ICARS/ AAUS POLICY ON INTELLECTUAL PROPERTY MANAGEMENT AND TECHNOLOGY TRANSFER Dr. P. K.

Barua Department of Plant Breeding & Genetics AAU Jorhat For details the IP management policy and guidelines for protection of intellectual properties generated in ICAR research system, please visit ICAR Guidelines for IP Management and Technology Transfer/ Commercialization http://www.icar.org.in/files/reports/other-reports/icar-ipmttcguide.pdf . ICAR is a large research and development organization under the Department of Agricultural Research & Education (DARE) of the Ministry of Agriculture, Government of India. Under the umbrella of ICAR are the following institutions: 1. Four Deemed Universities Indian Agricultural Research Institute, New Delhi; Indian Veterinary Research Institute, Izatnagar, National Dairy Research Institute, Karnal; Central Institute of Fisheries Education, Mumbai. 2. Forty five Research Institutes 3. Seventeen National Research Centres (NRC) 4. Six Bureaux National Bureau of Plant Genetic Resources, New Delhi, National Bureau of Agriculturally Important Microorganisms, Mau; National Bureau of Agriculturally Important Insects, Bangalore; National Bureau of Soil Survey & Land Use Planning, Nagpur; National Bureau of Animal Genetic Resources, Karnal; National Bureau of Fish Genetic Resources, Lucknow. These Bureaux maintain databases of the Indian resources. 5. Twenty five Project Directorates. 6. One Central Agricultural University at Imphal. ICAR/ AAU Policy on Intellectual Property Management: 1. ICAR/ AAU believes that an effective IP management regime has in-built mechanism for incentive to scientists/ innovators to engage in knowledge creation. 2. In ICAR/ AAU, the key considerations are: (i) national priorities relating to food security, (ii) sustainable use of natural resources, (iii) enhancing the incomes of small and marginal farmers, and (iv) employment generation. 3. ICAR/ AAU emphasizes protection of public sector research as defense to keep innovations in the public domain. 4. ICAR/ AAU wants to use IPR enabled technologies to negotiate access to strategic research tools and technology from the private sector. 5. Income generation by exploiting the intellectual property (technologies) is not the primary motive for IP protection. Institutional Arrangement for IPM ICAR has set up institutional arrangements for IPM, as follows. Committees Centres/ Units

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Central Technology Management Committee (CTMC) as apex decision making committee with the Director General as the Chair. Zonal Institute Technology Management Committee (ZITMC), chaired by the Director of the Institute where ZTMC is located.

Agro-Technology Management Centre (ATMC) at ICAR HQ Zonal Agro-Technology Management Centre (ZTMC) at five zones at: 1. IARI, New Delhi; 2. IVRI, Izatnagar (UP); 3. CIRCOT (Central Institute for Research on Cotton Technology), Mumbai; 4. NIRJAFT (National Institute of Research on Jute & Allied Fibre Technology), Kolkata; 5. CIFT (Central Institute of Fisheries Technology), Kochin Institute Technology Management Unit (ITMU) at each ICAR Institute.

Institute Technology Management Committee (ITMC), chaired by the Director of the Institute.

