Based on Clause 11 of Article (20) of the system of the Council of Higher Education and
Universities (Resolution No. 37-6-1443 AH).
List of contents
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Definitions
Note: At any time, the following terms appear in this policy, they will carry the exact meanings illustrated in the following points, unless the context requires otherwise.
Policy: The term refers to the university's intellectual property policy, whenever mentioned in the provisions below.
Ministry: Ministry of Education
University/ UNI: Imam Muhammed Ibn Saud Islamic University (IMSIU).
System: The Universities System issued by Royal Decree No. M/27 dated 2/3/1441 AH.
Faculty member: Affiliated Saudi and non-Saudi UNI's teaching staff members whether on permanent jobs or on fixed terms.
Employee: Any person holding a civil post at the UNI or performs the post duties regardless of the nature of his/her work or the title of his/her position, and whether he/she was hired by appointment or by permanent/temporary contracts.
Student: Any student enrolled in the university including: graduate students, and students enrolled in courses accredited by the university.
University members: a term that applies to all faculty members, employees and students.
Visiting Professor: Non-university members including: visiting professors, assistant professors, assistants, teachers, researchers and scholars working with the University under a research collaboration contract.
Partner: Any party that enters into partnership with the University.
Partnership: any arrangement in which the UNI agrees with other party or parties; to jointly conduct research, development or other innovative projects that are financially supported by them and are carried out jointly.
Beneficiary// Recipient of funds: A normal person receiving financial assistance from the university; to support conducting research or pursuing education, or for any other purpose in accordance with any agreement that does not set specific outputs.
Intellectual property: It refers to the creative-human-mind output which includes without limitation: inventions, authorship copyright, trademarks, publishing rights, graphics, designs, models, specifications, concepts, processes, technologies, databases, trade names, plant classifications, trade secrets, etc.
Invention: An idea reached out by an inventor and resulted in solving a particular technological problem.
Patent: A protection document that is granted, for a specified period, by governmental patent offices in the country where it is registered to the inventor.
Trademark: All that can be considered as a distinctive form such as: names, words, signatures, letters, symbols, numbers, titles, seals, drawings, pictures, inscriptions, packaging, graphic elements besides shapes, a color, a group of colors or a combination thereof, or any sign or a group of signs. Even a symbol of a certain sound or fragrance might be considered a trademark. Such mentioned examples can be used or intended to be utilized whether to distinguish the goods or services of a given facility from other goods or services of other facilities, or to indicate the performance of a service of services, or to monitor or inspect goods or services.
Industrial Models: They refer to whatever marks any industrial product or traditional craft products including textile designs where lines or colors put together to make two-dimensional colors or three-dimensional shape, provided that they are not for work or technical purposes.
Trade secrets: They refer to any information of the following properties:
If it is not usually known in its final form or in any of its exact components, and it is difficult to be obtained among those who usually deal with this type of information. If it is of real or potential commercial value given that it is confidential.
If the right holder has subjected it to reasonable measures that are appropriate to its nature and the surrounding circumstances; to preserve its confidentiality.
Protection document: It is the document issued by the concerned authority in the country on an issue of protection, namely a patent, a design certificate, a plant patent or an industrial model certificate.
Inventor: The person who came up with the invention either as an individual or in collaboration with others.
Compilation: It is the creative literary, scientific or artistic production, regardless of its type, importance, method of expression, or the purpose of its authorship.
The Author: is every creative person whose own efforts led to the production of literary, artistic or scientific works, such as, a writer, a poet, a painter, a musician or other artists named after the field in which their emotions, feelings and creativity are expressed.
Copyright: The set of moral and material interests that an author has presented on his/her work.
International application: An application for a patent that has been delivered (filed) under the terms of the PCT (i.e. Patent Cooperation Treaty).
Patent Cooperation Treaty:
It refers to the Patent Cooperation Treaty which is supervised by the World Intellectual Property Organization that is effective in the Kingdom of Saudi Arabia, as of August 3, 2013.
Previous Intellectual Property: It is the intellectual property rights which may be relevant to any agreement and resulted from:
A-Prior to the effective date of the Agreement in which the University is a party, and was owned or controlled by another party and/or any of its affiliates.
B- Resulting from independent activities by another party and/or its affiliates in which the University is a party, outside the scope of the agreements.
Funding: It refers to all financial and non-financial resources received by the university whether from the government or its own resources or through any external financier.
Funding Agreement: is any contract, grant, or cooperation agreement concluded between the university and another party; to finance specific project(s), to perform research or creative works in which their outputs are expected to generate intellectual property assets.
Commercial exploitation: It is the commercial use of exclusive rights granted under intellectual property systems.
The Office: it is the University's Intellectual Property Management Office and is established within the framework of this policy; to supervise all aspects of intellectual property proposed by the policy.
Deanship: It refers to the Innovation and Entrepreneurship Deanship which is responsible for all aspects of intellectual property proposed by this policy through the Intellectual Property Department / Office of the Innovation and Technology Transfer Agency at the Deanship, and which its opinion affects the approvement and disagreement of the Intellectual Property Management in this document.
Advisory Council: It refers to the established council by a decision of the university's rector; to exercise a number of duties, in accordance with the rules and procedures proposed by the Intellectual Property Department / Office, which are sanctioned by a decision of the UNI's rector.
Intellectual Property Management: It is a set of administrative procedures and steps that are carried out by the Intellectual Property Department/Office for managing and organizing intellectual property.
Physical Property Research: It is all physical or tangible outputs produced in the course of research or other projects whether supported or co-supported by the UNI, including, but not limited to: biological materials, engineering drawings, computer software, integrated circuit chips, computer databases, hardware models, and circuit and equipment diagrams.
Disclosure: It refers to the disclosure and transmission of intellectual property information to third parties, including but not limited to disclosing in written or oral form, communicating via e-mail, posting on social media websites, blogs, disclosing in a news report, press release, interview, magazine publication, summary, report, conference presentation, invention presentation or industrial application of the invention at a trade fair.
