1 University of the West of England, Bristol Intellectual Property Policy 1 INTRODUCTION EXTERNAL CONTEXT CONTENT STAKEHOLDERS RAISING ISSUES LEGAL OWNERSHIP OF INTELLECTUAL PROPERTY UWE EMPLOYEES UWE STUDENTS VISITORS/CONSULTANTS/CONTRACTORS SPONSORS/EXTERNAL FUNDERS COLLABORATORS DISSEMINATION AND EXPLOITATION REVENUE SHARING ON PATENTED INTELLECTUAL PROPERTY REVENUE SHARING ON NON-PATENTED INTELLECTUAL PROPERTY PROPOSALS TO EXPLOIT UWE INTELLECTUAL PROPERTY OR TO ESTABLISH SPIN-OUT COMPANIES ROLES AND RESPONSIBILITIES IN INTELLECTUAL PROPERTY IDENTIFICATION, PROTECTION AND EXPLOITATION STAFF AND STUDENTS DEAN OF FACULTY AND/OR HEAD OF SERVICE CRIGS RIGS EXECUTIVE...9 APPENDIX 1: TERMINOLOGY...10 APPENDIX 2: REFERENCES/LITERATURE...13
2 1 Introduction This document summarises the Intellectual Property Policy of the University of the West of England, Bristol (UWE). The policy has been developed over a number of years and outlines the rights and responsibilities of the University and its staff and students. This policy should be read in conjunction with contracts of employment and the document The Management of Intellectual Property at UWE - Guidance Notes available from the Centre for Research, Innovation and Graduate Studies (CRIGS). 1.1 External context The UK Government expects the University to undertake effective intellectual property management: The Government believes that effective intellectual property management should be a fundamental goal of universities and research bodies in the public sector because: identifying and managing intellectual property is essential for effective knowledge transfer out of the research base to benefit the wider economy; and intellectual property can itself be a valuable asset deserving attention. White Paper on Science and Innovation Policy 1 Other policies, such as Department of Health Research Governance 1, set standards for the proper management of research and research outcomes including Intellectual Property. Within higher education, publishing and disseminating the outcomes of academic activity are important. Protection of UWE Intellectual Property may be relevant in order to allow commercial exploitation or encourage further funding of academic activity. Protection may involve keeping information confidential for a period, and where appropriate, undertaking patenting or other legal forms of protection (see Appendix 1 for definitions of common terminology used in Intellectual Property). 1.2 Content This policy details: Roles and responsibilities in relation to the identification, protection and commercialisation of Intellectual Property. Rewards for individuals and faculties for the development of patents. Sources of advice on the policy. 1.3 Stakeholders This policy affects all stakeholders who have a relationship with the University, including sponsors, collaborators, staff and students. In the context of this policy, the following descriptions are used: 1 References of cited literature can be found in Appendix 2
3 UWE employees: persons with a formal contract of employment with UWE and who receive remuneration for it. Employees may be full-time, part-time, permanent or fixed-term and include: Academic and academic related staff and visiting lecturers: paid on teaching, professorial and senior manager scales. These would include fulltime and part-time appointments, visiting lecturers and demonstrators. Research staff: paid on Research Associate, Research Fellow and professorial scales. Support staff and those employed on temporary contracts: paid on technical, administrative and manual scales. UWE students: full-time, part-time, undergraduate, postgraduate, short course student enrolled on a course/module/programme. In the case where students are also staff, their employment status normally takes precedence. Collaborators: people or organisations contracted to do work for or with UWE through consultancy agreements, contracts, sub-contracts, collaboration agreements etc. They may be individuals who are self-employed, from a partnership or (employees of) another organisation. Sponsors: external funders for projects including, but not limited to, charities, industry, the European Union and UK Government Departments. Detailed guidelines for Intellectual Property management and exploitation (e.g. assessing and filing patents and drafting copyright licences) are available from the CRIGS. Staff in CRIGS can answer questions about this policy and its implementation and can advise on contracts, including Intellectual Property assignments, collaboration agreements and confidentiality agreements. CRIGS also advises on the evaluation and exploitation of Intellectual Property. 1.4 Raising issues Any issues regarding Intellectual Property can be raised with the Dean of Faculty or Head of Service and Director of CRIGS in the first instance. If resolution is not found issues should then be referred to the Chair of the Research, Innovation and Graduate Studies Executive (RIGS) and will be treated as confidential. 2 Legal ownership of Intellectual Property Ownership of the Intellectual Property of employees is governed by the Patents Act and by contracts of employment. The table below (Table 1) summarises ownership of Intellectual Property at UWE. This table should be consulted in conjunction with employment and relevant project contracts. Table 1. Summary of ownership of Intellectual Property at UWE Type of Intellectual Property
