, adjunct faculty, industrial personnel, fellows project/research/technical assistants, summer fellows/trainees, Institute alumni and any other personnel from outside institute engaged in research and development work at the institute independently or in collaboration with Institute2.26. 2.27. 2.28. 2.29, 2.30. 2.31. 2.32. Personnel. Institute Personnel whose R&D effort results in an Invention, and whose IP needs to be protected by the Institute, will be referred to in this document as Inventors. “Institute resources” means any form of funds, facilities or resources, including equipment, consumables and human resources such as faculty time, student time, staff time and support staff time provided by the Institute either in a direct or indirect way. “Joint IP/ Joint ownership” refers to IP that may be jointly owned by the Institute and the extemal party that has contributed intellectually to the generation of such IP through its employees. ."Know-how’ refers to any technical information or tacit knowledge closely- held together with accumulated skills which is valuable and identifiable, including results, experimental techniques, formulae, chemical structures, source code etc; not strictly a form of IP but equally important and proprietary to the Institute. “Lump Sum Technology Transfer Fee" refers to the financial compensation paid as a single payment by the Licensee to the Licensor, in this case, the Institute, for the rights to use the Technology! Invention/ IP(R), for commercial purposes, including the sale, internal use, lease, rent, or assign to any other party, etc. that result in financial, commercial, economic, or any other material benefit to the Licensee. "Licensor" refers to a person or an organization such as Institute which grants a license to another or a third party know as Licensee. It simply means that the Institute who is the IP(R) owner grants permission to another individual or an organization to make, use, import, sell etc., the rights it holds in a patent, copyright or other forms of IPR. “Net sales” refers to total revenue (gross sales), less the cost of sales returns, allowances, and discounts “Ownership” refers to the rights an organization holds under this policy to deal with the IP generated/created by the Institute Personnel. Subject to the rights of the government and any exceptions contained in this policy, lISc owns or will be considered the owner of all the IP generated by the Institute Personnel. Ownership of Patent or IP is independent ofinventorship/authorship. The Institute Personnel generating/creating the IP will be considered Inventors/authors. 2.33.Patent" is a type of IP and refers to an exclusive right granted for an Invention which is either a novel product or a process that provides a novel way of doing something, or that offers a new technical solution to a problem which has some industrial use and is not obvious to a person skilled in the art. 2.34.*Project” refers to a series of tasks that need to be completed in order to reach a specific outcome by the Institute either on its own or in collaboration with an external entity and includes research project(s), consultancy projects(s). 2.35."Publications or Public isclosure": refers to the various documents, reports, technical communications, research papers, manuscripts, software, research data etc. arising out of a R&D work carried out by the Institute Personnel that are generally made available to the public by act of publishing, including electronic and printed copies, through different forms such as journal publications, books, thesis, dissertations, newspaper articles, posters, conference publications or other publications via a website or other electronic means, physical copies or in an oral presentation to someone who is not an employee of the Institute, or is not bound by confidentiality to keep such information secret. Demonstration/promotion of the invention in a public place is also considered public disclosure. Thesis and dissertations kept in the IISc library or published as an e-copy is also considered public disclosure. 2.36."Revenue" refers to all the financial earnings made by the Licensee, from the rights to use the Invention/ IP(R), for commercial purposes, including the sale, sub-license, internal use, or assign to any other party, etc, that result in financial, commercial, economic, or any other material benefit to the Licensee. Where the context so admits, Revenue would also refer to the financial compensation paid by the Licensee to the Licensor, in this case, the Institute, for the rights to use the Invention’ IP(R)/technology, for commercial purposes, such as the sale, internal use, sub-license, to make, import or assign to any other party that result in financial, commercial, economic, or any other material benefit to the Licensee.2.37. 2.38. 2.39. 