Guidelines for intellectual property rights - IPR - Kunnskapsbasen
Guidelines for intellectual property rights - IPR
Norsk versjon - Retningslinjer for immaterielle rettigheter - IPR
- 1. Objectives of the document
- 2. Applies to
- 3. Ownership of results created by an employee with two or more employers
- 4. Results created by students
- 5. Results created as commissioned or contract research
- 6. Results created in collaborative research
- 7. Notification requirement for employees
- 8. Process for commercialization
- 9. IP management models
- 10. Distribution of revenue from IPR
- 11. Transfer of ownership and rights of use to physical material
Guidelines for the protection and management of intellectual property rights (IPR) and Physical Material and Results generated at NTNU.
- Type of document: Guidelines
- Document manager: Pro-Rector for Innovation
- Document owner: Rector
- In effect from (or period): 1 January 2021
- Reference to governing documents: Policy for the protection and management of intellectual property rights (IPR) and physical material and results generated at NTNU.
- Archive reference: 2019/37923
1. Objectives of the document
This document provides more detailed guidelines on how to follow the principles laid down in the «Policy for the protection and management of Intellectual Property Rights (IPR) and Physical Material and Results generated at NTNU» in practice. It is easier to revise and update the practical guidelines later as circumstances require.
2. Applies to
This document applies to all employees (all positions, including adjunct positions), independent contractors, students, visiting scholars and visiting students at NTNU.
3. Ownership of results created by an employee with two or more employers
The Act relating to the right to employees’ inventions and the employment contracts with the staff at NTNU state that the intellectual property rights to the results that are created as part of the employment relationship must be assigned to the employer. In cases where an employee at NTNU has other employers, there is to be a distinction between the external relationship (to third parties), the relationship between the employers (the institutions) and the relationship between the owners of rights (employees and institutions).
Employers should agree in advance on rules for ownership of results in the event of dual employment. If there is no overlapping work content in the main and the additional position, then the ownership will be derived from the content in the main and the additional position. If the content of the positions overlaps, it may be natural to divide the ownership in relation to the full-time equivalency of the positions.
If there was no regulation of rights before results were created and the results according to the circumstances are considered to be jointly owned by both employers, an agreement must be entered into between the parties to regulate further responsibility for commercialization and any assignment of rights to one of the parties against compensation.
For employees in combined positions at a hospital (for example, main employment as a clinical consultant at a hospital with an additional position as an adjunct professor, or main employment as a professor and an additional position as a clinical consultant), the basic principle is that NTNU and the hospital each have a 50% share in terms of both financial responsibility and the right to financial gains.
4. Results created by students
All students who take study programmes at master’s level must enter into an agreement with NTNU about master’s theses as part of their course of study. The agreement must specify whether the thesis originates in and is carried out in an established research group at NTNU, in a centre (with associated systems of agreements), in collaboration with an external partner, based on NTNU's IP or whether the student creates the idea and completes the thesis alone. The supervisor of a student’s thesis will not automatically, based on the formulation of the thesis and the supervisor relationship, get copyright/right of ownership to the thesis (Copyright on student work). Agreements on IPR must be included as an annex to the master’s agreement.
For projects that are wholly or partly funded by the Research Council of Norway or EU institutions or other funders, it is a requirement that the participating institution(s) will be able to exploit the research results. In these kinds of projects, it is therefore necessary to enter into a separate acquisition of rights agreement with the individual student in connection with the individual project. In such cases, the student(s) must fill in the form «Acceptance – transfer of rights to NTNU» in advance.
Also in other cases, NTNU will be entitled to acquire students’ rights to commercial exploitation of the results through voluntary transfer if the students’ work is wholly or partly based on IP that belongs to NTNU. Examples include students who at their own request participate in research centres, participation in research projects and student theses and student work based on IP to which NTNU has the rights. In such cases, the student(s) must fill in the form «Acceptance – transfer of rights to NTNU» in advance.
If a student, through the work in the cases described in the paragraphs above, can document having made a significant contribution to a new idea with commercialization potential (new IP), the student must be compensated on an equal footing with an NTNU employee.
As a minimum, agreements that are entered into between NTNU and students or visiting students shall safeguard the university’s right to use Results, IP, Data and Physical Material for the university’s core tasks.
5. Results created as commissioned or contract research
Unless otherwise agreed for the individual project, the right of ownership of results that are created as commissions passes to the commissioning party. For commissioned or contract research, NTNU’s rights to use the results for research, teaching and publishing must be specified in the contract.
