City University: A Guide for Managing Intellectual PropertyDocument Transcript
City University: A Guide for Managing Intellectual Property
This policy applies to all City University employees, academic and non-academic, including visiting staff and
temporary/casual employees, and to all registered students of the University.
1.1 This Guide for Managing Intellectual Property embodies the University's policy on intellectual property as
adopted by Council following consultation with staff bodies. It is in a form intended to help staff identify and
make best use of inventions and discoveries arising from their research and teaching.
1.2 Intellectual Property is a general term taken to include know-how of a technical nature, inventions
capable of protection by patent, by registered design and design right, and all copyrights including copyright
1.3 Consultancy activity is not covered by this guide: a separate guidance note is being developed for this
2 Policy Objectives
2.1 The University is obliged to protect and make use of its intellectual property. This
policy in relation to the exploitation of intellectual property aims:
• to achieve the best return to the institution from the activities of its staff;
• to enable members of staff to receive a substantial and fair share of the benefits of commercial
exploitation of their inventions;
• to ensure that discoveries and innovations arising from research in the University are made widely
available for the greater benefit of the UK economy;
• to facilitate the exploitation of intellectual property to the benefit of the University and its staff;
• to encourage inventors to monitor and report research findings to the University (see contact
information in Annex I) with a view to commercial exploitation rather than lose possible revenue
through premature disclosure.
3.1 Universities are increasingly expected to become part of the knowledge and innovation economies. The
future wealth of the country is dependent upon both its ability to develop people who can produce innovative
ideas and turn them into products which can compete in a global market, and the presence of sufficient
numbers of people who have the skill to use and exploit novel products. Universities are crucial as a prime
source of innovative ideas which can be turned into marketable products and as the enterprises which will
develop the essential skills base. Much of the economic growth seen in the last ten years, particularly in the
United States, has arisen as a result of collaborations between universities, the Government and industry
which enable the commercial exploitation of academic ideas. New company start-ups arising from the ideas
of university academics, particularly in biotechnology and information technology, have turned into
successful companies which generate wealth, provide employment, encourage collaboration, and bring
funding into universities which can be used for further teaching and research activities. Therefore, a
university needs to be an outward looking organisation.
3.2 City University’s greatest asset is its staff and their skills and ideas and these should be utilised to the
benefit of the individual, the University and the wider community. For the University to thrive and contribute
effectively to the community, it needs to maximise all the benefits which can be derived from staff research.
Traditionally universities have interacted with the rest of the community through teaching activities and
through publishing and presenting research, and the attitude of universities to commercial activity has been
ambiguous. The environment in which the University exists now means that it must look at a much broader
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5 Ownership of Intellectual Property
5.1 Under the terms of the Patents Act 1977, where an invention is made by an employee in the course of
their employment it is likely that ownership belongs to the employer. The University's claim is further
Subject to the terms and conditions of contracts in place with external bodies, the University claims
ownership of all intellectual property which is devised, made, or created during the course of employment:
• by persons employed by the University;
• by postgraduate research student members in the course of or incidentally to their studies;
• by other persons engaged in study or research in the University who, as a condition of their being
granted access to the University's premises or facilities, have agreed in writing that this Part shall
apply to them; and
• by persons engaged by the University under contracts for services during the course of or
incidentally to that engagement.
5.2 This includes any activities carried out as a part of research wholly or partly under University auspices.
The University's rights in relation to any particular piece of intellectual property may be waived or modified by
agreement in writing with the person concerned.
Examples of the intellectual property for which ownership is claimed are:
1. works generated by computer hardware or software owned or operated by the University;
2. films, videos, multimedia works, typographical arrangements, field and laboratory notebooks,
and other works created with the aid of University facilities;
3. patentable and non-patentable inventions;
4. registered and unregistered designs, plant varieties, and topographies;
5. University-commissioned works not within (1), (2), (3), or (4);
6. databases, computer software, firmware, courseware, and related material not within (1), (2), (3),
(4), or (5), but only if they may reasonably be considered to possess commercial potential;
7. books or other material to be published in an individual capacity. The University may waive its
rights if the material does not form part of a course or teaching materials for the University; and
8. know-how and information associated with the above.
The University will not usually assert any claim to the ownership of copyright in materials or papers prepared
for non-commercial sources such as journals and academic publications. Moral Rights will be retained by the
author of the works.
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5.2 Student Intellectual Property. See also Annex 3
In accepting a place at the University, all students agree to maintain confidentiality of any works that are
deemed to have commercial potential. Students must promptly inform their supervisor if they become aware
of such potential in their work. In addition, students must seek advice on the protection of Intellectual
Property from the University prior to any disclosure or publication to external bodies.
5.2.1 Research Postgraduate students agree that all intellectual property rights arising out of work carried
out by the student shall belong to the University. Where a student is a member of a research team whose
work has resulted in an invention, the University's practice is to treat the research student concerned in no
way differently from the members of staff constituting the team and to enable them to participate in the
revenue sharing arrangements that are agreed (see section 6.2, Revenue Sharing Policy). If a student
makes an invention while employed by the University in the capacity of a research assistant or demonstrator
then the position is the same as for a member of staff. The position of students sponsored by an employer or
under an arrangement such as a CASE award will be governed by the terms of the grant or support funding.
5.2.2 Undergraduate and Taught Postgraduate Students occupy a different position to members of staff
and research postgraduates; this is described in Annex 3 of this document.
