Intellectual Property Rights Policy

(2021)

King George’s Medical University

Lucknow, Uttar Pradesh, India

(Implemented on ______)
 DRAFT – VERSION 2

Table of Contents
1. PREAMBLE ..................................................................................................................................... 2
2. OBJECTIVES ................................................................................................................................... 4
3. DEFINITIONS AND INTERPRETATION........................................................................................ 6
4. APPLICATION OF THE POLICY ................................................................................................... 12
5. GOVERNANCE AND OPERATION ............................................................................................... 14
6. OWNERSHIP OF INTELLECTUAL PROPERTY ........................................................................... 16
7. REVENUE SHARING/ INCENTIVE FOR CREATORS .................................................................. 21
8. PUBLICATION, NON-DISCLOSURE AND TRADE SECRETS ...................................................... 22
9. EVALUATION AND MANAGEMENT OF IP ................................................................................. 23
10. IP PORTFOLIO MAINTENANCE .............................................................................................. 24
11. ENCOURAGING ENTREPRENEURSHIP AND STARTUP CREATION .................................... 28
12. RESEARCH ETHICS AND INTEGRITY ..................................................................................... 29
13. IP AWARENESS AND TRAINING PROGRAM ......................................................................... 30
14. CONFIDENTIALITY, DATA PROTECTION, AND PRIVACY .................................................... 30
15. INFRINGEMENT, DAMAGES, LIABILITY, AND INDEMNITY ................................................. 31
16. LIMITATION OF LIABILITY .................................................................................................... 31
17. CONFLICT OF INTEREST ........................................................................................................ 31
18. AGREEMENTS AND CONTRACTS ........................................................................................... 32
19. DISPUTE RESOLUTION ........................................................................................................... 32
20. JURISDICTION .......................................................................................................................... 33

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1. PREAMBLE

Context and University Mission

King George’s Medical University (hereinafter referred to as “KGMU” or

“the University”) has comprehensive facilities for education, research
and patient-care. The University has a vision to be an outstanding
University of Medical Excellence in the world of education, research, and
patient-care. It is, therefore, imperative that the knowledge generated in
the University is adequately protected while being made available to the
public for the larger societal interest.

The KGMU Intellectual Property Rights Policy (IPR Policy) covers the
basic principles, policies and operating guidelines on all Intellectual
Property (IP) issues and maters related to KGMU, Lucknow. The Policy
has been created in line with the mission of the University:
 To become one of the world’s best providers of high-quality
teaching and excellence in education;
 Generate outstanding leaders in health sciences
 Promote multidisciplinary scientific biomedical research
 Provide compassionate, patient-centred care of the highest quality

The University is committed to ensuring that IP emanating from its

research activity is used in support of the objectives set out in its Mission
Statement, and in accordance with the National IPR Policy of India and
other legal obligations, for the benefit of the University, the Creators and,
most importantly, society at large.

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1.1.Need for IPR Policy: Innovation is the need of the hour for the
growth of every economy. The academic and research institutes are
the penultimate hub for nurturing the innovative minds in a
country. In this fast-paced era of knowledge economy, it is
imperative to protect the innovations generated in these esteemed
institutions. The Trade Related Aspect of Intellectual Property
Rights (TRIPS) agreement in 1995 is one of the most comprehensive
multilateral arrangements on IPR which laid the foundation for the
protection of IP worldwide. According to the World Intellectual
Property Organization (WIPO), an IPR Policy provides structure,
predictability, and a conducive environment in which universities
and researchers can flourish, access and share knowledge,
technology, and IP. All the prominent universities in the world
manage and protect their IPs through efficient IPR Policies.
Although India ranks 4th based on the journal publications according
to the 2020 SCIMAGO journal and country rank, it ranks only 46th in
the Global Innovation Index 2021. The National IPR Policy was
approved by the Government of India in 2016. One of the primary
objectives of the Policy is to promote and develop IPR in academic
and research institutes and universities for successful generation
and commercialization of technologies/IP for the benefit of the
general population. The KGMU IPR Policy aims to achieve the
mission and vision of the University by aligning itself with the
existing science and technology policies of India.

1.2.Scope of IPR Policy: This Intellectual Property Rights Policy

(hereinafter referred to as “Policy”) is meant to pave the way for
academic and non-academic staff/employee (both permanent and

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temporary), students/fellow (undergraduate, post-graduate, and

research scholars), start-up/spin-off companies generating IPs at
the University, and external sponsors on the practices and rules of
the University regarding IP Rights and obligations thereunder which
include the nature of the IP, its ownership, exploitation, technology
transfer, and confidentiality requirements. IPs can be generated
through research supported by internal or external funding. This
Policy discusses IP issues to safeguard academic freedom, allocates
a fair share of the benefits to the creator(s) of IP, and promotes
them to conduct research, transfer technology and create
substantial benefit from the creation of intellectual property.

1.3.Right to amend the IPR Policy: The Intellectual Property

Management Committee (hereinafter referred to as “IPMC”) of the
University shall have the responsibility of interpreting the Policy
and recommending changes in the Policy from time to time to the
Executive Committee of the University. Pursuant to such
recommendations, the IPR Policy may be amended by the University
as and when required through an ordinance passed by the Executive
Committee in that regard.

