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NATIONAL TAIWAN UNIVERSITY Directives for the Management of Research and Development Results and Technology Transfers
Date of Announcement
2022-03-23

Amened on 0115,2024. To be updated soon.

July 04, 2000 Passed by the 2,159th Administrative Meeting

         April 17, 2001     Amended and passed by the 2,191st Administrative Meeting

November 04, 2003     Amended and passed by the 2,315th Administrative Meeting

           June 15, 2004     Amended and passed by the 2,346th Administrative Meeting

           May 22, 2007     Amended and passed by the 2,481st Administrative Meeting

      August 21, 2007     Amended and passed by the 2,492nd Administrative Meeting

           May 03, 2011     Amended and passed by the 2,667th Administrative Meeting

   February 14, 2012     Amended and passed by the 2,704th Administrative Meeting

           June 04, 2013     Amended and passed by the 2,765th Administrative Meeting

           May 20, 2014     Amended and passed by the 2,812th Administrative Meeting

           June 14, 2016     Amended and passed by the 2,909th Administrative Meeting

November 28, 2017     Amended and passed by the 2,973rd Administrative Meeting

      August 21, 2018     Amended and passed by the 3,008th Administrative Meeting

December 11, 2018     Amended and passed by the 3,023rd Administrative Meeting

       March 03, 2020     Amended and passed by the 3,063rd Administrative Meeting

 

 

Article 1           Purpose
National Taiwan University (NTU or “the University”) formulates the NTU Directives for the Management of Research and Development Results and Technology Transfers (“the Directives”) in accordance with Article 6 of the Fundamental Science and Technology Act to effectively manage and utilize the research and development results (“R&D results”) of its subordinate units and personnel, encourage innovation, and enhance research quality.

Article 1-1  Definition of Terms

The following terms are used in the Directives:

1.    “Income from sponsored technology transfer projects (“TT income”)” refers to income from the transfer of technology developed through research and development completed with NTU resources.

2.    “Technology transfer income administrative fees” refers to the portion of TT income distributed to the University and the academic unit (college / academic program) to which the inventor belongs.

3.    “Sponsoring agency” refers to any government agency that has established a science and technology research and development project agreement with NTU through a subsidy, commission, or sponsorship.

4.    “NTU personnel” refers to the University’s students and faculty members (including separated or retired faculty members) and individuals employed to participate in research and development who complete their research at the University or with the University’s resources.

5.    “Patent license case” refers to sponsored technology transfer projects where the technology has been granted a patent application number.

6.    “Inventor” refers to the individual representing their technology R&D team in proposing a patent or technology transfer application to the University.

Article 2           Rights and Interests
Unless otherwise specified in an agreement, NTU will take ownership of the intellectual property rights of inventions derived from research completed by NTU personnel during their tenure at NTU or with the University’s resources. Matters pertaining to patent application and maintenance, technology transfers, and the distribution of rights and interests shall be carried out in accordance with the Directives; matters not addressed herein shall be subject to the relevant laws and regulations.

Article 3           Handling Unit
The NTU Office of Research and Development (ORD) shall be responsible for carrying out patent applications, patent maintenance, the distribution of rights and interests, technology transfers, and other matters related to the University’s R&D results.

Article 4           Composition of the Committee on Rights and Interests in Patents and Technology Transfers
The ORD shall establish the Committee on Rights and Interests in Patents and Technology Transfers (“the Committee”) to handle the matters stipulated in the following Article. Meetings of the Committee shall be convened by the Vice President for Research and Development and the Committee shall be comprised of 17 members, including the deans of the relevant colleges (or their appointed representatives), director of the Center of Industry-Academia Collaboration, professors of the NTU Department of Law, legal consultants or attorneys, and on-/off-campus experts.

Each committee member shall be appointed by the president of the University to a three-year term and may be reappointed.

The ORD may invite additional off-campus experts to attend committee meetings and offer opinions as needed; meeting participants shall be required to sign a non-disclosure agreement.