5.3 Ownership of Data
In order to assert its Intellectual Property Rights as described above, the University also lays claim to own
the data which underpins the different outputs covered by the IPR's indicated above. The legal complexity of
data rights can impede technology transfer and give rise to controversy and litigation. There are a number of
reasons why institutional ownership of data is necessary. These include:
5.3.1 Protection of Intellectual Property. The institution must own all data in order to be able to acquire
and protect associated intellectual property rights;
5.3.2 Fulfillment of Contractual Obligations. Research sponsors, including both government and private
sponsors, almost always have contractual rights in the intellectual property that arises from the research.
Without institutional ownership and control over data, the institution may not be able to fulfill these
5.3.3 Scientific Integrity. The evaluation and/or confirmation of research results and the analysis of
allegations of scientific misconduct support ultimate institutional ownership and control of data;
5.3.4 Protection of Human Subjects. Protection of the privacy of human subjects requires institutional
control and ownership;
5.3.5 Ethical Use of Research Data. (Including the ethical imperative to publish new research findings)
cannot be guaranteed without institutional ownership of data;
5.3.6 Resolving Disputes among Researchers. The institution may be called upon to arbitrate rights in
data after a falling out among the investigators, as where a Principal Investigator refuses to allow a no-longer
trusted colleague to access data for publication purposes, or where there is a dispute among investigators
regarding authorship or inventorship.
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5.4 Right to Publish
Members of academic staff are normally expected to publish the results of their work and the University does
not wish to restrict this freedom, while at the same time ensuring that, in cases involving material with
commercial potential, appropriate action is taken to evaluate and protect the information. Research contracts
often restrict any disclosure, publication or other communications to third parties, often requiring written
consent prior to publication. Staff involved in such contracts are responsible for checking the terms of the
research contract prior to any form of disclosure. If in doubt, advice should be sought from the University to
avoid premature disclosure which will prevent any patent protection being sought. In addition, staff should be
mindful of the contribution that colleagues may have made and should not take any action that could
prejudice their interests or rights.
5.5 Work supported by external bodies
5.5.1 Academic staff are responsible for ensuring that, when contracting with any other parties, the
University's rights in relation to intellectual property are preserved. The University will provide support and
advice on appropriate contractual arrangements.
Much research is supported or commissioned by external agencies including the Research Councils,
Government Departments, industrially based research organisations, the European Community, charitable
foundations and companies. The terms of the grant or contract will prescribe terms as to the ownership and
exploitation of any intellectual property arising from the work being undertaken and the arrangements for
exploitation and revenue sharing.
5.5.2 The University, as the contractor, will seek to ensure that the staff undertaking the work benefit
appropriately from the successful exploitation of the intellectual property they create. The extent to which full
overheads or the full economic cost have been recovered may well have a bearing on the amount of the
royalty or other forms of payment receivable by the University and hence on the amount for distribution to the
staff concerned. Work contracted on a commercial basis is likely to be on terms that require the ownership of
any intellectual property to be assigned or licensed to the organisation paying for the research and the
further payment of royalties from the successful exploitation of the work will consequently be less.
6 Identification and Evaluation of Intellectual Property
6.1 Roles of University and Members of Staff
In order to take appropriate action, early reporting is important. The steps to be taken to ensure that the
outcome of all work undertaken by staff is assessed as to its commercial potential and safeguarded as early
as possible are:
6.1.1 The member of staff should promptly report any invention or discovery with anticipated potential for
exploitation to both their Dean of School (or equivalent senior manager) and the member of staff designated
as the initial point of contact for the University (see contact information in Annex 1);
• an Invention Disclosure Form should be completed for assessment by an Expert Panel (see Annex 2);
• the University and staff concerned will be prepared to discuss the invention or discovery, its nature and
applications with third parties subject to a confidentiality agreement.
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6.1.2 If the initial search leads to a recommendation to exploit the invention, a confirmatory assignment from
the inventor(s) to the University will be executed, together with a statement demonstrating who had made
inventive contribution at the time of the evaluation, and the University will make arrangements either with
Patent Agents or other professional advisers or by other means as appropriate to specify and protect the
intellectual property that has been identified. The filing of a patent application will provide up to 12 to 18
months in which the statement of claim can be refined and exploitation possibilities can be pursued.
6.1.3 The University will aim to have reached an agreement on the way forward within six months from the
date of notification to the University. If the University does not support a discovery at that time and no third
party is involved, the University shall give a declaration to the member(s) of staff concerned that it
relinquishes its rights. The member(s) of staff may then proceed as they see fit.
In cases where the invention or discovery arises from work supported by external agencies, the terms of the
grant or contract will prescribe the arrangements to be set in train. It is important, however, that the Principal
Investigator takes action as indicated above and informs the University at the earliest opportunity. The
University will arrange for such formal negotiations with the funding body as may be required.
6.1.4 The University will undertake an initial search and a report on the outcome will be made to the Pro-
Vice-Chancellor (Research) and Dean of School with recommendations concerning filing an initial application
if appropriate. In the process of evaluation, individual members of the Research Committee will assist in the
assessment of discoveries according to their field of expert knowledge. The action taken in each case shall
be reported to the Research Committee with a view to ensuring that the course of action most likely to be
profitable for a particular discovery or area of know-how is pursued.
