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Intellectual Property Development, Patenting & Commercialization

Excerpt of the ASIAN INSTITUTE OF TECHNOLOGY's Policy and Procedures on PATENT AND COPYRIGHT Effective Date : 25 November 2003; Approved by : President’s Executive Council

DEFINITIONS

1.    Research: Any research carried out in the Institute or by the support of the Institute, by any researcher of the Institute (defined below) will be considered as Institute research.
2.    Researcher: Any person hired, employed, affiliated, or studying at the Institute who is involved in the research activity, which has led to the patentable invention or results.
3.    Patent Committee: The Committee which will take care of the activities concerned with the patent procedures. Each School will have a Patent Committee under the Dean. The Dean will coordinate with the President and the Provost for other concerns.

PATENT POLICIES

1. Disclosure of Patentable Inventions
Faculty, staff, affiliates, contractors and students who have patentable inventions (ideas, concepts, methods, materials and processes), in which the Institute may have ownership rights, shall bring them to the attention of the Patent Committee.

2. Ownership of the Inventions
In general, all the patentable inventions conceived or first reduced to practice by the researcher in the conduct of Institute research will belong to the Institute.

The rights of the Institute in patents arising from research will vary depending on the proportionate contribution of the Institute to the performance of the research projects or on the type of contract agreed upon with cooperating agencies. Research projects can vary from those wholly financed by the Institute or by an Institute-administered fund to projects which receive no significant Institute support.
2.1 The Institute will have ownership rights in all inventions of Institute research that are conceived or first actually reduced to practice as a part of or as a direct result of any research activity in the Institute.

2.2 To the extent that an invention is conceived, developed and reduced to practice by a faculty, staff, affiliate, contractor and student, on his/her own time, outside the scope of his/her employment or association with the Institute and without utilizing
Institute facilities, materials, or resources, ownership of such invention shall belong
to such a person.

2.3 The inventor will cooperate and assist the Institute in all the phases of the patent application process and will assign such applications or any patents resulting therefrom to the Institute for possible patenting and/or commercial exploitation
and management under terms to be agreed upon by the inventor and the Institute.

2.4 The provisions of the Institute patent procedures are subject to any applicable laws, regulations or specific provisions of the grants or contracts which govern the rights in inventions made in connection with sponsored research.

2.5 In order to avoid any question concerning the tax exempt status of financing used for certain Institute facilities, AIT shall seek to:
  • retain ownership of inventions arising during performance of research sponsored by any private sponsor at Institute and/or Government sponsor and;
  • grant to such sponsor(s) any right in the invention only under compensation terms that are set after the time when the invention comes into existence and that are at a fair market level of compensation to the Institute. The Institute may be required to license patent rights to the contracting party. The Institute retains the right to enter into such agreements whenever such action is considered to be both in its best interest and in the public interest. The Institute will not agree to grant any rights in future inventions to private corporations or businesses unless such provision is included in the contract that sponsored the work leading to the invention.
2.6 Final decision of the conflicts of interest arising shall be considered by the Patent Committee and an appropriate recommendation submitted to the Institute Administration.

2.7 In cases where the Institute has an ownership interest pursuant to C-2.1, and either the inventor or Institute does not file a patent application within one year, or fails to make a positive determination regarding pursuit of a patent within a period of six months from the date of disclosure, all of the Institute’s rights shall be reassigned to the inventor(s) upon request, subject only to external sponsor restrictions which may apply.

3. Royalty Distribution
"Patent income" can be defined to include income associated with any patent disclosure made to the Patent Committee for exploitation, even if the income is received before a patent application has been filed or a patent issued, and includes such money received as royalties, fees, advanced payments, court-awarded infringement damages, payments received in settlement of infringement disputes, and the like, calculated after the costs of exploiting the disclosure have been reimbursed to the Institute, some examples of such costs are the cost of securing the patent, appropriate licenses, and other legal efforts as required.

3.1 The Patent Income will be divided according to the amount of the income generated as:
i.    For the income of less than 1 million Baht:
a.    50% to the researcher
b.    50% to the School
ii.    For the income of 1 to 4 million Baht:
a.    40% to the researcher
b.    40% to the School
c.    20% to the Institute
ii.    For the income of more than 4 million Baht:
d.    30% to the researcher
e.    40% to the School
f.    30% to the Institute

Note: The % distribution among the researcher(s) of the income amount provided for the researcher(s) should be decided according to the contribution made to the research by the researcher(s) involved in the research.

Any prior agreements with regard to any of the patents arising from the research made by the sponsor should be taken into consideration, and the agreed amount or money amounting up to 10% should be given to the sponsor.

3.2 In the case of irresolvable disputes over the distributions in C-3.1, the net royalty income distribution shall be allocated and made on an equitable basis determined by the Institute.