2.40. "Release of an IP" refers to the release of the Ownership rights on the IP(R) to the Inventor(s) to administer the protection of IP, its prosecution, and commercial licensing of the same. ."Sabbatical Leave, Deputation, Lien" A Sabbatical is a rest from work, or a break, often lasting from two months to a year. Strictly speaking, the original scriptural essence of sabbatical means it would last one year. A deputation is the official delegation, or the assignment of responsibility or authority to a person, from the Institute, to another organization, to carry out specific designated roles and activities. A lien is the official, continuing attachment of an Institute Personnel, to his or her post of substantial employment at the Institute, during designated period(s) when such person(s) have availed leave of accrued nature, to seek gainful employment in another organization. It is the responsibility of the Institute Personnel to ensure that their agreements with third parties are in keeping with their obligations to the Institute. The Office of IPTeL can provide suggested language for inclusion in such agreements with outside entities, especially during Sabbatical Leave/ Deputation/ Lien. ."Substantial Use of Institute Resources” means use of the Institute's Resources such as experimental facilities, background IP, Know-how, laboratories, computational facilities, software, hardware, institute-provided or institute-administered funds or industry! state/ central funding or other external sponsorship/funding, space provided by or through the Institute or human resources including their release time from regularly assigned duties during the course of their work or on paid leave. The routine uses of Institute library/information, desktopsilaptops does not constitute “substantial use of Institute resources”. “Sponsored R&D": refers to those R&D projects andlor activities which are originated and conducted by members of the faculty or, in some instances, by staff members and are supported wholly or in part by external agencies like the government funded projects or the Industry funded projects. It also refers to research which is conceived and funded by industries requesting Institute to provide a solution to a specific problem and such solution is provided solely by the Institute using it Institute Resources in addition to the funds from the Industry.241 2.42. 2.43. 2.44. 2.45. 2.46. “Sponsor! Fun in this IP Policy document, refer to the entity that funds the R&D work ing Agency/ Industry": These terms, used interchangeably that is proposed to be cartied out by the Institute. “Sole IISc IP/ Sole ownership" refers to IP that has been generated or conceived solely by Institute Personnel without the involvement of external agencies/Sponsor or any third-party personnel in the generation of such IP, “Technology Transfer”: refers to the process by which the Institute owned IP, is transferred to another party (the Licensee) to use, put in practice, and commercialize the Invention’ technology or IP owned by the Institute The specific terms of technology licensing will usually be set out in detail in the licensing agreement or any suitable agreement, that will be entered into and contracted, between the Institute which is an owner of the Invention/ IP (the Licensor) and the other party seeking the License (the Licensee) “Royalty/ Royalties” refers to the deferred payment made by the Licensee/Assignee to the Institute, to compensate for the rights to use the IP, for commercial purposes, including the sale, internal use, import, sublicense etc, that result in financial, commercial, economic, or any other material benefit to the Licensee. The terms of the Royalty/ Royalties will usually be specified in the License agreements as a certain fixed or variable percentage of the Net Sales Value, resulting from the Commercialization of the said Technology! Invention/ IP. *SIDICSIC/CSSP". Society for Innovation and Development (SID), Society registered under the Karnataka Societies Registration Act of 1960, by the Institute to provide a window for interaction with Industry in Research and Development. Center for Scientific and Industrial Consultancy (CSIC) and Center for Sponsored Schemes and Projects (CSSP) are administrative units of the Institute dealing with Consultancy, Sponsored and Collaborative Research Projects, respectively. “Startup": An entity shall be considered as a Startup incorporated as a private limited company (as defined in the Companies Act, 2013) or registered as a partnership firm (registered under section 59 of the Partnership Act, 1932) or a limited liability partnership (under the Limited 102.47. 2.48. 2.49. 3.4 3.2 Liability Partnership Act, 2008) in India and as further defined in the notification dated 19/02/19 issued by ministry of commerce and industry vide Gazette Notification No G.S.R 34(E) dated January 16, 2019. “Trade Secret’ means any information not generally known or readily accessible to a third-party or accessible to people in the field that would normally deal with that information including Intellectual Property, but not limited to, an invention, specifications, computer software, circuits designs, schematics, data and know-how, drawings, computer software, copyrightable materials, programs, process, techniques, formulae, product, device, method, program, technical data, compilation or pattern that (i) derives independent economic value , actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can derive economic value from its disclosure or use and ( ii) is the subject of efforts that reasonable under the circumstances to maintain its secrecy. “Trademark” is a type of IP that refers to a sign, logo or a name capable of distinguishing the goods or services of one enterprise from those of other enterprises. In this Policy: Headings are inserted for guidance only. They will not affect the meaning and interpretation, limit the scope of this policy or the intent of any provision thereof. Singular and plural: words importing the singular number shall include the plural and vice versa where the context requires. TO WHOM IS THE IP POLICY APPLICABLE The IP Policy of the Institute is applicable to all Institute Personnel, active, retired or alumni, associated or engaged with lISc and/or making ‘Substantial Use of Institute Resources. When Institute Personnel work at other organizations through a formal agreement between the Institute and the organization, as set out in Sections 2.15 and 5.3, the IP policy of the Institute will be interpreted with reference to the relevant formal inter-institutional agreement. cor41. 