6.1.5 Any misconduct or breach relating to this policy by any University employee may lead to disciplinary
action under the appropriate University procedures. In the event that any alleged misconduct or breach is
found proven, the employee found to have acted contrary to the terms of this policy may be subject to
disciplinary action up to and including dismissal from employment.
The University also reserves the right to seek legal redress and compensation where failure to follow policy
and procedures result in the loss of monies, or damage to, the University that would otherwise be due
according to the terms of this policy.
If anyone becomes aware of any matter where s/he suspects that a breach of this policy (or potential
breach), or a financial irregularity has occurred (or may occur), s/he must report the matter immediately to
their Head of Department. The Head of Department must notify the Dean of School and Director of
Resources immediately if a member of staff reports any financial irregularity. If the suspected breach or
irregularity is considered a possible disciplinary offence, or a possible criminal act, it must then be reported
through the School Dean or Portfolio Head to the Pro Vice Chancellor (Research & International affairs), who
shall seek advice from the Director of HR concerning University procedures for investigating such
allegations, and initiate action accordingly.
6.2 Revenue Sharing Policy
The basis of exploiting any form of intellectual property is that the University and member(s) of staff involved
work together in pursuing the exploitation potential of the discovery.
According to the circumstances, any arrangements between the member(s) of staff and the University - and
any third party - regarding ownership and the sharing of revenue arising from exploitable inventions and
discoveries should be agreed by the Finance & General Purposes Committee, having received a report on
the outcome of the initial investigation. Formal agreements will then be drawn up between the University, the
staff concerned and any third party setting out the terms and conditions governing exploitation. The
apportionment of net income arising from the exploitation of any discovery, whether this accrues directly to
the University or as a result of royalty or similar payments, will be on the scale set out below, subject to the
signing of a confirmatory Assignment from the inventors.
6.2.1 Royalty revenue net of costs should be apportioned annually according to table 2 below.
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Total Net Revenue Inventors (jointly) School University
up to £5,000 100% nil nil
From £5,001 to £50,000 70% 15% 15%
From £50,001 to £100,000 50% 25% 25%
over £100,000 33% 33% 33%
Table 2: Royalty net of costs
6.2.2 The following shall be deducted in calculating Net Income without restriction (all such expenses must
have been approved by CREU):
• Value Added Tax;
• direct costs associated with seeking patent and other forms of IP protection and legal expenses
directly related to the exploitation of the Invention;
• direct costs associated with evaluation, assessment, and marketing of the invention including
consultancy fees, marketing expenses, and travel expenses as appropriate;
• any other expenses or incidental costs directly related to the obtaining or exploitation of the
• any payments due under a revenue sharing agreement to other parties involved in the research
leading to the Invention or connected with its commercialisation.
Worked example: If net income amounted to £70,000 an individual would be entitled to a) 100% of the first
£5,000 (£5,000) plus b) 70% of the amount between £5,001 and £50,000 (70% of £44,999 = £31,499) and
c) 50% of the amount between £50,001 and £70,000 (50% of £19,999 = £9,999.5). Total due £46,498.50.
These thresholds may be varied where, for example, there has been substantial financial support and
infrastructure investment by the University, or depending on the extent of external funding drawn upon, or
the extent to which work preparatory to the invention has been carried out elsewhere.
Where there is more than one inventor as laid out in the Invention Disclosure Form, the percentage shown
will be divided between the inventors. Unless there is a written agreement to the contrary between the
inventors, any such division will be made in equal portions.
The revenue returned to any School in any financial year shall be capped for each commercial project at
10% of the School's annual turnover. The balance remaining shall revert to the University.
6.2.3 Spinouts (see 6.4.2)
The equity share in any spin out company will be negotiated on a case by case basis; the starting point will
usually be a 50:50 split between the University and the academic(s) - this will vary according to the relative
contributions. As further investors are brought into any start-up the individual equity shares are likely to
6.3 Protection and Funding of Exploitation not involving an external agency
The support for patent applications and other means of protecting and pursuing inventions and discoveries
where no sponsor or technology transfer agency is involved will be based on the arrangements set out
6.3.1 Deans of School/Directors of Institute may provide the initial resources to support patent protection
and other necessary steps towards the exploitation of intellectual property using School or departmental
balances. The School will stand to benefit substantially according to the commitment made, although the
actual costs to be incurred are a matter for the PVC (Research) to decide in consultation with the staff
concerned and the professional advisers retained by the University. In those cases where continued and
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significant expenditure is required, the PVC (Research) may draw on the University’s funds, subject to the
agreement of the Director of Resources.
6.3.2 In parallel with action to protect intellectual property, the staff concerned, in consultation with the PVC
(Research) and member(s) of the Research Committee, should proceed promptly to explore the possibilities
of exploitation with particular agencies and firms.
6.4 Means of Commercialisation
6.4.1 Licensing and Assignment: the usual means of exploitation will be by way of a license agreement or
an assignment with revenue sharing agreement. An assignment implies the transfer of ownership of the
intellectual property to a third party on negotiated terms. A license allows exploitation subject to a royalty
agreement and sometimes an up-front fee but allows the University to maintain greater control over the
technology. The detailed terms will vary with each case and require considerable care in drafting and will
require the approval of the Finance & General Purposes Committee.