Article 5           Committee Responsibilities and Authority
The Committee shall have responsibility for and authority over the following:

1.    Review of patent and technology transfer policies

2.    Review of patent application and deliberation procedures

3.    Review of apportionment of patent fees and technology transfer revenues

4.    Decisions regarding the handling of R&D results and the termination of maintenance and technology transfer procedures

5.    Controversial or special cases

6.    Other relevant matters

Article 6           Patent Applications and Deliberation
Inventions derived from research completed by NTU personnel during their tenure at NTU or with the University’s resources shall be patented by the University.

Self-paid patent applications shall be filed in the University’s name. Inventors are required to fill out the Self-Paid Patent Application Form and submit it to the ORD for review and written approval before filing a patent. Inventors shall also bear the patent application and maintenance fees and other expenses incurred. For the filing of patent applications in Mainland China, in addition to filling out the Self-Paid Patent Application Form, the inventor shall sign the NTU Faculty Member Self-Paid Patent Application Contract and submit both documents to the ORD for review and written approval before filing the patent in their own name; the expenses incurred shall also be borne by the inventor.

NTU personnel who violate the provisions of the preceding Paragraph shall be disciplined with the appropriate penalty or measures pursuant to the University’s personnel regulations; the University may also hold violators legally accountable for any civil or criminal misconduct.

Article 7           Patent Cost Apportionment
Costs incurred by the filing of patents approved by the ORD after deliberation, including the patent application fee, certificate fee, annual patent fee, fees for agency services, and other patent fees required under the applicable laws (“patent fees”) shall be apportioned according to the following principles:

1.    Patent fee apportionment ratio

1)   For cases sponsored by a government agency (but not fully funded by the sponsoring agency) and approved for a subsidy, the University shall bear 55% of the costs, the inventor shall bear 40%, and the academic unit (college / academic program) to which the inventor belongs shall bear 5%.

2)   For cases that do not meet the criteria of the preceding Item, the University shall bear 45% of the costs, the inventor shall bear 50%, and the academic unit (college / academic program) to which the inventor belongs shall bear 5%.

3)   Cases with special circumstances shall be reviewed by a task force convened by the Vice President for Research and Development at the approval of the Executive Vice President for Financial Affairs. The review results shall be submitted to the President for approval. For such cases, the University shall bear no more than 95% of the patent fees and the academic unit (college / academic program) to which the inventor belongs shall bear at least 5%.

2.    Upon receipt of approval from the sponsoring agency for NTU’s application to subsidize patent fees, the received subsidies shall be utilized by the University in the management, maintenance, and promotion of R&D results.

3.    For research funded by private foundations or corporations, the derived patent applications may be filed with the patent authority by the financing party. NTU shall not bear any expenses incurred, but the ownership of the intellectual property rights shall still be handled in accordance with Article 2.

4.    In cases where the associated college, department, or unit is unwilling to bear the patent fees, NTU shall bear said expenses and thereby own the TT income derived from the patent (e.g., licensing fees and running royalties).

5.    During the patent review process, if the inventor submits a response, supplement, amendment, or statement of defense, the fees incurred in the first three instances shall be apportioned in accordance with the provisions of Subparagraph 1; any fees incurred after the third instance shall be borne out-of-pocket by the inventor, who will be reimbursed based on the apportionment ratios stipulated in Subparagraph 1 after receiving approval. The inventor shall be liable for any of the aforementioned expenses incurred by their own negligence, including but not limited to late responses.

Inventors must pay for their portion of the patent application and maintenance fees before the University will proceed with patent application and maintenance procedures.

The University shall collect and pay for patent application and maintenance fees in stages. The fees shall be paid by the inventors in a one-time payment for each stage as follows:

1.    Application stage
The estimated expenses incurred between patent application and the granting of the patent (including but not limited to fees incurred for the application, examination, re-examination, and defense procedures).

2.    Certification stage

1)   Republic of China patents: Certificate fees and maintenance fees for 1 to 6 years

2)   United States patents: Certificate fees and maintenance fees for 1 to 7.5 years

3)   Patents filed in other countries shall be handled in accordance with Item 1 of this Subparagraph.

3.    Patent maintenance

1)   Republic of China patents: Payments shall be made every three years.

2)   United States patents: Payments shall be made in accordance with the official fee schedule.

3)   Patents granted in other countries shall be handled in accordance with Item 1 of this Subparagraph.