4. Licensing Policy
Furtherance of the Patent Policy may require various forms of agreements including the granting of exclusive licenses.
The Institute should follow the International or the National License Policies as the case may be. In general it should follow the international practices.

5. Waiver requests
Each School under the Dean should maintain a separate account for the payment of patent fees.
Waiver of any provisions of the Patent Policy shall be granted only in extraordinary and compelling circumstances and pursuant to the procedure described below.

A request of the waiver of any of the provisions of this Patent Policy shall be submitted to the President of the Institute for transmittal to the Patent Advisory Committee (hereinafter defined). Such requests shall include an identification of the provisions of the policy requested to be waived, and a full explanation of the reasons for the waiver including, but not limited to, the manner in which the waiver is consistent with the educational purposes of the Institute and the public interest.

Certain sponsors may wish to impose as a condition of the award of conduct or grant funds, special provisions, which are at variance with this Patent Policy. Under such circumstances, the Institute may entertain such proposals as requests for waiver under this paragraph subject to the additional condition that all researchers engaged in research to be supported by the proposed grant or contract containing such provisions shall acknowledge and accept those specific provisions.

The Patent Advisory Committee shall review each request for waiver and submit a report of its findings and recommendation to the President whose decision shall be final. Each action under this section shall be considered on its own merits in light of all of the facts surrounding the particular request and shall have no implementation for consideration of subsequent requests. Waiver of provisions relating to distribution of net royalty income shall, in addition, require the approval of the School Dean from which the invention emanated.

6. Deferral
This statement of Patent Policy shall not prevent participation, under research agreements with, or the conduct of research for, government agencies (local, state or federal) subject to laws or regulations which require a different disposition of patent rights than herein provided, or impose other provisions which are inconsistent with its provisions. Such provisions of this Patent Policy as are inconsistent shall be deemed superseded and the management and licensing of and such provisions shall apply.

7. Patent Management Agencies
The Institute may make suitable arrangements not inconsistent with the provisions of this Patent Policy with patent management agencies or firms for the purpose of obtaining services and advice with respect to the patentability of inventions, the obtaining of the patents thereon, and the management and licensing of any such patents.

8. Patent Agreements
In order to facilitate a distribution of patent rights and benefits consistent with the provision of this Patent Policy, each participant in the Institute research shall execute a patent agreement. Pursuant to such an agreement each participant shall acknowledge that all such research is subject to the terms of this Patent Policy, and shall agree to cooperate with the Institute or its designee in the assignment to the Institute of patent rights in inventions or discoveries conceived or first reduced to practice during such research and the preparation and prosecution of patent applications, as may be required to implement its provision.

This requirement may be waived by the President only in those cases where Institute research occurs within a discipline in which the prospect of a patentable invention is, in his/her judgement, extremely remote.

9. Patent Advisory Committee
As and when the need arises, the President, after consultation with the Provost, shall establish and appoint, subject to the approval of the Board of Trustees, a Patent Advisory Committee that shall serve at his/her pleasure. The President should appoint this Committee as and when required for a short period of time. It shall be the function of the Committee to advise and recommend to the President with respect to:
•    guidelines and procedures for implementation of this Patent Policy,
•    proposed amendments to the Patent Policy,
•     the granting of individual exceptions to this policy,
•     the Institute’s ownership of particular inventions,
•    such matters as the President may deem appropriate.

 
COPYRIGHT POLICIES

1. General Statement
Copyright protects the original expression contained in a work. Copyright is intended to promote and encourage excellence and innovation in scholarly research and teaching by identifying and protecting the rights of the Institute, its faculty, staff, employees, affiliates and students.

The basic rights included in the copyright regulation are:
i.    the right to make copies;
ii.    the right to distribute copies to the public (to publish the work);
iii.    the right to make derivative works (translations, abridgements, adaptations);
iv.    the moral right against mutilation and misattribution.

2. Policies
As a part of the copyright of the student thesis/research studies, as a condition for the award of the degree, the student should be required to sign a permission to the Institute to make the thesis available for inspection, to copy and circulate the thesis for scholarly purposes, and to make use for the paper publications.

1. All students who are admitted to the Asian Institute of Technology for any study program (doctoral, master, certificate, etc) will abide by these policies.
2. All the students during the time of admission to the Asian Institute of
Technology will sign the agreement form for waiving all the copyrights of the work which they will do as part of their study in the Institute to the Institute.
3. The agreement will be a part of the registration procedure, which will be mandatory.
4. All the thesis will be given the ISBN Code Number as well as the code number by the Institute and will be put in the electronic documentation.
5. The electronic documentation will consist of a standard format, as enclosed.