Ownership Of Public Funded Academic Patents In India by - Sruthy Rajendran

Ownership Of Public Funded Academic Patents In India

Authored by - Sruthy Rajendran

Public Funded Universities were established around 800 years back. The primary aim of such universities was to impart knowledge and education to the public. With the advancement of science and technology in the 19th century, the role of Universities shifted from imparting knowledge to creating the same. Public funded research universities and research institutions were set up around the globe, to create and develop new knowledge. As time progressed, together with science and industrialisation, a country’s economic development was seen to be contingent upon its capacity to develop ideas and innovations. The governments all over the world, made ‘innovations’, the core strategy to ensure its’ economic development and started devoting increasingly substantial amounts in public research so that they would provide solid economic returns.[1] Hence, the universities and research institutions were expected to play a further role in this development of a nation.  They were required to create knowledge with the aim of fostering the economic development and social prosperity of a nation, and this came to be recognised as the ‘third mission’ of public funded universities and institutions, the first two missions being teaching and research.[2]

This new role of public funded research institutions, have now become their most important function in the present-day. The universities underwent a transition from their traditional roles of imparting knowledge to playing a crucial role in furthering the socio-economic goals of a country.[3] The public funded research institutions were expected to devote their resources so that their research will contribute to development of their countries innovation environment and thereby the economy. The public funded research institutions were expected to do so by acting as a gateway between the private sector research and development and innovation, by joining forces with various private and industrial concerns to transfer and disseminate the knowledge created within them[4]. This interface between the academia and industry is critical for the conception of innovative and state-of-the-art developments that can directly contribute to a country’s economic growth.

In consensus with their broader objective of furthering the economic growth, by transferring technology to the industries, the Public Funded Research Institutions started framing their goals so as to attain the global success of their nation’s economy. The Universities and research institutions expanded their fields of operations, created cross cutting competitive technologies, generated partnerships with the industries etc. The developed counties, especially the US and that in the Europe, were far ahead in the race for attaining economic super power via public funded research. There was a significant innovation boom in the public funded research institutions, of these countries by the 1960s[5]. The origins of most of the inventions, as we see today can be traced back to the research conducted at some of such public funded research institutions[6]. However, by the beginning of 1970s, it was realized that the transfer of innovations to the market place, was not happening at the same pace and magnitude as creating them. The US Government, in particular was concerned about the sub optimal utilisation of public funded research results and the US policy makers were apprehensive about the seemingly decreased returns from their investments [7] Although several scholars have identified various factors that may have contributed to this underutilisation of public funded research results, the consensus was that a lack of clarity on the proprietary rights of these public funded research results were one of the main reasons. Thus, policy and legislative interventions were made to increase the transfer of technology and commercialisation of public funded innovations[8]. Two most significant laws were passed in US in 1980, that considerable changed the way public funded research was conducted in US. The first one was the Stevenson-Wydler Technology Innovation Act, which made technology transfer an integral part of the research and development responsibilities of federal laboratories and their employees.[9] This made licencing of technologies an important objective of the public funded research institutions. The second was the passage of Bayh Dole Act. The Bayh-Dole Act enabled public funded institutions to keep control of patents invented using federally funded research. The act also required universities or businesses to have clear patent policies and encourage development of inventions. In Europe, the United Kingdom was one of the first to introduce legislative changes to the way the public funded institutions managed their research by the Patent Act 1977, which stated inventions created by employees are owned by employers.[10]

In light of the perceived success of such policy and legal changes in the US and Europe on stimulating innovation and promoting technology transfer in Public Funded Research Institutions through Intellectual property rights, many countries, including India started adopting similar practices.  Although India do not have a Bayh-Dole like legislation that provides for the patenting of public funded research results. The public funded research universities and institutions are left on their own to enact policy and framework for patenting their inventions as they seem fit. Although certain government funding agencies do stipulate about the ownership of patents arising out of inventions created using their funds. The Indian public funded institutions, especially the CSIR had started patenting their inventions from a very long time. Even though the number of patents may be low, there were patenting activities going on in the public funded research sector. Some of the institutions even had patenting offices and patenting policies to facilitate the protection of inventions through IPRs and to transfer these inventions to the industries via commercialisation. However, there were concerns expressed by scholarly articles, as well as different stakeholders and the Government of India that university industry interactions in India have not reached to a level were the social and economic values of the public funded innovations can be fully realised.