6.4.2 University "Spin-Out" Companies: City University is prepared to establish "spin-out" companies to
exploit developments in specific areas; for example, City Technology Ltd and Citifluor Ltd are the results of
this policy. This direct method of exploitation requires much more in the way of resources than licensing or
assignment but if successful can bring substantial rewards, both in terms of income and of management and
market experience. However, a trading company needs managing in a very different way from a Research
Centre or team and its success will depend much more on the motivation and management ability of those
involved than on the intrinsic merit of the product being developed. In the event of a company being formed,
the staff originally concerned with the intellectual property will have the right to remain on their existing
contracts of employment, but in so doing they may well give up being directly involved in its further
exploitation. It is unlikely that the University will wish to divert its energies into setting up a company to
market a new product unless a well researched business plan shows that it is capable of making a minimum
of £100,000 profit annually within four or five years. Advice is available within the University.
6.4.3 University Technology Licensing Companies: a number of universities have set up companies to
exploit contract and consultancy work and also to act as exploiting agencies for intellectual property. This is
not a route that City has considered to date and the structures described above provide an "in-house"
process for ensuring that the commercial benefit of the University's IP is realised.
6.5 Information and Accountability
6.5.1 An annual consolidated report on intellectual property arising from work in the University funded from
all sources should be made to the Research Committee and Third Stream Steering Group and an account of
exploitation made annually to the Finance & General Purposes Committee. The Research Committee,
through its members with delegated responsibility for specific areas, will monitor the resources committed to
research and development work and will report on this to the Finance & General Purposes Committee and to
Senate. The report will also be considered by Planning Panel in reviewing the University's planning of
resources. It is recognised that qualitative factors in pursuing the development and exploitation of research
are more difficult to evaluate than the resource implications. In pursuing exploitation possibilities, the
University and its duly authorised staff with delegated responsibilities in the field of intellectual property
should have regard for the principle that wherever possible the exploitation of discoveries and know-how
should be undertaken for the greater benefit of the UK economy.
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6.7.7 Whatever the negotiated settlement, a former member of staff having left the employment of the
University will not be entitled to use any materials subsequently significantly updated by their previous
employer, or the materials of other members of staff, except where the University has granted a license to do
so. Equally, the University will not be permitted to exploit any e-learning or other teaching materials that the
former staff member creates in their new employment.
7 Further guidance and information:
7.1 It is beyond the scope of this Code of Practice to deal comprehensively and definitively with all aspects
of intellectual property. It is intended to advise members of staff as to the policy of the University and to
provide a framework to enable protection and commercial exploitation of intellectual property in whatever
form to be more widely understood. Contact details and sources of further information are set out in Annex 1.
This policy was approved by Council on 11 July 2005.
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Annex 1 Contact information, definitions relating to Intellectual Property, links to
further information and Frequently Asked Questions (FAQs)
The initial point of contact within the University for advice on all issues relating to Intellectual Property is the
Technology Transfer/Commercialisation Manager in the Centre for Innovation and Knowledge Transfer on ex
Further sources of information are shown in table 3.
Information Required Contact
University policy, exploitation Pro-Vice-Chancellor (Research)/ Director of
mechanisms and terms and legal Finance
Research Committee matters and Chair, Research Committee
sources of research funding: Research Grants and Contracts Office
Research contracts, costing of research Assistant Director of Finance/
and overheads: Research Contracts Manager
Table 3: University contacts relating to knowledge transfer activity.
Definitions relating to Intellectual Property
According to patent law, an 'Inventor' is a person who conceives an original and non-obvious idea that can
be described clearly - the 'Invention.' The invention is defined in the patent through one or more claims that
are very precise explanations of the scope of an invention. To be an inventor one must have some role in the
final conception of an invention as it is described in the claims. A sole inventor must have conceived the
ideas in all of the patent's claims; a co-inventor must have conceived the idea in at least one of the patent's
claims. Since the patent's claims are the gauge for determining inventorship, keep in mind that just because
people are co-authors of a peer-reviewed article, or students, co-workers, supervisors, or employees, does
not necessarily make them co-inventors. It is good practice to prepare a list of individuals who have made
inventive contributions and what the contributions were at the time of disclosure and evaluation of an
A patent gives the patent owner the right for a limited period to stop others from making, using or selling an
invention without the permission of the patent owner. It is a deal between the patent owner and the state in
which the patent owner is allowed a short-term monopoly in return for allowing the invention to be made
public. It is essentially a 'deal' with the government, whereby a legal monopoly lasting 20 years is granted in
exchange for describing a novel invention which was previously not available to the public. A patent position
may be invalidated by public disclosure of the idea before a patent application is filed, so the maxim "Think
patent before you publish" is worth remembering. In practice, a patent application can be filed in a few weeks
and therefore will not infringe on an academic's ability to publish. Initial filing is easy and gives 12 months
protection before larger expenses are incurred. Do not attempt to file a patent yourself, using a qualified
patent agent is essential to obtaining valid protection. The actual inventing individual must be named on a
patent, even if it belongs to an employer. A common error is spending your own money on patenting before
preparing a commercial strategy. Seek advice from City University, we can guide you on the best way
This is a free and automatic right and there are no registration costs involved. In addition, there is no merit
test for copyright (as required for Patents and Trade Marks). Copyright applies to literary, dramatic, artistic
and musical works. Audio and video recordings, broadcasts and cable transmissions all attract copyright
protection. Copyright is also the usual way of protecting software, although some software may be patented
if it is deemed to have a ‘technical effect’. Copyright can last up to 70 years after the death of the author.