Ownership of IP of ICAR/ AAU A. Exclusive ownership: ICAR claims exclusive ownership of IP in case of technologies developed by: 1. Using funds received from Central Government through the budgetary process. 2. Using external funds, public or private, where ICAR/AAU has been assigned sole ownership by the funding agency or where such prior agreement with the funding agency does not exist. B. Joint ownership of IP: ICAR/AAU will claim joint ownership in case technologies are developed through: 1. Collaborative research. 2. Post Graduate research, if externally funded or collaborative. 3. If technologies are developed through shared research facilities of ICAR/AAU and ICARs/ AAUs scientists are involved in technology development. 4. Scientist entrepreneurship for technology up-scaling. Intellectual properties of ICAR/ AAU: 1. Patentable IP in agriculture: Though methods of agriculture and horticulture are not patentable, yet there are many potential areas of technologies that are patentable in agriculture and allied fields, e.g. 1. Various microorganism based formulations, such as those of bio-control agents, biofertilizers, specific dairy catalysts, etc., and the processes for their use. 2. Various genetically engineered microorganisms for an array of specific uses, such as biodegraders, bio-stimulants, bio-protectants, etc., and the processes related to their application/ use. 3. Novel dairy and horticultural products, by-products, such as enzymes, and processes for their production and use. 4. Plant based agro-chemicals, their purification and testing processes, and various formulations. 5. Diagnostic kits. 6. Agricultural machinery, implements, and laboratory equipments. 7. High value compounds from terrestrial and aquatic and living systems. 8. Novel genes from microbial and higher biological systems; research tools of genetic engineering, such as primers, gene constructs, and gene transfer tools like gene gun, etc. 9. Information systems and software, etc.
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10. Patentable part of know-how, for scaling up of research results or manufacture of prototypes/ commercial products, etc. 11. Patents on microorganisms. 2. Protection of plant varieties. 1. All extant varieties of ICAR (For EV see lecture note on plant variety protection) 2. New plant varieties including essentially derived varieties. 3. Improved Breeds/ Strains of animals/ poultry/ fish cannot be protected. ICAR is developing a system of their registration and documentation, so that others cannot appropriate. 4. Collective Mark/ Trademark of ICAR. 5. Copyright. 6. Designs. 7. Know-how protection by trade secret, confidentiality agreement. 8. Traditional knowledge protection by disclosure and documentation of TK. Licensing of IP (Relevant to AAU also) Licences will be case-specific, non-exclusive or exclusive licences. Normally, non-exclusive licences will be granted by ICAR for technologies such as inputs (e.g. bio-pesticides or biofertilizers, seeds of ICARs varieties) so that such technologies are available for wider adoption. Generally when licenses are granted through an open tendering/ bidding process it will be given to one licensee on exclusive basis. Sub-licensing can also be granted. Exclusive licence is issued when (i) an IPR enabled technology is to be commercialized in foreign countries, and (ii) the technology is to be disseminated in difficult areas offering low incentives. Commercialization of Plant Varieties (Relevant to AAU also) Based on national priorities and issues of food and nutritional security, ICAR may decide to place a plant variety solely in the public domain or licensed on exclusive or non-exclusive basis. However, registration of all protectable varieties will be ensured before placing them in public or commercial domain. Licensing of seed and planting material (Relevant to AAU also) Non-exclusive licenses for popularization and public distribution of seeds/ propagules for development and cooperation will be granted to: 1. Central and State Departments of Agriculture. 2. National and State Seed Corporations. 3. Private/ Cooperative seed producers. 4. Foreign clients in seed business who may be interested in commercializing ICARs seed/ propagules in other countries. Incentives and Benefit Sharing (Relevant to AAU also) Benefits from licensing of ICARs technologies may be monetary and/ or non-monetary. Monetary benefits: (i) Upfront lump sum payment.
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(ii) Upfront payment plus royalty on actual sale. (iii) Royalty on actual sale. Non-Monetary Benefits: (i) Research capacity building. (ii) Instituting Research Chair in an ICAR institute. (iii) Granting research fellowship, etc. (iv) In-licensing/ cross licensing of tools of technology generation in frontier areas. (See lecture note on Technology transfer for these terms.) IP MANAGEMENT & TECHNOLOGY TRANSFER IN AAU Ref: AAU Guidelines for Intellectual Property Management and Technology Transfer/ Commercialization (2012) 1. AAUs IPR policy: AAU is committed to protect its intellectual properties. AAU believes that IPR will improve quality of research, generate funds and open up scope for public-private partnership with faster transfer of technology. Benefit sharing with its researchers will make them more innovative and competitive. AAU will follow ICAR guidelines and IPR laws of India. 2. Ownership of IP: AAU claims ownership of all inventions/innovations made by university staff/ students within their technical expertise and/or assigned duties. Claims ownership of copyright on works commissioned by the University. MOU defines ownership of an invention resulting from a sponsored or collaborative research. AAU will own all Trademarks representing the "brand" of the university. All applications will be made in the name of Assam Agricultural University. The innovating scientists will assign the rights to the institution. The latter will be the first and true inventors. 3. Institutional arrangements: Three tier Committees: At HQ: AAU Technology Management Committee (AAUTMC) chaired by the Vice Chancellor - apex decision-making body. At RARS: RARS Technology Management Committee (RSTMC), chaired by the Chief Scientist of the RARS, and including the KVKs. At College: College Level Technology Management Committee (CLTMC) chaired by the Dean/ Associate Dean. 4. Sharing of Net Revenue/ Benefit Money (Both for ICAR and AAU) IPR system was basically evolved for granting incentives to the innovators/ inventors for monetary gains in return of their investments on research and development. Therefore ICAR has developed a clear cut guideline for sharing benefit with the innovators/inventors as follows. A. Formula for Sharing of Benefit Money (Same for ICAR and AAU) Head of Account Amount 1. Gross Revenue (license fees/ royalties)
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=A
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2. Service Tax already paid or due 3. Amount retained by ICAR/AAU for augmenting IP Management 4. Net revenue/ benefit money to be shared by innovators as incentive B. ICARs benefit sharing Stakeholder category ICAR scientists/ innovators and other team members ICAR Institution(s) (including 5% of net revenue for staff welfare) ICAR headquarters (including 5% of net revenue for staff welfare) C. AAUs benefit sharing: Stakeholder category 1. AAU innovators (50% for PI and rest 50% divided for other investigators based on contribution and agreement) 2. AAU HQ (for overhead expenditure)

=B = 30% of A = C =A-B-C=X

Share 60% 25% 15%

Share of net revenue 60% 40%

A hypothetical example: A technology (IP) was developed, which was licensed for Rs. 10 lakh as license fee. Service tax was paid @ 10% to the Govt. How much will be earned by the innovative scientists who developed the technology? A. Gross revenue: Rs. 10,00,000 B. Service tax paid: 10% Rs. 1,00,000 C. Amount for IP management: 30% Rs. 3,00,000 D. Net revenue to be shared: Rs. 10,00,000 Rs. 1,00,000 Rs. 3,00,000 = Rs. 6,00,000 So, scientists will get = 60% of Rs. 6,00,000 = Rs. 3,60,000 (It will be taxable income.)

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