Non-Disclosure templates: They refer to the templates prepared by the UNI's Intellectual Property Department/Office of the Deanship of Innovation and Entrepreneurship; to be filled with written non-disclosure of intellectual property according to the manual or electronic templates determined by the Intellectual Property Department/Office.
Total Intellectual Property Revenue: All revenue received by the University in order to commercialize institutional intellectual property, prior to any cost recovery or deductions for intellectual property expenditures.
Intellectual Property Expenses: All expenses incurred by the university in administrating intellectual property for which the total intellectual property revenue was received.
Non-Exclusive License: A license that grants the licensee the right to use intellectual property rights as well as he/she can give the same rights to others upon specified conditions between the two parties.
Exclusive License: The rights granted to the licensee to exploit intellectual property rights, however, he/she is prevented from giving the same rights to others upon certain conditions between the two parties.
Returns: Payments received for the use of or the right to use intellectual rights including: copyrights, patents, designs, industrial secrets, trademarks and trade names, knowledge, trade secrets, works and fame. Additionally, payments received for information relating to industrial, commercial or scientific experience or for the granting of the right are also included.
The Department/Office of Intellectual Property, also referred to as the Unit: is a unit attached to the Agency of Technology Innovation and Transfer in the Department of Innovation and Entrepreneurship which deals with all intellectual property matters at the University in agreement with this policy, including the following:
A-Implementing and following-up the university's intellectual property policy beside carrying out the work mentioned therein.
B-Documenting intellectual property and setting its own records as obtained under the provisions of this policy.
2. Policy Principles, Domain and Objectives
1- Policy Principles :
-Relevant laws and regulations applicable in the Kingdom of Saudi Arabia must be taken into consideration by this policy makers.
- This policy shall not conflict with international treaties and agreements of which the Kingdom is a member.
- Effective and necessary measures to protect the university's intellectual property rights must be adopted.
- Innovations shall be supported, enabled and exploited.
- The planned university aims must be supported and achieved as well as its scientific, research and community status shall be raised.
- Intellectual property rights of other entities shall be considered and respected.
2. Policy Objectives:
-Forming a clear vision for the university and its partners about who owns the intellectual output of joint cooperation, not to mention the resulting economic and commercial rights and who controls them.
- Obtaining and transferring technology; to encourage the creation of new companies, and to bring economic opportunities based on knowledge.
- Developing general frameworks and rules to be followed by the university in setting its policy.
- Spreading awareness of national legislation and regulations related to the protection and enforcement of intellectual property rights. Promoting scientific research, technical.
development and motivating researchers towards the production of intellectual property, by providing a supportive environment.
-Protecting the university from intentional or spontaneous violations of the intellectual property of others, preventing legal problems as well as financial implications, and importantly saving the university's reputation.
3. The Domain of the Policy :
-The policy applies to all universities and research centers in the Kingdom of Saudi Arabia.
- The policy applies to all research and development activities that are funded by the universities' own resources, or financed by what is allocated from the state budget to the university, or financed by other parties, or financed by the university’s partners with the exception of joint projects that are in accordance with contractual agreements financed by the private sector and are conditioned by outputs for the benefit of the private sector.
- The policy covers, but not limited to, all areas of intellectual property: patents, copyright, related rights, trademarks, new plant varieties, layout designs of integrated circuits, undisclosed commercial information, and any other related intellectual property topics, such as management, exploitation, protection and so on.
-This policy applies to all cases of intellectual property produced in the facilities owned by the university, such as: laboratories, research centers, etc., or even managed by the university, or those working in other places under the UNI's management, supervision or financial support, or even those working in any place in partnership with the UNI.
- After being approved by the University Council, the provisions of this policy shall apply to all parties governed by the policy, such as: the faculty members and other academic staff, students, employees, visiting professors, consultants, contractors and any related party determined by the university.
Intellectual Property Policy
The university, basically, seeks to leverage its research outputs and direct them in a way that enhances the value of its economically valuable intellectual assets. The stated effort can be detailed as follows:
-The university seeks effectively to protect the intellectual property of inventions and innovations made by faculty, employee and students and any associated member and by any means obtained; in order to ensure that they are used in furtherance of their objectives.
-The university provides the essential resources to implement this policy in accordance with the best approved practices for the sake of protecting and managing intellectual property.
- The university seeks to contribute to emphasizing the Kingdom's position in intellectual property through the rights it owns, develops or obtains.
-The University takes into account the intellectual property rights of other entities in all its activities.
- Whenever the University waives its rights to an invention, literary work or other intellectual property, or licensed any such invention or intellectual property as specified in this policy, the assignee or licensee may be the inventor or owner of the compilation itself.
- Consistency and conformity with the provisions of the international intellectual property treaties, conventions and regulations in which the Kingdom of Saudi Arabia is a party not to mention the domestic regulations issued by a royal decree relating to intellectual property, which are as follows:
The law of patents and layout designs for integrated circuits plant varieties and industrial models issued by Royal Decree No. (M/27) dated 29/5/1425 corresponding to July 17, 2004 AD, as amended by Cabinet Resolution No. 536 dated 10/29/1439 AH and its executive regulations.
The Patent law of the Gulf Cooperation Council Countries approved by Royal Decree No. M/28 dated 01/01/1422 AH corresponding to 03/26/2001 AD, and its executive regulations
It is worth mentioning that this law is considered a regional law, covering geographically all the countries of the Gulf Cooperation Council, including the Kingdom of Saudi Arabia.
Copyright Protection Law issued by Royal Decree No. (M/41) dated Rajab 2, 1424 AH corresponding to August 30, 2003 AD, and amended by Cabinet Resolution No. 536 dated 10/29/1439 AH and its executive regulations.
The Trademarks Law of the countries of the Gulf Cooperation Council, approved by Royal Decree No. (M/51) dated 26/07/1435 AH corresponding to May 25, 2014 AD, and its executive regulations.
Optional Registration of Copyright Works.
The Regulation for the Protection of Confidential Trade Information issued by Resolution No. 3218 of the Minister of Commerce and Industry on 02/25/1426 AH corresponding to May 4, 2005, and amended by Resolution No. 4319 on 01/05/1426 AH corresponding to June 8, 2005 AD.
