FORMULATING INTELLECTUAL PROPERTY POLICY

FOR RESEARCH & DEVELOPMENT PURPOSES

A paper presented at NOTAP’s IPR Training Workshop for the

North-West Zone
(Sokoto State)
March 2024
 PRESENTER

MR. E.D ARCHIBONG

DEPUTY DIRECTOR Technology Acquisition and Research Coordination (TARC) Department
NOTAP

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 OUTLINE
• INTRODUCTION
• PREFACE (INSTITUTION’S ISSION, PURPOSE OF IP POLICY)
• DEFINITIONS
• SCOPE OF THE POLICY
• GOVERNANCE AND OPERATION
• OWNERSHIP OF IP AND RIGHT OF USE
• COMMERCIALIZATION CHANNELS
• INCENTIVES AND SHARING OF REVENUES
• CONFLICTS OF INTEREST (COI) AND CONFLICTS OF COMMITMENT (COC)
• GENERAL DISPUTE RESOLUTION/APPEAL
• AMENDMENT
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 INTRODUCTION
 To be relevant in today’s fast developing world, Research Institutions have
an urgent need to adequately protect and manage research results,
information, innovation, discoveries, etc, by leveraging their IP assets.

 This can be achieved by the formulation and implementation of a dynamic

Intellectual Property (IP) policy by the institutions.
 IP Policy and effective management of IP can positively influence the good
image of the institution in the eyes of research/industry partners and also
increase the ranking position of the institution.
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 THE NEED FOR IP POLICY
An IP Policy is a necessary tool that will set the platform for

a win-win successful collaboration within the academic

environment and between the academia and
commercialization partners, which in turn will boost creative
endeavours, enhance prosperity and enable the Research
Institution system impact positively on the national economy.
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THE NEED FOR IP POLICY (cont'd)
Furthermore, Research Institution need an IP Policy for;
a) Effective management of IP and knowledge transfer;

b) Clarity on the ownership of and rights to use the IP resulting from the
institution’s own or collaborative R&D activities;
c) Setting out the rules of the institution on how to accurately identify,
evaluate, protect and manage IP for its further development.

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 THE NEED FOR IP POLICY (cont'd)
d) Providing a transparent framework for cooperation with third parties
and provides guidelines on the sharing of economic benefits arising
from the commercialization of IP;
e) Regulating the ownership and use of IP rights; and

f) Providing incentives for marketable R&D initiatives, and

innovations.

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 DEFINITIONS
“Benefits” means the contribution to the advantages on the
socio-economic needs of Nigeria or the Research Institution
concerned in the area of specialty of the Research Institution
and may include, capacity development, technology
transfer, job creation, enterprise development, social
upliftment and products, or processes or services that
embody or use the Intellectual Property.
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 SOME DEFINITIONS

“Commercialization” means any for of

utilization of IP intended to generate value,
which may be in the form of a marketable
product, process or service, commercial returns
or other benefits to society
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 SOME DEFINITIONS
Conflict of Interest (COI)” is any situation in

which real or perceived interests of an individual

Staff Member, Visitor or Student may run counter to
the interests of the Research Institution or negatively
affect their employment or duties.

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 SOME DEFINITIONS
“Creator” means an individual or group of individuals who
create, conceive, reduce to practice, author, or otherwise make a
substantive intellectual contribution to the creation of Intellectual
Property and who meets the definition of “inventor” as generally
defined in Patents Acts Cap P.4 Laws of the Federation of Nigeria,
2004 and/or the definition of ‘author’ as generally defined in
Copyrights Acts Cap C.28 Laws of the Federation of Nigeria;

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 SOME DEFINITIONS
“Creator” means an individual or group of individuals who
create, conceive, reduce to practice, author, or otherwise make a
substantive intellectual contribution to the creation of Intellectual
Property and who meets the definition of “inventor” as generally
defined in Patents Acts Cap P.4 Laws of the Federation of Nigeria,
2004 and/or the definition of ‘author’ as generally defined in
Copyrights Acts Cap C.28 Laws of the Federation of Nigeria;