There have been profuse policy and scholarly discussions on whether a lack of or lax IPR policies were the cause of subpar commercialisation of public funded research in India. Now to understand the need for creating IPR policies for public funded research institutions one must first review these scholarly literature. Considerable amount of literature has discussed in detail the need for enacting IPR policies for public funded research institutions. And the consensus of opinion was that the commercialisation of public funded research remained sub-par because of the lack of university industry interactions and not because of the lack of knowledge about the benefits of commercialising research.  Because of the severe lack of university industry linkages, most of the inventions created out of public funded research was not even noticed by the industries.  And industries were also not ready to work on those inventions further due to the heavy costs of developing such inventions into marketable products. It was contended that if such public funded inventions were protected by intellectual property rights and if the industries were provided with exclusive licences to commercialise them, the industries would be much forthcoming to invest in further development. Further, it was also noted that the industries were also concerned about the uncertainties in legalities associated with public funded innovations, like who owns the invention, who they should negotiate with etc. Thus, if a Public funded IP bill or at least some form of a IPR policy was framed keeping in mind India’s need and her public funded research sector,[11] it may bring some clarity on issues of ownership and licencing and thus help in reducing the costs of IPR negotiations between universities and industries.

Following which, our country introduced a Public Funded IP Bill was in 2008; however it was not passed into a law owing to the large criticisms it received since its introduction.[12] Recently, in 2019, the Government of India issued the ‘Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions.’ It is the first of its kind in India and has been delivered based on the national IPR policy 2016. The national IPR policy had several objectives and two of the objectives were to stimulate the creation and growth of intellectual property from R&D institutions and universities, through measures that encourage IP generation[13] and to commercialise those Intellectual property.[14] 

The guidelines recognise an Intellectual Property Rights Policy as the cornerstone of innovation and creativity for academia. It states that such a policy provides structure, predictability, and a framework for talented minds to do what they do best: create and innovate. The ultimate goal of these model guidelines is to promote student-led start-ups and ventures to protect and respect intellectual property. The  larger  objective  of the  Model Guidelines is to ‘nurture the spirit of innovation’ by  translating the inventions generated in academic institutions into products, processes, and services, so that they can be commercially exploited for the benefit of wider public.[15] It is perceived by the guidelines that this commercial exploitation of the academic inventions will transform the industry and society, by providing research-led education, promoting innovation, collaboration and fostering human values.

Towards this end, the guidelines have identified that laying down efficient and transparent mechanisms for control of ownership of inventions are essential for increasing the commercialisation of public funded research results. [16] The guidelines provides that the ownership rights of an invention depends on the circumstances in which it is generated. For instance, If an inventions is made using the resources of the academic institution, the ownership will ordinarily be vested with the academic institution.[17] On the other hand if the invention is made by an inventor, in his/her own time and without the use of the institute’s resources the inventor may retain the ownership.[18] Further, if an invention is generated form collaborative research with external third parties, the ownership of IP shall be determined as per the terms and conditions agreed between the parties.[19] However, in such cases,  the academic institution shall be given  perpetual,  royalty  free  license  to  use  the IP for  research  and educational purposes.[20] The Guidelines also provides that in the absence of such an agreement between the academic institution, and the external partner, the IP rights shall be shared amongst the concerned parties.[21]

Research methodology

India has very large number of public funded research organisations and universities. And it is not possible to study or even identify whether all these institutions have a dedicated IPR policy. Therefore I have selected few public funded universities and research institutions of whose IP policies will be evaluated. These institutes have been selected from Top Ten Indian Applicants for Patents from Scientific Research and Development Organisations and Institutes based on research and development statistics by the Department of Science and technology,[22] from universities with high patenting activity[23] and from top ranking universities and research institutions based on National Institutional Ranking Framework by Ministry of Education[24] and Scimago institutional ranking.[25]

Ownership in Indian Public Funded Research Institutions

The issue of ownership in Public Funded Research is pertinent because commercialization of research can only be done by the intellectual property rights owner. With the exception of a few countries that still follow professor’s privilege, it is the research institution that almost always owns the invention that are created out of public funded research. Unlike other countries, India do not have provision in law that automatically vests the ownership of an invention in an employer if it is created under the course of the employment. As per Indian Patents Act, an inventor is the default owner of a patent granted in India. However, the inventor can assign or transfer ownership according to the provision of Indian contract Act. However when the public funded research inventions are left under the ownership of inventors they may not have the necessary financial and legal resources and expertise to commercialise such inventions. Thus one has to first look into how Indian research institutions accommodate this concern if they wish to commercialise their inventions.