The Management of Intellectual Property
A) The Intellectual Property Department / Office of the Agency for Technology Innovation and Transfer in the Deanship of Innovation and Entrepreneurship at the university.
The University establishes the Intellectual Property Department/Office of the Agency for Technology Innovation and Transfer, Deanship of Innovation and Entrepreneurship at the University, which shall undertake all intellectual property related functions, in conformity with this policy, as follows:
- Implementing and following-up the university's intellectual property policy.
- Documenting intellectual property which has been approved according to the terms of this policy.
- Investigating the old employed intellectual property technology that is being developed.
-Seeking to protect and register intellectual property rights while following up on financial actions and commitments.
- Setting and adopting intellectual property orientations with respect to relevant party agreements, whether internal or external, including but not limited to non-disclosure agreements, contracts of employment, research agreements, cooperation and partnership agreements, and data exchange agreements.
-Marketing the intellectual property assets of the university in cooperation with the relevant authorities in the University’s Agency for Business Development and Investment.
- Ensuring that the entity fulfils the duties related to intellectual property contained in the agreements where it enters as a party.
- Maintaining complete records of the registered and disclosed intellectual property.
- Ensuring that all relevant employee of the Unit get the necessary training in areas related to intellectual property protection and management.
- Offering awareness-raising programs of the importance of intellectual property rights for university employees.
- Establishing and managing an intellectual property recognition and incentive programme.
- Preparing a detailed report of the activities and work carried out during the year in the form of an annual report to be submitted to the Advisory Board; to monitor the progress of the activities and functions of the department/office as well as to overcome any obstacles that may be encountered, and finally to present proposals for the ongoing development of current and future management projects, initiatives and activities.
- Any other tasks that would ensure the university’s interests in relation to intellectual property.
B- The Advisory Council
The advisory council of the university's intellectual property is created by the university's rector. All its competencies and powers are formed in agreement with the policy of intellectual property; to guarantee providing the desired benefits within the university. The members of the council are:
One of the university's vice-rectors as a president
The Dean of innovation and entrepreneurship
The Director of Financial Department
The Director of Legal Affairs
The Dean of Scientific Research
The Director of Intellectual Property Office/Administration
A Faculty teaching member
A Faculty teaching member
A Researcher
The members of the Advisory Council are appointed by a decision from the UNI's rector, and their term of office is one year that is subject to renewal.
The advisory council completes its duties based on rules, procedures and decisions proposed by the Office and issued by a decision of the UNI's rector.
Functions of the Advisory Council:
In addition to the powers and duties assigned to the Advisory Council in this policy, the Council shall carry out the following tasks:
-Presenting regulations and proposals to the university's rector on issues related to inventions and intellectual property.
- Studying complaints and grievances related to this policy and its topics, thus, presenting opinions or recommendations about them.
- Examining beside presenting feedbacks on the annual report on intellectual property submitted by the Deanship of Innovation and Entrepreneurship and as well as other relevant reports.
- Examining and offering opinions on any recommendations for policy modification regarding its rules, procedures and plans.
- Reviewing the acquisition feasibility of new strategic technologies that are copyrighted as intellectual property for a third party: purchasing, licensing or recommending its use.
- Recommending the distribution of revenues of any intellectual property whether being transferred or licensed to non-inventors, as per this policy.
- Recommending the disbursement of incentives to innovators and scientific achievements holders among university employees, according to the regulations proposed by the Intellectual Property Unit/Office/Department of Innovation and Entrepreneurship and in accordance to the other related rules.
-Performing any other tasks delegated by the UNI's rector regarding intellectual property.
Patent Policies
First, Non-Disclosure
Since the early public disclosure of ideas and inventions may lead to loss of subsidiary intellectual property rights, the faculty members, employees and all those governed by this policy shall not disclose the ideas and inventions they reach before notifying the Intellectual Property Department/Office of the Deanship of Innovation and entrepreneurship not to mention the necessity of obtaining a written permission form the Department/Office.
In other words, all possible efforts must be made not to disclose, except for legal justifications prescribed by this Policy. However, for any public disclosure, researchers and inventors must take prior permission from the department/office of intellectual property, at the UNI, ahead of publicly disclosing any potential intellectual property outside the university either at scientific conferences, international forums or public exhibitions.
Accordingly, the non-disclosure of inventions is carried out by the Intellectual Property Department / Office as follows:
A) Non-Disclosure Procedures:
-The Intellectual Property Department/Office offers the necessary electronic or paper templates for non-disclosure and explains them clearly to the concerned party; to ensure filling them out clearly and easily.
- University staff are obligated to present a clear straightforward understandable disclosure statements, within the period specified by the Deanship of Innovation and Entrepreneurship, of the inventions resulting from this policy to the Deanship, or whoever holds their position.
- The Intellectual Property Department/Office of the Deanship of Innovation and Entrepreneurship shall preserve and document all disclosed information and classify it according to its field. Importantly, the confidentiality of the information must be protected.
B) Evaluating disclosed invention:
- The Intellectual Property Department/Office is committed to evaluating the disclosed invention within a period determined by the Deanship according to a recognized and professional manner in the field.
-The Intellectual Property Department/Office of the Deanship of Innovation and Entrepreneurship may seek the assistance of technical experts; to evaluate the invention. They even can contract with competent authorities, taking into account all means to ensure the confidentiality of the invention.
-The Intellectual Property Department/Office is obligated to notify the discloser of the evaluation result and the followed procedure taken as a result.
-If both parties agree on the result of the evaluation; The Intellectual Property Department / Office shall complete the necessary procedures in accordance with this policy.
-If the concerned parties disagree; The evaluation result beside the views of both parties will be referred to the advisory council for consideration.
Secondly: STRATEGIES FOR DEPOSITING AND REGESTERING INVENTIONS
First: Registering protection requests
The university seeks to protect its intellectual rights to registrable inventions whenever they are qualified, and it is believed that the basic conditions are met for obtaining a patent as follows:
-The Intellectual Property Department/Office of the Deanship of Innovation and Entrepreneurship undertakes a preliminary evaluation of the invention, and to what extent it is patentable especially in terms of novelty, clarity and industrial applicability.