2. OBJECTIVES

The content put forward in this document relates to an IPR policy (and
related administrative Procedures) with the following objectives:

2.1.To promote innovation by the University: By facilitating

researchers and innovators in the generation of IP so that KGMU
could effectively discharge its responsibility of stimulating and

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encouraging the novel/creative activities in the area of medical

sciences and technologies in the broadest of horizons.

2.2.To promote IP utilization in larger societal interest: By making

available a policy for encouraging the distribution of the KGMU's
intellectual property in larger societal interest, so that pragmatic
application of ‘research’ occurs, leading to
‘products/processes/services/know-how’ which benefit the society,
while safeguarding the interests of the creators or licensees of such
property.

2.3.To promote revenue generation for the University and creators

therein: By promoting licensing and commercialization of IP and
also giving a fair share in revenue to the creators.

2.4.To create a dedicated infrastructure for IPR services to the

University: To set up and maintain a dedicated Intellectual
Property Management Committee to provide services to the staff
and students/fellows for effective commercial application of
intellectual property generated at the University in the interests of
all concerned, and to oversee the fair dispersal of the revenues
accruing therefrom in accordance with this Policy and its
amendments.

2.5.To Create Mechanisms for Legal Support: To defend and protect

the interests of the University and creators of intellectual property
against unsanctioned use of such property by creating appropriate
mechanisms for legal support in form of panel of advocates and
lawyers as per approved list of charges and scope of work.

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2.6.To lay down an efficient and transparent administrative

process for IP ownership control: By streamlining the process of
registration of the IP through the University approved mechanism
as laid down in the Policy and providing accessibility and awareness
about the Policy to the researchers/students/fellows and staff
members/employees alike.

2.7.To educate the students, faculty and employees of the

University in all matters related to Innovation, IP and
Copyrights: by organizing various IP awareness and training
programs and providing guidance to the Creators regarding
potential patentability of the research before the same is sent for
journal publications, abstracts for conferences, seminars and poster
presentations.

3. DEFINITIONS AND INTERPRETATION

3.1. In this IPR Policy, the following terms shall, unless inconsistent
with the context in which they appear have the following meanings
and expressions derived from those terms that shall bear
corresponding meanings:
a. Applicable Law: Applicable Law shall include all applicable
statutes, enactments, acts of legislature or parliament, laws,
ordinances, rules, bye-laws, regulations, listing agreements,
notifications, guidelines or policies of any jurisdiction and
judicial, quasi-judicial, and/or administrative decisions,
interpretations, directions, directives, licenses, permits,

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judgements, writs, injunctions, arbitral awards, decree, orders,

terms and conditions of governmental or regulatory approvals or
agreements with any governmental or regulatory authority.
b. Auxiliary Contracts: An Auxiliary Contract means a document
created with mutual consent of involved parties defining the
rights, roles and responsibilities of each of the parties, for
example, Memorandum of Understanding (MoU), Memorandum
of Agreement (MoA), Research Agreement, Consultancy
Agreement, Non-Disclosure Agreement (NDA), Deed of
Assignment, Material Transfer Agreement (MTA), License
Agreement, Service Agreements, Confidentiality agreements,
Research Contract, Grant Award Letter etc.
c. Collaborative Projects: Collaborative Projects are completely or
partially funded by the Collaborator and supplemented by
provision of inputs from the University such as laboratory
facilities, research material, human resource, etc. Collaborative
Projects could be for upscaling/improving of laboratory level
know-how, technology development or generation of IP, etc. The
expected project output/results are well defined.
d. Collaborator: Collaborator refers to any Government, quasi-
government, public enterprise, non-government or private
entities or individual(s) which are involved with the University
and its employees in the conduct of the research. The
Collaborator may be national or international.
e. Conflict of Interest: A Conflict of Interest is any circumstance
wherein genuine or anticipated interests of a Faculty Member,
Research Scholar, Fellow or Student might oppose the interests

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of the University or contrarily influence their work or

obligations.
f. Creator: A Creator is a person or a group of persons such as a
Faculty Member, Fellow, Student, or Research Scholar
responsible for creating an Intellectual Property (IP) by utilizing
the University Resources.
g. Faculty Members: Faculty Member means any person
professionally qualified to carry out patient care, teaching,
training, and/or research employed at the University either as a
whole-time employee or as Emeritus or Visiting professor.
h. Grant-in-Aid Projects: Grant-in-Aid Projects are normally for
supporting for basic or exploratory research or for maintaining
or creating testing and infrastructural facilities. These projects
shall involve grant by way of financial inputs, either in full or in
part, assistance in kind, e.g., equipment, human resources,
training to supplement KGMU’s effort in ongoing or new research
& development projects or for creating new
capabilities/facilities.
i. Intellectual Property (IP): IP means any right to intangible
property, including copyright and related rights, trade secret,
trade mark, patent, design, plant variety, geographical indication,
layout designs of integrated circuits, as defined under the
Copyright Act, 1957, Trade Marks Act, 1999, the Patents Act,
1970, the Designs Act, 2000, the Protection of Plant Varieties and
Farmers’ Rights Act, 2001 The Geographical Indications of Goods
(Registration and Protection) Act, 1999, and the Semiconductor
Integrated Circuits Layout-Design Act, 2000.