Next, not all research that take place in public funded research institutions are funded by themselves. Several external agencies fund various research in public funded institutions. When external agencies are involved in a research the ownership rules become more complicated. This external sponsoring agency may be either a government funding agency, another university or research institution or a charitable institution or a private industry. The following table summarises who owns the invention created using the institutes own fund and who owns the invention when an external agency is involved.

All the selected Indian institutions have explicitly stated that any inventions created using significant resources of the institution will be owned by the institute. Even though three institutions, CSIR, the University of Hyderabad and Sreechitra Institute do not have formal IP policies. University of Hyderabad and Sreechithira Insititute have expressly laid down their ownership policies that the institutions will be owner of all inventions created by using their resources and even without an expression of ownership policy, CSIR have been owning and patenting their creators invention. Banaras Hindu University[26] and NIT Rourkela[27] additionally gives the inventor a joint ownership of the inventions, it remains to be seen whether this will have any implication on the patenting and commercialising activity of the institution. When professor’s privilege was in existence in Europe, the inventor had the right to own the invention, however they also had to commercialise and bear the costs of such patenting.

Coming back to ownership of inventions by the institutions, even though all institutes claim the right to ownership in their IP policies, there  are  differences  in how  these  rights are vested in the institutions. Seven institutions IIT Bombay[28], IISc[29], ICAR,[30] IIT Madras[31], IIT Delhi[32], JNU[33], and University of Delhi,[34]claim automatic ownership and are first owners to the invention. Of which some institutions provide for certain exceptions for this general rule of ownership. One, when the inventor is not related to the university, which has been provided by IIT Bombay and the IISC. Two, when the inventor has not used significant resources of institutions,   IIT Bombay’s and IISc’s policy also provides for the inventor to submit the lack of  using  significant  resources. Three, when the institute is not willing to move forward with patenting or commercialising the invention, which has been provided by IIT Bombay, IISc.[35] . It is to be noted that IIT Bombay’s, policy provides for the possibility for an exemption and the institution has however reserved the right to review this exemption on a case to case basis. On the other hand IISc requires its Institute Personnel to file a request release of the IP, upon which the institute may decide to release the IP.[36] As per the Indian law, inventors are the rightful owners of the intellectual property created by them and they  may assign the rights in the invention to the employer as part of an employment contract. Thus public funded research institutions should eliminate language that incorrectly suggests that ownership of inventions created by faculty and other employees will automatically vest in the university. Further, it must be noted that in US several cases has been filed by the inventors to claim ownership on the public funded inventions and most often the courts have ruled in favour of the inventor, despite the invention being created out of federal funds.[37] Thus, a substantial amount of the public funded resources are being spent on litigating ownership issues between the institution and the inventor.  It is so because, when the inventors enter into commercialisation agreements themselves they can get the entire revenues to themselves. Thus, the Indian research institutions must be prepared for such resistance from the inventors as and when the patenting activities at our institutions increase.

IIT Kharagpur and IIT Roorkee, does not automatically claim ownership instead requires the inventor to assign ownership to it if the institute decides to commercialise the said invention.[38] The policy also calls for an arbitration by the Intellectual Property Committee in cases where the ownership is in doubt and the committee has to inform the creator its decision within one month.[39] These provisions may be in resonance with its policy objectives of academic freedom that has been identified in the IPR policy of these institutions.[40] Some literature using data from American and European universities have suggested that academic freedom among other things like reputational and monetary motives are very important incentives for university researchers.[41] One will have to see if such clauses in the IPR policy have any actual effect on the patenting and commercialising activities of the institution.

