City University: A Guide for Managing Intellectual Property


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City University: A Guide for Managing Intellectual Property

  1. 1. 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 Background 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 in software. 1.3 Consultancy activity is not covered by this guide: a separate guidance note is being developed for this area. 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 Introduction 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 Guide For Managing IP Page 1 location:CREU/TT/Policy documents/2009 April
  2. 2. range of ways of presenting its activities to the community. The University will also need to be much more pro-active and innovative in the ways in which it seeks to derive benefits for its staff, and for the organisation. as a whole. This means developing clear, effective means of helping staff to exploit their talents across the entire range of University activities including teaching, scholarship, consultancy and research. 3.3 Effective management of IP will contribute to the University’s wider social objectives through knowledge transfer, enhancing research and teaching to bring benefit to the wider community locally, regionally, nationally and internationally by contributing to and enhancing social economic and technological process. It will also help to retain and recruit staff and bring financial rewards to the institution and its staff. 4 Intellectual Property Rights 4.1 Intellectual Property Rights (IPR) is an umbrella term to cover various legal monopoly rights including Patents, Trade Marks, Know-how, Copyright and Design Right. Current contact information, FAQs, definitions and links to further information can be found in Appendix 1. A summary of the types of intellectual property are shown in table 1 below. It is important to remember that protecting IP enables investment into research. It does not need to prevent publication, a patent can be filed in a week or so, and protected IP has a better chance of commercial investment. Table 1: Summary of the types of Intellectual Property Rights. IP Protection How to protect Be aware. Know-how/ Any skill or technical or Keep secret; inform Once revealed, Know-how cannot be Trade secrets commercial information not employees/students of made confidential again. Mark emails covered by other Intellectual their duty of confidence with a disclaimer as it is not a Property Rights . confidential means of communication. Copyright Original text, art, drama, music, Automatic right in UK; Keep evidence of authorship and date sound, images, maps, software, Need to put others on (e.g. email/post sealed copy to film, layouts, broadcasts, notice of rights. marking self);Prove authorship. Mark authorship recordings, etc. works to alert others of by: copyright can be helpful © City University, 25th April 2006 Design Right Features of appearance: shape, Automatic right; protects Keep evidence of dates of conception texture, colours, materials, for up to 15 years in UK. and first marketing. Very narrow graphic symbols. Internal or protection: must conform closely to external shape or configuration. records of design. Better to register design Registered Features of appearance: shape, Registration for a fee at Keep confidential until registered for Design texture, colours, materials, the UK Designs most countries. Broader coverage than graphic symbols. Registry; protects for up Design Right. to 25 years. Patent An invention capable of industrial File application at the If you reveal your invention before you application. Must be novel and not Patent Office. Generally file, patenting in most countries will be obvious. protects for up to twenty impossible. Apparently trivial ideas can years from date of filing. give valuable patents. Ensure lab notebooks/ records are signed & witnessed regularly. Trade Mark Badge of origin of goods; may Actual use in the Provide perpetual protection if used comprise a word, logo, smells, marketplace establishes consistently, It is helpful to add the ™ jingle, shapes, sounds, etc. this right. Registration at symbol to your logo. (The ® symbol the Trade Mark Registry should not be used until registration has for fee. been granted.) Guide For Managing IP Page 2 location:CREU/TT/Policy documents/2009 April
  3. 3. 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 explained below. 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. Guide For Managing IP Page 3 location:CREU/TT/Policy documents/2009 April
  4. 4. 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 contractual obligations; 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. Guide For Managing IP Page 4 location:CREU/TT/Policy documents/2009 April
  5. 5. 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. Guide For Managing IP Page 5 location:CREU/TT/Policy documents/2009 April
  6. 6. 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. Guide For Managing IP Page 6 location:CREU/TT/Policy documents/2009 April
  7. 7. 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 Invention; • 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 shrink. 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 below. 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 Guide For Managing IP Page 7 location:CREU/TT/Policy documents/2009 April
  8. 8. 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. Guide For Managing IP Page 8 location:CREU/TT/Policy documents/2009 April