4 Inventions Copyright & Copyright & Confidential Stakeholders design 1 design 2 materials Academic Staff UWE Employee 3 UWE UWE Support Staff UWE UWE UWE UWE Students Student 3 Student 3 Student 3 Student 3 Visitors not under contract to UWE Visitor Visitor Visitor Visitor Consultant/ collaborator/ subcontractor Consultant/ collaborator/ subcontractor 3 1 scholarly work, own teaching aids & personal notes Consultant/ collaborator/ subcontractor 3 Consultant/ collaborator/ subcontractor 3 Consultant/ collaborator/ subcontractor 3 2 administrative, financial, course materials & research notes 3 unless specifically assigned to UWE under a project, employment or other agreement The summary does not take account of any specific agreements for project work, which may override employment contract provisions. Before UWE commits to a project contract, the Project Manager has a responsibility to ensure that all existing staff and students working on projects are aware of and have agreed to be bound by the terms of that contract. In cases where patenting is involved, any proposed joint ownership of Intellectual Property between different organisations would need to be discussed with the Dean and the Director of CRIGS. If you require more detailed information on the relevant provisions of particular contracts please contact the Head of Personnel Services in the case of employment contracts or the Director of the CRIGS in the case of project contracts. 2.1 UWE employees All Intellectual Property related to the work of UWE belongs to the University. This ownership is not limited to specific times (e.g. normal hours of work) or activities. An exception to this is that copyright and design rights of scholarly works, teaching notes and teaching aids which may belong to academic employees in the absence of any specific agreement (specific agreements include project contracts entered into). Copyright and design rights in course materials produced for UWE courses, for research projects and administrative, finance and design documents remain the property of UWE. In the absence of any other agreement to the contrary copyright in all materials placed on the UWE web site belongs to UWE. Materials, files and laboratory books that contain records of UWE owned Intellectual Property shall be collected from employees when they leave UWE employment. If UWE staff have helped generate Intellectual Property owned by UWE by virtue of their employment, these rights to UWE survive the end of their employment contract. 2.2 UWE students Unless otherwise assigned, all rights to Intellectual Property generated by UWE students belong to the student. There are specific situations in which UWE may wish to vary these rights. In these circumstances, for example on specific projects where UWE needs to keep information confidential, the student could be asked to sign an
5 appropriate confidentiality or Intellectual Property Rights assignment before starting work. Where students choose to commit to special terms, UWE will provide advice to students and where appropriate, reward students who are inventors on patents in the same way as staff. A student should always be informed of his/her rights before being asked to vary these rights and must not be put under duress to give up rights. Where possible, students should be offered an alternative project if (s)he does not wish to agree to special terms. UWE has an obligation to ensure that by the student agreeing special terms, (s)he will not compromise his/her studies and/or subsequent career. UWE should ensure that recruitment and selection of students for projects makes reference to any restrictions that might be imposed on a student. Examples in which assignment of rights may be requested include situations where the student is asked to work on a project in which: UWE has identified exploitation potential, which indicates protection is needed e.g. by filing a patent application. Funding is provided by an external organisation or funding body and/or to which UWE has contractually bound its Intellectual Property Rights. UWE wishes to retain the rights for use e.g. computer software needed for teaching or research purposes or to enable external bids for funding. Students who receive a bursary allowance from UWE or are employed by the University may, without agreement to the contrary, own some Intellectual Property. These students may be asked on some projects to assign their rights to UWE. Blanket arrangements for all students or for specific groups of students may not be legally admissible. Therefore, confidentiality agreements and assignments must be made individually and specifically. These should be obtained from CRIGS and wherever possible students should be advised of their rights by a member of CRIGS before being asked to assign their rights to UWE. 2.3 Visitors/Consultants/Contractors It may be necessary to secure the confidentiality of individuals or organisations external to UWE. For example, unless otherwise stated, contractors and consultants own their own Intellectual Property, even if they are paid by UWE. Contractors working on projects where UWE needs to protect Intellectual Property should therefore be bound by a Confidentiality Agreement and may also be required to assign Intellectual Property to the University. Staff should consult their managers and CRIGS to get advice on appropriate agreements. 2.4 Sponsors/External Funders Unless a specific contract exists, the ownership of Intellectual Property lies with the organisation that creates the Intellectual Property or funds the work. However, Intellectual Property Rights will usually be defined in the terms of any grant or project contract, and may vary based on the type of sponsor. In all cases please consult CRIGS for up to date advice. Agreement on ownership of Intellectual Property should, wherever possible and practical, be agreed prior to the start of work on a project, ideally setting out conditions regarding rights to publish, rights to royalties etc. Failure to agree and to put into writing a specific Intellectual Property Rights agreement may cause either