The very basic question that arise here is whether institution ownership and control over inventions is the best method to achieve commercialisation of an invention. While  proponents  of  the  model  argue  that institutions play an important role in moving research from the laboratory to  the  public[42],  critics  have  identified  numerous  problems  with  university  ownership  of  inventions, like whether the institution has the required skills and efforts to commercialise the invention[43]and that institutional ownership have so far not been successful in many institutions. Yet, the alternative model of inventor ownership has not been successful in translating research results to commercial products either. Thus, the ownership of the invention must be decided based on the abilities and resources of the institution or the inventor to enter into commercialisation agreements with the industry.

Ownership in sponsored or collaborative research

The question of who owns the invention arising out of a collaborative research is very important because as stated earlier the question of ownership is pertinent because, proper commercialization of research will depend on whom intellectual property rights vests. This is especially of a concern when the sponsoring agency is a private entity. Complex public interest issues arises when the sponsoring or collaborative research partner is a private industry, therefore phrasing of IP policy must be wary enough to accommodate those public concerns. If IP ownership is given to a private player, they may not be in a position to effectively exploit intellectual property so as to provide the university or the government or the public with any benefits. Their motives for investment in research and commercialisation may be entirely different from that of a public funded institution. If the ownership of IP is vested in the public funded institutions, then they can determine the best means of using it to ensure that the public benefits from the research it helps to fund. However, on the other hand, the purported rationale for a public funded research institution to protect their inventions in the first place is that, they can get the private industries to invest in their research. Giving ownership rights to the industries are expected to incentivise them to invest in public funded universities. Thus, this section looks into how these conflicting interests have been balanced out by the selected research institutions.

In case of a collaborative or sponsored research, most institutions provides for sharing of the ownership between parties involved via mutually agreed terms. IIT Bombay[44], ICAR,[45]provide for a joint ownership mostly dictated by the terms of an agreement, negotiated between the research institution and the sponsoring agency. Now this may seem good in theory however, our universities and research institutions may not be experienced in IPR and market forces to enter into successful negotiations with a private sponsor and it may end up one sided. The private institutions may have more resources and expertise to enter into negotiations that may be beneficial for them and it may affect outcome of a public funded research.[46] The outcomes of such negotiations may also be affected by the relative contributions of the research efforts of both research institutions and industries. And if the contribution by the research institution is more, the industries are likely to leave the ownership with the universities.[47] However, if the industry has invested a huge amount of financial resources for the research, then they may want the major share in ownership.

Some institutions, Sree Chithira Institute, [48] IIT Delhi,[49] provides only for sharing of ownership based on mutually agreed terms. The policy has not stated whether it will be a joint ownership or not. However, IIT Delhi has provided that when deciding the extent of such ownership, it has to take into consideration, the relative contributions of the parties and background IP, if any. IISc also has a similar requirement and they also proceed to state that in case of no intellectual or IP contribution from the industry sponsor, IISc will be the sole owner.[50] The IISc however arrange for the transfer of such sole or joint ownership outside India to private parties under certain conditions such as; when IISc cannot bear the expenses to seek protection in that country, the party is interested in making substantial investment in the development of the technology, it is likely to be the only practical user of the resulting inventions or when it has provided proprietary information, technology, or Background IP.[51] This is one way to ensure the delicate balance between incentivising industries to invest in research on hand with the duties of a public funded research institution. The primary aim of commercialisation is to make the invention available in the local market. Thus, if the institution can come into an agreement with the industry partner where the ownership for Indian markets will be reserved by the research institution and that the industry can claim ownership rights in foreign country, both the industry and institution can benefit. The industry can reap profits by selling the invention outside India by being the sole owner and obtain a licence to use in India. Further, the research institution must weigh the costs and benefits of retaining ownership over inventions and only proceed, if the circumstances favour transferring ownership to the industry.

Some institutions provides for a waiver of ownership and vesting the rights on the private sponsor under certain situations. IIT Madras IP policy considers waiving ownership in case of collaborative research so that a sponsor can be the sole owner.[52] The IIT Delhi also provides for waiver of ownership, if they are adequately compensated, based on the recommendation of the inventor. IIT Roorkee,[53] only states that ownership will be decided based on agreement with the collaborative party. It has not stipulated how such ownership will be decided.