42. 4.3. IP OWNERSHIP (GENERAL PROVISIONS) With the exception of rights to Copyright of works, which are dealt with under Section 6, and other exceptions contained in this Policy, the Ownership of all IP developed by Institute Personnel in the course of or pursuant to Research and Development at the Institute or outside, as defined more fully below, vests with the Institute. Inventors shall provide, upon request by the Institute, assignment of their rights in inventions to the Institute and/or other documents necessary for the Institute to perfect its Ownership rights in relevant IP. It is the obligation of employees of the Institute engaged in Consulting and other activities with outside entities to ensure that their activities and agreements with third parties are not in conflict with the provisions of this Policy or other commitments involving the Institute. Employees should inform those outside/third parties with whom they make agreements of their obligations to the institute. Exception and Release 4.3.1.1. All IP developed by Institute Personnel in their own personal time and which is neither connected to R&D of the Institute nor developed with substantial use of the Institute's resources shall belong to such Personnel identified as Inventors. However, prior to seeking any IP protection or Commercialization, the concerned Personnel shall submit a full disclosure to the Institute in the format prescribed and the relevant documentation supporting the claim that there was no significant use of Institute resources. If the Institute is satisfied, it shall give the Inventor a written acknowledgement that it has no claim on Ownership of that Intellectual Property. 4.3.1.2. If the Institute cannot or decides not to protect or Commercialize any specific IP or decides not to proceed with the prosecution or maintenance of the specific IPR, the Institute Personnel may request 12release of the IP/IPR. Upon determination by the Institute that releasing the IP to the Institute Personnel will not violate the terms of an external funding agreement and that such releasing would be in the best interests of the Institute and the public, the Institute may agree to release the Invention to the Inventor(s). If so, the Institute will Assign or release to the Inventors all interest which it holds or has the right to hold in the IP, subject to the conditions to be specified in writing by the Institute and subject to the Inventors not utilizing funds from any of the Institute financial resources including R&D Projects. In the event of such release, the Institute will retain the right to a non-exclusive, nontransferable, irrevocable, royalty-free, worldwide license to the invention for research and educational purposes. In the event of an Invention being released to Institute Personnel the Institute Personne! will be required to sign a suitable agreement to remit to the Institute ten percent of net earnings received by the Inventor(s) through the Commercialization of the said Invention, 4.3.2. Sabbatical/Deputation/Lien of Institute Personnel The aspects of the IP Policy during Sabbatical Leave/ Deputation/ Lien of the Institute Personnel will be governed by the broad terms of the Institute IP Policy, as they apply to all Institute Personnel. Such Institute Personnel should be careful that their work off-site from the Institute, including work during Sabbatical Leave/ Deputation/ Lien, while visiting other institutions and while consulting with industry, does not conflict with their obligations and commitments to the Institute. It is the responsibility of the Institute Personnel to ensure that their agreements with third parties are in keeping with their obligations to the Institute. IPTeL office can provide suggested language for inclusion in such agreements with outside entities, especially during Sabbatical Leave/ Deputation/ Lien. Any IP that is generated partially at the Institute and partially at the visiting organization, the ownership ratio of such IP will be determined on a case to case basis. 135. IP OWNERSHIP (PROVISIONS PERTAINING TO MODE OF FUNDING) 5.1. IISc in-house Projects: With the exception of rights to Copyright of works which are dealt with under section 6 of the IP Policy of llSc, the Ownership of all IP developed by Institute Personnel in the course of or pursuant to research and development at the Institute or outside, as defined more fully under the IP Policy vests with the Institute, 5.2. Government Sponsored Research: IP arising from research funded by the government of India (GO!) or other government funding agency will be controlled by the terms of the grant or contract and applicable laws. Sc may usually own solely or jointly share the IP generated under the government-funded projects, subject to certain rights retained by the government. Any Commercialization option under the GOI sponsored research is subject to the terms of the contract. 