4.    The actual amount of the expenses mentioned in the three preceding Subparagraphs shall be deducted from the amount pre-paid by the inventor. In case of a deficit, the inventor will be notified to make up the difference. Any surplus left over from one stage shall be added to the pre-paid amount of the subsequent stage. Upon termination of patent maintenance or completion of the final payment, the surplus amount will be returned to the inventor.

5.    Subparagraphs 1 to 3 of this Paragraph do not apply to jointly-owned patents controlled by a third party, which shall be handled based on the requirements of the lead party. The ORD shall notify the inventor to complete payment in accordance with the provisions of Article 7, Paragraph 1, Subparagraph 1.

If, after the third payment reminder, an inventor still refuses or fails to pay their portion of the patent fees, NTU may deduct the amount of said portion from the balance of the inventor’s research project funds or the inventor’s share of the revenues in accordance with Article 12 herein. The ORD may suspend the inventor’s patent application process and deny their patent application proposals.

If an inventor of a patent registered to NTU ceases payment of their portion of the patent fees due to their resignation, retirement, death, or other reasons, the University may deduct the amount from the equity and income derived from the patent; any deficit shall be made up for by the University.

For the collection of an inventor’s portion of the patent fees, the University shall deduct the amount directly from the inventor’s royalty account, the balance of funds in the project account for the patent, or the inventor’s share of the TT income. In case of a deficit, the inventor shall be notified to make up the shortfall in cash.

The apportionment of expenses in investment cases approved by the Office of Financial Affairs shall be submitted to the President for signature and approval and shall not be subject to the provisions of the preceding Paragraph.

Article 8           Termination of Patent Maintenance
The ORD shall evaluate NTU-owned patents five years after patent rights have been obtained, in accordance with Paragraph 2 of this Article, to determine if patent maintenance is necessary. If patent maintenance is deemed unnecessary, the University may waive its patent rights after review and approval by the Committee.

In cases where patent fees of an NTU-owned patent granted for more than five years have not been paid, or where the patent has not been licensed or cannot be licensed, the maintenance of the patent shall be terminated in accordance with the following procedures:

1.    Discuss and confirm the patent status with the inventor of the patent, and produce a patent status evaluation form.

2.    The ORD invites experts to evaluate the case and offer their review opinions.

3.    Following the unit head’s secondary review of the aforementioned review opinions, the case is submitted to a review team for further review.

4.    After the case’s submission by the review team to the Committee and upon the latter’s approval to terminate the patent’s maintenance, the assignment of the patent in the termination process is announced on the ORD website.

5.    The case is submitted to the Committee for final review one month after the assignment of the patent right is announced. The assignment of the patent right and termination of patent maintenance may be processed after approval by the Committee. However, if a patent is derived from the results of a MOST-funded research project, the announcement of the assignment shall be made three months in advance of further processing.

6.    A patent terminated after deliberation shall be handled in accordance with the relevant laws, and payments for patent fees and other related expenses shall be terminated.

7.    The termination of a patent funded by a sponsoring agency shall be handled in accordance with the regulations stipulated by the agency.

8.    For a patent termination approved by the Committee after deliberation, if the inventor indicates a wish to assign the patent right in the patent status assessment form, they may do so at the time of the patent assignment announcement. However, the inventor will not receive a share of the income received for the R&D results during patent assignment. The inventor may present receipts at patent assignment to be reimbursed for their portion of the patent fees.

Prior to completing the procedures listed in the preceding Paragraph, the inventor is still required to pay their portion of the patent fees in accordance with Article 7. If the inventor fails to pay for their portion of the patent fees, they shall be liable for any indemnification arising from the expiration of the patent right or sought by the sponsoring agency involved.

If the inventor resigns, retires, or ends their employment at the University due to other reasons and fails to submit a patent status assessment form to the ORD, after the third notification, the ORD may produce a patent status assessment form and proceed in accordance with the procedures in Paragraph 2.

For patents granted for less than five years that have been licensed to a third party, if the licensed party discontinues the use of the patent, the ORD may proceed in accordance with the procedures in Paragraph 2.

