IP Policies and Guidelines

IP Policies and Guideliness

Foreword

Business and Technology accelerators have a fundamental role in socio-economic development. Innovation and scientific development are the basis for economic, technological and social mobility as well as for economic growth. These business and technology accelerators, with their scope of work are one of the main reasons why scientific development and innovation takes place and the intellectual property (IP) system is the main mechanism that enables the people and society at large to capture the value of innovation.

It is the IP system that assists the people and to commercialize their knowledge assets and by doing so potentially obtain additional sources of funding, which may be channeled into, amongst other, further research. At the same time, partnerships with the private sector and other organizations can ensure that academic research outcomes have broader impact, including competitiveness of industry and the regions, establishment of new companies, or addressing a variety of socio-economic challenges such as health, energy, and food security.

This approach requires support for the entrepreneurial dimension of knowledge transfer, where strategies that leverage IP assets at the same time place emphasis on how research and the resultant IP best provide economic, environmental and social benefits for society at large.

An IP policy is the very foundation of IP management in that an IP policy:

  • serves as the starting point for a common understanding about IP, IP rights and incentives for the start – ups;
  • provides a framework for protecting the business as it grows;
  • establishes the structure for the way the star-ups deal with the ownership and disposition of their IP.  As such, it ensures certainty and transparency to reinforce the links between the private sector and industry; and
  • is also fundamental in helping institutions address social commitments, and especially, in ensuring the dissemination of knowledge and technology for the public good.
 
  • INTRODUCTION
  • Context and Institution Mission
        1. The core mission of the Accelerator UKIM is to help technological entrepreneurs, start-ups, and spin-offs from University Ss Cyril and Methodius – Skopje (UKIM) and beyond to scale up on international market, through provision of business and technology acceleration services, and smart investments.
        2. The Accelerator is committed to ensuring that IP emanating from its acceleration services and the activities that stem from the process, will be rightfully owned by their creators and protected by law. The Accelerator UKIM binds to help the users of his services (beneficiaries) to protect their IP by instructing how to do it and implementing the good-neighboring policy, for their benefit and most importantly, society-at-large.
  • Purpose of the IP Policy
        1. Promotion of IP utilization. The intent of the IP Policy is to facilitate the widespread use of, through various modalities of access to the Beneficiary’s IP. This policy must provide protection of the IP that will be developed, or it is already owned by the Beneficiaries and keep it in their ownership. The Accelerator UKIM will not have any direct share in the IP that will be developed, or it is already owned by the beneficiaries.
        2. IP management. The IP Policy seeks to set the framework for the translation of the IP arising from the Accelerator UKIM’ services into products and processes. It encourages the users of the accelerator’s services, i.e. beneficiaries (technological entrepreneurs, start-ups, spin-offs etc.) to become creators and to identify IP with potential commercial value. It also establishes clear rules and procedures for the management and Commercialization of such IP emanated within the Agreements concluded with the users of The Accelerator’s services.
        3. Balance of interests. The IP Policy seeks to ensure the legal protection, where applicable; effective management of IP rights; while at the same time not impeding with the beneficiaries’ sovereignty.
  • Overall Principles 

Accelerator UKIM operates under the following overall principles:

      1. Responsible Commercialization. Where IP that has commercial potential will emanate, as a result of using the Accelerator UKIM’s services, it will be owned by the beneficiaries.
      2. Incentives. The Accelerator UKIM wishes to recognize and reward those beneficiaries whose IP generates a demonstrable socio- and/or economic impact.
  • DEFINITIONS

Without prejudice to any applicable laws, in this Policy the definitions set out below shall apply:

Accelerator UKIM. Business and development AKCELERATOR UKIM DOO Skopje, is founded to help technological entrepreneurs, start – ups and spin – offs from UKIM and beyond to scale up on international market, through provision of business and technology acceleration services and smart investments.

Associate.  Any person who is under a contract of employment with Accelerator UKIM including research, technical, administrative and adjunct staff, mentors whether full-time or part-time or on a temporary basis.

Background IP.  Any pre-existing IP owned by the beneficiary before the execution of any of the Accelerator UKIM’s services.

Beneficiary (User of Services). Technological entrepreneurs, start– up, spin – off which will gain financial support and/or expertise from the Accelerator UKIM in exchange for an upfront determined share in its ownership structure.

