APPENDIX-IV

Standard Form – IV
(On Rs. 10 Non-Judicial Stamp Paper)

MoU

between
Department of Science & Technology and Biotechnology
(DSTBT),

Government of West Bengal

and
University/Grantee Institution

for

Intellectual Property Rights Protection

This Memorandum of Understanding (MOU) is made on the xx (day) of xx (month) of xxxx

(year), at Kolkata, West Bengal, between the Department of Science & Technology and
Biotechnology, Government of West Bengal, hereinafter referred to as DSTBT established
since 1988, represented by its Additional Chief Secretary/ Principal Secretary (which
expression unless repugnant to or contrary to the context shall mean and include change in
the official concerned, legal representatives, assigns, nominees, executors and administrators)
of the FIRST PART,

AND
University / Grantee Institution represented by its Registrar /PI of R& D project supported to
University

DSTBT & Registrar of University/PI of Grantee Institution are hereinafter collectively

referred to as the “Parties” and individually as a “Party”.

WHEREAS Department of Science and Technology and Biotechnology, Government of

West Bengal, Vigyan Chetana Bhavan, DD Block, Plot- 26/B, Sector I, Salt Lake, Kolkata-
700064, hereinafter referred to as DSTBT the Party of the First Part, AND (hereinafter
referred to as University) of the Second Part, both of them hereinafter singularly referred to
as “The Party” and collectively referred to as “The Parties”.

AND WHEREAS University (f) “University” means a University established or

incorporated by or under a Central Act, a Provincial Act or a State Act, and includes any such
institution as may, in consultation with the University concerned, be recognized by the
Commission in accordance with the regulations made in this behalf under this Act. 3.

WHEREAS it is necessary to enhance understanding and relationship by protecting

Intellectual Property and Technology Transfer in the area of Science, Engineering and
Technology to build a Start up ecosystem in the State and to create a Technology based
Business Environment with exchange and co-operation in the area of academics and capacity
building of Science & Technology Start ups for building upon the technology based business
environment for the State;

AND WHEREAS it is further necessary to strengthen technical co-operation between the

Parties herein through sharing experiences, best practices and knowledge in the area of
academics and capacity building of Science & Technology Start ups and Science/
Engineering/Technology students of the State ;

AND WHEREAS it is also necessary to recognize the need to share value of academic co-
operation and having agreed to further continue their common interests in protecting the
mutual cooperation in the area of Intellectual Property Rights.

NOW THEREFORE the Parties have reached the following Memorandum of Understanding:
 Article 1: Objective

The objective of this Memorandum of Understanding (hereinafter referred to as the “MoU”)

is to establish a healthy framework for co-operative institutional relation to protect co-
operation in the area of in Intellectual Property Rights and Technology Transfer for a period
of project/research being live and thereafter in terms of IPR rules/mandate–needs re-
formulation.This MOU reflects the Participants’ sincere and genuine intentions to collaborate
in the IPR protection set out herein pertaining to the research and development.

Article 2: Area of Co-operation

The Parties herein will make an endeavour to carry out the following terms and
conditions consisting of exchanges and co-operative activities under this MoU which consist
of

1. Collaborate in the matter of Intellectual Property Rights protection for Technology

Transfer for the instant Research project funded by DSTBT, GoWB.
2. Documentation of Research work and submission to DSTBT, GoWB for IPR
protection
3. Identify the possible area of Intellectual Property Rights protection.
4. Carrying out patentability assessment/IPR assessment by Patent Information Centre
operational under West Bengal State Council of Science and Technology, DSTBT-
GoWB.
5. Each parties will find out nodal person to carry out the strategy for IP protection and
Management
4 Setting aside the scope of financial arrangement for Intellectual Property Rights
protection in the project fund.

Article 3: Intellectual Property Rights Protection

1. Each Party shall retain all right, title, interest and ownership of its (i) content, materials,
software, data, databases, documents, processes, programs, systems, instructions, designs,
concepts, know-how, tools, frameworks, models and information and (ii) patents,
trademarks, service marks, design rights, copyright, database rights, domain names, trade
 secrets and any other intellectual property rights (“Intellectual Property Rights”),
created other than in the provision of the Services rendered herein (“Pre-Existing
Intellectual Property Rights”). All Pre-existing Intellectual Property Rights of a Party
must not be used by the other Party for any purpose without owning Party’s prior written
consent or as expressly permitted by this MOU. However, the intellectual property right
arising on account of any activity undertaken in pursuance of this MOU shall vest with
WBSCST, Government of West Bengal.

2. Each Party represents and warrants that it is not infringing any intellectual property rights
or other rights or privileges of any person or entity or party while performing its
obligations in terms of this MOU. The defaulting Party agrees to indemnify and hold the
other Party harmless from and against any and all claims, suits, actions, damages,
settlements, losses, liabilities, costs, and expenses arising hereof.
3. The Parties agree that neither will use the name of the other Party or its employees in any
advertisement, press release or publicity with reference to this MOU or any product or
service resulting from this MOU, without prior written approval of the other Party.
4. The terms with respect to title to and exploitation of intellectual property (including
trademarks and service marks, copyrights, patents designs and confidential information
on the subject matter of intellectual property, inventions and innovations for Research
project funded by DSTBT, GoWB) will be filed and exploited jointly in the name of
DSTBT, GoWB AND University.

