May 28, 2024 Passed by the 3,170^th Administrative Meeting

June 12, 2024     Promulgation of amended Articles 1, 1-1, 3, 6 through 8, 11 through 14;addition of Article 16

 (Full amendment history at the end of this document)

 

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") to effectively manage and utilize research and development results produced by relevant units and personnel using NTU's resources ("R&D results") and encourage innovation and elevate research standards.

Article 1-1 Definitions

Definition of Terms

1. "Technology Transfer" refers to the non-exclusive license, exclusive license or assignment of R&D results.

2. Technology transfer income ("TT income") refers to the income derived from the technology transfer of R&D results, including, but not limited to, signing bonuses, license fees, rights, contract prices, royalties, or equity received in the form of cash or marketable securities.

3. "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.

4. "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.

5. "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.

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, technology transfers, the distribution of rights and interests, 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.

Cost arising from the application in the preceding paragraph may be borne either proportionally or entirely by the inventor. The inventor may bear the cost proportionally only upon passing the patent filing review. The inventor shall bear the entire cost as deliberated and agreed upon by ORD in writing.

Patent filing review is not required for patents that meet the following conditions:

1. The patent is jointly owned and primarily controlled by a third party; the inventor shall provide proof that the patent application filed by the lead party has passed the review.

2. The cost arising from a provisional patent application filed in the University's name shall be borne by the inventor.

3. The patent is a European patent and will be converted into a national patent.

4. The inventor files the patent and bears the costs arising from it in accordance with Paragraph 2.

5. The inventor shall bear the costs arising from a patent application filed in Mainland China. Upon ORD's review and written approval, the inventor may file the application in their own name.

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) In special circumstances, the Vice President for Research and Development shall convene a task force to assess the situation. Actions shall be taken based on the task force's findings, which shall be reported to and approved by the President.

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. If the inventor's affiliated unit refuses to cover the patent costs, the University will bear them, and any TT income shall belong to the University.

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.

If the patent is jointly-owned and primarily controlled by a third party, ORD shall notify the inventor to complete payment based on the lead party's accounting information in accordance with 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 TT income in accordance with Article 12 herein, and determine at its sole discretion whether to continue patent maintenance based on Article 8. 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 inventor's share of the TT income in accordance with Article 12 herein; 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.

Article 8    Termination of Patent Maintenance

ORD shall reassess NTU-owned patents five years after the patent rights have been obtained to determine if there is a need to maintain those that do not involve technology transfer or the potential for technology transfer, and for which costs are not covered by any party. If patent maintenance is deemed unnecessary, the University may waive its patent rights after review and approval by the Committee and cease payment of associated fees and costs.

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

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. 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 under technology transfer 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.

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 R&D 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   R&D 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 R&D 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. In principle, licensing shall be royalty-bearing. However, R&D results may be licensed royalty-free, including expedited royalty-free licensing, in certain circumstances outlined below:

1) R&D results may be licensed royalty-free for academic purposes, education, or public interest.

2) If central or regional supervisory authorities establish a disaster response center or an epidemic command center in response to a sudden disaster or pandemic, in accordance with the Disaster Prevention and Protection Act or the Communicable Disease Control Act, or if NTU announces an epidemic outbreak and establishes an emergency epidemic command center, ORD may verify its emergency status and expedite the licensing of R&D results under royalty-free terms.

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) The patent licensing would not impede the competitiveness of domestic companies or hinder domestic technology development.

4) The foreign company licensed with the patent will contribute more significantly to the overall national development.

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

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

2) Products derived from the R&D results may not be marketed without undergoing long-term experimentation and obtaining approval in accordance with applicable laws.

3) Products derived from the R&D results are not yet at the mass production stage and their further commercialization requires the founding of a startup, development of crucial invention patents, or major injection of investment funds.

4) The R&D results cannot achieve their full potential with non-exclusive licensing due to the nature of the R&D results or the industry.

5) For other purposes that benefit the public interest, overall industry development, or enhance the utilization of the R&D results.

4. If one of the circumstances listed in Item 5 of the preceding subparagraph applies, and the R at NTU would not be adversely affected and the R&D results would be better utilized, the patent may be assigned.