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 SOME DEFINITIONS
“Employee” is a person who has entered into an

employment relationship with the Research Institution or

Institution whether academic or professional, administrative
and support staff, paid or unpaid, full time or part time, full
appointment or joint appointment, affiliation appointment or
assistantships;

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 SOME DEFINITIONS
“Enabler” refers to an individual who does not meet

established legal standards of inventorship and thus may not

be named on a patent application, but who has assisted with
the validation of an invention, discovery or advancement of
patentable Intellectual Property;

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 SOME DEFINITIONS
“Gross IP Revenue” means income from
Commercialization of Intellectual Property that includes
option payments, upfront and milestone payments, royalties,
share of profits, dividends and from disposal of equity;

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 SOME DEFINITIONS
“Intellectual Property (IP)” includes creations of the mind, such as

inventions; literary and artistic works; designs; and symbols, names and
images, and traditional knowledge, traditional cultural expressions and
genetic resources used in commerce and as protected by laws such as the
Patent and Designs Act, Cap P2, Laws of the Federation of Nigeria,
2004, Copyright Act, Cap C28, Laws of the Federation of Nigeria,
2004 and Trade Marks Act, Cap T13, Laws of the Federation of
Nigeria, 2004.
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 SOME DEFINITIONS (cont'd)
“Intellectual Property Rights (IPRs)” These are proprietary rights that may be granted
for an invention, mark, design, plant variety, copyright or other type of IP, once the
statutory requirements for protection are met to result in a patent, trade mark, registered
design, plant breeders’ right, or copyright respectively.

“Invention” includes any discovery, or other development of a technical nature, whether

or not patentable;

“IP Expenses” means all expenses incurred by the Institution in the management and
Commercialization of IP for which Gross IP Revenue has been received.

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 SOME DEFINITIONS (cont'd)
“Net IP Revenue” means Gross IP Revenue less IP Expenses.

“Patent” means the intellectual property right described and protected in terms of the
Patent and Designs Act, Cap P2, Laws of the Federation of Nigeria, 2004.

“Patentable Invention” means Intellectual Property that involves an inventive step

and in terms of a patent Act, is deemed to be patentable and is regarded as novel (i.e., that has
not been Publicly Disclosed), inventive (not obvious to a person skilled in the technical
discipline) and useful (can be applied in trade or industry or agriculture) or improvements upon
a patented invention;

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 SOME DEFINITIONS (cont’d)
“Public Domain” connotes works that are not covered by
Intellectual property rights at all, either because the rights
have expired or been forfeited; and as such are held by the
public at large and are available for anybody to use freely and
without reference to the original creator or permission from
the creator/owner of the work by a third party.

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SOME DEFINITIONS (cont’d)
“Visitor” Any person who is neither a Staff Member nor a

Student of the Research Institution who engages in work at

the Research Institution, including visiting professors,
adjunct and conjoint professors, teachers, researchers,
scholars and volunteers; and who concludes an
Appointment agreement with the Research Institution.

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 SOME DEFINITIONS (cont’d)
 “Students” means a full-time or part-time, whether undergraduate, postgraduate students of

the Research Institution, and students in training as well as post-doctoral fellows

 “Research Institution” means all federal, state and private institutions licensed/ approved

by the National Universities Commission to operate as such.

 “Research Institution IP” means IP owned or co-owned by the Research Institution.

 “Research Institution Resources” includes, without limitation, Research Institution

facilities, office space, funds, or other administrative support, equipment, personnel,

tangible research materials, information that is not freely available to the public, contract or
other type of award or gift to the Research Institution.
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 SCOPE OF THE POLICY
SUBJECT MATTER
 This Policy shall apply to all intellectual property generated at the Research Institution

in particular by academic staff, non-teaching staff, students and visitors. The Policy
would cover: Patents and all types of inventions; Copyright and Related Rights;
Trademarks and Service Marks; Geographical Indications; Traditional Knowledge;
Trade Secret and Know how; Integrated Circuits or Layout Designs; Tangible Research
Property (TRP); Genetic Resources; Cultural Expressions and Socio-cultural
Innovations; and Utility Models. The Policy would also cover “insignia, marks and
symbols, including, but not limited to the official seal, logo and domain name of the
Research Institution.
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 SCOPE OF THE POLICY (cont'd)

Binding Effect of the Policy:

Once the policy is adopted by the Governing Council of the Research
Institution, it would be binding on the Research Institution, Academic Staff,
Non-Teaching Staff, Students, and Visitors.

