Sample Intellectual Policy Statement

INTELLECTUAL PROPERTY POLICY OF …………..

1. POLICY STATEMENT

  2. OBJECTIVES

• Promote the fundamental object and purpose of facilitating and creating indigenous technology, and creative and innovative capability

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• Protect the Organization’s integrity, interests and intellectual property generated
•  
• Provide the staff with fair and reasonable recognition and remuneration
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• Encourage and develop Organization growth, progress and success through active application of intellectual activity in industry and commerce
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• Create a secure environment where original inventions/innovations can be protected

  3. SCOPE
               Depending on the organization, insert the scope of the policy here

     4.  TYPES OF IP RIGHTS

•  Patents
•  Registered and Unregistered Trademarks
•  Industrial Designs
•  Copyright
•  Geographical Indications
•  Layout Design of Integrated Circuits
•  Plant Variety Rights
•  Confidential information

    5.     OWNERSHIP

    5.1   Claim of Ownership

      The organization claims ownership of all Intellectual Property created by an employee in 

      the course of their employment with the organization, even if the Intellectual Property 

      is  conceived outside the premises of the organization or at the collaborator’s premises.

5.2       The organization will claim ownership of Intellectual Property where:

• Generation of the Intellectual Property has involved substantial use of the organization’s resources and/or services.  The organization does not construe the use of ordinarily available resources such as office equipment, computer workstations, library and other general information resources as constituting substantial use of the organization’s resources

• Generation of the Intellectual Property has resulted from the use of preexisting Intellectual Property owned by the organization

• The Intellectual Property forms part of Intellectual Property generated by a team of employees and visitors to the organization

• The Intellectual Property has been generated as a result of specific project funding provided or obtained by the organization

    5.3  Courses developed and taught by employees of the organization belongs to 

          the organization. Any courses that are videotaped or recorded using any other media are 

          the organization’s property and may not be distributed without permission

5.4   Ownership of all Intellectual Property that is developed in the course of or pursuant 

       to a sponsored research or other agreements, to which the organization is a party, shall 

       be determined in accordance with the terms of the sponsored research or other agreements

5.5  Individuals may not use the organization’s resources including facilities, personnel,    

      equipment or any confidential information for outside consulting activities or any other 

      activities in pursuit  of personal gain

5.6  The originator/inventor/designer shall cooperate and assist the organization in all phases in the registration of the Intellectual Property and shall assign the resulting Intellectual Property to the organization

5.7  The organization reserves the right to decide in which countries it will seek Intellectual Property protection.

5.8       In cases in which the organization has an ownership interest in an invention but either does not register the statutory Intellectual Property interest within one year or fails to make a positive determination regarding pursuit of the statutory Intellectual Property interest within a period of 6 months from the date of disclosure of the IP to the Organization’s Secretariat, the matter shall be submitted to the IP Committee for a final determination

6.  WORK OF NON-EMPLOYEES

         The organization will enter into an agreement with the non-employees.  Work of 

         non-employees includes but not limited to work done by consultants, visitors, 

        fellows,  independent contractors, etc.

7.  WHOLLY OWNED SUBSIDIARIES AND JOINT - VENTURE COMPANIES

 

a)         The IP Policy shall apply without limitations

b)         Joint-venture or not wholly owned company - to share equity based on proportion

8.         EXTERNAL TECHNOLOGY SUPPLIERS

    The supplier shall either own the IP rights or the company be legally licensed to sell, 

    transfer or sub-license the technology to any third party.  External supplier must also

   indemnify the organization against damages for infringement.

9.         FOR UNIVERSITY

            Research Output from Undergraduate and Post-Graduate Students Wholly owned by University

10.       COLLABORATIVE WORK

            Organization will negotiate with the collaborator(s) to retain the ownership of the IP rights.

11.       ACQUISITION OF SOFTWARE

a)         The organization will make every effort to ensure that all software used in the organization 

      is  properly licensed. Where software and databases used in the organization are owned by 

      users or third parties and are protected by copyright and/or other laws, or subject to license 

      or other contractual arrangement, it is the policy of the organization that users abide by any 

      legal restrictions imposed by the owner of the software or databases.  It is the responsibility 

      of the owner of the protected software or databases to make the nature of the restrictions 

      known to the user.

b)  Wherever possible the organization will negotiate with software suppliers to ensure that their license rights do not constrain use of the software by the organization, its employees and visitors or impair the organization’s right to develop and distribute software which is dependent upon the acquired software.

12.   DISCLOSURE

No disclosure prior to securing IP rights.  Inventors or researchers to provide all information for IP application by using an Invention Disclosure Form. 

13. PUBLICATION

The author shall be named as such in the publication.  The publication rights shall belong to the organization or University

14. DISPOSITION

            The organization shall have the sole discretion to dispose the IP 

15.       COMMERCIAL DEVELOPMENT

            The organization shall have the sole discretion to commence commercial development 

      on an invention following consultation with the inventor(s)

16.       INCENTIVES, AWARD AND REWARD SCHEMES AND ROYALTIES

a)         The organization will have the sole discretion to determine the incentives, award 

       and reward schemes

b)         One-off payment vs. sharing of royalties

17. EMPLOYEE AND VISITOR OBLIGATIONS

a)   Terms and conditions of Employment - HR to include confidentiality clauses and NDA 

b)   Confidentiality Agreement and NDA for Visitors

      c)  Official Secrecy Act requirements for government employees, if applicable 

18.       BREACH

            Action taken by organization.  Types of action – warning letter, demotion, etc.

