Circular No. 15/2014/TT-BKHCN detailing the procedures and formalities for transferring ownership and usage rights of scientific research and technological development results funded by state budget

CIRCULAR

Regulations on the procedures for transferring ownership rights and usage rights of scientific research results and technological development funded by state budget The Minister of Science and Technology issues this Circular to regulate the procedures for transferring ownership rights and usage rights of scientific research results and technological development funded by state budget in the form of intangible assets (hereinafter referred to as research results) with the purpose of:

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Pursuant to Decree No. 20/2013/NĐ-CP dated February 26, 2013 of the Government stipulating the functions, tasks, powers, and organizational structure of the Ministry of Science and Technology;

Pursuant to Decree No. 08/2014/NĐ-CP dated January 27, 2014 of the Government detailing and guiding the implementation of certain provisions of the Law on Science and Technology;

At the proposal of the Director of the Market Development and Science and Technology Enterprise Department and the Legal Affairs Department;

1. Transferring technology;

PART I

GENERAL PROVISIONS

Article 1. Scope of Regulation

2. Investing in scientific research and technological development, nurturing technology, and nurturing science and technology enterprises;

3. Establishing, contributing capital to establish science and technology enterprises;

4. Applying in production and business;

5. Providing public services for community benefits, social security, and other activities as prescribed by the Law on Science and Technology and related laws.

2. The transfer of ownership rights and usage rights of research results as stipulated in Clause 1 of this Article shall be carried out within the scope of state ownership over research results based on legal provisions and agreements between relevant parties.

1. The representative of the state owner of research results as prescribed in Article 41 of the Law on Science and Technology (hereinafter referred to as the representative of the state owner).

2. Organizations entrusted to lead the implementation of science and technology tasks (hereinafter referred to as the leading organization).

Article 2. Applicability

This Circular applies to the following organizations and individuals:

3. Science and technology organizations, science and technology enterprises, and other enterprises.

4. Author(s) or co-author(s) of research results (hereinafter referred to as author(s)).

5. Other organizations or individuals related to the transfer of ownership rights and usage rights of research results.

Research results

include inventions, utility models, technical secrets, trade secrets, suggestions, integrated circuit layout designs, industrial designs, trademarks, trade names, plant varieties, computer programs, engineering designs, scientific works, and other objects, including both protected and unprotected objects under intellectual property law.

Article 3. Explanation of Terms

In this Circular, the following terms are understood as follows:

1. Research results are determined based on contracts for the implementation of science and technology tasks created from the use of state budget funds provided by competent authorities in the form of partial funding, full funding, or granting the right to use state-owned means and technical facilities to implement science and technology tasks. Means and technical facilities

owned by the state include factories, laboratories, machinery and equipment, raw materials, documents, and other technical means owned by the state.

2. Transfer of all ownership rights of research results is the act of the representative of the state owner transferring all state ownership rights over research results to another subject in accordance with the law and the conditions agreed upon by the parties.

3. Transfer of part of the ownership rights of research results is the act of the representative of the state owner transferring ownership rights over part of the research results to a specific subject or transferring joint ownership rights over research results to different subjects in accordance with the law and the conditions agreed upon by the parties.

4. Transfer of all usage rights of research results is the act of the representative of the state owner allowing another subject to exclusively use research results within the scope and duration prescribed by law and the conditions agreed upon by the parties.

5. Transfer of part of the usage rights of research results is the act of the representative of the state owner allowing another subject to use part of the research results or to non-exclusively use research results within the scope and duration prescribed by law and the conditions agreed upon by the parties.

6. PROCEDURES FOR TRANSFERRING OWNERSHIP RIGHTS AND USAGE RIGHTS OF RESEARCH RESULTS is the act where the representative of the state owner permits another subject to use part of the research results or to use the research results non-exclusively within the scope and duration prescribed by law and the conditions agreed upon by the parties.