Now vesting ownership of inventions with the private industries pose multi-fold problems. The first one is of course the ethos involved in transferring ownership of a public funded inventions to a private player,[54] it may impede the dissemination of research results into public domain, where it can be used by other academics for further research.[55] Some studies have shown that in the case of joint research projects between universities and private firms, the assignment of property rights to the firm instead of the university result in the innovation having a lower value than that could have been the case if the university had owned the patent and may lead to market failure as well.[56] This is based on the assumption that, when an invention is owned by the industry, the industry may have to pay a huge amount upfront to the university without actually knowing how the invention would perform in the market and if the invention is not in demand it will lead to a loss for the industry. In case of licencing, the industry will only have to pay licence fees which can be renewed from time to time according to the market.

On the other hand, Banaras Hindu University, [57]Delhi University,[58] and NIT Rourkela[59] provide for a joint ownership in all cases when a sponsoring agency in involved without the need to enter into agreements. Additionally, the Banaras Hindu University, also stipulates that for a private corporation to be joint owner, they have to invest above rupees ten lakhs in the research.[60] NIT Rourkela also stipulates the sponsoring agency to bear 50% of the protection cost or to forgo ownership rights.[61] While it is not possible to arrive at a precise quantification, the costs of patenting public funded research and thereby eroding the public domain knowledge pool must be balanced out from gains from technology transfer.[62] Such provisions by the institutions will help them shift this balance in their favour and also puts the institution in much powerful position when negotiating terms with the corporate sponsor.

In case of sponsored research, wherever possible, the research institution must opt for institutional ownership. In exceptional circumstances, the institutions may consider sharing the ownership with the sponsoring industry but must never transfer the ownership. For sharing the ownership, a cost benefit analysis must be done based on several factors. Few of them are the contribution of the industry in terms of money, resources and IP, adequate compensation for sharing ownership and if the industry refuses to take up commercialisation without sharing of ownership or when the industry is the only potential licensee with resources adequate enough to commercialise the invention.

Conclusion

Very vital economic, social and public interest issues are at stake when more and more public funded research institutions and universities are being involved in patenting and commercialising their innovations. Hence, it is imperative to ensure that optimum results are obtained for all the parties, including the research institutions, industries, the government and the public, when public funded innovations are commercialised to private players.  Now, this transfer of knowledge from public funded research institutions to the industries via commercialisation is a complex process, one affected by numerous issues. However, it is not possible for anyone to recognise and list out all the problems that an institution might encounter when commercialising their inventions. But after a perusal of the prevailing policies and practices in commercialising research results and also of the literature based on such policies and practices, it is possible to identify some very crucial issues that every institutional IP policy must include.  An institutional IPR policy must take into considerations the problems and requirements of all the key stakeholders involved in commercialisation of research results. The parties that need to be considered while developing a framework are normally the Government, the inventors, the research institutions, the funding agencies, the private industries and the general public.

First and foremost issue that arises when commercialising public funded innovations is the issue of ownership. The public funded research institutions often have inventions created by various persons including employees, students, consultants etc. in diverse fields. And it is not always the institutions or the creator that owns such invention. Ownership depends on several other factors like who funds the research, the nature of such research, who invented it and what are the circumstance under which it was created. Hence IP policy must provide a clarity and predictability on who owns an invention under various circumstances. The institutions should eliminate language that automatically claims ownership of the inventions that are being created by their inventors. Instead, they should replace such language with a provision that clearly states that the employee is required to assign intellectual property to the university as a condition of employment or as and when required.

The ownership of the invention must be decided based on the abilities and resources of the institution or the inventor to enter into commercialisation agreements with the industry.

In case of sponsored research, wherever possible, the research institution must retain institutional ownership. The research institutions should never waive ownership rights to the industry and should only consider licencing of invention or sharing of ownership. Proper cost benefit analysis must be done before deciding to share ownership with the industrial sponsor.

[1] Olssen, Mark, and Michael A. Peters. "Neoliberalism, higher education and the knowledge economy: From the free market to knowledge capitalism." Journal of education policy 20, no. 3 (2005): 313-345.