5.3. Industry Funded Projects 5.3.1. Sole Ownership: Ownership to any IP generated without any intellectual contribution or any Background IP from the employees of the Industry pursuant to the Project shall be owned solely by IISc in India and in countries filed outside India 5.3.2. Joint Ownership: IISc may consider joint Ownership of IP with an Industry that in addition to funding + contributes its Background IP for the development of the Foreground IP, or + makes intellectual contributions to the Foreground IP through the participation of its employees in generating IP together with the Institute. a 5.3.4. AssignmentTransfer of Ownership: IISc may consider transfer of Ownership or Assignment of rights outside India in a particular field of use to explore the Commercialization of the IP. Please refer to section 9 for terms and conditions of such transfer. 145.4. Non-Industry Research Collaborator: Ownership of any IP generated solely by IISc personnel shall be owned solely by IISc. IISc may also consider Joint Ownership if the collaborator * contributes its Background IP for the development of the Foreground IP, or ‘makes intellectual contributions to the development of Foreground IP, contributes intellectually to the generation of IP using its own funds or through funds from an external organization subject to the funding organization policies. 5.5. Ownership of tangible research property 5.5.1. All tangible property developed at IISc using its funds, shall be Owned by IISc and shall be licensed in accordance with this policy. The tangible property includes but is not limited to, all forms of material - organic and inorganic chemicals, pharmaceuticals, biologicals, metals, ceramics and polymers, machinery -prototypes (equipment, machine), electrical and mechanical systems, circuits in all packaged and integrated forms- and computer software. 5.5.2. GOI funded projects: Any tangible property generated or made in the course of research/Consultancy projects funded or supported by GOI shall be owned by IISc subject to the Ownership and other provisions of the GOI grant. 5.5.3. GOI and Industry funded projects: In the event IISc receives funding from GOI and Industry for academiaindustry collaboration projects, the Ownership of intangible property, if any, developed shall be subject to GO! policies. 5.5.4. Industry funded projects: Any tangible property generated or made in the course of research projects funded by the Industry shall be either solely owned or jointly owned by IISc. if the prototype is fabricated at IISc for subsequent off-campus use by the Industry, such equipment may be licensed exclusively/nonexclusively to the Industry. If the tangible property licensed to the Industry is used for profit by the Industry, then 15,it shall compensate IISc for such use, the terms of such use and the remuneration shall be negotiated through a separate agreement on a case by case basis. 5.6. Consultancy Projects 5.6.1. Research based Consultancy project: These kinds of consultancy projects arise when the researcher in addition to providing his/her research skills and/or expertise has to conduct lab work and may involve other Personnel of the Institute, like students, in conducting such work under the project in return for remuneration from an external agency In such research based Consultancy projects, IISc will consider Joint ownership of IP with an Industry ‘+ that contributes its Background IP for the development of the Foreground IP to the said Project; or ‘+ makes intellectual contributions to the Foreground IP through the participation of its employees in generating IP together with the Institute. Pe Ownership to any IP generated without any intellectual contribution or any Background IP from the employees of the Industry pursuant to the Consultancy Project shall be owned solely by IISc in India and in countries filed outside India 5.6.2. Advisory based Consultancy projects: These kinds of consultancies include providing professional services and technical expertise under contract for a third party or any extemal agencies for a fee and is expertise based. The services include, routine laboratory and other testing of materials, devices, products or produce; analysis of data; surveys, including market and opinion surveys; quality controls/checks; field trials; providing professional advice and opinion using knowledge that is already 16present in the open domain. These kind of projects do not necessitate the consultant to conduct any lab work under the project to provide advice. 5.6.3. Any IP that is generated by IISc faculty under the Advisory based 5.7. 5.8. 5.9. Consultancy project will belong to the external agency funding such project. lISc faculty shall be named as an inventor or an author in accordance with the IP law as applicable in the country where such protection is sought. Based on IISc request, the said external agency may consider paying an additional remuneration as a contribution towards the generation of such IP. This may be in the form of one-time payment or a running royalty to be mutually decided on a case by case basis when the IP is generated or the revenue is generated AssignmenvTransfer of Ownership: IISc may consider transfer of Ownership outside India in a particular field of use to explore the Commercialization of the IP. Please refer to section 9 for terms and conditions of such transfer. Student Fellowship Funding by Companies: If the Industry is funding only the student academic fellowship then the IP generated by the student shall be Owned by IISc and shall be treated as IISc IP and dealt in accordance with the IP Policy of IISc. Student Internship: IISc encourages student internship onsite in industry for a period of up to three months and IISc shall not claim any ownership in the IP generated during the student internship for the said three-month period, provided the student does not use IISc’s Background IP or IISc resources for generation of such Foreground IP. In the event the student uses