Intellectual Property Policy

Qatar Foundation Intellectual Property Ownership & Revenue Sharing Policies

Objective

The purpose of this document is to recommend a default Intellectual Property (IP) policy for research funded by Qatar Foundation or by Qatar National Research Fund (QNRF). This policy covers both ownership of IP and revenue sharing resulting from commercialization of IP, and is meant to serve as a reasonable default policy. It can be overridden by existing or future formal agreements between Qatar Foundation or Qatar National Research Fund (QNRF) and any institutions receiving funding.

Background

In June 2004, a review of the various models adopted by other countries was undertaken by Rand Qatar Policy Institute (RPQI), on behalf of Qatar Foundation, as part of its work to define the structure for QNRF. This work focused specifically on patent ownership rights and identified four models for consideration. Results of this study were documented and published in a technical report: Design of Qatar National Research Fund: An Overview of the Study Approach and Key Recommendations, RAND TR-209-QF, Appendix B – from Draft Business Plan for Qatar National Research Fund, RAND PM-1671/1-QF, p. 18. Since the over-arching long-term goal of QNRF is to advance knowledge and education by supporting original, competitively selected research in the State of Qatar and the region, the model described below was selected to strike an appropriate balance between the need to build a long-term resource for Qatar, the need to attract high-quality research projects to Qatar, and the need to generate revenue for Qatar Foundation, as illustrated in the figure below.

Selected Model and Ownership

The benefits and costs of each model were evaluated and compared by the staff of QSTP and QNRF. Given that the goal of the adopted model must benefit and address the needs of the people of Qatar and the region, it is the considered opinion that the Prevailing International Approach should be adopted and approved where there is no pre-existing model or agreement. With such a model, the costs of patent application, maintaining and responsibility for policing the patent will be bound by the institute/university. In addition, this model, which has been most widely adopted (particularly in the US since the 1980s), empowers institutions/universities to develop unilaterally a commercialization strategy, as they wholly own the rights to the intellectual property and therefore rights to exploit. However, there will also be an obligation for the institute/university (the recipient of any funding) to demonstrate that it has exercised due diligence in attempting to commercially exploit intellectual property, and has also expended an appropriate portion of the proceeds from exploited intellectual property to the benefit of Qatar (e.g., in the case of a university, for development of the campus in Qatar). Otherwise, after an agreed timescale, Qatar Foundation would have ‘march in’ rights to wholly own and independently commercialize, whilst also wholly retaining any revenues.

This model therefore provides incentives to institutes/universities and researchers (if they are provided with a revenue share) to commercialize intellectual property, as they own the property and will reap a substantial share of the rewards accruing from commercialization.

In addition, Qatar Foundation/QNRF will use this model as a basis to address other kinds of organizations and partnerships, with various combinations of both funding and recipients. Qatar Foundation/QNRF can negotiate separate intellectual property and revenue sharing agreements with such organizations on a case-by-case basis.

Revenue Sharing

It is recommended that Qatar Foundation offer a revenue model in order to ensure that it does not provide a disincentive to faculties and researchers being attracted to, and commercializing technology in, Qatar. However, given the complexity and variability of and revenue sharing models from institution to institution, Qatar Foundation will:

1. adopt the same revenue sharing model as that in place for the particular institution/university in question, with the exception that whatever the institution/university share is under that particular organization's model it should be split equally between Qatar Foundation and the institution itself.
2. where there is any doubt over a particular university's or institution's revenue sharing model, Qatar Foundation will adopt a net revenue split of one-third to the inventor(s), one-third to the faculty or department concerned and one-third to the institution/university (the latter of which would be split equally between Qatar Foundation and the institution/university itself as in [1] above. This methodology will ensure that the negotiation of IP issues would be processed quickly with the current and future research institutions/universities at Education City.
3. recognize that other kind of partnerships, wherein various combinations of both funding and recipients, can occur. Therefore, both Qatar Foundation and QNRF will negotiate separate intellectual properties and revenue sharing agreements with such organizations on a case-by-case basis, using as guidance the IP model described in this document.

Any revenues due to Qatar Foundation are paid to Qatar Foundation by the “receiving institution/university” post-receipt, according to specifically agreed management processes. Any decision by Qatar Foundation to re-invest this revenue in further research should be taken separately, outside this revenue share payment process.

This approach has been adopted to:

• create an environment which will encourage innovation by faculty, staff and students;
• create an incentive structure which is consistent with a given institution/university's existing incentive structure;
• motivate institutions/universities and faculties to establish management systems to support and facilitate the development of intellectual property.

Summary & Next Steps

In summary, it is recommended that Qatar Foundation agree and adopt the Prevailing International Approach of ownership and revenue sharing as stated above. Once Qatar Foundation's agreement has been secured, (and before Qatar Foundation implements this model), QNRF will undertake the following:

1. QNRF develops IP Guidelines as documented in this document.
2. Per the RAND Implementation Plan, QNRF secures Legal Counsel to advise on IP Guidelines and to negotiate on QNRF's and Qatar Foundation's behalf with the institutions involved. Per RAND's Implementation Plan and contract as approved by Qatar Foundation's Executive Board "it is recommended that QNRF, with the advice of legal counsel, establish a policy on Intellectual property rights, as addressed in the business plan…" RAND can assist with finding Legal Counsel.
3. QNRF and the Legal Counsel secure from Branch Campuses detailed documentation on their respective IP ownership and revenue sharing policies and processes from the home Campuses, identifying in each case the full nature of the agreements between the individual, faculty, branch campus, and institution.
4. Legal Counsel develops written policies and processes to establish the basis for Qatar Foundation/QNRF's share of the institutional ownership and revenue.
5. Legal Counsel develops written legal agreements to establish the requirement for the institution to effectively manage the exploitation of IP within the agreed legal ownership and revenue sharing model.
6. QNRF, the institutions, and Legal Counsel negotiate and sign IP agreements for QNRF funded research.

Diagram 1: Ownership and Royalty Distribution Policy [2]

[1] Faculty in this document is defined as a department or group of departments dealing with a particular subject in a university or college. In those cases where there is a Qatar campus, we define faculty to mean the departments or group of departments in Qatar. This definition will only be operative in those cases where there is doubt over a particular institution's revenue model.

[2] Faculty in this diagram is defined as a department or group of departments dealing with a particular subject in a university or college. In those cases where there is a Qatar campus, we define faculty to mean the departments or group of departments in Qatar. This definition will only be operative in those cases where there is doubt over a particular institution's revenue model.