[2] Roper, Carolyn D., and Marilyn A. Hirth. "A history of change in the third mission of higher education: The evolution of one-way service to interactive engagement." Journal of Higher Education Outreach and Engagement 10, no. 3 (2005): 3-21.

[3] Sam, Chanphirun, and Peter Van Der Sijde. "Understanding the concept of the entrepreneurial university from the perspective of higher education models." Higher Education 68, no. 6 (2014): 891-908.

[4] Etzkowitz, Henry, Andrew Webster, Christiane Gebhardt, and Branca Regina Cantisano Terra. "The future of the university and the university of the future: evolution of ivory tower to entrepreneurial paradigm." Research policy 29, no. 2 (2000): 313-330.

[5] Fagerberg J, Mowery DC, Nelson RR, editors. The Oxford handbook of innovation. Oxford university press; 2005.; Etzkowitz, Henry. "The making of an entrepreneurial university: The traffic among MIT, industry, and the military, 1860–1960." In Science, technology and the military, pp. 515-540. Springer, Dordrecht, 1988.

[6] Internet explorer, Google etc. Abrams, Irene, Grace Leung, and Ashley J. Stevens. "How are US technology transfer offices tasked and motivated-is it all about the money." Research Management Review 17, no. 1 (2009): 1-34

[7] Bush, Vannevar. "Science, the endless frontier." In Science, the Endless Frontier. Princeton University Press, 2020.

[8] Ray, Amit Shovon, and Sabyasachi Saha. "Patenting Public‐Funded Research for Technology Transfer: A Conceptual–Empirical Synthesis of US Evidence and Lessons for India." The journal of world intellectual property 14, no. 1 (2011): 75-101.

[9] Jolly, J. A. "The Stevenson-Wydler technology innovation act of 1980 public law 96-480." The journal of technology transfer 5, no. 1 (1980): 69-80.

[10] Section 39, Patents Act 1977. United Kingdom

[11] Ray, Amit Shovon, and Sabyasachi Saha. "Patenting Public‐Funded Research for Technology Transfer: A Conceptual–Empirical Synthesis of US Evidence and Lessons for India." The journal of world intellectual property 14, no. 1 (2011): 75-101.

[12] Satyanarayana, K. "The Indian Public Funded IP Bill: are we ready?" 6 Indian Journal of Medical Research 682 (2008).

[13] Objective 2, National IPR policy, 2016, available online at https://dpiit.gov.in/policies-rules-and-acts/policies/national-ipr-policy (last accessed on 30th November 2022)

[14] Objective 5, National IPR policy, 2016, available online at https://dpiit.gov.in/policies-rules-and-acts/policies/national-ipr-policy (last accessed on 30th November 2022)

[15] Page 3, National IPR policy, 2016, available online at https://dpiit.gov.in/policies-rules-and-acts/policies/national-ipr-policy (last accessed on 30th November 2022)

[16] Id.

[17] Page 9, Draft Model guidelines on implementation of IPR policy for academic institutions 2019, available at /https://dpiit.gov.in/sites/default/files/Draft_Model_Guidelines_on_Implementation_of_IPR_Policy_for_Academic_Institutions_09092019.pdf (last visited on 13 December, 2022).

[18] Id., Page 9.

[19] Id., Page 10.

[20] Id., Page 10.  

[21]Id., Page 10.

[22] “Research and Development Statistics, 2019-20” , based on the survey conducted by department of Science and Technology during 2018-19.Available online at http://www.nstmis-dst.org/Pdfs/R&DStatisticsFullReport2019-20.pdf, https://dst.gov.in/research-and-development-statistics-2017-18-december-2017, Indian Patenting Activity in International and Domestic Patent System: Contemporary Scenario, Report by National Institute of Science, Technology and Development Studies  for the Office of the Principal Scientific Advisor,  Government of India

[23] Selvamani, Lourden, and P. G. Arul. "Indian universities and their involvement in patenting activity." Indian Journal of Science and Technology 12, no. 28 (2019): 1-9.