IISc Background IP, IISc resources or continues to work in the same area he/she has been assigned at IISc, IISc shall have a stake in the Ownership and the extent of Ownership shall be determined on case by case basis. If the student spends more than three months in the Company, the engagement shall be converted into a suitable research project such as Research based Consultancy Project, Collaborative 7project/Sponsored project etc. on a case by case basis and shall be dealt as per the policies of IISc. 5.10, Research under the External Registration Program (ERP): ERP is 5.11. viewed as a collaborative research arrangement between the Institute and the employer of the registered student. The Ownership of the IP generated will be shared between the Institute and the employer organization provided the employer has appointed a co-research guide to guide the ERP student and the student is permitted to work in the premises of the employer towards the research problem identified during the enrolment. If the employer organization wishes to exploit such jointly owned Foreground IP commercially, the Institute will grant the organization the first right to negotiate a royalty-bearing exclusive license of the rights held by the Institute within six months from the date of disclosure. The organization's rights in the Joint IP will, however, be limited to the field of application, as identified in the research proposal in the application for external registration. The Institute reserves Ownership of any IP generated in the fields of application not specified in the research proposal and will be free to exploit the IP in those other fields of application without being accountable to the employer organization. In the event the exclusive rights are not exercised by the employer organization, IISc reserves the right of exploiting the IP without accounting to the employer organization including its competitors in the market. If the ERP student leaves the employer midway or is not permitted to use the employer's resources or does not identify a co-guide in the employer's organization or is on unpaid leave to work with IISc fulltime, then, the Foreground IP generated shall be owned solely by IISc and such IP shall be treated as IISc in-house IP. “Contract R&D": This form of R&D would arise when a Sponsor/Funding Agency/industry/Collaborator sets out a specific problem/research agenda/ scope of work in the R&D. The Institute Personnel would essentially be working on the above problem/ research agenda/ scope of work, and the Contract R&D Project would be completely funded by the Sponsor/ Funding Agency! Industry/ Collaborator, to cover all direct and indirect costs, costs to set up the laboratory, all operating costs and overheads for the independent (out-sourced) execution of the Contract R&D. In such 186.1. 6.2. 63. 64. extreme and rare cases, the Institute may consider the request(s) for exclusive ownership of -—«IP,_—from_~—the_-—-Sponsor/Funding Agency/Industry/Collaborator. COPYRIGHT Unless expressly stated otherwise in this Policy or an agreement, Institute shall be the owner of all copyrights, including for computer software and database, teaching material and technical reports created by Institute personnel. If there is third party funding received for Projects that result in copyrightable work then the IP ownership provisions of this Policy will apply. As a traditional exception, the Institute shall not claim Ownership of copyright on books and publications authored by Institute personnel Exception: If an Institute Personnel creates software that is not part of his or her normal duties, does not substantially utilize Institute resources, and if the software development is done outside of the normal working hours of the Institute, the Ownership of such software would remain with the Institute Personnel. Unless the Institute has some obligation or special investment in regard to the work leading to the software that would make Institute Ownership appropriate, the intent is to vest Ownership in the student of any software which was created as part of the student's class work, or as part of normal extra-curricular activities. ‘Student Thesis: A student shall own the copyright of his or her thesis or dissertations written as student to satisfy the IISc degree requirements. The student shall grant to the Institute a royalty- free permission to reproduce, publish, and publicly distribute copies of the thesis, in any appropriate form. If a thesis contains information on an Invention or any IP that is protectable, the Institute at its discretion may delay the public dissemination of the thesis, if it intends to seek statutory protection for any material contained within it. If the Institute hires a third party to perform specific tasks that contribute to a copyrightable work, the rights of such work shall belong to the Institute. 1965. 66. 67. 