6 loss of the rights to publish, rights to use and/or future income. Wherever possible and appropriate the University will use best endeavours to protect UWE rights to publish. 2.5 Collaborators Project Managers should contact CRIGS to arrange a specific agreement to cover Intellectual Property arrangements between collaborating organisations. The main contractor normally does this but UWE can provide drafts if a collaborator is reluctant or inexperienced in Intellectual Property management. Where collaborations are involved, CRIGS advises on legal issues. 3 Dissemination and Exploitation There are various ways in which Intellectual Property may be disseminated and exploited. For example, results can be published and made freely available, or income from exploitation can be obtained through licensing, sale or assignment of Intellectual Property Rights. A form of Intellectual Property transfer can be found in a research contract, with or without a separate exploitation agreement. Results may be kept confidential or protected to help secure future research projects. Exploitation can also be made through a spin-out company, into which a certain amount of Intellectual Property is transferred. 3.1 Revenue sharing on patented Intellectual Property When Intellectual Property is exploited through licensing, sale or assignment of patented Intellectual Property, the revenue to UWE will be shared with the UWE employees who created the Intellectual Property. In general UWE aims to: Encourage staff who are involved with patent protection by rewarding them appropriately. Reward faculties that are actively involved in the management of patents and their exploitation. Regain investments made in the protection of Intellectual Property. Generate revenue to invest in further research and teaching. UWE follows the recommendation of the EC Directive EC/4798a to give the first tranche of the gross revenue received by the institution for patented Intellectual Property to the inventors, without deduction of the institution s costs. The next tranche of gross revenue is for the recovery of all outgoings by UWE; for example patent and legal costs, thus reducing the gross income to a net sum.
7 The Intellectual Property revenue from patents at UWE will be shared as in Table 2 below. Table 2. Revenue sharing from income arising from patents Payments 1 Inventor(s) Faculty University First 4,000 gross 100% 0% 0% 0-15,000 net 70% (including the 15% 15% 4,000 paid as above) 15,000 net - 75,000 net 60% 25% 15% Greater than 75,000 net 33.3% 33.3% 33.3% 1 100% of the first 4,000 received, gross of costs, goes to the inventor(s) (as advance allocation of part of the share of the first 15000, net of costs, received) Example 1: A technology, developed and patented internally at UWE by 3 inventors, is licensed to a company. The company has paid 10,000 royalty to UWE. UWE has an outstanding patent cost of 3,000, therefore the net amount for sharing is only 7,000. See Table 3 below. Table 3. Revenue sharing from income arising from patents - Example 1 Income Total Payment to Inventors Payments to Faculty Payments to University First 4,000 gross 4,000 Next 3,000 gross 0 0 3,000 1 Next 3,000 net 900 1,050 1,050 Total 4,900 1,050 4, includes costs of 3,000 paid in advance Example 2: A technology, developed and patented internally at UWE by 3 inventors, is licensed to a company. The company has paid 100,000 royalty to UWE. UWE has an outstanding patent cost of 15,000. The net income is therefore 85,000. See Table 4 below. Table 4. Revenue sharing from income arising from patents - Example 2 Income Total Payment to Inventors Payments to Faculty Payments to University First 4,000 gross 4,000 Next 15,000 gross , ,000 net 6,500 2,250 2,250 15,000 net - 75,000 net 36,000 15,000 9,000 Greater than 75,000 net 3,300 3,300 3,300 Total 49,800 20,550 29, includes 15,000 costs which were paid in advance 3.2 Revenue sharing on non-patented Intellectual Property Revenue sharing on non-patented Intellectual Property will be dealt with on a caseby-case basis. This will take into account factors such as the investment made by