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j. IP Fund: IP Fund shall mean the fund generated out of revenue

from licensing fee and royalties in accordance with Section 7. The
initial amount shall be generated through seed funding as
decided by the University.
k. Fellow: A Fellow is an international student who is not a citizen
of India and is enrolled in the University or is visiting the
University for the purpose of education under an exchange
program.
l. Research Contract or Work for Hire: Research Contract or
Work for Hire comprises of all research and development
activities undertaken through definite Auxiliary Contracts in that
regard and include but are not limited to Sponsored Projects,
Collaborative Projects, Grant-in-aid Projects etc.
m. Research Project: Research Project means any project that
forms the basis of Research undertaken by the University and
includes projects undertaken by a Fellow, Student or under the
supervision of a Faculty Member or a Research Scholar, as part of
a research degree program.
n. Research Scholar: A Research Scholar is any person who is
neither a Faculty Member nor a Fellow/Student of the University
who engages in work at the University, including adjunct and
conjoint professors, teachers, researchers, scholars and
volunteers; and who concludes an appointment agreement with
the University
o. Scholarly Works: Scholarly Works include all copyright works
which are the outputs of Faculty Members, Fellows, Students or
Research Scholars, including research, creative and other outputs

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in area(s) of his expertise or professional acumen. It does not

include Course Materials.
p. Sponsored Projects: Sponsored Projects are the projects which
are entirely funded by an external sponsor having specific
research and development objectives, and having a specific
expected outcome, generally resulting into the creation of
Intellectual Property. Sponsored projects could be funded by
multiple sponsors including individual, public/private entity,
government organisation.
q. Student: A Student means a person who has registered or
enrolled as a full-time student, part-time student, casual student
or exchange student from other universities/colleges within
India for professional and research training.
r. Substantial Use: Substantial Use shall include the extensive use
of the University Resources which include but are not limited to
facilities, equipment, human resources or funds and Background
IP that is not publicly available. Routine use of libraries and/or
office space is not included.
s. University’s Confidential Information: University’s
Confidential Information means all non-public material, research,
business-related information, written or oral, whether or not it is
marked as such, that is disclosed or made available to the
receiving party, directly or indirectly, through any means of
communication or observation and includes but is not limited to
any document, lab notebooks, discovery, invention,
improvement, patent specification, formulations, plans, ideas,
books, accounts, data, reports, drafts of documents of all kinds,
correspondence, client information, lists and files, decisions,

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information about employees, strategies, drawings,

recommendations, designs, office precedents, policies and
procedures, budget and financial information in any form, i.e.
physical, electronic, or otherwise, trade secrets, technical know-
how, confidential data and related information about IP owned
by the University.
t. University Resource: University Resource means special
facilities and equipment, specific funding, Intellectual Property
already owned by the University, requisitioning the time and
labour of Students and Faculty Members through University’s
administrative channels, or at the University's instance and
expense, and remission by the University of any or all of the
normal duties of Faculty Members or Students to provide time or
resources for the purpose of generating IP.
u. Individual Scholarships, Fellowships and Grants: No
individual scholarship, fellowship or training grant tenable at the
University will normally contain any provision giving the
awarding agency any right to Intellectual Property created by the
recipient. Intellectual property generated by recipients of such
funding will be governed by the Auxiliary Contract between the
Sponsor of the project and the University.

3.2.Unless the context otherwise requires, in this Policy:

a. Words using the singular or the plural number also include the
plural or singular number, respectively;
b. The terms “hereof”, “herein”, “hereto” and similar words refer to
this Policy and not any particular Section, or any other
subdivision of this Policy;

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c. References to “Section” or any other document in this Policy shall

be construed as references to the Sections of this Policy, or such
other document, as may be amended or modified or
supplemented from time to time, and shall include a reference to
any document which amends, modifies, or supplements it or is
entered into, made or given pursuant to or in accordance with its
terms.
d. The headings in this Policy are inserted for convenience only and
shall be ignored in construing this Policy.

4. APPLICATION OF THE POLICY

4.1.Intellectual Property (IP): This Policy applies to each and every IP

created at the University, in particular, by the Faculty Members,
Fellows, Students, and Research Scholars.

4.2.Background IP: At the beginning of their employment, enrolment

or appointment, as the case may be, Faculty Members, Fellows,
Students, and Research Scholars must declare any existing IP which
they desire to exclude from the application of this Policy due to
creation prior to their employment, enrolment, or appointment at
the University.

4.3.Applicability and Commencement: This Policy applies to all

faculty members, fellows, students, and research scholars who
participate in a Research Project or produce Scholarly Works and
shall commence on __ day of January, 2022 when an ordinance in
that regard has been passed by the Executive Committee of the
University ratifying the provisions of this Policy. The rights and

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obligations under this Policy shall survive the termination of

employment, enrolment, or appointment.