[24] https://www.nirfindia.org/univ

[25] https://www.scimagoir.com/rankings.php?sector=Higher+educ.&country=IND

[26] Section 5, Ordinances governing Intellecual property policy, banaras Hindu University, available online at https://www.bhu.ac.in/ipr/ipr.pdf

[27] Section 5.2.1, Management of Intellectual Property Policy, Procedures and Forms, National Institute of Technology Rourkela, available online at https://www.nitrkl.ac.in/docs/AcademicRegulation/08032017102915702.pdf

5.2.1  Intellectual property generated by a full-time employee or a full-time student of the Institute is the joint property  of  the  originator  and  the  Institute  whether  Institute  resources  are  used  or  not.  If  an  Institute employee  or  a  full  time  student  creates  intellectual  property  while  working  in  another  organization,  it will be jointly owned by the creator, NIT Rourkela and the host institution. In case of part-time employees or  students  or  visiting  professionals,  intellectual  property  generated  by  use  of  Institute  facilities  and/or support only come under joint ownership of the Institute and the originator.

However, NIT Rourkela claims ownership over inventions created under “work for hire” contracts.

[28] Page 3, revised Intellectual Property (IP) Policy, IIT Bombay -2012, available online at https://www.ircc.iitb.ac.in/IRCC-Webpage/rnd/PDF/Final_IITB_IP_PolicyDocument.pdf

[29] Section 4.1, Indian Institute of Science Intellectual Property and Technology Transfer Policy and Guidelines 2019, available online at https://iptel.iisc.ac.in/wp-content/uploads/2020/08/IP-Policy_17-09-19.pdf

[30] Section 3.2, ICAR  Guidelines for Intellectual Property Management and Technology Tramsfer/Commercilazion, Indian Council of Agricultural Research, 2006.

 Exclusive Ownership of IPICAR will be the sole owner of IP generated from research work conducted in ICAR in the following cases: 1.    Using funds received from Central Government (DARE) through the budgetary process19. 2.    Using external funds, public or private where ICAR has been assigned sole ownership by the funding agency or where such prior agreement with the funding agency does not exist, e.g. (i) Funds received from sponsoring agencies under grants-in-aid, (ii) Funds received as donation/ endowment2, (iii) Funds received for scholarships, and (iv) Funds received under bi-lateral or multi-lateral funding arrangements, available online at https://icar.org.in/files/reports/other-reports/icar-ipmttcguide.pdf

[31] Section 3.a (1) of Intellectual property rights policy of IIT Madras, available online at https://icandsr.iitm.ac.in/ipr/news/IPR%20policy.pdf

[32] Section 2.3.1 of Intellectual property right policy (2013), Indian institute of technology Delhi, available online at https://ird.iitd.ac.in/policy/IPRPolicy-IITDpdf.

[33] Section 3.2 of Intellectual property rights policy (2017), Jawaharlal Nehru University

[34] Guidelines for intellectual property protection, its licensing and collaborative research with Industry participation, University of Delhi, available online at http://www.du.ac.in/du/uploads/Spotlights/08092014IPguidelines.pdf

[35] Section 4.3.1.1, Indian Institute of Science Intellectual Property and Technology Transfer Policy and Guidelines 2019, available online at https://iptel.iisc.ac.in/wp-content/uploads/2020/08/IP-Policy_17-09-19.pdf

[36] Section 4.3.1.2, Indian Institute of Science Intellectual Property and Technology Transfer Policy and Guidelines 2019, available online at https://iptel.iisc.ac.in/wp-content/uploads/2020/08/IP-Policy_17-09-19.pdf

[37] Stanford University v. Roche Molecular Systems, Inc., 563 U.S. 776 (2011)

[38] Section, 5b(i)The  Institute  will  not  require  to  be  assigned  to  it  intellectual  property  created  by  creators  where  there  is  use  of  usual  Institute  resources  only,  vide clauses 3(h) and the Exception to clause 3i(i).5b(ii) The Institute will require to be assigned to it such intellectual property as is created by creators  through  the  use  of  Institute-supported  resources  and  which  is  in  the  opinion  of  the  Institute  commercializable  by  the  Institute  and  its  assigns vide clause 6b(i)(b), Intellectual property policy, IIT Kharagpur