-In case of lacking specialized staff to perform the initial evaluation of the invention and to prepare technical reports relating to its filing and registration; the university would seek assistance from third parties. Additionally, the university will work on training and qualifying the university’s staff for such tasks, and allocate rewards for them.
-The university sets a specific strategy for the scope of geographical registration according to the economic value of the invention, the places of its exploitation and considering the positive effects expected from its registration.
- The Intellectual Property Unit seeks to benefit from the international registration of the request through the PCT system, which is supervised by the World Intellectual Property Organization (WIPO), provided that such request cannot be upgraded to the national level until the international examination report is obtained, and the strategy specified in clause (b) above is clarified.
The university seeks to register patents first in the Kingdom of Saudi Arabia; to take advantage of the right of priority.
-The university also seeks to register the intellectual property, in collaborative work, in the countries that would guarantee an economic interest. As a result, the appropriate patent attorney or attorney in the country will be appointed by the university; to follow up on all fees and charges prescribed in this regard.
The university pays the registration fees for its patent applications; however, if the invention is joint; the financial expenses shall be incurred jointly with the other party, according to the percentage of ownership established between the two parties in the contract, or according to what has been agreed. Another case is if another party is the owner of the right to apply for the patent; He/she pays the prescribed fees, thus, the university does not bear any expenses in this regard, except for what subsumes under the funding programs offered by the university; the conditions of the funding programs will apply.
Second: Authorized entities to register patents and grant protection documents
As part of the university’s endeavor to protect its inventions, and in accordance with the filing strategy prepared by the Intellectual Property Department/Office of the Deanship of Innovation and Entrepreneurship that is approved by the Advisory Council, the university deals with the following entities as official registration offices for patent applications:
-For protecting the invention within the geographical scope of the Kingdom of Saudi Arabia, the university will resort to the Saudi Authority for Intellectual Property which is the official government authority authorized to receive and register all applications for protection of intellectual property that are registrable, and stipulated in the national systems related to intellectual property.
-International government patent offices, when inventions within the geographical zone of those countries need to be protected.
-Through the PCT international filing system, the Saudi Authority for Intellectual Property is an authorized body that receives international filing applications through the PCT system.
Third: The procedures that must be followed to submit a patent application to any intellectual property registration office:
A- The inventor/s, the compiler - the creator - the author shall apply for registration of patents and intellectual property according to the approved form on the university’s website, and the application would include:
-Invention or software disclosure form.
A clear description of invention, including illustrations.
Signing the declaration-
B- Every patent application must be given a serial number according to the date of its receipt, and the applicant is given a receipt.
C- An investigation would be carried out on previous inventions and technology, to ensure that the research is not repeated.
C- Both technical and marketing issues would be studied by specialists in collaboration with the inventor or innovator.
D- The results of the study would be submitted to the Agency for Innovation and Technology Transfer at the Deanship of Innovation and Entrepreneurship, and upon that the decision would be concluded.
H- If the application is accepted, the estimated budget required to complete the registration procedures will be determined by the university through the advisory council and after of course the approval of His Excellency the Rector.
G- If the application is disapproved, the applicant shall be informed and the reasons for the decision shall be explained.
D- The applicant may file a complaint against the disapproved decision by referring to the Advisory Council, within a period of 60 (sixty days) from the date upon which the decision is notified.
Patent Ownership Policies
First, Inventions Made at IMSIU
Whatever inventions and innovations thought of by IMSIU staff, be they faculty, employees, collaborators, visiting professors or students, shall be owned by IMSIU. However, the UNI staff inventor will receive adequate compensation determined by IMSIU in agreement with this policy and what is stated in clause (b) of Article 6 of the patent system, layout designs for integrated circuits, plant classifications, and industrial models
This is valid in the following cases:
A) The invention is the result of commissioning one or more of the UNI staff under the complete guidance, supervision and management of the UNI.
B) The invention is the result of utilizing the UNI's resources and potentials to develop the work that is the core of the invention.
C) The invention is the result of an individual or group of IMSIU staff; during the official working hours or the period of study, and in the exact professional specialization to which they belong.
D) If the invention is the result of a research grant or of a contract or an agreement with the UNI, the rights would be transferred to the UNI; this is considered a general condition of the UNI in the grants and agreements signed with the it, and is not required to be mentioned in every grant, contract or agreement.
F) If the university has no interest in the invention, the rights of property might be waived on the basis of a recommendation by the Deanship of Innovation and Entrepreneurship, and approved by both the Advisory Council and the UNI's rector.
Secondly, Inventions made through partnership
agreements when the UNI enters into a joint project, such inventions are dealt with as follows:
Both The university and the partner shall first determine the percentage or scope of the previous intellectual property related to the joint venture before entering into any other partnership, and the previous intellectual property shall not be affected by the partnership contract. The university may license/obtain a license from the partner if it is necessary to carry out the project, both the university and partner can agree on the quality and terms of the license. The ownership of the inventions reached during the partnership shall be according to the following details:
-If the invention or the work was accomplished entirely by the UNI's staff members, it is considered a UNI's property, and is treated as if it were done by the UNI as an individual entity especially if the partner's resources for the project were not employed.
-If the invention or the work was accomplished entirely by an affiliate of the partner, it is considered the property of the partner, and is treated as if it were done by the partner as an individual entity especially if the UNI's resources for the project were not utilized.
The University seeks to enter into a joint ownership agreement with a partner for the above-mentioned inventions, and attempts to obtain exclusive licensing rights under the terms of the partnership agreement while setting out the obligations and shares of each party; based on both parties' material and technical contribution to the project.
The invention or the work that is jointly carried out by IMSIU staff and one of the partner’s affiliates is the joint property of both the university and the partner, and the invention would be handled in accordance with the provisions of the partnership agreement between the concerned parties.
Thirdly, The invention of a staff member while on an official mission in a host enterprise:
The obligations and rights of the inventor, who works in IMSIU as a staff member and is delegated to an official mission in a host enterprise, shall be the same as if such inventions were made at IMSIU, however, the provisions of any agreement between the UNI and the owners of the host enterprise shall be considered.