8 UWE, the type of Intellectual Property (e.g. software, scientific discovery etc.) and commercial value. 3.3 Proposals to exploit UWE Intellectual Property or to Establish Spin-Out Companies Proposals to commercially exploit UWE Intellectual Property should be made via relevant Dean(s) or Heads of Service to the RIGS Executive who will seek advice from the Head of Management Accounts and Head of Personnel and other advisers, as appropriate. In the case of proposals to set up a spin-out company, Deans and Heads of Service will be expected to seek the advice of RIGS Executive before presenting propositions to the Finance Executive (with the Director the CRIGS in attendance). In cases where the Finance Executive recommends establishment of a UWE spin-out company, the Vice-Chancellor will refer appropriate proposals to the Lay Treasurer. 4 Roles and responsibilities in Intellectual Property identification, protection and exploitation. To enable effective Intellectual Property management, all stakeholders need to work together to ensure publication strategy and identification and exploitation of Intellectual Property with commercial potential. Specific responsibilities have been identified to facilitate this process. 4.1 Staff and students Staff and students have an obligation to: a) Notify Director of CRIGS and Dean or Head of Service of any invention or other protectable Intellectual Property made during the contract of employment (if applicable); b) Notify Director of CRIGS and Dean or Head of Service of exploitable technology developed; c) Assist with the protection of the Intellectual Property developed for example by proper use of Confidentiality Agreements; d) Co-operate fully with UWE and its agents for example external lawyers and patent agents; e) Comply with project contractual obligations binding on UWE; f) Respect confidentiality where this is required or desirable. Staff supervising students have a responsibility to ensure that: g) Students comply with this policy; h) They keep good records of work done; i) They inform relevant Dean(s) and CRIGS of any changes proposed to the contract terms; j) Ensure that student and staff confidentiality is agreed before work commences; k) With assistance from the Faculty or Service Management and CRIGS, make sure that Intellectual Property is assigned if appropriate. In addition Project Managers on externally and internally funded projects have a responsibility to: l) Consult CRIGS, check and agree contract terms on external projects with relevant Dean(s) or Heads of Service; m) Consult with staff and students working on projects and ensure that all have agreed to (and where relevant signed) specific contract terms.
9 4.2 Dean of Faculty and/or Head of Service The Dean of Faculty and/or Head of Service has an obligation to: a) Advise the Director of CRIGS of any potential patent opportunities at the earliest possible opportunity; b) Seek advice from the Director of CRIGS on copyright and other Intellectual Property protection where significant UWE interests are involved or potentially involved; c) Ensure that all bids and contracts are approved through relevant project and contract approval processes; d) Abide by the terms agreed by the RIGS Executive in each case; e) Co-operate fully in implementing this policy; f) Ensure that faculty staff are aware of their responsibilities in relation to this policy; g) Ensure that faculty staff are aware of the need to co-operate with bid, contract and Intellectual Property Rights negotiations agreed with the RIGS Executive. 4.3 CRIGS CRIGS has an obligation to: a) Maintain good practice in Intellectual Property management; b) Assist in a disclosure of an invention; c) Raise awareness of this policy; d) Advise RIGS Executive in relation to Intellectual Property Rights protection; e) Advise Deans, RIGS Executive and Project Managers in relation to Intellectual Property Rights contract negotiations; f) Draft relevant legal documents relating to contracts and to oversee effective patent protection and licensing agreements; g) Ensure safe keeping of UWE contracts, patents and other documents relating to Intellectual Property and contracting for research and educational services; h) Undertake negotiations on behalf of UWE when appropriate, consulting Deans and RIGS Executive, and balancing the need to secure protection for publishing and other Intellectual Property Rights, adequate reward for Intellectual Property Rights, and the need to secure research and other contracts; i) Propose updates of this policy in accordance with best practice; j) Advise staff on the practical issues involved in the application of this policy; k) Secure professional, legal and patent advice as appropriate; l) Consult relevant Deans and where appropriate RIGS Executive before making recommendations to staff and students; m) Inform RIGS Executive and relevant Deans of advice given to individuals in relation to this policy. 4.4 RIGS Executive RIGS Executive has an obligation to: a) Approve the arrangements for the protection of Intellectual Property owned by UWE; b) Approve the arrangements for the licensing, assignment and sale of Intellectual Property Rights owned by UWE; c) Maintain adequate arrangements for review of the content of contracts for University services, including research contracts and exploitation agreements;
10 d) Oversee and maintain this policy; e) Arrange for the informal resolution of disputes in relation to this policy and related guidance notes. Appendix 1: Terminology Intellectual Property Intellectual Property (IP) is the general term for intangible property rights which are a result of intellectual effort. Intellectual Property Rights Intellectual Property Rights (IPR) are the legal recognition of the ownership of IP. In English law the following forms of IPR are recognised: copyright, patents, design rights, registered design, trademarks, know-how and confidential information.