6. Results created in collaborative research
For employees who collaborate with external partners, the ownership and rights of use to results must be regulated by an agreement entered into between the partner and NTNU. For collaborative research, NTNU’s rights to ownership and use of the results for research, teaching, publishing and commercialization must be specified in the contract. The basic rule is that NTNU owns results generated through collaborative research.
7. Notification requirement for employees
As a basic rule, the university is to be notified through NTNU TTO of all results and all physical material with the potential for commercial exploitation (Submit your idea to TTO), with a copy to the Head of Department at the department where the creator is employed.
If the result or the idea is a patentable invention or can be commercialized, the academic employee(s) are still entitled to publish the invention as long as the rights of a third party do not impede this. An agreement on postponement of publication can be made in order to fulfil other statutory requirements, such as privacy, national security and trade secrets. Such an agreement on postponement must describe how the parties’ needs and the societal benefits of the research results will be followed up. A postponement must comply with the rules of the Act relating to Universities and University Colleges (UH-loven §1.5) on postponed publishing and the decision made in S-sak 55/09 by the Board of NTNU.
Copyright to traditional scholarly works, textbooks, musical works, and works of is reported only to the Head of Department.
8. Process for commercialization
After the employee has registered an idea with NTNU TTO, the employee must receive feedback as soon as possible and no later than 1 month after registration. The feedback must make it clear what NTNU TTO plans to do next. Examples of this include:
- NTNU TTO creates a project aimed at further development and exploitation of the idea that was submitted – for example, a patent application is planned.
- NTNU TTO chooses not to proceed with the idea at this time. For example, if the technology is not mature enough or more research is required.
- NTNU TTO needs additional time to obtain feedback from inventor(s), the academic environment or external parties, clarifications of rights, further investigations, etc. before deciding on the further process.
If NTNU TTO does not create a project, the employee must clarify with their Head of Department whether the academic environment (NTNU) should develop the idea further at NTNU for possible commercialization later, or whether ownership should be transferred to the inventor (i.e. NTNU waives the ownership rights to the idea).
If a department, for example for strategic reasons, wants to apply for a patent even if NTNU TTO does not recommend this, then NTNU TTO must facilitate the process, as long as NTNU TTO does not advise against filing a patent application because it might entail infringement of the rights of others. The department must then bear the patent costs and the costs of the patent process, and an agreement must be made between NTNU and the inventor(s), where rights and financial obligations are specified. Distribution of revenue follows the three-way model specified below. In such cases, NTNU TTO cannot claim or expect a share of the income from commercialization.
If NTNU TTO does not choose to create a project and NTNU through the Head of Department does not want to develop the idea further at NTNU, the ownership of the idea can be transferred to the inventor(s). The inventor(s) thus take over the right to commercialize the idea. In such cases, an agreement must be made between NTNU and the inventor(s), in which guidelines are drawn up for the inventor and the rights and financial obligations that both the inventor and NTNU have with regard to using / not using equipment/lab facilities, reporting procedures and possibly time for developing the idea in their position at NTNU. Any income to NTNU from commercialization must be specified in the agreement.
NTNU TTO is responsible for implementing good processes, clarifying the roles between the parties, and ensuring that relevant agreements are entered into. NTNU TTO must regularly keep the department management informed about submitted ideas and commercialization activities relevant to the individual department.
9. IP management models
Access to rights for commercial use of IP can primarily be regulated in two ways:
- Licence agreement: NTNU TTO enters into an agreement with one or more third parties, where these parties are granted the right of use to the applicable IP against payment related to the sale of products in which the IP is used.
- Sale of IPR: NTNU TTO transfers IPR to a third party, which acquires ownership of the IP in question.
Both of these models can be used in collaboration with an established company or through the formation of a spin-off company that enters into an agreement with NTNU TTO on commercial use of the IP. The choice of model with associated pricing and financial terms must take place in a collaboration between NTNU TTO, the creator and the Head of Department at NTNU.
In choosing a model and contracting partner, NTNU TTO must ensure that the agreements:
- fulfil NTNU’s social responsibility for sustainable development
- follow NTNU’s code of ethics for employees
- fulfil the requirement for active utilization of IP rights in order to achieve the widest possible application of research results generated at NTNU.
This means that it must be possible to revoke the agreements and commercialization rights if the ethical requirements are not met, or if the results from the licensed/sold rights are not applied and distributed widely enough, an aspect that must be specified in the agreement. In the final choice of model, the potential for further research activity at NTNU must be taken into account.