Fourthly, the contractor's invention:
Contractors of the UNI shall follow the same provisions for the UNI's staff, yet, taking into account any special term in these regulations.
Fifthly, The invention of the visiting professor and the resident student:
The visiting professor and the resident student are obliged to disclose to the university any prior obligations they may have towards third parties regarding ownership and disclosure, then, such obligations must be referred to in their residency agreement.
Subject to any special term stated in these regulations, the same provisions for UNI's staff shall apply to visiting professors and resident students.
Sixth, The invention of the beneficiary:
The agreement concluded by the University with the beneficiary governs the rights and duties of the concerned parties in such a way that it does not conflict with this policy and the relevant regulations.
. If the University's agreement with the beneficiary provides for the assignment of ownership of the invention to the beneficiary, the same agreement must grant an exclusive right free of charge for a reasonable period of time; to obtain a license for the invention on reasonable terms within the scope of use and in areas of interest to the University, and this applies to other types of intellectual property.
Seventh, National security-related Inventions
The national security-related inventions of the University are governed by the patent regime, the schematic designs of integrated circuits, plant varieties and industrial models promulgated by Royal Decree No. M /27 of 29/05/1425 A.H. as amended by Decision of the Council of Ministers No. 536 of 19/10/1439 A.H.
Inventors' Obligations and Rights
Firstly, The Obligations of the UNI's Inventors:
-Identifying and disclosing to UNI inventions made by them in the course of undertaking university-funded research grants, resulting from research projects with students or inventions produced using the resources of the UNI and its laboratories.
-Assigning all property rights to such inventions to the University.
-Cooperating with the intellectual property department/office of the UNI's Deanship of Innovation and Entrepreneurship providing it with all required information beside adhering to the procedures and conditions set by it in accordance with this policy.
-Adopting all necessary steps to avoid disclosing information about such inventions to third parties in any way that would compromise the ability of the UNI to obtain patent protection, and offering full cooperation alongside the UNI in its subsequent efforts to protect such inventions.
Secondly, The rights of the UNI's staff inventors:
The UNI's staff have the following rights in regard to their inventions:
-If the invention of the employee is being disclosed to the public, he/she must be well-recognized as an inventor and his/her role must be admitted.
-The employee has the right to receive a special reward estimated by the advisory council in accordance with the domain of the inventor's work and its economic value.
-Whenever the UNI waives the invention or licenses it to others for financial compensation, the inventor has the right to receive a share of the payment, and the advisory council may determine such shares as it deems appropriate.
-The income due to the inventor under this article shall be paid annually, commencing no later than six months after the end of the first full calendar year and after receipt of the income by UNI.
-When the compensation to be received by UNI for waiving the invention or the license of any inventor is a share in a property ownership of an enterprise, the compensation due to the employee shall reflect the fair proportion of the financial value of the UNI's share in the enterprise, as determined by UNI in accordance with this policy and by a decision of the UNI's Rector and lastly upon the recommendation of the Advisory Council. Such limitation and payment shall be made within one year of receipt of the ownership interest by the UNI, and within such period if the enterprise is found to be unsuccessful or with a higher or lower value; the UNI may take such additional information into account.
-If there are several university members who have contributed to a particular invention; their rights under this article are fairly divided among themselves with quotas to be determined by a decision of the Rector and upon recommendation of the advisory council taking into account the size of each employee's contribution to the invention at the time of the allocation of the entitlements.
-The employee's rights given in this article shall continue regardless of subsequent changes in the employment status of UNI's employees, even after their death.
Policies for the management of copyright of literary works
Firstly, General policies dealing with the copyright of literary works
No copyright registration is required in any member country of the Berne Convention for the Protection of Literary and Artistic Works, and the date of publication or saving on multimedia device for the author is the date of commencement of protection for literary works, including the Kingdom of Saudi Arabia.
Literary works written by UNI's staff and prepared to serve UNI's academic purposes are considered UNI's property.
IMSIU recognizes the rights of its members who work on any literary work even the
moral rights are inherent right of those authors.
The University recognizes and endorses the rights of its faculty, staff, students and visitors to publish their academic work. However, any academic work that may reveal any intellectual property with potential economic implications must be first approved by the Department/Office of Intellectual Property (DIP) of the Deanship of Innovation and Entrepreneurship.
The University is entitled to use literary works for the purposes of UNI's research and education in accordance with the exceptions and the fair use rules that are recognized in the copyright regulations without affecting the copyright.
The Saudi author's rights protection system provides the following exceptions:
(A) Copying the work for personal use other than computer software, audio and audiovisual works.
(B) Citing from a work in another; the citation should be in line with the norm, and to the extent justified by the desired goal, and importantly on condition that both the source and the author's name are stated whenever the work is quoted. This also applies to press briefs quoted from newspapers and periodicals.
(c)Employing the work for educational purposes as to illustrate to the extent of serving the intended purpose, or to make one or two copies for public libraries or non-commercial documentation centers, subject to conditions:
Not for profit or commercial purposes.-
-Copying shall be limited to serve the activities' needs.
-Not affecting the financial benefit of the work.
-The work and its versions are sold out, lost or corrupted.
(D)When citing or copying articles published in newspapers and periodicals on current topics or similar mass media materials, the source must be clearly stated beside the author's name, if known.
(E) When copying any audio or video mass media material for use in current events, in images or videos, this must be within the scope and purpose of the event and the source must be clearly cited. .
(F) When Copying from the media; such as speeches, lectures, judicial proceedings or other similar public speeches ,the author's name must be stated clearly. The author may reserve the right to publish these works in the way he/she finds appropriate.
(G) For producing temporary recordings via broadcasting organizations utilizing their own means without affecting copyrights in one or more copies of any protected work that is licensed, all copies shall be destroyed within a period not exceeding one year from the date of their preparation, or a longer period approved by the author, and a copy of this recording may be kept in official archives; If it is a unique documentary.
(H) Playing, acting, performing or displaying any work after it has been published by state teams or agencies serving public morals or school theatre, as long as neither the beat nor the performance produce any direct or indirect financial outcome.