Board of directors (BOD). The body responsible for the overall operations of the Accelerator UKIM. It’s scope of work, among other duties, responsible for overseeing the drafting, implementation, monitoring and evaluation of all Policies of the Accelerator, covers the selection and revision the scope of work of the Investment Committee, as well as approving all work plans, operational rules and procedures and/or other documents developed by and for Accelerator UKIM as last instance.

Creator. Any person to whom this Policy is applicable, who individually or jointly with others makes a design, a mark or copyrightable work and who meets the criteria for authorship under the IP laws of Republic of North Macedonia.

Commercialization.  Any form 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 benefit to society.

Conflict of Commitment (COC). Any situation in which an individual Staff Member’s or Service user’s primary professional loyalty is not to the Accelerator UKIM because the time devoted to outside activities adversely affects their capacity to meet their responsibilities as set out in their employment contract, Financing contract or contract as an external associate, respectively.

Conflict of Interest (COI).  Any situation in which real or perceived interests of the Accelerator UKIM’s, staff, associate or beneficiary may run counter to the interests of the Accelerator UKIM or negatively affect their employment or duties.

Enabler. Any assistants, technicians, mentors, and other individuals who have indirectly contributed to the creation of IP by Creators.

Financing Contract (Collaboration with third parties).  A formal agreement for a user of the Accelerator UKIM’s services, which is a prerequisite in order to participate in the post-investment acceleration program within the Agreement / project where the rights and obligations of the parties are defined.

Invention.  Invention is a solution of a technical problem related to a product, procedure, or substance per se resulting from a particular procedure. [as defined in the Law on Industrial Property (‘Official Gazette of Republic of North Macedonia’ nb.21/2009, 24/2011, 12/2014, 41/2014, 152/2015, 53/2016 and 83/2018)].

Inventor.  Any person to whom this Policy is applicable, who individually or jointly with others makes an Invention and who meets the criteria for inventorship under the Law on Industrial Property (‘Official Gazette of Republic of North Macedonia’ nb.21/2009, 24/2011, 12/2014, 41/2014, 152/2015, 53/2016 and 83/2018).

Intellectual Property (IP). All outputs of creative endeavor by the beneficiaries in any field resulting from the Accelerator UKIM’s services for which legal rights should be obtained or enforced pursuant to the law. IP may include:

  1. Patents, literary works, including publications in respect of Research results, and associated materials, including drafts, data sets and laboratory notebooks;
  2. Teaching and learning materials;
  3. Other original literary, dramatic, musical or artistic works, sound recordings, films, broadcasts, and typographical arrangements, multimedia works, photographs, drawings, and other works created with the aid of Institution resources or facilities;
  4. Databases, tables or compilations, computer software, preparatory design material for a computer program, firmware, courseware, and related material;
  5. Patentable and non-patentable technical information ;
  6. Designs including layout designs (topographies) of integrated circuits;
  7. Plant varieties and related information;
  8. Trade secrets;
  9. Know-how, information and data associated with the above; and
  10. any other Institution-commissioned works not included above.

Intellectual Property Rights (IPRs).  The proprietary rights that may be granted for an invention, mark, design, plant variety, or other type of IP, should the statutory requirements for protection be met to result in a patent, trade mark, registered design or plant breeders’ right, respectively.

IP Disclosure Form. The form [provided in Annex X] to be completed by Creators and submitted to IPMO to document their creation.

Investment Committee.  The body which is part of the Accelerator UKIM, set up in terms of Article 4.1, which is among other stuff, managing the Accelerator’s investment assets, evaluating and approving investments and financing the beneficiaries of the Accelerator UKIM, with full support of the Operational team.

Public Disclosure. The communication of information, relating to IP, to external parties. Public Disclosure includes, but is not limited to, disclosure in written or oral form; communication by email; posting on a web blog; disclosure in a news report, press release or interview; publication in a journal, abstract, poster, or report; presentation at a conference; examination of a thesis; demonstration of an Invention at a trade show; or the industrial application of an Invention.

Research.  Any creative work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge of man, culture and society, and the use of this stock of knowledge to devise new applications. It comprises three activities: basic research, applied research and experimental development.

Research Contract.  Any type of agreement between the Accelerator and an external party or research sponsor, concerning research, which could result in IP being created in the program. This shall include, but is not limited to, all sponsorships, donor and collaborations with the external party or research sponsor.