4.4.Binding nature of the Policy: This Policy constitutes an

understanding that is binding on the University, Faculty Members,
Fellows, Students, and Research Scholars on the following grounds:
a. Faculty Members: The University shall ensure that the
employment contract or other agreement establishing any type of
employment relationship between the University and Faculty
Members includes a provision placing Faculty Members under the
scope of this Policy.
b. Students/Fellows participating in a Research Project: The
University shall ensure that the Students/Fellows participating in
a Research Project sign an agreement before the commencement
of the Project, to the effect that they have read and will comply
with the provisions of this Policy.
c. Research Scholars: The University shall ensure that Research
Scholars sign an appointment agreement before commencing any
activity at the University. Such agreement shall make a reference
to this Policy and shall place the Research Scholar under the
scope of this Policy, a copy of which shall be made available to the
Research Scholar.
d. Informed Consent: This Policy shall be published on the
University’s website, the faculty handbooks, and the student
handbooks. In addition, a reference of this Policy shall be made in
the terms and conditions of enrolment of Students/Fellows, the
agreement of appointment of Research Scholars, and the
agreement of employment of the Faculty Members. Said reference

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shall be in sufficient detail to enable the full text of the Policy to

be easily accessed.

5. GOVERNANCE AND OPERATION

5.1. Intellectual Property Management Committee (IPMC):

Intellectual Property Management Committee (IPMC) will be the
central administrative body which shall be responsible for evolving
detailed procedures to facilitate implementation of the IPR policy of
KGMU and carry out related responsibility on behalf of KGMU. This
committee will have five (5) members including the Chairperson.
The IPMC shall be chaired by the Vice Chancellor, KGMU or his/her
nominee. The In-charge-Innovation and IP Cell shall be the Member
Secretary of the IPMC whereas the other three members shall be
appointed by the Vice Chancellor, KGMU. One member each should
have a legal, accounting, and administrative background. In addition
to the 5 members and at the discretion of the Vice Chancellor, a
senior official of an organization with expertise and experience in
effective management of Intellectual Property Rights (IPRs) and
technology transfer to academia, research institutions, government
agencies, industry and start-ups in biotechnology and allied subject
areas; may be appointed as an external advisor of IPMC to enable
smooth implementation of the Policy.

5.2. Powers of IPMC:

The role and powers of the IPMC would be:

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a. To produce and settle procedure and guidelines for

implementation of the IPR Policy at the University;
b. To produce and settle draft agreements to enable IP Protection by
the University;
c. To produce and settle decision regarding framing University IP
strategies, IP portfolio maintenance, IP audit, IP litigations and
end-to-end technology transfer activities.
d. To enable administrative filings of IP by both the University
empanelled organisations (such as any law firm or IP firm) as well
as individual Faculty Members using their projects and other
funding and formulate programs for educating Faculty, Fellows,
Students, and Research Scholars about IPR and other associated
issues;
e. To efficiently and diligently manage as well as utilize the IP Fund
including investment thereof; and decide on the allocation of the IP
Fund suitably.
f. To decide on funding of any IPR application from Faculty Members,
Fellows, Students, and Research Scholars at the University and
sanction/permit the formation of any academic spin-off/ start-up
by the Faculty Members, Fellows, Students, and Research Scholars;
g. To redress any conflict, grievance, or complaint regarding
ownership of IP, processing of IP proposals, procedures adopted
for implementation of IPR policy and interpretation of various
clauses of IPR policy.
h. To examine the matter of violation/infringement of any IP rights
related to KGMU and make recommendation to the Vice Chancellor
for the efficient resolution of such violation/infringement;

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i. To deal with any other pertinent issues arising out of the

promotion as well as implementation of this IPR Policy and any
other task assigned to it by the Vice Chancellor, KGMU from time to
time.

6. OWNERSHIP OF INTELLECTUAL PROPERTY

6.1.Generation of IP: There may be several ways and methods through

which IP is generated at the University. This Policy will apply to
them as follows:
a. Sponsored Projects: The IP generated from Sponsored Projects
shall be jointly owned by the University and the Sponsor(s) and
the Sponsored Research Agreement shall contemplate a clause
embodying this principle. The protection and maintenance of the
IP generated through Sponsored Projects shall be the joint
responsibility of the University and the Sponsor(s). The decision
of protection of IP rights shall be mutually decided by the
University and the Sponsor(s). In case a mutual decision is not
arrived at, the Vice Chancellor, KGMU, shall finally decide upon
which shall be binding on the Creator(s) and Sponsor(s).

b. Collaborative Projects: The IP generated from Collaborative

Projects shall be jointly owned by the University and the
Collaborator(s) and the Collaborative Research Agreement shall
contemplate a clause embodying this principle. The protection
and maintenance of the IP generated through Collaborative
Projects shall be the joint responsibility of the University and the
Collaborator(s). The decision of protection of IP rights shall be

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mutually decided by the University and the Collaborator(s). In

case a mutual decision is not arrived at, Vice Chancellor, KGMU,
shall finally decide upon which shall be binding on the Creator(s)
and Collaborator(s).

c. Grant-in-aid Projects: Prior to undertaking any assignments

from any national or international agency including government
organizations, the ownership rights of any potential IP shall be
mutually decided or as governed by the grant agreement.
However, in case of non-government agencies or in the absence
of any specific conditions of the Grantor in that regard, the
University shall own the IP generated from Grant-in-aid Projects.