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Most university research reports will be subject to copyright, which usually either is held by the author but
assigned to the employer if compiled during the course of their normal duties or, in the case of sponsored
research, the copyright is held by the commissioning party.
May apply to databases which are not protected by copyright. From 1998 a new database right came into
effect in the UK. The aim of this legislation is to provide more certain protection than that already provided by
copyright. The purpose of this new database right is to protect the investment in a database. A database
right arises automatically at no cost to the owner. A database will qualify for protection if the creator/owner of
the database is an EEA resident and the database is a “collection of individual works, data or other materials
arranged in a systematic or methodical way” and either qualitatively or quantitatively there has been a
substantial investment in the getting, checking or presenting of the contents of the database. If a database
qualifies for protection then the owner can enforce their rights against businesses that extract or re-utilise a
substantial part of the database, or alternatively repeatedly extract and re-utilise an insubstantial part. Tip:
Database rights last for 15 years from the date of completion of the database; therefore if you continue to
update and modify your data, you reset the 15-year protection clock.
Registered Design Right
Applies to the appearance of the whole or a part of a product resulting from the features of, in particular, the lines,
contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Designs are
entered on to a public register providing a 25-year term for protection within the UK and EC. A six-month
period is then made available to file in other territories e.g. USA and Japan. Design registration is relatively
inexpensive in comparison to patent applications and should be borne in mind as an alternative if patenting
is not an option. To obtain a registration, the designs must be novel and have individual character. Some
countries provide a grace period in which a disclosure of a design does not destroy the novelty of a later
application, but best practice is to apply for registration before publication, for example during a marketing
campaign, as grace periods are not available in all countries and where available differ widely.
Unregistered Design Right
Unregistered design right (which covers computer chips, for example) can protect internal or external
A mark (logo) or other distinctive sign applied to or associated with products or services, which does not
describe the products or services.
Knowledge which only you possess and which you have only revealed under a non-disclosure/confidentiality
agreement. A common error is signing ‘Materials Transfer’ or ‘Confidentiality’ Agreements with third parties
during the course of your work on behalf of City University when you are not legally authorised or insured to
do so. Another is independently seeking help from a venture capitalist. These often give you the least
favourable commercial terms and may take 50% plus ownership of your work.
This is the personal right of an author to be acknowledged as such and to ensure that his or her work is
treated in a suitable fashion. Moral rights enable an individual to object to derogatory treatment of their work
which amounts to distortion, mutilation or otherwise is prejudicial to the honour or reputation of the author.
This right, being personal, is separable from any copyright concern.
If you are employed to research or undertake specific tasks (includes students), resulting inventions or
commercial products or services in your field of work belong to your employer. If you are commissioned on a
freelance basis, patents and copyright belong to you and designs belong to the client, unless there is an
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agreement specifying otherwise (which is often the case). City University however, does have a policy to
reward staff and students for their intellectual input to IP.
Web sources of further information on Intellectual Property
• The World Intellectual Property Organisation http://www.wipo.int/
• Patent Database search http://gb.espacenet.com/
• Copyright Licensing Agency http://www.cla.co.uk/
• The US Patent and Trade Mark Office http://www.uspto.gov/
• The Software Patent Institute http://www.spi.org/_
• The Chartered Institute of Patent Agents http://www.cipa.org.uk/pages/home
• UK association of composers, songwriters and music publishers http://www.prs.co.uk/
Sources of Funding (Public)
• The Research Councils portal http://www.rcuk.ac.uk/
• City subscription in Jan 2005 to : http://www.researchresearch.com
• The National Research Register http://www.update-software.com/National/
• RD Info - a database of research funding opportunities http://www.rdinfo.org.uk/
• For EU information (for UK) http://www.ukro.ac.uk/
• EU Commission website http://www.cordis.lu
• SPIN/Genius website http://europe.infoed.org/
Government sites for Science Technology and IPR
• Department of Trade and Industry http://www.dti.gov.uk/
• Office of Science and Technology http://www.ost.gov.uk/index_v4.htm
• Trading Standards Office http://www.tradingstandards.net/
Market Research Information
• The Chartered Institute of Marketing http://www.cim.co.uk/cim/index.cfm
• The Bioindustry Association http://www.bioindustry.org
• London Biotech Network http://www.londonbiotechnology.co.uk
• The Chemical Industries Association http://www.cia.org.uk/
• Companies House http://www.companieshouse.co.uk/
• The Diagnostics Club http://www.diagnox.co.uk
• London Medicine http://www.londonmedicine.org.uk
• The British In Vitro Diagnostics Association http://www.bivda.co.uk/
Sources of Funding (Private)
• British Venture and Private Equity Network http://www.bvca.co.uk/
• The National Endowment for Science, Technology and the Arts http://www.nesta.org.uk/
• European Private Equity and Venture Capital Association http://www.evca.com/
• National Venture Capital Association http://www.nvca.com/
• National Business Incubation Association http://www.nbia.org/
• The Venture Site http://www.venturesite.co.uk
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Frequently Asked Questions
Where do I go for advice?
Within City – Technology Transfer/Commercialisation Manager in the Centre for Innovation and Knowledge
Transfer ex 4180.
Externally visit www.Intellectual-property.gov.uk.
Is there anything I cannot protect?
You cannot protect theories and mathematical models. You only have an unenforceable ethical right to be
known as the originator.
How can I find out who invented something?