Research Project. Any project that forms the basis of research undertaken by the beneficiary Institution and includes projects undertaken by a Student, under the supervision of the Accelerator or person appointed by the accelerator.

Substantial Use.  Extensive [unreimbursed] use of the Accelerator UKIM’s resources which include but are not limited to facilities, equipment, human resources or funds.  Not included is routine use of libraries and/or office space.

Trade Secret. Confidential information not publicly available that has commercial value because of its confidential nature, and which the owner has taken reasonable efforts to keep secret.

SCOPE OF THE POLICY

  1. IP. This Policy applies to all IP that will be generated by the beneficiaries during Acceleration UKIM services.

Applicability. This Policy applies to all Accelerator UKIM’s associates, beneficiaries and third parties or entities who are engaged and cooperate with Accelerator UKIM and are related to both the Accelerator UKIM and the beneficiaries in any way. Rights and obligations under this Policy shall survive any termination of employment, financing contract, investment contract and contract for external associates of the Accelerator UKIM.

Background IP. Upon commencing enrolment, signing an Investment Agreement or Agreement for external associates, the users of the Accelerator UKIM’s services must declare any existing IP they wish to exclude from the application of this Policy due to creation prior to their enrolment, signing of Investment Agreement or Agreement for external associates with the Accelerator UKIM.

Binding effect of the Policy. This Policy constitutes an understanding that is binding on the Accelerator UKIM, the staff, associates, beneficiaries and third parties or entities who are engaged and cooperate with the Accelerator UKIM and are related to both the Accelerator UKIM and the beneficiaries in any way, once adopted by the Accelerator UKIM Board of Directors, on the following grounds:

  • Accelerator UKIM’s associate. Accelerator UKIM shall ensure that the employment contract or other contracts establishing any type of employment relationship between the Accelerator UKIM and its’ associate includes a provision placing the associate under the scope of this Policy.
  • Beneficiaries i.e. users of the services. Accelerator UKIM shall ensure that beneficiary signs an agreement, to the effect that they have read and will comply with the provisions of this Policy.
  • Informed consent. This Policy shall be posted on the Accelerator UKIM’s website.
  • GOVERNANCE AND OPERATION

Investment Committee. The Investment Committee (IC) shall be responsible for evaluating and approving investments and financing the beneficiaries which will be subject to a final approval by the Board of Directors. Therefore, every decision made, procedure drafted, or everything else from the IC’s scope of work must be approved by the Board of Directors.