6.2. Patents and Inventions: As a general rule, the University shall

own the IP which have been created using the University Resources
and which, in the opinion of the University, are commercially viable.
The Creator(s) shall enter into a Commercial Rights Agreement with
the University, wherein it shall be clearly stated that the University
owns the IP but the Creator(s) are vested with the right to pursue
potential licensee for the commercialization of the IP. No separate
permission shall be required to be taken from the Vice Chancellor,
KGMU in that regard post the execution of the Commercial Rights
Agreements. The Commercial Rights Agreement shall also
incorporate the revenue sharing model as contemplated in Section 7
herein. The Vice Chancellor, KGMU shall execute all the License
Agreements, whether exclusive or non-exclusive, notwithstanding
the existence of a Commercial Rights Agreement. The Commercial
Rights Agreement does not vest the Creator(s) with a right to

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license the IP in their own name. The University shall also own all
the IP created through Sponsored/ Collaborative Projects wherein
the Sponsor(s)/Collaborator(s) do not claim ownership to the IP
rights. At the discretion of the University, the IP may be assigned to
the Creator(s) who have incorporated themselves into a legal entity,
through a deed of assignment as per the prevalent norms of the
University. The valuation of the IP for such assignment shall be
carried out by the IPMC through itself or through an external
agency.

6.3. Copyrights: The author of a literary work shall own any and all
copyrights in theses, dissertations, research papers, laboratory
records, books, articles, including online works such as blogs, vlogs,
YouTube videos/ channels, and other copyrightable works made or
maintained by the Fellows, Students, Faculty Members, or Research
Scholars in the course of their studies, employment or appointment
at the University, as the case may be. However, any copyrightable
work produced as a work for hire will belong to the University or to
the Sponsor, as per the terms of the Auxiliary Contract. The
University shall also be entitled to a share of 10% in the revenue
obtained in the form of licensing fee/ royalty of such Copyright or
monetization of such literary/ online works.

6.4. Licensing of Intellectual Property: Wherever, the ownership of

an IP lies with the University, the rights to license the IP, either on
an exclusive or a non-exclusive basis, shall also lie with the
University in consultation with the IPMC. As a general rule, the IP
owned by the University shall be first offered to be licensed to the

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respective Creator(s). The expenses related to maintenance and the

protection of IP shall be borne by the Creator(s) if the IP is owned
by the Creator(s) or by the licensee once the IP has been licensed to
them. In case of joint ownership of the IP between the University
and a Sponsor, Collaborator or any other agency, the first right to
commercial exploitation through licensing may be given to the
Sponsor, Collaborator, or other agency, as the case may be, after
prior written communication has been sent to the University by the
concerned interested party in that regard.

6.5. IP created by Faculty Members

a. University’s Ownership: The University owns all IP created by a
Faculty Member in the course and scope of his employment or
making Substantial Use of the University Resources.
b. Faculty Member Ownership: Faculty Members will own the IP
they have created when such IP is outside the scope and course
of their employment and without Substantial Use of the
University Resources. In such a case, the Faculty Members shall
obtain a No Objection Certificate from the IPMC to seek
ownership in IP.
c. IP emanating from Research Contracts: In the absence of
provisions to the contrary in any national law or where there is
no Substantial Use of the University Resources, the terms of the
Research Contract will regulate ownership of IP created by
Faculty Members in the course of a Research Project that forms
part of a Research Contract.
d. Appointment of Staff Members at another Institution: It is
the responsibility of each Faculty Member that holds an

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honorary or other academic or research appointment at another

institution (Host Institution) to bring to the attention of the Host
Institution, including its IPMC, his/her obligations in terms of
this Policy, prior to the tenure at the Host Institution. To the
extent that the Host Institution’s IP Policy makes a claim on IP
created by the Faculty Member pursuant to such appointment,
the Faculty Member shall ensure that the Host Institution
negotiates a suitable IP arrangement with the University.

6.6. IP created by Students/Fellows

a. University ownership: IP created by a Student/Fellow in the
course of study at the University (except any copyrightable work
not produced as a work for hire) will be owned by the University.
The University may elect to not own or manage an IP/technology
if in its opinion the technology/IP is not commercially viable. In
such case, the Student/Fellow may get the IP/technology
protected in its own name after obtaining an No Objection
Certificate from the IPMC.
b. Theses or dissertations: The Student must submit his/her final
thesis or dissertation to the University repository.
c. IP emanating from Research Contracts: The terms of the
Research Contract shall regulate the ownership of IP created by a
Student/Fellow in the course of such Research Contract.
d. Bursaries/scholarships: An external party that grants a
bursary or scholarship to a Student/Fellow may elect to own the
IP created by that Student/Fellow in the course of his/her study
at the University provided the Student/Fellow and the University

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have consented to the assignment of IP ownership in writing and

such consent is not contrary to any Applicable Law.
e. Student/Fellow Owned IP: IPMC may, upon agreement, provide
Commercialization services to Students for their IP. In this event,
Students/Fellow may be required to assign their IP to the
University and will be afforded the same rights and obligations
as Faculty Members under this Policy.

6.7. IP Created by Research Scholars: Unless otherwise agreed to in

writing by the University and the Research Scholar’s home
institution prior to the tenure at the University, Research Scholars
are required to assign to the University any IP created in the course
and scope of their appointment at the University or created by
making Substantial Use of the University Resources through a deed
of assignment. On departure from the University, a Research Scholar
must sign and submit to IPMC an Invention Disclosure Form (IDF)
disclosing any IP created, as per Section 6.7, whilst at the University.