  9. 9. 6.6 Copyright 6.6.1 The ownership of copyright will normally reside with the employers of the author(s) as soon as the work is created. Exceptions to this include material that has been produced as part of a research or services rendered contract where the copyright has explicitly been assigned to the funding organisation. Moral rights will continue to reside with the author of the work unless they choose to assign this right away in writing. No formalities are necessary to establish a copyright although it is recommended that a copyright notice in a particular form should be placed on the front page of all works (including computer software) to be protected (e.g. © City University 24 December 2005). In common with widespread academic practice, the University may choose to waive its rights over books or other published material to be published in an individual capacity if the material does not form part of a course or teaching materials for the University. Permission for staff to use such material in advancing their work and pursuing scholarship will not normally be withheld. In particular, the University recognises and encourages the long standing tradition for academic publication in journals, e-journals, conference papers, academic books and all other forms of academic dissemination. As regards theses for higher degrees by members of staff, the Degree Regulations require that the University Librarian shall have discretion to allow copying in whole or part without further reference to the author. 6.7 Teaching materials 6.7.1 The University is committed to the continued development of course materials and modes of delivery which take advantage of technological developments allowing for distributed and remote learning. Staff creating teaching materials, including e-learning materials, on instruction from the University, do not gain IPR in the materials they create (aside from moral rights). Since this is material created in the course of their employment, the University automatically owns the IPR in what they create. However, staff will be granted a non-exclusive royalty free license for non-commercial purposes. 6.7.2 City’s guidance on the ownership of IP attached to e-learning materials and technologies is based on the good practice guide on intellectual property in e-learning programmes published by HEFCE in 2003, and will be reviewed regularly to take account of changes in this developing area. 6.7.3 Teaching materials, including e-learning materials and textbooks, are normally protected through copyright. As described above, the University, as the employer of the author, holds the copyright of the work produced by members of staff in the course of their employment at City and, therefore, the University is the first owner of the IPR in these teaching materials, including exploitable e-learning materials. The University recognises that staff, on taking up employment, frequently bring with them teaching materials developed elsewhere and will expect to continue to use their own teaching materials if they leave to take up a post in another university. The University does not lay claim to the copyright of teaching materials produced by members of staff in any previous employment. Academic or other members of staff involved in developing teaching materials will therefore be granted a royalty-free non-exclusive license to use their materials for non-commercial research and teaching purposes. This will be the default position. In common with existing practice, the University may also choose to waive its rights to the copyright of certain textbooks or other teaching materials at its discretion. However, the University expects to receive full value from its investment in the development of teaching materials in any case where commercial exploitation is possible and will assert its right to the copyright in such cases. The University may also withhold license to use materials developed at City if these are to be used in direct competition with University activities. A reasonableness test will apply and arbitration procedures will be followed in the case of disagreements over this issue. 6.7.4 If there is net income generated from the exploitation of the IP beyond the normal teaching activities of the University, then an equitable income-sharing arrangement will be concluded. 6.7.5 The University, in consultation with the relevant members of staff, may exploit (whether for financial gain or not) such teaching materials as it sees fit, including licensing or assigning the IPR in the teaching materials to third parties, or merging teaching materials with other materials created within the University or elsewhere. 6.7.6 Should the teaching materials prove to be profitable, the University agrees that the Revenue Sharing Policy (see section 6.2) will be applied. Guide For Managing IP Page 9 location:CREU/TT/Policy documents/2009 April
  10. 10. 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. Guide For Managing IP Page 10 location:CREU/TT/Policy documents/2009 April
  11. 11. Annex 1 Contact information, definitions relating to Intellectual Property, links to further information and Frequently Asked Questions (FAQs) Contact details 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 4180. 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 matters: 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 Inventor 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 invention. Patent 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 forward. Copyright 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. Guide For Managing IP Page 11 location:CREU/TT/Policy documents/2009 April
  12. 12. 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. Database Rights 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 features. Trade Mark A mark (logo) or other distinctive sign applied to or associated with products or services, which does not describe the products or services. Confidential Information 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. Moral Right 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. Ownership 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 Guide For Managing IP Page 12 location:CREU/TT/Policy documents/2009 April
