Intellectual Property


INTELLECTUAL PROPERTY POLICY

UNIVERSITY TUN HUSSEIN ONN MALAYSIA

The Intellectual Property (IP) Policy of Universiti Tun Hussein Onn Malaysia (UTHM) is to establish a framework for the encouragement of high quality research and innovation. The policy sets out the basis for managing intellectual property rights so as to best meet its policy objectives.

Objectives:

-To create conducive climate for research and innovation;

-To provide a framework whereby staff and students are stimulated to identify, protect and exploit potentially valuable research and innovation output

-To create a better understanding of the various rights which the law provides for the protection of creative effort and thereby stimulate the proper protection of IP

-To provide financial incentives for individuals, groups, faculties and organizational units to encourage research and innovation ; and

-To recognize partial rights of students to intellectual property emanating from original research postgraduate level

UTHM reserves the rights to modify or add to this policy at any time provided that any such change will only apply to works, inventions and other subject matters, in which intellectual property rights subsist, that come into being after the effective date of the change.

For the purpose of this policy, ‘Intellectual Property’ means and includes:

- Patents for inventions granted under the Patents (Amended) Act 1995 and the Regulation made thereunder.

- Copyrights as governed by the copyright Act 1987, Copyright (Amended) Act 1990 and the Regulations made thereunder which cover ‘literary and artistic works ‘. The Forms in which such works are expressed may be words, symbols, music, pictures, three –dimensional objects, or combinations thereof.

- Trademark as governed by Trade Marks Act 1976 and regulations made thereunder.

- Industrial designs as governed by the United Kingdom Designs (Protector) Act 1949 for Peninsular Malaysia, (United Kingdom) Ordinance Chapter 59 for Sarawak.

- Confidential information and trade secrets including background and foreground information.

‘University’ means Universiti Tun Hussein Onn Malaysia and abbreviated as UTHM

‘Staff Member’ means and includes all academic, research and general staff or any person who is employed by UTHM pursuant to a contract of employment whether fulltime, part-time or contract, excluding contractors. This also includes persons invited to participate in the research programme of the University as a visiting fellow or research fellow.

‘invention’ means and includes any new and useful improvement of a process, machine, product or other manufactured item or composition of matter whether or not it is patentable and whether or not it has been reduced to writing or any other forms of expression and includes any related know-how and any documents, computer software or other medium in which any such invention is described or comprised.

‘Net Revenues’ means revenues after deducting all costs relating to the development, protection, marketing and administration of the intellectual property and includes, any direct and indirect costs associated with further development for commercialization of any intellectual property. Income accrued after apportioning all dues to any third party where applicable.

‘Universal Resources’ are defined as all tangible resources provided by UTHM to its staff/originators, including office, laboratory, studio space and equipment, computer hardware, software, technical support, secretarial service, research teaching, laboratory assistants, supplies, utilities, funding for research and teaching activities, travel and other funding or reimbursement. University resources do not include salary, insurance or retirement plan contribution paid to or for the benefit of staff/originator.

‘Commissioned Work’ means generic tasks performed under an employment contract or appropriate position description, and which may be performed by any staff member with similar qualifications and position description.

‘Computer Software’ is defined as a set of statements or instructions to be used directly or indirectly in a computer to bring about certain result.

‘Intellectual Property Committee’ is defined in Part 7 of this policy.

‘Student’ means an enrolled student, as defined by Universities and University Colleges 1971 Act (Amendment 1996) /Act.

 

3.1 Except as otherwise agreed in writing or stated in this policy, the University claim ownership of all intellectual property, created by staff members in the course of their employment.

3.2 The University owns worldwide right, title and interest in any invention made at least in part by University staff, or with substantial use of University resources, and unless otherwise agreed, this policy applies to any invention conceived or not the staff remain employee of the University.

3.3 The University will not assert any right or claim ownership of any intellectual property scholarly books, articles, audiovisuals, websites, lectures or other such scholarly work or subject matter generated by researchers or academic staff, other than that specifically commissioned by the University. Then University reserves the right to use such works or subject matters for the purpose of its teaching and research.