If you know the invention is patented, and you know the patent number you can search one of the on-line
databases such as http://gb.espacenet.com/ enter the number into the "view a patent application" box and
click on the "Go" button.
If you do not know the patent number, try searching esp@cenet using a word or words in the "Simple text"
box and click on the "Search" button. You will probably need to experiment with words with similar meanings
to find the patent you want.
The British Library Science, Technology and Business (STB) Patents Information Service publishes guides
and offers help to people researching old British Patents.
FAQ – PATENTS
Note: See the definition of patent in definition section above and for source of advice within City, also web
Why file a patent application?
Filing an application for a patent will give rise to a public record of the existence of your invention and your
rights therein which can deter others from working on similar ideas. Products and associated literature can
be marked with the details of your patent application, which acts as a further deterrent to third parties
considering working on similar ideas.
What is a clearance search?
Patent Agents time can be expensive, therefore the more preparation that you do prior to seeking their
assistance, the better. One way of doing this would be to search before filing a patent application; it is
recommended that you undertake a clearance search to determine whether the invention is novel and
inventive. The searches can also assist in determining whether there are any third parties having rights that
could be infringed by your activities. Websites to use include: http://gb.espacenet.com/
What can I protect by filing a patent?
For an invention to be patentable it must fulfil the following criteria:
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• Novelty - the invention must not have been previously disclosed to the public anywhere in the world
(there are exceptions to this rule in the USA). This includes posters, presentations, publications and
even informal chats with friends and other third parties.
• Inventive step – the invention must not be obvious to a person ‘skilled in the art’ in view of what is
already known in that field; i.e. someone who is reasonably technically skilled (e.g. a lab assistant)
but is not capable of thinking inventively.
• Industrially applicable – the invention must be capable of use in industry including agriculture.
• Does not relate to excluded subject matter – for example methods of doing business,
presentations of information, theories, discoveries and mathematical methods are not patentable.
How do I file a patent?
Through the UK Patent Office. This provides you with up to one year to decide if you wish to file further
applications in other countries. Applying for patent protection outside the UK can be more difficult, seek
advice from the University Technology Transfer/Commercialisation Manager in the Centre for Innovation and
Knowledge Transfer ex 4180.
What does "patent pending" mean?
The phrases "patent pending" or "patent applied for" can be seen sometimes on manufactured items or in
advertisements for such items.
The phrases can be used to indicate that an inventor has applied for a patent on an invention relating to the
manufactured item. It warns potential competitors that, if a patent is granted for the invention and the
competitor's product infringes the granted patent, the inventor will have the right to stop the competitor from
making, using or selling the invention.
The strategy is usually to discourage and eliminate potential competitors from investing in the product when
the patent is granted.
To apply a "patent" reference to an item when no patent application has been made or granted is a criminal
offence in the UK.
I am an Undergraduate student or Taught Postgraduate and not an employee of the University?
See Annex 3
The University does not claim ownership of undergraduate or taught post graduate student Intellectual
Property; however, there is an obligation of confidentiality on all students where the work may have
commercial potential and certain other exceptions as per Annex 3 of this policy. Students must inform their
head of school/dept and the Technology Transfer Manager immediately and keep any disclosure to a
minimum. If the student is neither employed nor subject to any other agreement, then it would seem
reasonable to assume that the invention belongs to the student who invented it. However, this assumption
has yet to be tested in the courts, and a number of factors may come into play if ownership were to be
disputed in such a case.
• The University will almost certainly have provided both the facilities to carry out the work and the
necessary training of the student.
• Another relevant factor may be whether the invention is made during the course of a programme of
study in the student's own time - although such a distinction may not be clear in the context of a
student undertaking project work without defined working hours.
• Whether the inventive solution to a particular problem is found in the laboratory or at home during
private study may be another factor.
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• If a sponsoring organisation is also involved (and in the absence of an agreement assigning the
rights to the sponsor) they may also claim at least partial rights to the invention if the project was
funded by them. Similarly, other bodies which have provided funding, for example in the form of a
scholarship for the student, may also have a claim to the invention.
• Clearly, therefore, the outcome would depend on the facts of any individual case, rather than on a
generally established principle.
UK law governs who is entitled to a patent where the invention was made by an employee in the UK. And
where the invention is made in the course of an employee's duties, the invention belongs to the employer
• if it was reasonable to expect an invention to result from the employees duties (for example, if they
are employed to carry out research and development), or
• if the employee had a special obligation to further the employer's interests (for example, as a
Can I use another inventor’s patent?
It may be possible to use an existing patent, because the rights in a patent can be sold or licensed in the UK,
a patentee can have an entry made on the Register of Patents that licences are available as of right. In
return, the patentee has his renewal fees halved. Anyone can then obtain a licence on such a patent.
Many companies have Intellectual Property which they are not fully exploiting. The Internet has web sites
offering rights to this property. The following web sites are typical examples (note that fees may be charged
• techex.com (mainly biomedical technology)
What do I do if someone infringes my patent?
If someone makes, uses or sells the invention defined in the claims of your granted patent without your
permission, what they are doing is known as "infringing" your patent.
If you become aware of infringement of your patent, you should consult the University.
As a first step, your professional adviser will probably prepare a carefully worded letter asking the infringer if
they are aware of your patent. This is because it is an offence to make groundless threats about
infringement, which could undermine your case against the potential infringer. Often the mere existence of a
patent is enough to deter a potential infringer. If not, legal action may be taken and damages claimed.