7. REVENUE SHARING/ INCENTIVE FOR CREATORS

For University-owned IP, the Creator(s) shall get 80% and the
University shall get 20% of the revenue earned out of licensing fee and
royalty after the deducting the expenses incurred for registration and
maintenance of the IP. Out of the University’s share of 20%, 50% shall
go to the IP Fund of the University; 50% goes to the concerned
department for the development of R&D infrastructure and to the IPMC
to meet its revenue/capital expenditure. The allocation of funds to
various departments of the University shall be decided by the IPMC. The

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IP Fund shall be used for maintaining the IP, Filing of New IPs,
promotion, demonstration, further commercialization and upgradation
of the invention. A separate bank account shall be opened to effectively
manage the money accumulated in the IP Fund. Any unspent amount
from the IP fund at the end of a financial year will be used for Research
Projects, IP/technology transfer and expenditure toward IPMC’s other
innovation related activities at the discretion of IPMC. If the University
owns the IP with another Sponsor or in case of Collaborative Projects,
the revenue sharing shall be in accordance with the Auxiliary Contracts.
In case the University chooses not to own or manage the IP (including
Copyrights not owned by the University) in accordance with Clause 6.5.b
or Section 9, the University shall still be entitled to 10% of the revenue
earned out of licensing fee in case of Copyrights and 20% in case of
Patents and other IP. The Creator(s) shall ensure that the Auxiliary
Contracts licensing such IP incorporates a provision for embodying this
Section of revenue sharing. In such a case, the Creator(s) are entitled to
deduct the expenses for registration and maintenance of the IP before
distributing the revenue to the University. The revenue sharing model is
subject to review by the IPMC after the completion of 5 years from the
effective date of this Policy.

8. PUBLICATION, NON-DISCLOSURE AND TRADE SECRETS

8.1. Right of Publication: The University encourages and supports the

right of the Creator(s) to decide if and when to publish their
Scholarly Works provided that, in case any IP is emanating or
purports to emanate from such Scholarly Works, the Scholarly
Works are first cleared by the IPMC by giving a No Objection

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Certificate to the Creator(s) in writing after having an opportunity

to first protect such IP.

8.2.Non-disclosure for IP Protection: In conjunction with the right of

publication, Creator(s) should be aware that premature public
disclosure may result in loss of IP protection rights. Therefore, they
are strongly advised to make all reasonable efforts to identify any
protectable IP as early as possible and shall consult IPMC before
making any public disclosure of potential IP.

8.3.Trade Secret: The University may designate certain Confidential

Information as a Trade Secret, owned by the University. In such
event, all Creator(s) will be obligated to maintain secrecy of the
Trade Secret and to follow the direction for management of the
Trade Secret by IPMC.

9. EVALUATION AND MANAGEMENT OF IP

The evaluation, protection, marketing, licensing, and management of the

IP generated at the University shall be the responsibility of the
Intellectual Property Management Committee (IPMC) of the University.
In order to ascertain whether the University desires to own and manage
the IP, the creators of the IP shall provide all the necessary information
to the IPMC. As a general rule, an Invention will only be patented by the
University if it has ultimate commercial motivation and viability, even if
it is not in the immediate future. The University may permit the
Creator(s) to file patents and protect the IP on their own in case it
decides not to own and manage the IP by providing a No Objection
Certificate in that regard. However, share of the University in revenue

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resulting to the Faculty Member/Student from licensing from such IP

will be determined as described in Section 7. In the case of patentable IP,
it is essential that IP is adequately protected by filing the patent
application before publication or disclosure in any other form in public
domain of the patentable IP. The IPMC will examine the IP application
and will then make specific observations regarding Patentability/
Registration of the proposal by the University. The IPMC may seek the
aid of experts/ outsource the task with proper service agreement for
this purpose. In all these endeavours, confidentiality of the IP shall be
strictly ensured. In case the contract/agreement/MoU with a
sponsor/collaborator specifies that the sponsor/collaborator will
manage the process of filing of patents and bear the associated costs, the
Creators will provide information to the IPMC of each such
filing/application. Details of the invention need not be provided in such
cases in the interest of confidentiality, if so desired. Progress of the
application through various stages, such as international filing through
Patent Cooperation Treaty (PCT), foreign national phase, etc. will be
informed to the IPMC by the Creator(s) as and when the Creators
become aware of such progress.

10. IP PORTFOLIO MAINTENANCE

10.1. Registration of IP
The Creator(s) of the IP shall disclose all the information to the
IPMC in the Invention Disclosure Form (IDF) in order to facilitate
the IPMC to ascertain whether or not the University wants to own
the IP. As a general practice, an invention shall be patented by the
University only if it is of the opinion that the invention has

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commercial impetus and feasibility. If the University does not wish

to own the IP, it shall permit the Creator(s) to file for their own IP
and shall issue a No Objection Certificate in this regard. However,
the revenue generated by such IPs shall be shared by the
University as stated in Section 7 of this Policy. It is imperative to
file the patent application before academic publication or any kind
of disclosure to the public in the case of patentable IP in order to
protect the interest of the Creator(s) as well as the University. In
the case of a Sponsored Project, if the Sponsor wishes to manage
the filing of patents and bearing the cost, the Creator(s) shall
inform IPMC about the same and shall also provide a status update
of such application to the IPMC from time to time.
a. IP filing procedure from the University
 The Student/Research Scholar/Faculty Member/Fellow
concerned shall have to submit the IDF about invention in the
prescribed format to IPMC. IDF is available with the IPR policy
posted on the University webpage. It can also be obtained from
the IPMC office. The IDF should clearly state which form of IP is
proposed to be filed; and may also include request for guidance
from IPMC on the applicable form of IP.
 On the basis of the IDF received, the IPMC and the patent
agent/attorney in consultation with the Creator(s) shall carry
out a prior art search and patentability assessment. The
assessment shall be completed within a period of one-two
weeks from the date of receiving the IDF.
 A provisional specification or complete specification of the
patent application, based on the development stage of the
invention, would be drafted by the patent agent/attorney duly