(I) Using short quotes from previously published works, drawings, images, designs or maps in curriculum textbooks or in historical, literary and artistic books, to the extent necessary not to mention the importance of citing the work and the author.
J- Taking new photos of any subject or work, that has been previously photographed, and publishing those pictures, even if the new pictures were taken from the same place, and under the same circumstances in which the pictures were taken.
(K) When excerpts of articles and scholarly works are used by research institutions for their own internal purposes or to meet the requirements of the study and research investigator, the source must be cited.
(L) Copying one backup copy of the computer software to those who own an original one; as a way to protect it. However, the original shall be stored by the user for display, if required.
Secondly, Economic rights of literary works
Pursuant to the provisions of each of the Kingdom's regulations, international conventions in which the Kingdom of Saudi Arabia enters as a party, or conventions in which the University enters as a party, all rights of economic works, including electronic ones, done by the UNI's employees, consultants or contractors in the course of their work for the UNI even those prepared by UNI's visitors or resident students, are owned by the University.
The university may, through the advisory council beside the approval of the UNI's rector, waive its rights or license the use of or exploit the works that are created by its employees within an agreement in which the UNI and the assignee or licensee are parties. The agreement shall regulate the rights and duties of the concerned parties in conformity with this policy and related regulations.
Agreements to waive the rights of the university of its creative works, license their use or exploit them are subject to review by the advisory council prior to their adoption.
Thirdly, Works created within partnership:
Whenever the university enters into a partnership for the purpose of creating a work, the resulted works are dealt with according to the followig :
-The work created entirely by the UNI's staff belongs to IMSIU completely, and is treated as if it was done by the UNI as an individual entity especially if the partner's resources provided for the project have not been utilized.
-The work that is created entirely by an affiliate of the Partner is owned by the partner, and it is treated as if it was done by the partner as an individual entity, only if he/she did not use the UNI's resources provided for the project.
The university seeks to enter into a joint ownership agreement with the concerned partner for the above-mentioned works or to obtain exclusive licensing rights under the terms of the partnership agreement; in order to determine the obligations and share of each party based on both parties' material and technical contribution to the project.
The work that is jointly created by a UNI's employee and one of the partner’s affiliates, is jointly owned by both the UNI and the concerned partner. The work is managed according to the provisions of the partnership agreement between the parties.
The university's share of the net cumulative licensing income of the joint work is distributed on the grounds that it is done by the UNI as an individual entity.
Literary Works Publication Policy
The University recognizes and certifies the rights of its affiliates to publish their scientific work on condition that any scientific work that may disclose any intellectual property with potential economic consequences is first authorized by the Intellectual Property Unit after ensuring that all statutory actions have been taken to protect intellectual property rights and that there are no potential economic risks from publication.
In light of the above, UNI adopts the following policies with respect to copyright:
1-The University attempts to provide the vast majority of the UNI's research output related to literary works directly to the general public by publishing them in journals or electronic platforms; as a way to encourage researchers to publish. However, if the published works do not contain any information of economic value, their economic rights might be lost, if published without protection.
2-If there is a possibility that the publication may disclose confidential information or cause loss of a research intellectual property, the Intellectual Property Unit shall consider disclosure forms and not authorize their publication before protecting their intellectual property, for instance through:
Raising awareness among the UNI's officials and whoever hold their positions of the urgent need to apply for a patent before scientific publishing which may include patentable ideas.
Presenting Recommendation to the Advisory Council of the Department/Office of Intellectual Property to request delays in publication; in order to absorb ideas that are patentable or carry economic value, for instance confidential information, as deemed by the Deanship.
3-The University aims to disseminate systemically accessible information to interested audience; in order to promote knowledge-sharing.
4- The author's scientific research must be authentic. Also, it must be his/her own work and corresponds to the copyright protection system.
5- UNI's staff are required to disclose articles and papers they wish to publish according to models or mechanisms developed by the Department/Office of Intellectual Property.
6- The University has the right to specify the platform, medium or journal in which the research would be published. This right is granted by first an approval from the Rector and the Advisory Council.
7-If the Intellectual Property Management Unit/Office does not approve the publication, the research owner shall be notified, and he/she may file a complaint with the Advisory Board.
8- The Unit/Office of Intellectual Property Management is responsible for reviewing the articles and research that UNI's staff wish to publish, and ensuring that there is no obstacle to their publication that might threaten the UNI's interests in accordance with this policy.
9- With the approval of the Intellectual Property Management Unit/Office, researchers may publish their results in reviewed scientific journals and periodicals, however, the rights of the funding authority to publish the final report or its ownership of any rights resulting from the research shall not be affected, such as patents and others.
When publishing any papers, UNI's staff are bound by this policy to point out who has funded the research or facilitated the publication of the research.
All of the literary rights of authors and researchers alongside the moral rights achieved by publishing such works are well-recognized by the university.
The university reserves the right to print and publish any scientific product or any translated or edited work for a period of five years, starting from the date of its first publication.
Publications of the university carry the UNI's own logo, title, the publishing date, copyright and lastly the name of the publisher.
Trade Secrets Policies
Upon the approval of the UNI's Rector as well as the Advisory Council, UNI may determine certain confidential information as the UNI's trade secret. In this case, the depositor is obliged to keep commercial information confidential and to follow the directives issued by the Deanship of Intellectual Property and the Deanship of Innovation and Entrepreneurship for dealing with trade secrets. Trade secrets are protected without the need to register them in accordance with the Regulation on the Protection of Confidential Trade Information issued by Ministerial Decision No. 3818 of 253/03/1426H. In other words, they are protected without any formalities. In fact, a trade secret can be protected indefinitely if it is kept confidential.
In the light of the regulations of the Kingdom of Saudi Arabia beside the international conventions in which the Kingdom enters as a party or conventions in which the University enter as a party,
the UNI may accept and license trade secrets while setting the necessary rules and procedures to protect what these rules define as trade secrets as well as setting the necessary rules and procedures for strict compliance with the UNI's obligations toward any trade secrets of third parties disclosed to UNI during its activities.
The University may, according to its own discretion, invest its trade secrets under an agreement entered into by the UNI with the Licensor. Such an agreement will govern the rights and duties of the concerned parties in such a manner that is not inconsistent with this policy and related regulations.