Applicability:

Rights and obligations under this Policy shall survive any termination of
employment, enrolment, or appointment at the Research Institution..
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 SCOPE OF THE POLICY (cont'd)
Informed Consent:
This Policy shall be widely disseminated by the Research Institution to the
relevant sectors of its community, including on the Research Institution’s website
and the Research Institution’s handbook. The said reference shall be in sufficient
detail to enable the full text of the Policy to be easily accessed.

The Policy also shall be made available to staff at the point of employment by the
Research Institution. Adequate reference shall be made to it in the staff’s letter of
appointment to facilitate its dissemination.
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 RELATIONSHIP WITH EXISTING POLICIES
This policy should be read in conjunction with the following, (if established):

• Research & Development Policy

• Research Institution Information Technology (IT) Regulations

• Research Institution Acceptable Use Policy

• Academic Regulations Handbook

• Library Handbook

• Student Code of Conduct

• Staff Disciplinary Procedures

• Research Institution’s Procedure for Dealing with Allegations of Misconduct in Academic

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 GOVERNANCE AND OPERATION
Intellectual Property Committee:
The Research Institute shall establish an Intellectual Property Committee (IPC) to
oversee the implementation and evolution of the Policy and provide strategic
guidance to the Institute.
Composition:
The IPC shall consist of relevant Heads of Departments chaired by a member
(preferably a Director of Research and International Cooperation) appointed from
amongst the members of the IPC. The Chair shall be answerable to the Director
General of the Research Institution.
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 RESPONSIBILITIES
The IP Committee shall be the ultimate decision-making body in the determination of an
IP management and commercialization strategy of the Research Institution, including;
(a) The establishment of spin-off companies and the share in equity of the founders of
such companies;
(b) Entertain and decide on appeals over any disputes arising from this Policy;
(c) Decide on endorsements and branding, in accordance with the endorsement policy;
(d) Decide on appeals on the appropriate distribution of revenue received from
Commercialization activities; and
(e) Such other matters as the Research Institution may deem appropriate.
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 Intellectual Property & Technology Transfer Office
(IPTTO)
The Research Institution shall establish an Intellectual
Property & Technology Transfer Office (IPTTO) to assist the
Research Institution in managing and commercializing its IP
in a manner that best promotes its development and use for
economic and social benefit.