Section 4.3 i. The  Institute  will  not  require  to  be  assigned  to  it  the  intellectual  property created  by  the  creator(s)  where  there  is  use  of  usual  Institute  resources only.  ii. The Institute will require to be assigned to it such intellectual property as is created  by  the  creators  through  the  use  of  Institute-supported  resources. In  this  case,  the  Institute  will  take  steps  to  commercialise  the  property through  patenting  or  agreements. Intellectual property rights policy, Indian institute of technology Roorkee,

 available online at http://www.sric.iitkgp.ac.in/docss/ippolicy.pdf

available online at https://www.iitr.ac.in/ipr/policies/IPR_Policy.pdf

[39] Section 6(b)(i)(c) Ownership of the intellectual property is in doubt. In all such cases the issue  of  ownership  shall  be  referred  to  the  Institute  Intellectual  Property  Committee for arbitration. The Committee must communicate its decision on the  matter  to  the  creators  within  one  month  of  referral  of  the  issue  to  the  Committee. The decision will be final and binding. Intellectual property policy, IIT Kharagpur

[40] Section 1, Intellectual property policy, IIT Kharagpur, This  policy  discusses  intellectual  property  issues  in  order  to  safeguard  the  principles  of  academic  freedom,  allocate  a  fair  share  of  the  benefits  to  all  those  involved  in  the  creation  of  intellectual  property,  and  encourage  the  drive  to  conduct  research,  transfer  technology  and  benefit  materially  from  the generation of intellectual property.

[41]  University  patenting  and  licensing  activity:  A  review  of  the  literature,  Baldidni N 2007 Research Evaluation, 15

[42] Randi B. Isaacs, Inside a University’s Technology Transfer Office: Purposes and Goals for Protecting a University’s Intellectual Property, 8 No. 3 LANDSLIDE 30, 30 (2016), Kristen Osenga, Rembrandts in the Research Lab: Why Universities Should Take a Lesson from Big Business to Increase Innovation, 59 ME.L.REV.407, 418 (2007)

[43] Martin Kenney & Donald Patton, Reconsidering the Bayh-Dole Act  and  the  Current  University  Invention  Ownership  Model,  38  RES.POL’Y 1407,  1408 

[44] Section 14.3 of Intellectual Property policy IIT Bombay

Section 14.3 In the case of a collaborative / multiple consortium based IP generation, the IP terms of such agreement  is  to  be  consideredalong  with  the  policy.  In  the  absence  of  any specific IP agreement in such cases, IITB follows its IP policy.

[45] ICAR  Guidelines for Intellectual Property Management and Technology Tramsfer/Commercilazion, Indian Council of Agricultural Research, 2006.

[46] University  Research,  Intellectual  Property  Rights  And  European  Innovation Systems, Verspagen,  B.  2006, Journal of Economic Surveys

[47] University  Research,  Intellectual  Property  Rights  And  European  Innovation Systems, Verspagen,  B.  2006, Journal of Economic Surveys

[48] https://www.sctimst.ac.in/Academic%20and%20Research/Research/Intellectual%20Property%20Rights/

[49] Intellectual property right policy (2013), Indian institute of technology Delhi

[50] Section 5.3.1 Indian Institute of Science Intellectual Property and Technology Transfer Policy and Guidelines 2019

[51] Section 9 Indian Institute of Science Intellectual Property and Technology Transfer Policy and Guidelines 2019

[52] Intellectual property rights policy of IIT Madras

[53] Intellectual property rights policy, Indian institute of technology Roorkee,

[54]   Patenting and licensing of university research: promoting innovation or undermining academic values?. Sterckx S. Science and engineering ethics. 2011

[55] Perils of university-industry collaboration, Campbell and Blumenthal, Issues in Science and Technology, 1999

[56] The Management of Innovation, Aghion, P., and J. Tirole. 1994, The Quarterly Journal of Economics 109:

[57] Ordinances governing Intellectual property policy, Banaras Hindu University

[58] Guidelines for intellectual property protection, its licensing and collaborative research with Industry participation, University of Delhi

[59] Section 5.1.5, Intellectual Property policy, NIT rourkela

[60] Ordinances governing Intellectual property policy, Banaras Hindu University

[61] Section 5.1.5, Intellectual Property policy, NIT rourkela

[62] Academic discourse and proprietary rights: Putting patents in their proper place, Bagley 2006, Boston Law Review