    1. Purpose. Accelerator UKIM established an Investment Committee which will be responsible for supervising the program, and the investments.
    2. Composition. The Investment Committee is consisted of up to 5 members nominated by the co-founders.
    3. Responsibilities. IC’s responsibilities shall be developing adequate and clear investment/financing objectives, policies and criteria, design, develop, structure the investment and financing mechanisms/instruments, to monitor the beneficiaries progress, to propose financing of the beneficiaries/investments (both rounds of financing), to draft and approve the contracts for financing/investments, to oversee and manage the investments and to supervise the implementation and evaluate this Policy.
    4. In a state of quandaries, or situation where an expert opinion will be needed, Accelerator UKIM shall consult its’ the IP department from the UKIM Faculty of Law ‘Iustinianus Primus’.
    5. Meetings. The IC Committee shall establish regular meetings and be available for ad hoc meetings.
  • OWNERSHIP OF IP AND RIGHTS OF USE
    1. IP Created by the Accelerator UKIM’s beneficiaries during the accelerating programs 
      1. Introduction. Intellectual property is often the most valuable asset of a technology start-up. Protecting intellectual property can be essential to obtaining venture capital funding or preventing competitors from unfair competition.
      2. Beneficiary ownership. When it comes to business and their IP, many young companies, start-ups, spin-offs fail to recognize the breadth of their potential IP assets or to appreciate their importance. Therefore, the intellectual property that will emanate from using the services that the Accelerator UKIM offers, and the beneficiaries background IP will be solely owned by the beneficiaries, and Accelerator UKIM will not have direct share in the IP ownership.
      3. This policy binds the beneficiaries to protect their IP in their interest and in the Accelerator UKIM’s interest as well in accordance with the positive Macedonian law. One beneficiary that generates an IPR must protect it from third parties.
      4. Accelerator UKIM vouches to help the beneficiaries maintain the IP in their ownership and legally protect their IP such as helping in the processes of issuing a license, copyright, registering trademarks, helping to establish strong – risk management practices etc. in front of competent authorities in the country.
      5. Good – neighbor policy. With this policy, the beneficiaries will be protected from other Accelerator UKIM’s beneficiaries, entities which are engaged or collaborate with Accelerator UKIM, regarding their IP emanated from given suggestions and ideas in the Accelerator UKIM’s premises, events organized by Accelerator UKIM or during the acceleration process. (mentoring session on multiple users of acceleration services). With this Policy the beneficiaries, entities that are engaged or collaborate with Accelerator UKIM are bind not to claim ownership of IP rights of other beneficiaries during the process of acceleration.
      6. If any internal dispute regarding this policy arises, the parties will report it first to the BOD and try to solve it internally.
    2. IP emanating from Contracts. The terms of the Accelerator UKIM contract shall contain provisions for regulation of the ownership of IP created by a person engaged in the course of such Contract.
  • PUBLICATION, NON – DISCLOSURE, TRADE SECRETS 
    1. Right of publication. Accelerator UKIM will encourage and support the right of the creators to decide when to publish their research results.
    2. Non-disclosure for IP protection. In conjunction with the right of publication, Creators should be aware that premature Public Disclosure may result in loss of IP protection rights. Therefore, they are strongly encouraged to make all reasonable efforts to identify any protectable IP as early as possible and should consult the Investment Committee before making any Public Disclosure.
    3. Trade Secrets. Accelerator UKIM may designate certain confidential information as a Trade Secret, owned by the Accelerator UKIM.  In that event, all Creators will be obligated to maintain secrecy of the Trade Secret and to follow the direction for management of the Trade Secret by Investment Committee and BOD.
    4. Non-disclosure between beneficiaries. If a beneficiary discovers an information about an IP of any kind, emanated from the accelerating program, which is generated by any other participants in the program, the beneficiary binds not to disclose such IP.
  • FINANCING/ACCELERATION CONTRACTS (EXTERNAL ASSOCIATES, THIRD PARTIES)
    1. Financing Contract Policy. All contracts must be executed and performed in compliance with the Accelerator UKIM’s Contract policy.
    2. Government rules. IPRs provisions in the contract shall comply with any applicable law and/or Government regulations and/or rules, which may be applicable to the related matter undertaken by the beneficiaries as far as it relates to the ownership of IP resulting from such research. The appropriate legal representative of Accelerator UKIM will be consulted in this respect before signature of any Contract.
    3. Basic Principles. The IP clauses in every contract concluded shall be governed by the following basic principles:
      1. Concluded from the outset. A Contract must be executed in writing and signed by the Accelerator UKIM and the external party(ies) / sponsor(s) prior to the commencement of any acceleration process and, as appropriate and without limitation, must contain terms relating to ownership, management and use of IP arising from the acceleration process as well as any Background IP.
      2. Background IP. All Accelerator UKIM’s and beneficiary’s Background IP must be properly recorded and declared prior to the commencement of the Accelerator UKIM services and belongs to the beneficiary.  Similarly, Background IP of the external party/sponsor, belongs to such party or sponsor.  Use of such Background IP requires express written permission.
  • RESPONSIBILITIES FOR DISCLOSURE AND NOTIFICATION TO ACCELERATOR UKIM
    1. Responsibility to Disclose IP