If a spin-off company is formed, an objective is to bring in competent long-term external capital at an early stage. The inventor(s) and NTNU TTO may, at their own expense and risk, invest in shares in the spin-off company.
If a spin-off company is formed, a licence agreement is generally entered into between NTNU TTO and the spin-off company as the IPR management model. Only in exceptional cases can the sale of IPR be used, where income from the sale of IPR can either be a monetary sum or an equivalent holding of shares in the spin-off company.
In connection with the formation of a spin-off company where the technology is not directly patentable, a licence agreement is not relevant, and one is dependent on the inventor becoming an entrepreneur, compensation for the sale of the technology must be a minimum of 10 % of the shares in the company.
NTNU TTO makes the final decision on the IP management model (licence or sale of IP).
10. Distribution of revenue from IPR
The guidelines for distribution of revenue described below apply to revenue from licensing or sale of IP that is received from the date that the «Policy for the protection and management of intellectual property rights (IPR) and Physical Material and Results generated at NTNU» with associated guidelines has been approved by the Rector, and will include all new and ongoing projects from all TTO’s commercialization projects.
All sales of rights of use and/or ownership of IP must take place at market price. As a general principle, income from commercialization should be divided according to the three-way model described below.
The distribution of income from a project takes place after deducting any direct costs. Such income is hereinafter referred to as net income. Direct costs that can be deducted are limited to a maximum of NOK 200 000 per project that NTNU TTO and/or the academic environment at NTNU can document as incurred during the commercialization project and that is not covered from other sources of funding (for example, the Central Norway Regional Health Authority Norway, the Research Council of Norway’s FORNY programme, NTNU Discovery) or from the cooperation agreement/service agreement between NTNU and NTNU TTO).
All NTNU TTO’s hourly costs for the commercialization project are expected to be covered through annual service agreements and/or other sources of financing and are not included in the calculation of net income. Hourly costs for NTNU’s employees are expected to be covered through their position at NTNU or other funding sources and are not included in the calculation of net income.
Any direct costs or hourly costs that NTNU TTO may incur in addition to those specified above are at NTNU TTO's own cost and risk. The same applies to the academic environment and employees at NTNU.
The distribution of net income is specified in the cooperation agreement between NTNU and NTNU TTO and must (as a rule) follow the three-way income model where the inventor, the NTNU academic environment and NTNU (institutional share) are each allocated 1/3.
In the allocation of net licence income, the creator and the academic environment (department) in which the creator is employed are to be compensated with a higher proportion at the start, where net income up to NOK 500 000 is divided 50/50 between the inventor and the academic environment.
For net income from NOK 500 001 and up to NOK 10 million, this is distributed as 1/3 to the inventor, 1/3 to the academic environment (department) and 1/3 to NTNU (institutional share).
Net income over NOK 10 million is distributed as 1/3 to the inventor(s), 1/6 to the academic environment (department), 1/6 to the academic environment (faculty) and the last 1/3 to NTNU (institutional share).
For the sale of the shares where TTO has received a specified holding in spin-off companies determined using a market-based valuation of the sale/transfer of IPR to the company, gains on the sale of the shares are distributed according to the same model as the license income described above. In such cases, compensation to the inventor, NTNU’s academic environment and NTNU’s institutional share will take place at the time of sale of the shareholding in the spin-off company.
Any allocation of NTNU’s institutional share to NTNU TTO must be formalized and will be specified in the annual service agreements between NTNU and NTNU TTO (as required by the Office of the Auditor General).
Income allocated to both the academic environment (department) and NTNU's institutional share (possibly further to NTNU TTO) must be used to strengthen the academic activities at the university.
11. Transfer of ownership and rights of use to physical material
Physical material that is created or produced with the university's resources or in another way has been collected or produced through activities at NTNU is NTNU’s property, provided that this is not or will not come into conflict with other party's rights.
Physical material is regarded as any product (organic, inorganic and biological material), including substances, organisms and crops, as well as materials and other data.
Staff at NTNU may transfer physical material owned by or at the disposal of the university to third parties on the following conditions:
- The Head of Department must be involved and must approve the transfer
- Some of the material must be left at NTNU, that is, the source must normally not be depleted
- The recipient must not forward the material to others without the prior written consent of the manager
- It shall only be possible to use the material for research purposes, and not for commercial use. NTNU shall ensure that the material will be used in an ethical manner
- How the material is to be handled after the research project ends must be established by contract