Is there financial support to inventors?
Please contact Technology Transfer/Commercialisation Manager in the Centre for Innovation and
Knowledge Transfer ex 4180 for further details. There are various Government sponsored schemes that you
may apply for.
The following is a list of schemes and resources that can assist inventors in exploiting an innovation.
The Smart Scheme
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Department of Trade and Industry (DTI) support for new ideas is available through the SMART
Scheme. This is open to individuals and independent small businesses to carry out feasibility studies
into innovative technology and for the development, up to pre-production prototype stage, of new
products and processes involving a significant technological advance. Awards under this scheme will
be made on a competitive basis, at the discretion of DTI.
Business Link has been established to provide a single point of access to provide a wide range of
business support services.
Personal Business Advisers (PBA's) or Innovation Technology Counsellors (ITC's), located in
Business Link, are available to give advice on general business practices, the marketing and
development of a product and other innovation related problems they may face, including advice
about how to obtain funding for developing a product. These are dedicated ex-business people who
are specialists in their field. They would make every effort to deal with any enquiries you may have.
If they can not help, they may be able to draw on services in the commercial market and other
Business Support Organisations.
You can be assured that anything you disclose to, or discuss with either the PBA or ITC will be
treated in strictest confidence.
The National Endowment for Science, Technology and the Arts (NESTA)
The Government's white paper: The People's Lottery produced by the Department for Culture, Media
and Sport, proposed to establish a National Endowment for Science, Technology and the Arts
(NESTA). NESTA has recently been established with an endowment of £200M from the National
Lottery, and is intended to help creative individuals develop their full potential, while also helping to
turn creativity and ideas into products and services and to enable these to be exploited effectively.
NESTA also have a useful Inventors' Handbook on their web site (soon to be updated).
Innovation Relay Centres
The network of Innovation Relay Centres (IRC) was founded by the European Commission's
Innovation/SME's (small and medium sized enterprises) Programme. The network of technology
advisory centres spans the European Union (EU) and there are eight centres in the UK. The goal of
the IRC network is to promote innovation, to encourage exchange of research results between
organisations across Europe, and to provide advice, consulting and training support. IRC's can
provide consulting services on intellectual property rights, licensing strategies, innovation financing
and venture capital, and on creating international joint ventures.
How can profit from intellectual Property be used?
IP is essentially a form of private property and, like the owner of physical property, the owner of IP can
generally decide whether and how it is to be used. But it is important to remember that much IP, that is
patents, trade marks and registered designs, needs to be applied for and granted before the creator can
benefit. However, there are other areas of IP, such as copyright, design right and protection for trade secrets
that do not involve registration. So you may have IP rights without realising it.
It would be worth checking what IP might be relevant in your area at an early stage by seeking information
from the University (Technology Transfer Manager in the Centre for Innovation and Knowledge Transfer ex
4180) and then taking appropriate action to secure rights where this is necessary. In many cases, of course,
more than one form of IP might be relevant: there are certainly goods in the market place where each of the
four main IP rights - copyright, designs, patents and trade marks - plays a part.
The owner of IP rights can decide how to exploit the IP. It may be that the right holder will do this alone, but
often exploitation will involve others so the IP owner must understand the licensing of IP rights. It would also
be a good idea for the IP owner to understand the importance of contractual agreements covering use of IP
to avoid disputes at a later stage. Taking action against those who infringe IP rights is generally a matter for
the right holder too.
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Profiting from IP can be a complicated business, so getting advice and other assistance may be a good idea.
Websites below may be useful:
The site, which is managed by DTI's Innovation Unit aims to help organisations to understand
innovation, why it is important and how the best organisations manage it.
The site of the Institute of Patentees and Inventors which is a small non-profit making organisation
and offers advice and guidance on all aspects of inventing.
What is Copyright?
A right which provides creators of literature, art, music, sound recordings, films and broadcasts, with limited
monopoly rights that enable them to control use of their material in a number of ways.
How can you use the right to protect your work?
The creator or owner has the right to control the making of copies, or issuing of copies to the public,
performing in public, broadcasting and use on-line of the copyright work. Users will need to seek permission
to use the work from the creator or owner in most cases.
What is a Moral right?
This gives the author or creator of the work the right to object to distortion or mutilation of the work that may
prejudice their honour or reputation.
Can an idea be protected by Copyright?
No. Although the work itself may be protected, the idea behind it is not.
Can names and titles be protected by Copyright?
There is no copyright in a name, title, slogan or phrase. These could be protected as a Trade Mark or the law
of ‘passing off’. Stylised logos however, may be protected as an artistic works under Copyright.
Is material on the internet covered by Copyright?
The law varies from country to country but under UK law, copyright material sent over the Internet or stored
on web servers will generally be protected in the same way as material in other media. Therefore permission
must be sought prior to distributing or download material from the internet.
Are there any exceptions to use of internet materials under Copyright law?