The UNI's investment agreements of trade secrets are subject to review by the Advisory Council beside the UNI's business development agency prior to adoption.
There are certain conditions considered for information to be labeled as a trade secret, and these conditions may vary from country to country depending on the country's law, thus, some general criteria were determined and referred to in Article 39 of the TRIPS Agreement, in which Saudi Arabia enters as a party, as follows:
-Information must be confidential (i.e., not publicly known).
-The information must be of commercial value; to be considered a trade secret.
-Effective procedures to keep the information confidential must be applied by its rightful owner (e.g., through confidentiality agreements).
The World Intellectual Property Organization (WIPO) has developed eight possible steps for the preservation and maintenance of trade secrets which can be stated in the following:
1- creating agreements, policies, procedures and records to establish and document protection;
2- establishing physical and electronic security and confidentiality measures;
3- assessing risks to identify and prioritize trade secret vulnerabilities;
4- establishing due diligence and ongoing third-party management procedures;
5- instituting an information protection team;.
6- training and capacity building with employees and third parties;
7- monitoring and measuring corporate efforts;
8- taking corrective actions and continually improving policies and procedures
Data and Databases Policy
All scientific and technical data and databases which have been developed using the UNI's financial resources or other are considered the UNI's property, unless otherwise specified in an agreement, and are managed as if they were patentable inventions.
The University may sell, license or exploit its data or databases, however, in consideration of any financial rights of others in such data or databases, the amounts of money generated from the sale or license shall be transferred to the UNI and shall be considered as part of its revenues.
University shall set rules and procedures, adopting modern technical means; for the purposes of managing, documenting, preserving and timely retrieving information received or originated at UNI. Additionally, this mechanism will help in the decision making and the preservation of the chronological sequence of any procedure which in turn will be beneficial for library search, database, study, research, publication or investment purposes.
Exploitation of Intellectual Property and Distribution of Financial Revenues Policy
Pursuant to the duties of the Intellectual Property Management Unit/Office of the Deanship of Innovation and Entrepreneurship and in collaboration with the UNI's Business Investment and Development Agency (BIDA), regarding the investment and marketing the UNI's intellectual property products and assets, the UNI seeks to enhance the utilization of its intellectual assets portfolio, or what is made at its disposal in agreements with another party.
In carrying out marketing and investment, IMSIU is mindful of protecting its interests, employees, students and visitors alongside preserving the UNI's rights to resort to intellectual property for educational and research purposes.
This is done by considering the following:
The priority in marketing is given to the application of the products resulting from inventions and intellectual property in Saudi Arabia
subject to any financial rights of inventors, other authors and owners of intellectual property rights. The sums collected from marketing shall be transferred to UNI and shall be considered as part of its revenues.
Utilizing intellectual property for the common interest.
Ensuring that intellectual property assets will be developed and delivered to the market as useful goods and services.
IMSIU is keen to guarantee that intellectual property assets are not being neglected or disregarded, or being used in any irregular or unethical way.
The university aims to commercialize intellectual property in a way that promotes local economic development and encourages creativity and innovation by both staff and students.
Pointing to the UNI's efforts to enhance benefitting from its intellectual assets, the UNI:
-seeks to use its intellectual assets, either owned by itself as an individual entity or in partnership with another party, in accordance with the common practice of leasing and marketing intellectual property products.
- The intellectual property may be exploited by the university itself or by a company specializing in this field.
- The Intellectual Property Management Unit/Office of the Deanship of Innovation and Entrepreneurship, in collaboration with the UNI's Vice-Rectorate for Investment and Development, follows up work related to the utilization and marketing of intellectual property on behalf of UNI. This also includes making agreements and licensing intellectual assets.
The University may market intellectual property, as it deems appropriate, according to the following methods:
For the exploitation of intellectual property, the UNI may license another party, exclusive or non-exclusive, according to the terms agreed upon by the parties.
Establishment of companies for intellectual property marketing. For the purpose of marketing intellectual property, the university seeks, subject to its laws, to establish a company for the above stated purpose in which the inventor and the university may own shares in the company with any third party (the investor) at negotiated proportions.
Financial returns:
By this policy, the UNI attempts to encourage inventors, authors and other interested parties to participate in the innovation by sharing the financial returns received from intellectual property marketing, as stated in the policy.
Revenue calculation for distribution:
The total intellectual property revenue, intellectual property expenditure and net intellectual property returns shall be calculated in accordance with the following rules:
A-Calculating total revenue of intellectual property:
Total intellectual property revenue is defined as: "all revenues received by an enterprise for the marketing of institutional intellectual property prior to any cost recovery or deductions of intellectual property expenses" including but is not limited to: direct sale of intellectual property, received license fees, received valuation fees, advance payments, received royalty payments, received share of profits, received profits and direct sale of products or services.
B-Intellectual property expenses:
Intellectual property expenses are defined as "all expenses paid by an organization in the administration of intellectual property for which the total intellectual property revenue has been received". This includes, but not limited to: expenses paid to others to secure the protection, preservation and implementation of intellectual property, such as: the expenses of patents and litigation, licensing/waiving of intellectual property, including marketing costs, contract negotiation and drafting costs.
C- Calculating the net revenue of intellectual property:
The university must maintain accurate and transparent documentation of the intellectual property expenditures incurred for a particular intellectual property, and is entitled to cover all intellectual property expenditures incurred as described above. In this case, the “net intellectual property revenue” is calculated as the total intellectual property revenue less the intellectual property expenses.
D- The Co-intellectual property:
When intellectual property is shared between the university and another party, the total intellectual property revenue received by the UNI is shared among the parties according to a pre-agreed contractual formula in which the total intellectual property revenue received by the UNI and the net intellectual property revenue are determined.
Revenues are divided according to the Second Clause in Chapter Five of this policy, taking into account the provisions below:
Rights of individual inventors and authors shall be calculated from the net financial returns received by the University resulting from the exploitation of the rights of the intellectual property in question which were individually created in accordance with this policy.