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 RESPONSIBILITIES OF IPTTO
The responsibilities of the IPTTO shall include, but are not limited to:
i. Outreach/awareness to creators and inventors
ii. Relationship management with creators and inventors
iii. IP management
iv. Technology marketing and IP contract negotiations
v. IP contract management
vi. IP cost and revenue distribution.
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 OWNERSHIP OF IP AND RIGHT OF USE
The Research Institution is presumed to own all IP created by Academic and Non-Teaching
Staff of the Research Institution:
a) In the course of employment, engagement or enrolment; and
b) Making substantial use of the Research Institution’s resources.
Publication and Non-disclosure for IP Invention
The IPTTO shall bring to the attention of inventors that hasty public disclosure of their IP may result
in loss of their IP protection rights. Consequently, Inventors shall be strongly encouraged to take
reasonable steps to identify any protectable IP as early as possible, and consult the IPTTO prior to
making Public Disclosure of any potential IP of the Research Institution, including publication of
research results. 30
 COMMERCIALIZATION CHANNELS
Modes of IP Commercialization may include:
i. License, either exclusive or non-exclusive, and variations thereof;
ii. Assignment in extraordinary circumstances;
iii. Formation of a Commercialization entity to which the IP is licensed or assigned
in terms of this Policy;
iv. Non-profit use or donation;
v. Joint ventures;
vi. Royalty free access on humanitarian or other grounds; or
vii. Various combinations of the above.
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 GUIDELINES
Regardless of the mode of IP commercialization, the transaction will be executed in a
contract which:
i. protects the interests of the Research Institution, its Staff, Students and Visitors;
ii. retains rights for the Research Institution to use the IP for educational and research
purposes;
iii. assures that the IP will be utilized in a manner which will serve the public good;
iv. assures that the IP will be developed and brought to the marketplace as useful goods
and services; and
v. Prohibits the “shelving” or “mothballing” of the IP or its use in any illegal or unethical
manner. 32
 INCENTIVES AND SHARING OF REVENUES
To promote the development of IP, transfer of knowledge, and
stimulate research that will positively impact the socio-economic
well-being of the society, the Research Institution will grant
incentives to researchers through financial and non financial means.
When any IP is commercialized, the Creators/Inventors of that
particular IP are to receive incentives from the commercialization
of such IP.
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 INCENTIVES AND SHARING OF REVENUES (cont'd)
The Net IP Revenue shall be distributed based on the following formula:
i. 50 % to IP Creator/Inventor in their personal capacity, subject to personal
income tax, which the Research Institution is expected to deduct and
transmit to the relevant tax authority before making the due payment to the
Creator/Inventor. Where more than one Creator/Inventor is involved, the
Creators/Inventors are to benefit from the 50% of the Net IP Revenue,
based on ratio of contribution, except where there is a written agreement
by the creators/Inventors stating otherwise.
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 INCENTIVES AND SHARING OF REVENUES (cont'd)
ii. 25% to the environment of the Creators/Inventors as follows:
(a)10% to the Research Institution Research Account of the Creators/Inventors for
use in their research work.
(b) 5% to the Department/Unit/institute/ Research Centre of the Creators/Inventors.
(c)10% to the Enabler of the Creators/Inventors, subject to personal income tax,
which the Research Institution is expected to deduct and transmit to the relevant
tax authority before making the due payment to the Enabler. Where more than
one Enabler is involved, the Enablers are to benefit from the allotted 10%, based
on useful contribution, except there is a written agreement to the contrary by all
the Enablers.
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 INCENTIVES AND SHARING OF REVENUES (cont'd)
iii. 15% to the Research Institution Research Account to support
research and innovation.
iv. 10% to the IPTTO

The Research Institution shall, however, be at liberty to vary the

percentage of the distribution of the Net Revenue provided based on
its peculiar circumstances and needs.
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 CONFLICTS OF INTEREST (COI) AND CONFLICTS OF COMMITMENT (COC)

An act will qualify as a Conflict of Interest and/or of Commitment when:

i. Staff or Visitors do not primarily commit their time and intellectual contributions to
the education, research, and academic programs of the Institution.
ii. Staff and Visitors alike, do not uphold their professional and work ethics high over
and above every personal or external interests that could significantly and
negatively affect their work ethics and research integrity.
• IPTTO shall be responsible for resolving the conflict and/or reaching a solution
satisfactory to all parties concerned.
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 GENERAL DISPUTE RESOLUTION
Violation:
Where the provisions of this Policy have been violated, recourse shall be
made to the procedures of resolution provided for by the Research
Institution, and in accordance with the relevant provisions of laws
provided by the Research Institution.

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 GENERAL DISPUTE RESOLUTION (Cont’d)
Interpretation

i. All disputes shall be resolved in accordance with the provisions of Nigerian

national laws.
ii. Where any internal disagreement or problems of interpretation regarding this
Policy arises, the matter should be referred to the IPTTO in the first instance for
consideration and mediation.
iii.If the IPTTO is unable to resolve the matter within 2 months, the said
disagreement or problem of interpretation shall be referred to the IPC whose
decision shall be final. 39
GENERAL DISPUTE RESOLUTION (Cont’d)

Appeal: Individuals covered by this policy

shall have the right to appeal the application of any
aspect of this policy to the IP Committee.

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 AMENDMENT/REVIEW
The Policy may be amended at any time by a decision of the IP

Committee.

The IP Policy shall be subject to review every 5 years or whenever the

need arises.

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THANK YOU
FOR
LISTENING!!!
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