Saturday, 17 September 2011

IP Management in publicly funded research in India

The growing trend of international and ‘unconventional’ research collaborations means that the IP world has to navigate new territories constantly. Here Raghvendralal Saha outlines the Indian experience and response to IP-related issues in recent years.

 Publicly-funded research in most countries is conducted through governments’ own departments or ministries or through autonomous R&D institutions and universities. In India, almost 80% of expenditure on R&D is incurred by the Government which, therefore, has an immediate interest in publicly-funded research and its outcomes. Government departments, such as the Indian Space Research Organization, in most cases own all the rights in respect of intellectual property (IP) generated by their scientists and the scientists (inventors) do not get any share of revenue accrued from the licensing of IP. However, such departments also fund universities and other R&D institutions to carry out research and the rights of IP in these cases will largely belong to the Government. There are other government departments, such as the Department of Science and Technology, which provide funds for extramural research to universities and other publicly funded R&D institutions.
A large number of research laboratories and centres supported by the Government have a great deal of functional and financial autonomy. Examples of such autonomous bodies are the laboratories of the Council of Scientific and Industrial Research, the Indian Council of Agricultural Research and the Indian Council of Medical Research. These laboratories are engaged in intramural, extramural and contract research. As commonly practiced elsewhere, IP rights in contract research belong to the contracting agency unless there is an agreement for the sharing of rights. Extramural funding largely comes from government departments such as the Department of Science and Technology. These agencies have elaborate IP policies and their own IP offices or cells which take up protection and management of IP generated in their laboratories. In some cases the technology transfer function lies with another group within the organisation. These agencies do not automatically claim ownership of IP rights in extramurally-funded projects as it depends on the terms and conditions stipulated by the funding agency. Sometimes these agencies also fund projects in universities and R&D laboratories and in such cases they tend to retain the ownership rights.

First policy breakthrough
The Ministry of Science and Technology issued guidelines, Instructions for Technology Transfer and Intellectual Property Rights, in March 2000 to help enhance innovations by scientists, research institutions and universities. The salient features of the guidelines, which are applicable to projects funded by the Ministry of Science and Technology, are:

1.       Institutions may retain the ownership of any IP generated.
2.       Institutions shall take necessary steps to commercially exploit patents on exclusive or non-exclusive bases.
3.       The owner institution is permitted to retain the benefits and earnings generated out of the IPR. The inventor(s)’s share shall be limited to one third of the actual earnings.
4.       IPR generated through joint research by institution(s) and industrial concern(s) can be owned jointly by them or as may be mutually agreed by them through a written agreement. The institution and industrial concern may transfer the technology to a third party for commercialisation on exclusive/non-exclusive bases. The third party, exclusively licensed to market the innovation in India, must manufacture the product in India.
5.       Institutions shall set apart not less than 25% of the revenue generated from IPR to create a Patent Facilitating Fund for the management of IPR.
6.       The Government shall have a royalty-free license for the use of the IP for the purposes of the Government of India.
Science and Technology Policy 2003

The Science and Technology Policy of India released in 2003 is upbeat on intellectual property rights and related issues. It focuses a great deal on the transformation of new ideas into commercial successes. It states that the development of skills and competence to manage IPR and to leverage its influence will be given a major thrust. This area calls for significant technological insights and legal expertise and will be handled with high priority. Efforts will be made to create synergy between industry and scientific research by creating Autonomous Tech nology Transfer Organizations as associate organisations of universities and national laboratories to facilitate the transfer of the knowhow generated to industry.
Support to universities for IP protection

All educational institutions, including universities, colleges and schools, can approach the Patent Facilitating Centre (PFC – set up by the Department of Science and Technology) for full technical, legal and financial support in protecting and managing their IPR. Often, the requests from universities are routed through one of the 20 Patent Information Centres created by the PFC in different states. Universities retain all the rights to such patents as the PFC’s support is available only if universities own the rights. The PFC does not have any claim in such patents. It has so far filed more than 350 patent applications in India and other countries from around 60 universities/academic institutions, and many of them have been granted. It may be noted that, without such financial, legal and tech nical support, many universities and academic institutions would not come forward to protect their inventive work. This model is quite different from that practiced in other countries, where universities have to find their own funds, mostly generated through licensing. Indian universities will take some time to reach that level. The PFC has been working consistently in the last 12 years to create awareness and build capacity through different methods. It has organised nearly 325 IPR awareness workshops all over the country, both independently and also in association with many government ministries and departments, and industry associations.
The experience of Indian universities