19.   WAIVERS

            The organization has the sole discretion to give waivers and is decided on a case by case basis

 20.      IMPLEMENTATION AND ADMINISTRATION

   a)      The Policy is implemented through a IP Policy Implementation Manual

   b)      The administration is carried out by an IP Unit/Department which acts as a Secretariat 

         and  reports to an IP Council or Committee

(F)       SETTING THE IP INFRASTRUCTURE

• Review organizational structure in lieu of Policy

• Assignment of IP personnel in the organization (in big companies - have IP departments, in small organizations - have IP units/sections)

• Appoint IP personnel and determine job functions of IP personnel

• Appoint IP Committee Members or IP Steering Committee Members or IP Council Members

(G)  DISSEMINATION AND IMPLEMENTATION

• Conduct road show to disseminate the IP Policy and Implementation Manual to all staff so that they are aware of such policy

• Upload the IP Policy onto the organization website to inform the public and visitors

• Update and review the Policy from time to time (to keep in pace with the development of laws and the working environment) Monitoring and enforcement

Cease & Desist Letters??

Cease & Desist Letters – What are they and what to do about them?

 It is not uncommon for small businesses or start-up companies, especially if they are successful, to receive letters accusing them of infringing the rights of another. The infringement may be of a product or process of a protected Patent, Design, Copyright, or even the use of a confusingly similar name of a Registered Trademark. More often than not the recipient is not even aware that such protection exists and that the products they are making, the drawings they are using to make those products, or even the name that they are selling those products under is protected by one or more Intellectual Property rights (IPR).

Such letters, often called “cease and desist” letters, usually inform the company of the existence of a granted Patent, Design, a copyright or a Registered Design by its number, assert ownership to the Intellectual Property and set conditions that are to be met and a deadline for meeting those conditions.

The letter will invariably indicate that the products you are making, selling or importing, or the process that you are using is a restricted one. And that if you do not stop selling or producing the offending items the matter will end up in court.

Cease & Desist letters are issued for two main reasons.

Firstly, a cease & desist letter can be generated by competitors who feel genuinely aggrieved that their hard won innovations, protected by Patents, Designs, Copyright are being infringed – or so it seems to them. Secondly, a cease & desist demand will often result from companies who wish to take advantage of recent IP purchases in the hope of gaining royalties or licenses to lucrative technologies or to technologies on which other companies depend. While Intellectual Property systems are designed to encourage technology transfer there are some companies that actively look at, and purchase issued patents as a means to secure out of court settlements or licenses.

In any event, a cease & desist letter should never be ignored - and can often lead to the transfer through licensing of state of the art technology that provides both licensee and licensor with technical advantages over competitors and which can secure and ensure present market position and future market growth. The matter of sub-licenses is also a real and potential lucrative proposition. So, looking at it positively, a cease & desist letter may not be the end - it may in all truth be the beginning.

What should you do if you receive a “Cease and Desist” letter?

The first thing that should happen on receipt of such a letter is to take the letter seriously. Obviously, such a letter is more than just an inconvenience. It is a downright nuisance and an initial reaction might simply be to ignore the matter it in the hope that it will go away. Do not do this. In most countries there are laws that protect manufacturers from receiving such letters without good reason. So there is a good chance that there is a certain amount of credibility to the Claim that you are infringing. Whether or not you are is an entirely different matter and will ultimately be determined by the courts or similar legal body.

The next thing to do is to stand back and take a rational look at the Claim being made and evaluate that, if the Claim is valid one, what affect it will have on your business and on your Clients. Following on from this, it is important to make a considered response to the sender. Such a response will almost invariably involve the services of an IP professional. The IP professional will evaluate the Claims made in the letter, comparing the alleged infringing act with what is actually protected by the Patent, design or the copyright.

It is also advisable to obtain a written opinion from your patent attorney as a sign that you have acted in good faith should the matter proceed to the courts at a later date. The written opinion might also suggest should you in fact be an infringer what options are open to you. These sorts of options may include designing around the protected article or process, licensing possibilities, and might even suggest some sort of manufacturing and distribution agreement with the complaining party. At the very least, the opinion will enable you to understand the process involved and the similarities (and differences) between your products and those of your competitor.

What is Patent??

What is a Patent? A patent is a set of exclusive rights granted by a government to an inventor or applicant for a limited amount of time (normally 20 years from the filing date). It is a legal document defining ownership of a particular area of new technology. Patents are Granted in over 150 countries and are predicated on the theory that inventors are more likely to invent and disclose that knowledge to the public in exchange for a limited period of exclusivity. The right granted by a patent excludes all others from making, using, or selling an invention or products made by an invented process. What is Patentable? To gain a valid Patent the invention must be new (novel), involve an inventive step or be non-obvious, and be capable of industrial application. Some countries have specific exclusions preventing things from being patented such as the making of nuclear bombs. What does new mean? An invention is considered new if it does not form part of the state of the art. What is the State of the Art? The state of the art comprises everything that is known or used in public in any way, anywhere in the world, before the date of filing of the patent application. What is inventive Step? An invention is considered as involving an inventive step if it is not obvious to a skilled person having regard to the state of the art. Industrial applicability: The invention must be capable of being made or used in some kind of industry, including agriculture. Generally, it does not include one-offs. Excluded Subject Matters: Many countries have specific exclusions to certain inventions such as the patenting of plants and animals or the patenting of scientific theories. As long as the above criteria are met the United States has very few exclusions to patentability.