      1. Recording. Beneficiaries shall keep appropriate records of their research in accordance with the Accelerator UKIM’s applicable policy procedures and make reasonable efforts to ensure that only they have access to such records for the performance of their duties.
      2. IP Disclosure. Where a beneficiary identifies potential IP resulting from his/her research [or that of his/her team], he/she shall disclose such potential IP to Accelerator UKIM promptly by means of an IP Disclosure Form.
      3. Complete disclosure. Creators must provide to Accelerator UKIM such full, complete and accurate information as Accelerator UKIM may reasonably require enabling it to sufficiently assess the technical and related features and functions, ownership, commercial potential and IP protection that might be applicable to such IP. Upon complete disclosure, the IP Disclosure will be registered and assigned a reference number and Accelerator UKIM will share this reference number with the Creators to signify that the IP Disclosure has been formally received by the Accelerator UKIM.
  • Determination as to IP Protection and Commercialization
        1. Evaluation and recommendation. IC will analyze the information disclosed in the IP Disclosure within the process of assessment of applications for acceleration and/or financing.  The analysis will include: whether or not the subject matter is protectable as IP; an assessment of economic viability or marketability; and determination of any rights of external parties, such as a funder or collaborator. After evaluation, Accelerator UKIM will prepare a preliminary report as a part of the assessment report with findings that enable Accelerator UKIM to decide if it will proceed with IP protection and Commercialization. Accelerator UKIM shall share the preliminary report with the Creator(s) and seek their input.
        2. Decision to protect/Commercialize. The beneficiary will decide, as soon as reasonably practicable, whether it wishes to protect and/or Commercialize the IP.
  • Beneficiary Elects not to Protect /Commercialize the IP 
      1. IP abandoned or not Commercialized. The Beneficiary reserves the right not to protect or Commercialize IP that it owns if:
  1. there is no reasonable prospect of commercial success;
  2. it is not deemed to be in the best interest of the Beneficiary; or
  3. it is not deemed to be in the public interest.
  • COMMERCIALIZATION OF IP
    1. Determination of the Commercialization Strategy. With the beneficiary’s decision to protect the IP, the IC will determine, with input from the beneficiary, the most appropriate Commercialization strategy.
    2. Assistance to IC.  Creators of IP must provide the IC with all reasonable support in the assessment, protection (including preventing premature disclosure and execution of any documents including deeds of assignment and deeds attesting to creatorship), and Commercialization of the IP.
    3. Sovereignty and Cooperation. Accelerator UKIM shall have the sole discretion regarding the Commercialization of IP owned by the beneficiaries. The Commercialization of one beneficiary’s IP will be planned, executed, and monitored by nominated person by Accelerator UKIM BOD.
    4. Commercialization Pathways.  Modes of IP Commercialization may include:
  1. license, either exclusive or non-exclusive, and variations thereof
  2. assignment (sale)
  3. formation of a Commercialization Entity to which the IP is licensed or assigned in terms of this Policy;
  4. non-profit use or donation;
  5. joint ventures;
  6. royalty free access on humanitarian or other grounds; or
  7. various combinations of the above.
    1. Accelerator UKIM will endeavor to commercialize beneficiary’s IP in a manner that enhances local, regional, and national economic development.
  • IP PORTFOLIO MAINTENANCE
    1. Recording and monitoring.  Accelerator UKIM shall maintain records of the IP protected and developed by beneficiaries of Accelerator UKIM in an appropriate form and in sufficient detail. It shall monitor the deadlines for the payment obligations related to the maintenance or annuity fees of protected IP, and shall, within a reasonable time, inform the person or department designated to make such payments.
  • CONFLICTS OF INTEREST AND CONFLICTS OF COMMITMENT
    1. Agreements with External Parties. It is the responsibility of the Accelerator UKIM associates and beneficiaries to ensure that their agreements with external parties do not conflict with their duties and responsibilities in terms of this Policy. This provision shall apply in particular to private consultancy and other research service agreements concluded with external parties. Everyone should make his/her duties and responsibilities clear to those with whom such agreements may be made and should ensure that they are provided with a copy of this Policy.
    2. Disclosure of External Activities and Financial Interests. Accelerator UKIM associates and the beneficiaries shall promptly report all potential and existing Conflict of Interest (COI) or Conflict of Commitment (COC) to Accelerator UKIM.
  • DISPUTE
    1. Violation. Breach of the provisions of this Policy shall be dealt with under the normal procedures of Accelerator UKIM, and in accordance with the relevant provisions of laws and regulations in force.
    2. Dispute Resolution. Any internal disputes or questions of interpretation arising under this Policy must in the first instance be referred to BOD / CEO for consideration and mediation. (good neighboring policy)
    3. Appeal. Individuals covered by this Policy shall have the right to appeal the application of any aspect of this Policy to the Investment Committee.
  • AMENDMENT 
    1. Revision. This Policy may be amended at any time by a decision of the Investment Committee. In this case:
  1. all IP disclosed on or after the effective date of such amendment shall be governed by the Policy as amended; and
  2. all IP disclosed prior to the effective date of the amendment shall be governed by the Policy prior to such amendment, provided that the provisions of the Policy (as amended) shall apply to all IP licensed or otherwise Commercialized on or after the effective date of any such amendment regardless of when the IP is disclosed.
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