Chapter II

PROCEDURE FOR TRANSFERRING OWNERSHIP RIGHTS AND USE RIGHTS OF RESEARCH RESULTS

Article 4. Procedure for requesting the transfer of rights

1. The leading organization, scientific and technological enterprises, and other organizations specified in Clause 1 and Clause 2, Article 40 of Decree No. 08/2014/ND-CP dated January 27, 2014 of the Government detailing and guiding the implementation of certain provisions of the Law on Science and Technology (hereinafter referred to as Decree No. 08/2014/ND-CP), if they have a need to be granted ownership and usage rights over research results, shall prepare a request for the transfer of ownership and usage rights over research results (hereinafter referred to as the request for transfer of rights) and submit it through the state asset representative to the unit responsible for handling the request for transfer of rights as stipulated in Article 10 of this Circular.

2. In cases where the state asset representative receives a request for transfer of rights from an organization that is not the leading organization while the needs and capacity to meet the conditions for being granted rights of the leading organization have not been determined, the following procedures shall be carried out:

a) The state asset representative shall send a notification requesting the leading organization to provide its opinion in writing regarding the needs and capacity to meet the conditions for being granted rights within thirty days from the date of sending the notification via postal service;

b) If there is a need to be granted rights, the leading organization must submit the request for transfer of rights within thirty days from the end of the period specified in Point a of this Clause. The state asset representative shall review and evaluate the request for transfer of rights submitted by the leading organization and the request for transfer of rights received from other organizations according to Articles 5, 8, and 9 of this Circular;

c) If the leading organization responds in writing that it has no need or does not respond or fails to submit the request for transfer of rights as required in Point b of this Clause, the state asset representative shall review the request for transfer of rights received from other organizations.

3. The request for transfer of rights as stipulated in Clause 3, Article 40 of Decree No. 08/2014/ND-CP shall be detailed as follows:

a) A request form for the transfer of ownership and usage rights over research results according to Model 1 in the Appendix of this Circular;

b) A report on the ability to apply and commercialize research results according to Model 2 in the Appendix of this Circular;

c) A draft Agreement on the transfer of ownership and usage rights over research results (hereinafter referred to as the Transfer Agreement) according to Model 3 in the Appendix of this Circular;

d) Other related documents.

Article 5. Procedure for reviewing the request for transfer of rights

1. Within five working days from the date of receiving the request for transfer of rights, the unit responsible for handling the request for transfer of rights shall reply in writing to the organization requesting the transfer of rights regarding the validity of the request. In case of a requirement to amend or supplement, the organization requesting the transfer of rights must complete the request within ten working days from the date of receipt of the notification.

If the organization requesting the transfer of rights fails to implement or fully implement the requirements to complete the request within the prescribed time limit, the unit responsible for handling the request for transfer of rights shall notify in writing the reasons for rejecting the request for transfer of rights. In cases where the organization requesting the transfer of rights provides an explanation for objective reasons, the unit responsible for handling the request may consider extending the time to complete the request corresponding to the time needed to address the objective reasons.

2. Within twenty working days from the date of receiving a valid request, the unit responsible for handling the request for transfer of rights must organize the following:

a) Reviewing the request, negotiating with the organization requesting the transfer of rights regarding the transfer agreement if necessary, and concluding whether the request for transfer of rights meets or does not meet the requirements based on the conditions stipulated in Article 39 of Decree No. 08/2014/ND-CP. In cases where necessary, the unit responsible for handling the request for transfer of rights may propose the state asset representative to issue a decision to establish an Advisory Council for the transfer of rights as stipulated in Article 8 of this Circular;

b) Proposing a plan for the transfer of rights or compiling proposals for the transfer of rights from the Advisory Council for the transfer of rights and submitting them to the state asset representative, including details on whether to grant or not grant, the content, conditions for transferring ownership and usage rights over research results, and the draft Transfer Agreement, draft Decision on the transfer of ownership and usage rights over research results (hereinafter referred to as the Decision on Transfer of Rights) according to Model 4 in the Appendix of this Circular. In cases where necessary, the unit responsible for handling the request for transfer of rights may discuss with the organization requesting the transfer of rights to reach an agreement on the content of the draft Transfer Agreement.

3. Within five working days from the date of receiving the proposal for the plan for the transfer of rights from the unit responsible for handling the request for transfer of rights as stipulated in Point b, Clause 2 of this Article, the state asset representative shall review and sign the Transfer Agreement and the Decision on Transfer of Rights or notify the rejection of the request for transfer of rights, specifying the reasons for rejection.