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Annex 2: Innovation Disclosure Form
Please return your completed form together with any supporting material to the Technology
Transfer/Commercialisation Manager at
City Research & Enterprise, City University, Drysdale E310
Ext. 4180/4080 Fax 020 7040 3217
1. Project title (what date did you have that eureka moment? Also called the inventive period)
2. Project summary (Describe the project in simple non-expert terms, what work has led to this finding)
3. Status of Intellectual Property (Has this invention been disclosed or made available to any person
other than employees of the University in any form whether written, verbal, at a conference, or on the
4. Background Information (Please attach any additional information to this form)
a. List results of any (web) searches of existing competing products:
b. Have you patented previously or do you have any ideas for future improvements or other
applications for this technology:
5. Commercial Potential
a. Detail envisaged industrial application:
b. What existing product/technology will you replace, what is the competitive advantage:
6. Markets (How big is the market and who are the customers? Have you had any
commercial/collaborative interest from outside bodies? List existing market players within the current field
of application and any future perceived fields of application)
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7. Risks What are the major risks in developing the technology?
8. List all University inventors (failure to do so can be a ground for invalidity of patents at a later stage)
9. List all Non-University Inventors (e.g. students, academics employed by other institutions, visiting
academics, an inventor who invented partly in a position with a previous employer and partly in
employment with City University
10. Respective Contributions of inventors expressed as a fraction (Note – in the event of
commercial returns this information will be used to determine the share of income to each inventor after
11. Other factors Outline any other relevant factors e.g. social, ethical or environmental risks and
benefits, include additional material if necessary
12. Sponsorship or other support Outline any other relevant sponsors in terms of finance, equipment
or any other support in kind and 0lease provide relevant contracts detailing this support.
13. Assistance requested
Purpose (by cost type e.g. staff, materials, etc.) Funding required (£)
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14. Signature of Dean of School
I confirm I have read this document and fully support the team in their
commercial endeavors. The School agree to support 50% of future
patenting and related legal costs for this project in conjunction with
Research & Enterprise unless agreed otherwise by the Deputy Vice
Chancellor (Prof. Arcoumanis).
1. I confirm that details provided in (and with) this application are accurate to the best of my
2. I agree to comply with University policy and not to involve third parties until further notice.
3. I understand that this document does not represent an agreement by the University to license
the technology or to create a spinout company.
Signature: Print Name: Date:
Signature: Print Name: Date:
Signature: Print Name: Date:
This form is part of the City policy on intellectual property. Any misconduct or breach relating to this policy by
any University employee may lead to disciplinary action being considered under the appropriate University
procedures (as per Para 6.1.1. of this policy). Failure to complete and return this form where such action is
necessary may also lead to disciplinary action being considered
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Annex 3: City University Policy on Intellectual Property generated by Undergraduate and Taught
The University is committed to putting the ideas and inventions of its staff and students to practical use and
maximising the value from any intellectual property (IP) derived for the benefit of all participants involved in
their creation, development and exploitation. To achieve this, the University provides a supportive
environment that promotes the entrepreneurial spirit required to spawn new and innovative ideas. The key to
this is developing a transparent process that identifies opportunities and gives equitable rewards to all
This Annex is intended to cover issues related to the registered taught student body of the University. It
excludes those members of staff, such as Research or Analogous staff, who are registered for a degree (all
staff are dealt with under their terms and conditions of employment regardless of whether they are registered
as students and should refer to the policy documentation provided with their contract).
For the purposes of IPR, by registering with the University and utilizing its resources all students agree:
• To seek University advice prior to disclosure and keep such disclosures to a minimum.
• Not to publish or disclose to third parties prior to seeking advice on protection of IP.
• To inform the Technology Transfer Manager of any IPR issues at the earliest opportunity.
The initial presumption is that where a taught postgraduate or undergraduate student has developed IP that
they wish to commercialise, the student owns the IP. However, the following exceptions may apply:
• Students who are sponsored. A condition of sponsorship may be that the sponsor may own any IP
developed during the period of sponsorship. Sponsored students are, therefore, advised to check the
terms of their sponsorship agreement prior to any disclosures or publications.
• Students working on a sponsored project as part of their coursework or research. In this case, the
sponsor may own any IP that they develop. In such cases the students agree to assign any resultant IP
to the Sponsor or University as the case may be.
• Students who are working on a project that derives from the IP of academic staff. This will mainly
involve doctoral students but does not exclude undergraduates or taught postgraduates. If such projects
result in a commercialisable opportunity that the University wishes to exploit, the student will be required
to assign their IP to the University.
Where a student assigns their IP to the University, they will be treated as a member of staff for this purpose
and will receive the same benefits as outlined in the Revenue Sharing Policy (section 6.2 of the IP Policy)
unless a prior obligation has been made by the University to the sponsor such that no additional return from
the IP can be allocated. If the student makes a significant contribution to the IP to be owned by the sponsor,
the University may encourage the sponsor to reward the student directly.
If students are in any doubt they are advised to consult the Technology Transfer Manager in the first
instance. If there is a prima facie case for the IP to be owned by either the University or a sponsor, the
student will be advised to discuss the matter with their School. This may result in the student withdrawing
from participation in a project, for example.
In the event that a student considers the decision made by the School to be unfair, they can appeal to the
Student IP Committee. This committee will be set up when required and will comprise a student nominated
by the President of the Student Union, an academic nominated by the Vice-Chancellor, the Technology
Transfer Manager and a representative from the Research Grants and Contracts Office. The committee will
be chaired by a Dean from a School other than that of the student, and the student will be supported by an
appropriate member of City University agreed by them. The secretary to the committee will be nominated by
the Academic Registrar. Final appeal will be to the Pro-Vice-Chancellor (Research).
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Postgraduate Research students are covered by the same regulations as those applying to staff, with
specific requirements for those sponsored by external organisations.
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