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empanelled by the University once the invention meets the

patentability criteria and has market potential.
 The patent filing shall be done on behalf of the Creator(s) and
the University by the patent agent/attorney.
 All the necessary application forms for filing the IPR will be
signed by the Vice Chancellor, KGMU as the authorized
signatory of the University.
 On the successful filing of the patent application, IPMC shall
inform the Creator(s) of the filing details and ensure that all the
post-filing formalities are duly complied with in a time-bound
manner.
 A similar process shall be followed for assessment and filing of
all other forms of IPR as per their respective life-cycles in India
and other jurisdictions.
 The IPMC is responsible for managing the entire IP lifecycle
including prosecution, maintenance, and commercialization of
the created IP and coordinating with the Creators/ University
authorities/ Patent agents/ attorneys in this regard in a time-
bound manner.
 The IP prosecution and commercialization is a time consuming
and complicated process but brings prominence and glory to
the University. The Students/ Research Scholars/ Faculty
Members/Fellows are hereby informed that they shall be given
the appropriate and requisite guidance from IPMC in order to
facilitate the protection of the IPs created by and in the
University.
b. Filing of Application in India

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Creator(s) are motivated to file a provisional patent application

in the name of the University as soon as possible. The permission
of filing shall be automatically given before evaluation of the
application by IPMC if the creator(s) can bear the cost of filing a
provisional patent application. In such cases, the Creator(s) need
not disclose the details of the invention to IPMC at this stage.
However, if the University decides not to manage the IP, the
Creator(s) shall take proper steps to file the complete
specification within 12 months. In such cases, the University
shall waive off its ownership right for that IP. If the University
decides to own the IP jointly or fully, the cost for provisional
patent filing shall be reimbursed to the Creator(s) in proportion
to the ownership of the University.

10.2. Renewal of Patents

Subject to Clause 6.4, the University shall be responsible for
maintenance of a patent; and payment of all prosecution and
annuity costs up to the 5th year from the first filing date of the
patent application. In case the patent is jointly owned by the
University and other sponsor(s), the cost of patent filing,
prosecution and maintenance shall be shared as per the terms of
the Auxiliary Contract. The licensee/assignee shall pay the
renewal fees for the subsequent fifteen (15) years of the patent
term from the revenue generated out of licensing and royalty in
case the patent has been commercially exploited within the first
five (5) years. If such a situation does not occur and the patent
has not been commercialized within the first five (5) years, then
the University, through the IPMC, would discontinue

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maintenance of the patent and allow it to lapse on its own due to

non-payment of requisite renewal fees.

10.3. Recording, Monitoring and Accounting

IPMC, or any external entity designated by the IPMC, shall
maintain records of the University’s IP in an appropriate form in
digital mode and in sufficient detail. It shall monitor the deadlines
for the payment obligations related to the maintenance or annuity
fees of protected IP, and shall, within a reasonable time, make
payments or inform the person or department designated to
make such payments. IPMC shall also maintain income/expense
accounting records on each IP so that revenue sharing allocations
can be calculated.

11. ENCOURAGING ENTREPRENEURSHIP AND STARTUP CREATION

The University shall grant a license on the IP, on an exclusive/ non-

exclusive basis, as the University may deem fit, to the Creator(s) of the
IP, who opt to create an academic spin-off. If any Faculty Member of the
University wants to start a venture (academic spin-off), a sabbatical
leave may be considered as per the Government of India norms. The
Faculty Member shall be allowed to join back the University in case the
venture undertaken by him/her is unsuccessful. The University shall
promote and support the Faculty Members/ Research Scholars/
Students/ Fellows who want to start any innovation-based venture. The
start-up/ venture set up by a researcher may be exempted from any
upfront fee and/or royalty accrued to the academic institution for a

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certain period of time at the discretion of the University in order to

encourage such venture/ start-up.

12. RESEARCH ETHICS AND INTEGRITY

The University shall properly monitor research ethics and integrity for
all the Research Projects to check academic dereliction and elevate the
quality of research. Each Student/ Research Scholar / Fellow shall be
issued a laboratory notebook by the University which is a vital tool for
research data management and can act as documentary evidence for
proving inventorship/authorship in the court of law. Each Student/
Fellow/ Research Scholar is advised to properly and accurately record
data collected during their research in order to reinforce the practice of
responsible research along with the signature of two witnesses. The
research guide is responsible for educating his team/scholars about the
use of lab notebooks. Any and all individuals who have contributed as
authors must be acknowledged with regard to any scientific publication.
Plagiarism in journal articles, doctoral and master’s theses, or any other
scientific report is a disciplinary violation that will entail disciplinary
action. Any allegation of research misconduct should be addressed to
the Vice Chancellor, KGMU. The lab notebook is the sole property of the
University. At the time of submission of thesis, the Students/ Fellows/
Research Scholars are required to surrender their lab notebooks. The
Students, Fellows, Faculty Members, and the Research Scholars shall
abide by all the relevant Applicable Laws including, but not limited to,
Drugs and Cosmetics Act, 1940, Indian Medical Council Act, 1970 and
the rules made thereunder.