Article 6. Agreement on Granting Rights

1. The agreement on granting rights signed between the representative of the state owner and the organization granted rights is a document attached to the Decision on Granting Rights and shall be carried out according to Model 3 in the Appendix of this Circular.

2. When there is a change in the content of the agreement on granting rights, the representative of the state owner and the organization granted rights shall execute signing the document of the amended and supplemented agreement on granting rights.

3. The agreement, the document of the amended and supplemented agreement on granting rights (if any) is part of the content of the Decision on Granting Rights.

Article 7. Decision on Granting Rights

1. The decision on granting rights shall be carried out according to Model 4 in the Appendix of this Circular.

2. The representative of the state owner issues decisions to amend, supplement, terminate, or revoke the effectiveness of the decision on granting rights in the following cases:

a) There is a change in the content of the agreement on granting rights affecting the validity of the decision on granting rights;

b) It is necessary to amend or supplement the content recorded in the decision on granting rights;

c) There is a violation in the procedure for granting rights or in implementing the decision on granting rights.

3. The representative of the state owner, the organization granted ownership or usage rights to research results has the right to value research results in the process of granting rights and in activities applying and commercializing such research results. The valuation shall be conducted in accordance with the guidelines of the Ministry of Science and Technology and the Ministry of Finance regarding the valuation of research results and intellectual property funded by state budget.

The representative of the state owner, the organization granted ownership or usage rights to research results may use science and technology business expenses or regular activity funds to pay for the cost of hiring experts, consulting organizations, and services for valuing research results and intellectual property funded by state budget as stipulated by current regulations.

Article 8. Advisory Council on Granting Rights

1. The representative of the state owner decides to establish an Advisory Council on Granting Rights based on the proposal of the unit handling the application for granting rights in the following cases:

a) Research results have special significance for national defense and security;

b) Research results need to be widely applied to meet public health, nutrition needs or urgent social needs;

c) Application and commercialization plans for research results involve transferring exclusive ownership or usage rights to foreign organizations or individuals or other activities that could lead to abuse of monopoly, restricted competition, or ineffective exploitation of research results;

d) The basis for valuing research results needs clarification;

đ) The unit handling the application for granting rights specified in Article 10 of this Circular is the organization proposing the granting of rights;

e) Two or more organizations propose granting ownership or exclusive usage rights to research results;

g) Other specialized issues that need clarification to serve the examination of the granting rights plan.

2. Each council can advise on one or several applications for granting rights when these applications are submitted from one unit or within the same field.

3. The Advisory Council on Granting Rights consists of from seven to nine members, including:

a) The Chairman of the Council is a representative of the state management agency, the agency with advisory, research, and policy-building functions in the field of science and technology related to the matter;

b) The Vice-Chairman of the Council is a representative of the unit handling the application for granting rights or a person authorized by the representative of the state owner in case the unit handling the application for granting rights is the main organization;

c) Members, including at least:

 - Two members are experts with over three years of experience in applying and commercializing technology, intellectual property, and laws on science and technology;

 - Two members are representatives of enterprises and investors with over three years of experience in applying and commercializing technology, intellectual property;

- One member is an expert with over one year of experience in evaluating and valuing technology and intellectual property.

In case of necessity, the representative of the state owner may invite independent consultants who have deep knowledge about applying and commercializing technology and intellectual property in the relevant field of science and technology to review and evaluate the application for granting rights.

Representatives of the main organization, authors, or author groups implementing science and technology tasks and representatives of the organization proposing the granting of rights may attend the Council meeting upon request of the Chairman of the Council.

The unit handling the application for granting rights organizes the Council meeting and appoints an administrative secretary to assist the Council.

Article 9. Principles of Operation of the Advisory Council for Granting Rights

1. A meeting of the Advisory Council for Granting Rights must have at least two-thirds of its members present, including the Chairperson or the Vice-Chairperson authorized to chair the meeting.

For absent members, the Council will seek opinions through evaluation forms. The Chairperson or the Vice-Chairperson authorized to chair the meeting will preside over the session and issue the Council's conclusions.

In cases where conditions for holding a meeting are not met, the Council will seek opinions through evaluation forms sent to all members of the Council.

2. The Council shall examine cases within the scope of granted rights to implement according to the provisions of Clause 3, Clause 4, and Clause 5 of this Article and recommend refusing to grant rights for cases outside the scope of granted rights.