5. All Intellectual Property solely conceived and/or developed by DSTBT, GoWB and
University shall be owned by themselves. Intellectual Property developed from Research
project funded by DSTBT will jointly owned by DSTBT and University/Institution. For
purposes of this Agreement, the term "Intellectual Property" shall mean any and all works
and property including, but not limited to , all intellectual properties, ideas, inventions,
concepts, products, improvements, innovations, discoveries, developments, methods,
formulas, techniques, software, know- how and writings made, conceived, reduced to
practice, developed, written, or prepared by University out of said funded research of
DSTBT, GoWB.
6. IP conceived or first reduced to practice by both parties shall be Jointly Owned in
accordance with applicable patent laws. “Jointly Owned” means either Participant may
exploit IP jointly.
7. IP generated out of Human and Animal, Microorganism Subjects in Research.
Participants agree that adequate safeguards shall be taken whenever using human or
animal subjects in research, consistent with applicable laws and policies regarding the use
of human and animal subjects, including training of such trainees, faculty, or staff, an
institutional review committee, research ethics board, or animal care and use committee
composed of members with varying backgrounds who will perform complete and
adequate review of projects involving the use of such subjects. Informed consent shall be
obtained in accordance with national laws and regulations, international research
standards, and accepted guidelines on good research practices and ethics. Each
Participant shall, to the extent necessary for the legal conduct of activities under this
MOU.
8. Protection of Microorganism will be guided by the Indian Patents Act, 1970 wherein
added microorganisms under the purview of patentability through the Patents
(Amendment) Act, 2002, in compliance with the TRIPS. According to Section 3(j) of the
Patents Act, 1970, a plant, animal, seeds and biological processes, apart from
microorganisms are not patentable. Therefore, section 3(j) of the Indian patents act,
allows patentability of microorganisms. Microorganism need to be deposited in
International Authorised Repository. The provision for cost born out for Microorganism
deposition be made separately in Project fund. Thus protection of Microorganism will be
guided by India and subsequent International regulations.

9. Any IPR protected in India /International will be guided by the existing India and
International IPR Laws and regulations. The party will abide by the laws and regulation
for filing any IP.

10. Plant Variety protection among two applicant will be governed by Plant Varity protection
Act in India.

11. If the application pertains to a biological material obtained from India, the applicant is
required to submit the permission from the National Biodiversity Authority any time
before the grant of the patent. Cost related to Biodiversity permission may be met out of
Project fund
12. Royally generated for any IP will be shared equally. Royalty sharing among Universities
and Inventor/Author of any IPR will be guided by Institutional IPR policy.

Article: 4

Implementation

1. The Parties shall hold periodical consultation amongst themselves as deemed necessary for
implementing this MoU at Vigyan Chetana Bhavan , Salt Lake, West Bengal.

2.For the implementation of this MoU, the Parties shall designate one nodal person each
within one month of the commencement of this MoU to draw up the procedures, plan and
strategy of with a view to achieve the objective of the MoU

3. Specific details of procedures and programmes for exchange and co-operation activities
will be decided in a manner to be separately agreed upon by the Parties in future.

4. The programmes for which this MoU is signed are to be known as

i. Assessing the IPR emanating out of Research Project

ii. Protection of IPR as per existing India /International Laws and
Regulations

Article: 5

Settlement of Differences

If any provision of this Memorandum is held by any court or other competent authority to be
illegal, void or unenforceable or in part this MoU shall continue to be valid as to the other
provisions independent of the effectual provisions. Any differences arising out of the
interpretation, application and implementation of this MoU shall be settled amicably through
consultations and negotiations among the Parties themselves. However, in case if the dispute
remains unresolved it shall be referred to the Chief Secretary, Government of West Bengal
who, after considering the views of the Department of Science and Technology and
Biotechnology, will take a decision which will be final and binding on both the parties.
 Article: 6

Amendment

This MoU can be reviewed or amended at any time by mutual written consent by the Parties.
Such reviews or amendments shall come into force on such date as may be determined by the
Parties and shall form an integral part of this MoU.

Article: 7

Entry into Force, Duration and Termination

1. This MoU shall come into force on the date of its execution.
2. This MoU shall remain into force for a period for which projects are funded by
DSTBT and its outcomes thereof.
3. Continuing projects will come under purview of MoU-.
4. Publications in joint name/ acknowledgement of DSTBT by the PI-to be checked
in as terms and conditions of project funding as it applies.

Article 8

Governing Law and Dispute Resolution

1. This MoU shall be construed and interpreted in accordance with and governed by the
Indian laws and Parties agree to be subject to the jurisdiction of Courts at Kolkata, West
Bengal, India.
2. Any controversy or difference and dispute arising between the parties herein touching this
MoU or interpretation of any of its terms, covenants and obligation and breach of the
terms and claim of loss and damage of the Parties against each other arising therefrom,
unless mutually resolved by consultation by the Parties within a period of ninety (90)
days of written notification of the dispute by a Party, shall be referred before a single
Arbitrator to be appointed by mutual consent of the parties for adjudication and passing of
Award in accordance with the provision of the Indian Arbitration and Conciliation Act
1996, or any statutory modification / re-enactment thereof and rules made there under.
The place of Arbitration shall be at Kolkata.
Signed, sealed and delivered by: Signed, sealed and delivered by:
Department of Science & Technology and University:
Biotechnology, Government of West Bengal

Witness: ........................................ Witness: ........................................