3.4 The University will assert ownership of University commissioned lecture notes, courses, radio broadcast, audio-visual materials and the like which have been developed to further its teaching function pursuant to specific commissions in favour of one or more researchers.

3.5 The University will not assert any right or claim of ownership of the intellectual property in artistic works, musical, dramatic or other creative works written, created or composed by researchers or staff, unless these works have been specifically commissioned by the University.

3.6 Postgraduate students may be required to enter into an agreement which may permits the University to obtain the rights to certain intellectual property which may be generated by them in the course of their studies or research. Such an agreement shall, whenever possible;

a) be made prior to the student commencing the study or research;

b) be explained to the students

3.7 The University reserves the right, prior to the student participating in any research project in which University staff are also involved or in which University equipment, facilities or resources will be used or as a condition of the student’s continued participation in any such project, to require the student to assign to the University any intellectual property arising or subsisting in or in respect of any invention, work or other material that the student my author, invent or create in the course of working on that project.

3.8 Where the University owns intellectual property created by students, the Univesity will ensure that such ownership does not interfere with the assessment of the student’s academic performance or the grant of an award. The University will not normally consider assisting a student to patent an invention or otherwise commercialize intellectual property originated by the student unless the student is prepared to assign the patent rights or other intellectual property rights to the University in accordance with this policy.

 

4.1 Where a staff member creates University Intellectual property, other than that to which the University will not claim ownership, which in his/her opinion capable of commercial exploitation, he/she shall report its existence to the Chairman of the Intellectual Property Committee. Students will follow procedures outlined any applicable assignment or licensing agreement that they have entered into with the University.

4.2 After consultation with the staff member, the Intellectual Property Committee shall determine whether the University wishes to become involved in the exploitation of any University intellectual property which is reported or is other wise brought to notice.

4.3 The University reserves the rights to commersialize the intellectual property and shall undertake the appropriate action to be taken. This may include, but not limited to one or more of the followings:

a) Undertake the appropriate measures to protect the intellectual property;

b) The identification of potential licenses;

c) The assignment of the rights to a third party; and

d) The formation of a limited liability company to exploit the technology starts up company (subject to separate negotiation)

In the event that the University does not wish to commercialize the intellectual property, the University shall assign its right of the intellectual property ownership to the inventor

4.4 Where the University decides to be involved in the exploitation of University intellectual property the staff member(s) shall provide all reasonable assistance in the exploitation process by, for example, providing information promptly on request, attending meetings with potential licensees and advising on further development.

5.1 Where that University may obtain any financial return from the commercial exploitation of intellectual property, with the exception of theses for higher degrees, it shall be distributed in accordance with the provision set out in 5.2 unless otherwise specified in agreed contractual arrangement specific to the commercialization.

5.2 Any income generated from the successful commercial exploitation of IP will be distributed as follows after deducting the relevant costs:

Originator/s 80%

University 20%

6.1 It is envisaged that the University shall be involved in projects with other parties and that other parties may sponsor research within the University by providing funding. The University may enter with other parties, into an agreement which governs the ownership and exploitation of intellectual property. Where the intellectual property does not rest with the University the consent of the originators shall be obtained before any such negotiation is entered into.

6.2 In negotiating such an agreement with third party, University shall ensure;

a) that the originators are consulted at all stages;and

b) that the terms of the agreement are consistent with the principles set out in the other provisions of this policy.

6.3 Where such an agreement requires the originators to assign intellectual property to the University or to some other party, the University shall as far as practicable, ensure that the terms of the agreement are brought to the attention of those originators before they commence the work to which the agreement refers.

7.1 The Intellectual Property Committee shall have the following membership:

a) The Deputy Vice Chancellor (Academic and International) as chairman;

b) Director of the Research Management and Innovation Centre;

c) Dean of the Centre for Graduate Studies;

d) Librarian;  and

e) Three other persons as appointed by the University

The quorum shall be 50% of the committee members.