  13. 13. 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 • Patent Database search • Copyright Licensing Agency • The US Patent and Trade Mark Office • The Software Patent Institute • The Chartered Institute of Patent Agents • UK association of composers, songwriters and music publishers Sources of Funding (Public) • The Research Councils portal • City subscription in Jan 2005 to : • The National Research Register • RD Info - a database of research funding opportunities • For EU information (for UK) • EU Commission website • SPIN/Genius website Government sites for Science Technology and IPR • Department of Trade and Industry • Office of Science and Technology • Trading Standards Office Market Research Information • The Chartered Institute of Marketing • The Bioindustry Association • London Biotech Network • The Chemical Industries Association • Companies House • The Diagnostics Club • London Medicine • The British In Vitro Diagnostics Association Sources of Funding (Private) • British Venture and Private Equity Network • The National Endowment for Science, Technology and the Arts • European Private Equity and Venture Capital Association • National Venture Capital Association • National Business Incubation Association • The Venture Site Guide For Managing IP Page 13 location:CREU/TT/Policy documents/2009 April
  14. 14. 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 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 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 links above. 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: What can I protect by filing a patent? For an invention to be patentable it must fulfil the following criteria: Guide For Managing IP Page 14 location:CREU/TT/Policy documents/2009 April
  15. 15. • 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. For instance: • 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. Guide For Managing IP Page 15 location:CREU/TT/Policy documents/2009 April
  16. 16. • 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 either: • 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 company director). 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 for introductions): • • (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 Guide For Managing IP Page 16 location:CREU/TT/Policy documents/2009 April
  17. 17. 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 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. Guide For Managing IP Page 17 location:CREU/TT/Policy documents/2009 April
  18. 18. 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. FAQ: Copyright 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? Guide For Managing IP Page 18 location:CREU/TT/Policy documents/2009 April
  19. 19. Relevant exceptions could apply to a limited extent for the use of material on the Internet. Examples are ‘fair dealing exceptions’ and, non-commercial research or private study. Fair dealing would apply for the purposes of criticism, review or reporting current events but it does not allow a photograph to be copied for news reporting. Caution is advised. Do we need to register for Copyright protection? Copyright protection is automatic as soon as there is a record in any form of the material that has been created, and there is no official registration or form or fee. But creators can take certain steps to help prove that material is theirs. How do we get copyright in other countries? Most copyright is protected automatically overseas under the Berne Convention. The following format is helpful in asserting your rights on a work. © followed by the name of the copyright owner and year of publication. The USA also has an official register for copyright which can be found at FAQ TRADE MARKS I have designed a Trade Mark "Y" – why do I need to register it? First, check that the TM is not already being used or registered for similar goods or services. Once registered your Trade Mark will give you protection against others copying or using the Mark on similar goods or services. How do I register a Trade Mark? Seek advice: Technology Transfer Manager at City on ext. 4180. How long does it take to register a Trade Mark? It can take several months from the date of application to the registry in the UK. Times can vary depending on regions of the world where protection is sought. Can I register a Trade Mark in other countries? There are systems in place for you to obtain multiple country registrations, again, seek advice. What does it cost? Costs will vary according to the complexity of the trade mark, the number of goods an services to be covered and whether you require protection in either just the UK, EEC or worldwide. For advice contact the Technology Transfer Manager at City on ext 4180. Guide For Managing IP Page 19 location:CREU/TT/Policy documents/2009 April
  20. 20. Annex 2: Innovation Disclosure Form STRICTLY CONFIDENTIAL 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 web). 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) Guide For Managing IP Page 20 location:CREU/TT/Policy documents/2009 April
  21. 21. 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) Name Department Telephone Email 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 Name Department Telephone Email 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 net costs) 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 (£) Guide For Managing IP Page 21 location:CREU/TT/Policy documents/2009 April
  22. 22. 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). Sign: Print name: Date: 1. I confirm that details provided in (and with) this application are accurate to the best of my knowledge. 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 Guide For Managing IP Page 22 location:CREU/TT/Policy documents/2009 April
  23. 23. Annex 3: City University Policy on Intellectual Property generated by Undergraduate and Taught Postgraduate Students 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 parties involved. 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). Guide For Managing IP Page 23 location:CREU/TT/Policy documents/2009 April
  24. 24. Postgraduate Research students are covered by the same regulations as those applying to staff, with specific requirements for those sponsored by external organisations. Guide For Managing IP Page 24 location:CREU/TT/Policy documents/2009 April