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13. IP AWARENESS AND TRAINING PROGRAM

The members of the IPMC are obligated to educate the students, fellows
and staff alike regarding the IP laws. The University shall make it
compulsory for all the Faculty Members to participate in the IP
awareness and training programs conducted by the IPMC. The
Creator(s) shall seek the guidance of the IPMC regarding potential
patentability of the research before the same is sent for journal
publications, abstracts for conferences, seminars and poster
presentations.

14. CONFIDENTIALITY, DATA PROTECTION, AND PRIVACY

All users of information and documents (“University’s Confidential

Information”) within the University are required to ensure that such
information and documents are kept confidential. The University shall
ensure the execution of proper non-disclosure agreements with the
user(s) to protect the integrity and confidentiality pertaining to such
information and documents. Notwithstanding anything contained
hereinabove, the following information shall not be considered as
confidential:
a) Information already pre-existing in the public domain;
b) Information required to be disclosed pursuant to Applicable Laws;
c) Information independently developed by the Creator without the use
of any University Resources; and
d) Information received from a third party that is not bound by any
covenants of non-disclosure.

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15. INFRINGEMENT, DAMAGES, LIABILITY, AND INDEMNITY

15.1. Pursuant to any Auxiliary Contract entered into by and between

KGMU and any individual or body corporate, University shall
obtain indemnity from legal proceedings against the University
including its employees, without limitation, due to any reasons
whatsoever.

15.2. As a general practice, the University shall obtain, through Auxiliary

Contracts, indemnification from the organisations to which the IP
is being transferred, arising out of its commercial exploitation
against any direct or indirect liability.

15.3. The University shall have the right to oppose, prosecute, engage in,
desist from becoming a party in any litigation concerning IP and
licensing infringements.

16. LIMITATION OF LIABILITY

KGMU shall not be held liable for any damages arising out of the breach
of any of the Auxiliary Contracts whether or not such Contract has been
approved by the University. In case of any conflict with the provision of
the Auxiliary Contracts and this Policy, the provisions of this Policy shall
prevail.

17. CONFLICT OF INTEREST

The Creator(s) are required to disclose any potential and existing

Conflict of Interest. If the creator(s) and/or their blood relatives have a

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stake in a licensee-company, then they are required to disclose the stake

they and /or their blood relatives have in the company, and license or an
assignment of rights for a patent to the licensee/company in such
circumstances, shall be subject to the approval of the IPMC. Each
individual should make his/her duties and responsibilities clear to those
with whom any Auxiliary Contracts may be made and should ensure
that they are provided with a copy of this Policy. The decision on the
existence of a Conflict of Interest shall be taken by the Vice Chancellor,
KGMU in consultation with the IPMC and such decision shall be final and
binding.

18. AGREEMENTS AND CONTRACTS

All Auxiliary Contracts and other agreements including but not limited
to the following categories need to be approved by the University. The
Vice Chancellor acts as a final signing authority in all categories of
agreements to be entered into by the University including but not
limited to i) Confidentiality agreement/ Nondisclosure agreement, ii)
Collaborative research agreement, iii) Material transfer agreement (iv)
License Agreement, (v) Option Agreement, (vi) Memorandum of
Understanding (MoU), (vii) Memorandum of Agreement (MoA). All the
agreements will be in accordance with the templates provided in the
attached Annexure. In case a specific agreement is not available in the
Annexure, the agreement shall be provided by the IPMC, as needed.

19. DISPUTE RESOLUTION

19.1. In case of any disputes between the IPMC and the Creator(s) of
KGMU regarding the implementation of the IPR policy and IP

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Portfolio Maintenance which shall include the apportionment of

the cost and the expenses payable by each of them, the Creator(s)
may appeal to the Vice Chancellor, KGMU. The decision in this
regard would be final and binding on both.

19.2. Disputes arising from Collaborative research or from externally

sponsored research out of or in relation to the construction,
meaning, scope, operation or effect of IP ownership and
exploitation shall be governed by the Auxiliary Contract. Provided,
in the absence of any written Auxiliary Contract and if parties
thereto agree, the Vice Chancellor, KGMU shall refer the dispute to
an independent expert who shall conciliate and pass an award that
shall be final and binding on all the relevant parties. The seat of
conciliation shall be Lucknow and the proceedings shall be
conducted in English Language. Please note that researchers
entering into any such Auxiliary Contracts should endeavour to
integrate the above stated Dispute Resolution Mechanism, therein
unless the sponsor is governed by any other prescribed mode of
Alternative Dispute Resolution Mechanism.

20. JURISDICTION

As a policy, all the agreements to be signed by the University along with

any and all issues arising in relation to or in connection with those
agreement shall be exclusively subject to the jurisdiction of the
competent courts situated at Lucknow, Uttar Pradesh and shall be
governed by appropriate laws in India.

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