Any spare net revenue shall be distributed to the university and utilized at the discretion of the Intellectual Property Management Unit/Office of the Deanship of Innovation and Entrepreneurship and the approval of the Advisory Council.
With more than one inventor or author, the proceeds allocated for payment to the inventors or authors are divided equally among them, unless the participants unanimously agree otherwise in writing as per this policy.
If the beneficiary passed away, such payments shall continue to his/her successors in profits, real estate or his/her heirs as per the regulations of the Kingdom of Saudi Arabia.
External purchase or licensing of intellectual property
Upon an agreement between IMSIU with the rights-holder, the UNI may purchase, license or exploit property rights in an invention or other intellectual property. The rights and duties of the interested parties would be governed by the agreement and shall be consistent with this policy and relevant regulations.
Agreements to purchase, license or exploit property rights in an invention or other intellectual property must be reviewed by the advisory council prior to adoption.
Incentives program:
IMSIU seeks to stimulate innovation and invention by allocating incentives for inventors and innovators; to encourage the creation of intellectual property through offering financial rewards upon not only the recommendation of the Advisory Council but also the approval of His Excellency the Rector and of course in accordance with the terms and conditions recommended by the Intellectual Property Management Unit/Office of the Advisory Council and adopted by the UNI Council. The rewards obtained by UNI's staff can be summed up as follows:
Disclosure bonus: The discloser receives a bonus determined by the advisory council for submitting a disclosure form for a patent-eligible invention.
• Patent Excellence Reward: Inventors with the highest number of patents registered under the name of the university receive rewards.
• Publication Reward: The author of a disclosed literary work receives a reward for publishing the work.
• Patent Application Reward: The inventor receives a reward for any patent application made by the university. However, the reward is for the first application submitted for the same invention.
• Patent reward: After a patent application is made and the patent is granted, the inventor receives a reward for the first patent received for the same invention. However, the process may take several years for the patent department to ensure that the eligibility conditions for the patent are met.
Conflict resolution:
Violating the provisions of this policy would be dealt with according to the legal procedures of the University as well as the relevant effective provisions of the regulations.
The presented policy alongside its provisions shall be governed and interpreted in accordance with the laws of the Kingdom of Saudi Arabia. Hence, any dispute or claim arising out of or in connection with any of the provisions of this policy or even causing breaching, shall be resolved amicably between the two parties. If the dispute is not settled, either party may report it to the competent authority in the Kingdom of Saudi Arabia.
Conflicts of Interest:
Ensuring that conflicts of interest or obligations are properly managed is critical; to reduce legal and fame threats as well as demonstrating the integrity of university and its officials. The following are some of the guidelines to help UNI's staff to avoid the above-stated conflicts:
UNI's staff and others acting on their behalf must avoid conflicts of ethical, legal, financial or other interest in licensing technology and consulting projects. Moreover, they must bear in mind that their involvement in the technology transfer activities and interests does not conflict with their obligations to the University or its welfare.
UNI's staff and its affiliates working on a research project with an external party must sign a contract prior to the project. Informing the Departments of Innovation and Entrepreneurship and of Scientific Research about the project and the disclosing of any potential patents is a necessity, too.
The Intellectual property unit/office/management must educate the UNI's staff and raise the awareness about areas where conflicts of interest may occur. Developing procedures for proper identification, avoidance or management is among the UNI's goals, too.
The UNI's staff must immediately report all potential and current conflicts of interest to the Deanship of Innovation and Entrepreneurship; since it is the unit that is responsible for resolving the conflict or reaching a solution satisfactory to all concerned parties.
Respecting third party's intellectual property
The University respects the intellectual property rights of other entities and adheres to all necessary precautions to prevent infringement, whether intentional or unintentional, by its employees. The Intellectual Property Unit/Office/Department of the Deanship of Innovation and Entrepreneurship plays the role of following up and verifying the obligation of the UNI and all its employees to guarantee respecting the intellectual property rights of other entities, thereby preventing legal problems and financial implications and preserving good public relations beside the UNI's reputation with others.
For the stated purposes, the following procedures are employed:
Report to the advisory council, no later than 20 days after its conclusion, any actual or potential infringements of intellectual property belonging to other entities.
In case of any suspicion of infringement, direct communication with any unit within the university would be made; to access necessary documents and information to verify it, and to adopt the effective procedure to solve the issue.
Report to the Advisory Council the penalties that are approved by the university in this regard.
Organizing the necessary awareness programs for UNI's staff; to respect the intellectual property rights of other parties and to illustrate the negative effects of violating such rights on the University.
Final Clauses:
The Intellectual Property Unit/Office/Department in the Deanship of Innovation and Entrepreneurship to actively raise awareness about the UNI's intellectual property policy, and to demonstrate how UNI deals with everyone in relation to intellectual property.
This policy shall be subject to periodic review every three years after its effective date by the Intellectual property Unit/Office/Department of the Deanship of Innovation and Entrepreneurship, and any recommendations for amendments or additions to this policy shall be made.
Faculty members who engage in external professional services permitted by the university, including but not limited to advising to private and public companies, are responsible for ensuring that such activities and any related contractual arrangements do not contravene this applicable policy and the applicable contractual provisions including those relating to intellectual property.
The regulations shall be effective fifteen days after the date of its adoption by the University Council.
The policy shall be interpreted in accordance with the interpretation given by the UNI's Innovation and Entrepreneurship Unit/Office/Department, of course after the approval of the University Council for commissioning the Deanship in this regard. However, if a dispute over the interpretation of the article arises, the Advisory Council will be in charge to determine the interpretation of any article after being approved by the UNI's Rector.
The provisions of these regulations shall apply to improvements, modifications or additions made by the depositor to intellectual property registered through the intellectual property unit/office/department of the Deanship of Innovation and Entrepreneurship, especially after the issuance of the protection document for the duration of the legal protection of intellectual property, unless otherwise agreed.
All Staff members shall comply with all of this policy's provisions once adopted, after posting the policy on the UNI's website and assuring that all staff members have been informed.
This policy shall be published on the official website of the university after being approved by the university council.
Finally, the relevant unit shall educate the target audience about this policy on a regular basis, starting from the date issue.