When NTU announces its R&D results and a company applies for a technology transfer, ORD shall initiate the transfer procedures in accordance with relevant laws.

All TT income belonging to NTU shall be submitted to NTU, which will then distribute the income according to the ratios specified in Article 12.

Article 12    Distribution of TT income

Distribution of the TT income 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 the 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% to the University, 70% to the inventor, and 10% to the inventor's affiliated unit.

2. For non-patent license cases, the revenues shall be shared as follows: 40% to the University, 50% to the inventor, and 10% to the inventor's affiliated unit.

3. For cases that meet the criteria stated in Article 7, Paragraph 1, Subparagraph 1, Item 3, revenues shall be shared as follows: 20% to the inventor, 10% to the inventor's affiliated unit, and the remaining amount distributed between the University and the inventor based on the proportion of costs borne by each.

4. If a patent license promotion application submitted to ORD by research centers at any level is approved, the remaining income, after deducting 10% allocated to the research center, shall be distributed according to Subparagraph 1.

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

6. If the inventor perishes, their share of the TT income shall not be distributed to their successors.

The aforementioned patent license case refers to one that has obtained a patent application number and includes the University as an applicant.

After the signing of a technology transfer agreement, NTU shall continue to monitor the payment of licensing fees and shall, within three months upon receiving the payments, complete the payment distribution, including to the sponsoring agency.

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

Article 13   Management of TT income

The income 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' affiliated 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

If an inventor will cease to perform their obligations at NTU due to resignation, retirement or other reasons, they shall notify ORD six months in advance and cooperate in conducting an inventory of their patents and assessing the maintenance needs. Inventors shall also sign an agreement that states their obligations after their resignation or retirement, their share of TT income, other matters pertaining to patent applications and maintenance, and technology transfers after their resignation or retirement that are related to their R&D results completed during their tenure at NTU. If the inventor fails to sign the agreement as specified in the preceding paragraph, or to complete their portion of the patent fees after being notified by ORD, ORD may determine at its own discretion whether to continue maintaining the patent in accordance with Article 8. 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.

Article 16   Supplementary Regulation

Matters not addressed herein shall be subject to the Fundamental Science and Technology Act, the Government Scientific and Technological Research and Development Results Ownership and Utilization Regulation, and other applicable regulations.

Article 17   Entry into Force and Implementation

The Enforcement Rules for the Regulations shall be formulated during ORD affairs meetings.

The Regulations shall be passed by the Administrative Meeting and then implemented on the date of promulgation.

(Full Amendment History)

               July 4, 2000      Passed by the 2,159^th Administrative Meeting

           April 17, 2001      Passed by the 2,191^st Administrative Meeting

    November 4, 2003      Passed by the 2,315^th Administrative Meeting

            June 15, 2004      Passed by the 2,346^th Administrative Meeting

            May 22, 2007      Passed by the 2,481^st Administrative Meeting

        August 21, 2007      Passed by the 2,492^nd Administrative Meeting

               May 3, 2011      Passed by the 2,667^th Administrative Meeting

    February 14, 2012      Passed by the 2,704^th Administrative Meeting

               June 4, 2013      Passed by the 2,765^th Administrative Meeting

            May 20, 2014      Passed by the 2,812^th Administrative Meeting

            June 14, 2016      Passed by the 2,909^th Administrative Meeting

  November 28, 2017      Passed by the 2,973^rd Administrative Meeting

        August 21, 2018      Passed by the 3,008^th Administrative Meeting

  December 11, 2018     Passed by the 3,023^rd Administrative Meeting

           March 3, 2020      Passed by the 3,063^rd Administrative Meeting

             July 19, 2022      Passed by the 3,124^th Administrative Meeting

          August 5, 2022      Promulgation of the amended title and Articles 1, 2, 4, 6 through 8, 10 through 14,

                                            16

  December 26, 2023     Passed by the 3,160^th Administrative Meeting

       January 15, 2024      Promulgation of the amended Articles 1-1, 6, 7, 11, 12, and 13