3. In cases where an organization requests the granting of rights, the Council operates on the principle of majority agreement (more than 50%) based on evaluation forms:

a) The content included in the evaluation form includes:

- Granting rights or refusing to grant rights; - Granting ownership rights or usage rights;

- Granting full or partial ownership rights, usage rights;

- Granting ownership rights for part of the research results or joint ownership rights for research results;

- Granting usage rights for part of the research results or non-exclusive usage rights for research results;

- Agreeing or disagreeing with the proposed granting plan. In case of disagreement, members may propose alternative plans.

b) In cases where the number of evaluation votes is equal, the opinion of the Chairperson or the Vice-Chairperson authorized to chair the meeting is the deciding opinion.

4. In cases where research results have been requested for ownership or exclusive usage rights by two or more organizations, the Council operates on a scoring method, with a maximum of 100 points for each application, according to the following criteria and point scale:

a) Application for applying and commercializing research results, up to 50 points, including:

- Market potential for research results or products derived from applying research results, up to 20 points;

- Approach to market demand for research results or products derived from applying research results, up to 20 points;

- Valuation result for research results, up to 10 points.

b) Plan regarding organizational structure, human resources, technical infrastructure serving the application and commercialization of research results, up to 40 points, including:

- Quantity and capability of human resources in application, assessment, valuation, negotiation, technology transfer, intellectual property, up to 10 points;

- Quantity and capability of human resources in intellectual property law, technology transfer, up to 10 points;

- Plan on using intermediary organizations of the science and technology market for commercializing research results, up to 10 points;

- Necessary technical infrastructure for applying and commercializing research results, up to 10 points.

c) Plan for applying and commercializing research results within the territory of Vietnam, up to 10 points.

5. In cases stipulated in Clause 4 of this Article, the Council ranks applications based on the average total score of members in descending order and recommends as follows:

a) In cases where one organization has the highest score, that organization is granted ownership or exclusive usage rights for research results according to the granting proposal;

b) In cases where the leading organization and another organization have the same high score, the leading organization is prioritized to be granted ownership or exclusive usage rights for research results;

c) In cases where two or more organizations other than the leading organization have the same high score, those organizations negotiate to determine which organization will be granted ownership or exclusive usage rights or whether they will jointly be granted non-exclusive usage rights for research results. In cases where organizations cannot reach an agreement, the Council recommends that the state owner representative grant rights to another organization.

6. In cases not specified in Clause 3, Clause 4, and Clause 5 of this Article, the Council establishes evaluation criteria based on the advisory content requested by the Council.

7. Members of the Council have the duty to advise and are responsible for the content of their advice and recommendations. The conclusion of the Advisory Council is a basis for the state owner representative to decide on the granting plan.

8. After completing work, the Council prepares minutes of the meeting to send to the unit handling the granting rights application for submission to the state owner representative.

9. The Council dissolves itself after completing its tasks.

10. The unit handling the granting rights application may use scientific and technological public funds or regular activity funds to pay for the operating costs of the Advisory Council for Granting Rights according to current regulations.

Article 10. Competence to handle applications for assignment of rights

1. The Department of Market Development and Science and Technology Enterprises under the Ministry of Science and Technology shall be the unit handling applications for assignment of rights concerning research results where the Minister of Science and Technology represents the state owner.

2. The Department of Science and Technology shall be the unit handling applications for assignment of rights concerning research results where the Chairman of the People's Committee of the province represents the state owner.

3. The Ministers, Heads of Ministries, agencies at the ministerial level, government agencies, and other organizations and entities shall be responsible for:

a) Designating the science and technology management agency or unit directly subordinate to them as the unit handling applications for assignment of rights concerning research results where they represent the state owner in accordance with Points b and c, Clause 2, Article 41 of the Law on Science and Technology;

b) Notifying and updating changes in the name and address of the unit handling applications for assignment of rights to the Ministry of Science and Technology for publication on the Ministry’s electronic news website.

Chapter III

IMPLEMENTATION

Article 11. Responsibilities of the leading organization and representative of the state owner

1. Within six months from the date of acceptance of the research result, if necessary, the leading organization must submit an application for assignment of rights in accordance with Article 4 of this Circular.