Until 1995, the culture of universities and academic institutions protecting their inventive work through patents was almost nonexistent. However, efforts made by multiple agencies in the country have made a difference. The total number of Indian filings by Indian academic institutions was only 35 in 1995, but this number grew to 169 in 2004. The growth is substantial, although the absolute number is still low.
The need for technology transfer offices

The gap between invention and commercialisation has been addressed in many universities by setting up technology transfer offices (TTOs) which undertake activities such as managing the IP of universities, licensing IP, and managing research contracts. Managing TTOs is a new challenge as it requires a good mix of legal and technical skills which are often difficult to locate. In a country like India, where the culture of protecting innovations through legal instruments is relatively new, the task of starting TTOs can be problematic. University faculties are generally not keen to manage such offices as they do not see any academic growth. Also, one is not always able to find the right people from outside as such people are in short supply. However, in the past decade or so, some leading academic institutions in India have set up off ices similar to TTOs which are slowly coming of age and looking after the management of IP and technology transfer. Traditionally, such institutions have been maintaining offices which look after all R&D projects funded by the Government and other agencies. Some people may feel that both functions should be performed under one roof. However, it is not essential to have a ‘one roof’ concept but, if these functions can be coordinated, the end result will be good. The other problem often faced by such offices is the shortage of financial res ources to protect inventions in India and else where. Each institution has to maintain a balance between resources and the demand of its faculty to protect its inventive work. People are not always able to differentiate between a paper being published in a journal and a patentable invention, and therefore the demand for protection may be proportional to the number of papers published or accepted for publication. For example, the Indian Institutes of Technology (IIT) at Bombay, Delhi, Kharagpur and Roorkee and the Indian Institute of Science have brought out their own IP policies, which they practice. The main feature of the policies is that these institutions will have the right to own inventions and other IP generated in their institutions through their research activities. A new culture is slowly taking root in terms of encouraging academicians to participate in form ing start-up companies and setting up technology incubation centres.
International R&D

Publicly-funded research and academic institutions are experiencing a new situation where sharing and managing IP with similar institutions and industries in other countries is a crucial element. Such agreements are usually decided at country-level and have to take several public issues into consideration. IP licensing and technology transfer are complex tasks and the complexities increase several-fold when the stakeholders (in terms of IP generation, licensing and maintenance) belong to different sovereign countries and legal jurisdictions.
Bilateral agreements have to address many complex issues, from the definition of IP and associated rights to satisfying the public need that exists in each sovereign country. Therefore, there is an urgent need to address international collaborative research and development while discussing IP licensing and technology transfer from publicly-funded institutions. The issues demanding attention are many, and include:

absence of parity between the IPR laws and other laws related to technology transfer and taxation of stakeholders
difficulty in the definition of foreground and background inventions or IP especially by the scientific community
sharing of IP in different countries
sharing of revenue and ownership of IPR in the case of joint research by publicly-funded institutions and industries
maintenance of confidentiality of research activities and findings
selection of jurisdiction for resolving disputes
Perhaps there is a requirement to evolve a robust system internationally which is driven more by the wish to enhance collaborative research opportunities rather than by pure commercial considerations. Ownership issues in university-industry collaborations may take a complex shape as industries generally do not want to share IP rights with government; however, the universities they work with will receive much of their funding from their respective governments in the foreseeable future. R

(Views expressed in this article are purely those of the author and do not represent the views of the organisation with which he was affiliated.)
Raghvendralal Saha was Director of the Patent Facilitating Centre, Technology Information Forecasting and Assessment Council at the Department of Science and Technology, India.
(This article appeared in Research Global, the Magazine of the Global Research Management Network) October 2007, Issue 17). The orignal article can be read at http://www.globalrmn.org/documents/researchglobal17october2007.pdf.
© R Saha

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