A review team comprised of five to seven members shall be established under the Committee. The Vice President for Research and Development (or their appointed representative) shall serve as the chair and shall select representatives from among the Committee members and may invite external members as needed.

Article 9           Patent Infringement
Any infringement of NTU’s patents shall be handled jointly by the University’s legal consultants. The related NTU units and inventors shall offer their full assistance.

All income received due to patent infringement (including but not limited to licensing fees, compensation, and settlements) shall be earmarked by the University for the management, maintenance, and promotion of research results.

Article 10       Inventors’ Obligations
Inventors shall be responsible for the following:

1.    During the legal processes related to their patent—including application, review, opposition requests, appeals, administrative proceedings, and judicial proceedings—the inventor shall communicate with their technology R&D team to ensure every team member is aligned and shall be responsible for defending the content of their invention.

2.    The inventor shall cooperate with the patent processing unit in applying for and promoting their invention.

3.    The inventor shall ensure that their technology R&D team does not acquire patents through plagiarism or other illegal means. The inventor shall bear full responsibility for any infringement on the rights of others.

4.    The inventor shall coordinate with their technology R&D team to determine the profit distribution ratios.

Article 11       Research Results and Technology Transfer Principles
Protective measures shall be taken for all R&D results completed with NTU resources, whether a patent is obtained or not. An annual inventory of research results shall be performed and suitable opportunities for technology transfer and commercialization shall be sought out. All technology transfers require a declaration of interest to be filled out and submitted to the University’s Recusal Review Committee. The following principles shall be complied with:

1.    Licensing shall be primarily royalty-bearing. However, research results may be licensed royalty-free for academic purposes, education, or public interest.

2.    Patent licensing to domestic companies shall be prioritized. However, under the following circumstances, patents may be licensed to foreign companies on a case-by-case basis:

1)   Domestic companies have no intention of using the results.

2)   Domestic companies lack the capabilities to use the results.

3.    Licensing shall be primarily non-exclusive. However, in any of the following circumstances, exclusive licensing may be applied for on a case-by-case basis:

1)   To prevent the obstruction of industrial development due to unfair competition

2)   Products derived from the transfer of R&D results that cannot be launched on the market without a long-term review by the government

3)   Commercialization of a product derived from a technology transfer that requires continued development through the founding of a startup or major injection of investment funds.

Upon NTU’s release of any R&D results and the submission of a technology transfer application to the University by a company, the ORD shall utilize one of the following procedures to carry out the technology transfer, depending on how the R&D results are to be used. Legal compliance is required if any transfer of rights is involved:

1.    Licensing (including non-exclusive and exclusive licensing)

1)   Licensing announcement

2)   Technology transfer criteria review

3)   Contract negotiations

4)   Signing of a technology transfer agreement after approval by the Vice President for Research and Development

2.    Royalty-free licensing

1)   Contract negotiations after the announcement of royalty-free licensing

2)   Review by the review team

3)   Review by the Committee

4)   Signing of a technology transfer agreement after approval by the Vice President for Research and Development

3.    Assignment

1)   Assignment announcement

2)   Technology transfer criteria review

3)   Contract negotiations

4)   Review by the review team

5)   Review by the Committee

6)   Signing of technology transfer agreement after approval by the Vice President for Research and Development

The TT income (including but not limited to up-front payments, licensing fees, royalties, price, running royalties, and equity in the form of cash or securities) received from the transfer or licensing of technology derived from NTU’s R&D results is the University’s income and shall be handed over to NTU in full before it is distributed by the University to the inventors in accordance with the provisions of Article 12.

Article 12       Distribution of R&D Result-Derived Royalties and Other Income
Royalties and other income derived from R&D results shall be apportioned in the following ratios after deducting the amount to be returned to the sponsoring agency, expenses (including patent application fees) paid for by the University and inventor, and the rewards (no more than 5% of the amount received) for personnel who contributed to the promotion of R&D results:

1.    For patent license cases, the revenues shall be shared as follows: 20% for the University, 70% for the inventor, and 10% for the unit to which the inventor belongs (college/academic program).