11 Copyright Copyright gives the creators of a wide range of material, such as literature, art, music, sound recordings, films and broadcasts, economic rights enabling them to control use of their material in a number of ways, such as by making copies, issuing copies to the public, performing in public, broadcasting and use on-line. It also gives moral rights to be identified as the creator of certain kinds of material, and to object to distortion or mutilation of it (material protected by copyright is termed a "work"). However, copyright does not protect ideas, or such things as names or titles. Patents A patent for an invention is granted by government to the inventor, giving the inventor the right for a limited period to stop others from making, using or selling the invention without the permission of the inventor. When a patent is granted, the invention becomes the property of the inventor, which - like any other form of property or business asset - can be bought, sold, rented or hired. Patents are territorial rights; UK Patent will only give the holder rights within the UK and rights to stop others from importing the patented products into the UK. Design Right and Registered Designs Design Right Design right is an intellectual property right which applies to original, noncommonplace designs of the shape or configuration of products. Design right is not a monopoly right but a right to prevent copying, and lasts until 10 years after first marketing products made to the design, subject to an overall limit of 15 years from creation of the design. A design right is property that, like any other business commodity, may be bought, sold or licensed. Registered Design A registered design is a monopoly right protecting the appearance of the whole or part of the product. To qualify for protection the design must be novel and of an individual character in the opinion of an informed user. Trade mark A trade mark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes words, logos, colours, slogans, threedimensional shapes and sometimes sounds and gestures. A trade mark is therefore a "badge" of trade origin. It is used as a marketing tool so that customers can recognise the product of a particular trader. To be able to register a trade mark in the UK it must also be capable of being represented graphically, that is, in words and/or pictures. Know how and Confidential Information
12 Confidential Information is information that must not be divulged without permission. Know-how (also known as expertise/trade secrets) can include techniques, experimental methods, technical information, processes and protocols, computer software, formulae, discoveries, prototypes, materials, results, drawings, models, data of all types and calculations. Know-how is only of value as long as it remains secret or confidential. Categories of Intellectual Property Inventions: a new idea capable of being made or used and involving a non-obvious inventive step. Written work, films & videos, and typographical arrangements, including computer software. Designs and design drawings, mainly of aesthetic objects Engineering components, architectural drawings etc. Product brand names, company logos etc. Typical types of protection Patent or confidential information Copyright or confidential information Registered design rights Unregistered design rights, copyright or confidential information Trade marks Other relevant terminology regarding Intellectual Property: Background Information Information (other than Foreground Information), whether scientific, technical, financial or otherwise which exists before an event, for example, the start of a project. Background Intellectual Property Rights All Intellectual Property Rights, excluding Foreground Intellectual Property Rights existing before an event, for example, the start of a project. Foreground Information Information whether scientific, technical, financial or otherwise which is generated after an event, for example, the start of a project. Foreground Intellectual Property Rights All Intellectual Property Rights of any kind generated after an event, for example, the start of a project. Royalties A share in the proceeds paid to an inventor or a proprietor for the right to use his or her invention or services. Net Revenues
13 The revenue from royalties, licence fees or other sources received in respect of commercialisation of the Intellectual Property that remains after all identifiable expenses relating to the legal protection and the commercialisation of such Intellectual Property have been recovered. Licence The means by which the owner of an IPR gives permission to another person to carry out an action which, without such permission, would infringe the IPR. Type of Licence Exclusive Non-exclusive Sole Scope The licensee alone has the right to use the intellectual property as specified in the licence agreement. Any number of licences may be granted. A single licensee has the specified rights but the licensor retains the right to use the intellectual property under the same terms. Assignment The transfer of IPR s from the owner of the rights to another person or organisation. Appendix 2: References/Literature Legal documents Patents Act 1977, chapter 37. Copyright Designs and Patents Act Government publications The Management of Intellectual Property in Higher Education: a guide to good practice AURIL and Universities UK (March 2002). (http://www.sqw.co.uk/data/ip.html) R&D Information for Health & Social Care, Department of Health, April (http://www.researchinformation.nhs.uk/main/rdinformationforhsc.doc) Science and Innovation White Paper. Launched by the Secretary of State for Trade an Industry on 26 July, (http://www.dti.gov.uk/ost/aboutost/dtiwhite/)
14 Transparency review, Finance Department, (http://www.finance.ed.ac.uk/general/research/transparency.html) Useful Links The UK Patent Office (http://www.patent.gov.uk) The European Patent Office (http://www.european-patent-office.org) The US Patent and Trademark Office (http://www.uspto.gov/) Delphion (patent information) (http://www.delphion.com)