2. The leading organization may submit an application for assignment of rights concerning the achieved research result before the acceptance evaluation if it has been authorized by the representative of the state owner to register intellectual property protection as stipulated in Clause 3, Article 39 of Decree No. 08/2014/NĐ-CP.

3. The representative of the state owner shall examine and publish the name and summary of the research result on the electronic news website and notify relevant ministries, sectors, local people's committees, technology trading platforms, technology trading centers, and related industry associations to encourage non-leading organizations to submit applications for assignment of rights in the following cases:

a) Not receiving the application for assignment of rights from the leading organization within the time limit specified in Clause 1 of this Article;

b) The leading organization does not have the need or does not meet the conditions to be assigned ownership or exclusive usage rights to the research result;

c) The entity assigned the right does not use or uses the research result ineffectively according to the decision on assignment of rights or according to reports, inspections, and supervision by the representative of the state owner.

4. In the case where the representative of the state owner assigns ownership or usage rights to the research result to another organization, the leading organization that has filed an application for registration or has been granted an intellectual property protection certificate for the research result shall be responsible for implementing procedures to transfer the application or change the holder of the protection certificate in accordance with the Intellectual Property Law.

5. Within the scope of the assigned rights, the leading organization shall be responsible for prioritizing the reassignment of ownership or usage rights to the research result to talented young scientists to establish or contribute capital to establish a science and technology enterprise in accordance with Clause 3, Article 24 of Decree No. 40/2014/NĐ-CP dated May 12, 2014 of the Government on the use and utilization of individuals engaged in science and technology activities. The provisions of this Circular shall be applied correspondingly and appropriately to the assignment of research result rights by the leading organization to talented young scientists.

6. The representative of the state owner and the leading organization shall be responsible for organizing the implementation, inspection, supervision, and handling of violations regarding the assignment of ownership or usage rights and the application and commercialization of research results within their management authority.

Article 12. Responsibilities for guiding the implementation of organizations

1. The Department of Market Development and Science and Technology Enterprises is responsible for:

a) Popularizing, guiding the application, receiving and processing requests and suggestions from organizations and individuals during the implementation of this Circular;

b) Guiding the establishment of technology promotion and transfer centers at scientific and technological organizations; training commercialization skills for research results for organizations and individuals granted rights over research results;

c) Supporting projects applying and commercializing research results, projects establishing technology promotion and transfer centers, intellectual property valuation support centers, innovation and creativity support centers, technology incubation bases, and science and technology business incubators according to the Science and Technology Market Development Program until 2020, the Support Program for Developing Science and Technology Enterprises, and public scientific and technological organizations implementing autonomous mechanisms;

d) Taking the lead and coordinating with relevant units to urge, inspect, supervise, and periodically report to the Minister of Science and Technology on the implementation of regulations on granting ownership and usage rights for research results at ministries, sectors, and localities.

2. Organizations responsible for implementing the central information function for science and technology as stipulated in Articles 25, 26, and 27 of Decree No. 11/2014/NĐ-CP dated February 18, 2014 of the Government on science and technology information activities shall be responsible for providing information and data on the granting of rights and the application and commercialization of research results to the Department of Science and Technology Market Development and Enterprises for reporting to the Minister of Science and Technology on the implementation of the regulations on granting rights and the effectiveness obtained from the application and commercialization of research results.

Article 13. Transitional Provisions

Within six months from the date this Circular takes effect, the leading organizations must have the responsibility to review and assess the potential for applying and commercializing research results and report to the state owner's representative about the list of research results implemented by that organization, registration status for protection, and requirements and ability to meet conditions for being granted rights.

Article 14. Effective Date

1. This Circular takes effect from August 1, 2014, and replaces the provisions in Clause 4.4 and Clause 4.6 of Part I of Circular Joint Circular No. 06/2008/TTLT-BKHCN-BTC-BNV dated June 18, 2008 of the Ministry of Science and Technology, the Ministry of Finance, and the Ministry of Home Affairs guiding the implementation of Decree No. 80/2007/NĐ-CP dated May 19, 2007 of the Government on science and technology enterprises.

2. During the implementation process, if there are difficulties or obstacles, units, ministries, sectors, and localities are requested to reflect these issues to the Ministry of Science and Technology for study and appropriate amendments and supplements./.