7.2 The Terms of Reference of the Intellectual Property Committee shall be:

a) To oversee the implementation of this policy especially the requirements regarding information and education;

b) To assist in the resolution of disputes;

c) To conduct a review of this policy at periodic intervals, or as circumstances demand, and make recommendations regarding appropriate changes;

d) To decide on the commercialization of the intellectual property;

e) To set down guidelines, procedures and criteria for reporting to the University, the creation, commercialization, unauthorised use or infringement of intellectual property to which this policy applies; and

f) To provide advice to the University on intellectual property issues generally.

8.1 Upon adoption of this policy the University shall take all reasonable steps to ensure that it is communicated and explained to staff and students.

8.2 The University shall establish on an annual basis an intellectual property education programme with the following objectives

a) To alert new staff and students to their rights, responsibilities and opportunities in relation to intellectual property;

b) To alert staff and students as to any changes to this policy; and

c) To promote a better understanding of intellectual property issues in general and so contributes to the creation within the University a more cooperative and productive environment for teaching, learning and research.

9.1 This policy may be implemented or supplemented in any way consistent with its terms and those of other University policies.

9.2 This policy shall not apply to existing written agreement between the University and/or creator(s) and any external organization or individual, concerning the development, legal protection or commercialization of specific intellectual property and entered into prior to the date of which this policy is adopted by the University.

9.3 University personnel will not engage in any activity in conflict with the University’s interests including:

a) signing of intellectual property agreements with outside persons or organizations which may abrogate the right of the University as stated in this policy or which otherwise conflict with this policy and

b) using the name of the University or any of its faculties, institute or centres without prior authorization in connection with any invention.

9.4 University units and personnel are responsible for knowing applicable regulations, monitoring their continuing evaluation and conducting their activities in full compliance with the applicable laws and regulations related to patent and copyright infringements. The responsibility to avoid penalties for non-compliance or infringements extends to all personnel who carry out activities which involve transmission, communication or duplication of materials protected by copyright.

 

 

10.1 The University shall take reasonable steps to respect the right of an originator to be acknowledged as the creator of intellectual property, and to endeavour to ensure that others respect that right.

10.2 Where the University uses intellectual property created by an originator, it shall take reasonable steps to consult with the originator before modifying or adapting that intellectual property, except in the case of external teaching materials in which it is the owner of the copyright. In such case the University may modify or adapt the materials at its sole discretion for the purpose of producing modified or adapted external teaching materials.

10.3 Where an originator wishes not to be acknowledged as the creator of intellectual property which has been modified or adapted, the University shall take reasonable steps to respect that wish, and to endeavour to ensure that others respect it.

11.1 If a dispute arises as to the operation of this policy, or as to any matter on which the operation of this policy relies, the Intellectual Property Committee shall appoint a mediator to assist the parties in resolving their dispute.

11.2 If such a dispute cannot be resolved through the assistance of a mediator, the Intellectual Property Committee shall appoint an arbitrator to investigate and decide the matters in dispute. The arbitrator may adopt whatever appropriate procedures, provided each party is given a fair hearing.

11.3 In selecting a mediator or arbitrator, the Intellectual Property Committee shall, as far as is reasonably practicable, choose a person who is acceptable to all parties.

11.4 The decision of the arbitrator shall be reported to the Intellectual Property Committee without undue delay and the Intellectual Property Committee shall as soon as is practicable convey the decision to the parties to the dispute.

11.5 The parties to the dispute shall have the right of appeal against the decision of the arbitrator on the grounds of unfair hearing or a denial of natural justice. Any appeal shall be made to the Vice Chancellor in writing within 30 days of receipt of the decision of the arbitrator.

11.6 The Vice Chancellor shall consult with the parties to the dispute, the arbitrator and such other persons as the Vice Chancellor shall decide, and shall make a determination on the outcome of the appeal without undue delay.

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