7A If the Institute Personnel wishes to make the copyrightable work open- source, the Institute Personnel is required to keep IPTeL informed about such intent. Subject to any third-party agreement, the Institute Personnel in consultation with IPTel can choose the distribution and licensing schemes including free or open source arrangements. In case of disagreements between IPTel and the concerned Institute Personnel, the matter will be decided by the IPMC. Registration and protection of works and Copyright notice: The Institute will not register or otherwise protect or enforce the copyright in works it does not own. The Institute may register and protect the copyright in a work in which it has some right, title or interest. In those cases where the Institute is the owner, the following notice must be included “Copyright © [year] Indian Institute of Science. All Rights Reserved” The date in the above notice should mention the year in which the work is!was first published, ie., distributed to the public or any sizable audience. Copyright Infringement: It is the duty of the Institute Personnel to respect the intellectual property of others. The Institute supports full utilization of the rights of fair use and the rights granted to educational institutions under copyright law. Where uses of copyrighted works of authorship will exceed those permitted by fair use and other statutory exceptions, permission to use the copyrighted works of authorship should be obtained from the copyright owner. Copyright infringement is a serious violation under the Institute code of conduct and the bylaws. INTELLECTUAL PROPERTY ADMINISTRATION The Intellectual Property Management Committee (IPMC), appointed by the Director of the Institute, shall oversee and guide the processing and management of the Institute's IP, including its utilization/commercialization. The IPMC is responsible for reviewing and interpreting this IP policy and for resolving any dispute that may arise in the context of IP and IP management at the Institute. The IPMC will also provide guidelines for 207.2. a 84 8.2. Technology Transfer undertaken by the Institute and for Technology licensing practices of the Institute The Office of Intellectual Property and Technology Licensing (IPTeL) is the administrative body of the Institute, reporting to the Director of the Institute and guided by the IPMC, which is responsible for the day-to-day handling of IP matters, dealing with Disclosures of Inventions submitted by the Institute Personnel, arranging for the Evaluation of Disclosures, filing and maintaining Patents and other IP applications, and negotiating Technology Transfer, Licensing, and Commercialization Agreements, Research Agreements, or any other Agreements concerning IP related matters, except as it pertains to start-ups/ faculty entrepreneurs, for which the negotiations on the Technology Transfer and Licensing would be done by SID, and for the Research Agreements by CSSPICSIC/ SID in consultation with IPTeL and in accordance with this Policy. The disclosure and the evaluation process followed at IISc is provided in Annexure-1 This Annexure-1 is an IISc internal document and will be available only to the Institute Personnel. COMMERCIALIZATION/ UTILIZATION OF IISc IP As the Sole or Joint owner of any IP, the Institute is entitled to enter into a binding agreement with any party for the utilization of its IP, whether on commercial terms or on non-commercial terms in the public interest, and in a manner consistent with the terms of any agreement involving the R&D project from which IP was generated and read harmoniously with the terms of this policy. The Institute shall be entitled to grant Licenses, whether exclusive or not including open source licenses, for the utilization and commercial exploitation of Institute IP, or to make such other arrangements as the Institute may deem fit to facilitate Technology Transfer, Licensing, and other means of Commercialization of Institute IP to industry or other entities, while preserving the rights and interests of the Institute and of the Inventor(s). Where Institute IP results from R&D projects funded by Public Agencies or through the resources provided by the Institute, an 2exclusive license may only be granted if the terms of public funding permit such a license. Any licensing of IP generated from public-funded R&D, including R&D work supported by the Institute, shall comply with applicable national legislation, if any. All Institute IP to be Commercialize will be listed on IPTeL website and the interested parties approaching the Office of IPTeL will be considered for such licenses. 8.3. The cooperation of Inventor(s) with the Institute and with licensees of Institute IP is usually essential for the success of efforts to utilize/Commercialize IP. Therefore, Inventor(s) shall provide all assistance to the Institute both during the effort to protect IP and the later efforts to undertake Technology Transfer, Licensing, and Commercialization. The assistance and active cooperation of Inventor(s) is also required in identifying potential licensees for Institute-owned IP and in negotiations with potential licensees. 8.4, Commercialization through start-ups: !ISc supports entrepreneurship and the creation of Startup companies as a means of exploiting IISc owned IP. Where an Inventor wishes to develop and Commercialize Institute IP based on his/her Invention, the Institute will generally license such IP exclusively to the Inventor's startup The Institute may also consider assigning the rights of such Invention(s) partially or completely to the Startup. on a priority basis, as compared to other license seekers, through taking an equity stake in the Start-up Company that such an Inventor might set up and a combination of upfront paymentroyalty. Such initiatives may be channeled through SID or other similar bodies formed by the Institute to promote such initiatives. Agreements to enable such Commercialization efforts will be formulated on a case-by-case basis, For guidance and the terms and conditions, SID or a similar body identified by the Institute should be approached 8.5. Modes of Commercializing IISc owned IP 8.5.1. The possible modes of Commercializing of IISc owned IP include, * non-exclusive licensing, * exclusive licensing, 2