2.    For cases that meet the criteria stated in Article 7, Paragraph 1, Subparagraph 1, Item 3, revenues shall be shared as follows: 10% for the unit to which the inventor belongs (college/academic program), 20 % for the inventor; the remaining 70% shall be shared between the University and inventor in proportion to the contributions of the two parties.

3.    For non-patent license cases, revenues shall be shared as follows: 40% for the University, 50% for the inventor, and 10% for the unit to which the inventor belongs.

4.    Any NTU research center whose application for a patent licensing case has been submitted to the ORD and approved may proceed with the promotion of a sponsored technology transfer project. For any income received from such a collaboration, 10% shall be earmarked for the research center; the remaining amount shall be distributed in accordance with the ratio stipulated in Subparagraph 1.

5.    Resolutions of the NTU Recusal Review Committee shall take precedence over the provisions of Subparagraphs 1 to 3.

6.    For the apportionment of revenues from technology transfers stipulated in this Article, if the inventor dies, revenues from the technology transfer received after the date of their death will not be distributed to their heir(s).

After the signing of a technology transfer agreement with a company, NTU will continue to monitor the payment of licensing fees and will, within three months after receipt of the payments, distribute the revenue received among the NTU units and sponsoring agency and turn over the revenue to be distributed to the sponsoring agency.

The inventor shall pay for their portion of the patent fees before receiving their share of the revenues.

For investment cases approved by the Office of Financial Affairs, the apportionment of the relevant fees shall be submitted to the President for approval and is not subject to the provisions of Paragraph 1 of this Article.

Article 13       Management of Benefits and Income
The revenues apportioned to inventors can be handled in the following ways:

1.    Deposited in the inventor’s personal account

2.    Deposited in the inventor’s royalty account

3.    Deposited in the inventor’s personal account and their royalty account in the ratio specified by the inventor.

Expenses drawn from the inventor’s royalty account shall comply with the provisions of Article 4 of the University’s Directives for the Distribution, Use, and Management of Surplus Funds from Sponsored Projects. Pursuant to NTU regulations, receipts are required to reimburse expenses and the University shall have ownership over all purchased items and properties, which shall be managed in accordance with the relevant NTU property management regulations.

The royalty account shall be used until the associated inventor resigns or retires. Any balance in the account shall be reclaimed by the inventor within two months after their resignation or retirement is approved. If the inventor fails to reclaim the account balance, it will be transferred into the university endowment fund and earmarked for use in the management, maintenance, and promotion of R&D results.

The purpose of expenses drawn by the University or the inventors’ associated units (colleges/departments/institutes) from TT income shall comply with Article 7 of the NTU Directives Governing Revenue and Expense Management for Academia-Industry Cooperation and Government Subsidies for Scientific Research or from Government Commissions.

Article 14       Resignations and retirement
NTU shall ensure the rights of resigned or retired inventors who have performed their obligations in accordance with the Directives and the content of their agreements as mentioned in Paragraph 2 of this Article.

Inventors who are resigning, retiring, or ending their employment at the University due to other reasons shall notify the Center of Industry-Academia Collaboration (“the Center”) six months prior to their separation from the University and cooperate with the Center to inventory the patents filed during their tenure and evaluate whether patent maintenance is necessary. Inventors shall also sign an agreement that states their obligations after their resignation or retirement, their share of TT income, and other matters pertaining to patent applications and technology transfers after their resignation or retirement that are related to their R&D results completed during their tenure at NTU.

For inventors who fail to cooperate with the Center regarding the inventory of patents or signing of the agreement as stipulated in the preceding Paragraph, or who fail to continue payment of their portion of the patent fees, the Center may decide whether or not to continue patent maintenance in accordance with Article 8 without consulting the inventor. The University may continue the maintenance of any patent deemed as worth maintaining and continue the payment of subsequent patent fees; the inventor may not request a share of TT income for themselves.

Article 15       Disputes
For any disputes arising in relation to R&D results (e.g., regarding the source of the technology, ownership of results, and revenue sharing) that are attributable to an inventor or their technology R&D team, the costs of litigation or negotiation incurred by the University shall be solely borne by the inventor and their technology R&D team.

Entry into Force and Implementation
The Directives shall be passed by the Administrative Meeting and implemented on the date of promulgation.

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