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Second Joint Report of the Council and the General Board on the ownership of Intellectual Property Rights (IPRs)

The COUNCIL and the GENERAL BOARD beg leave to report to the University as follows:

1. This Report is made in order to put forward for discussion the draft Ordinance on Intellectual Property Rights, which is contained in the Annex. The draft Ordinance is intended to give effect to the recommendations of the Research Policy Committee's Working Group on Intellectual Property Rights (IPRs) in the light of the Discussion of that Group's report which was published on 6 August 2003 (Reporter, 2002-03, pp. 1286-1302); the Discussion took place on 21 October 2003 (Reporter, 2003-04, pp. 123-137). After considering the comments on the report offered during the Discussion, the Council, after consulting the General Board, invited the Working Group's Chairman, Professor W. R. Cornish, to prepare this Second Joint Report in draft form (see the Council's Notice, p. 170). After making minor amendments to the draft, the Council and the General Board have agreed to publish it with a view to it being discussed on 11 May 2004.

2. The subject is complex and has a varied impact across academic disciplines. A brief introduction to the different types of intellectual property was annexed to the Working Group's report (above, at pp. 1300-1301) and will not be repeated here. It is important that the Ordinance should prove broadly acceptable and that, as far as possible, it should cover all persons whose work in the University generates some form of IPR. While it is hoped that the provisions for adjudication and appeal under the proposed Regulations 28-35 will be required only rarely, it is particularly important that the provisions give assurance that IPR disputes are handled fairly and consistently.

3. The notes that follow relate the Draft Ordinance to the Working Group's proposals. At the same time they give certain amplifications. References to the Working Group's report take the form WG, para. X.X.X. The Council may propose amendments to the draft Ordinance in the light of any remarks made at the Discussion.

Notes on the draft IPR Ordinance

Regulations 1-14 (General)

It is accepted that the University IPR Policy should be contained in an Ordinance, see WG, para. 3.1.2.

Regulation 1 specifies the persons to whom the Ordinance is to apply, namely, University officers (as defined in the Statutes and Ordinances) and other employees, who are referred to as 'University staff'. It also refers to the position of visitors, students, and others who become engaged in University research (as to which, see below, Regulations 10 and 11). The inclusiveness of this regulation reflects the tenor of WG, para. 3.1.1 and 3.1.5.10.

Regulation 2 states the fundamental entitlement of academic researchers in the University to place the results of their work in the public domain (see WG, para. 3.1.3). This freedom is recognized in accordance with normal academic practice and is not to be overridden by the fact that the work is done in the course of University employment (other than in respect of the limited categories of copyright and other non-registrable IPR referred to in Regulation 6). In particular it is not subject to any general condition in terms of employment concerning obligations of confidentiality owed to the University.

However, under the law in many countries, early publication of an invention may disentitle any person from subsequently obtaining patents on it. University staff should be aware that, in respect of patents and similar rights in inventions and new technology, intellectual property protection may be jeopardized if information about the inventions is made available to the public anywhere in the world before relevant applications for protection have been lodged. Any statement, oral or written, may suffice to negate the validity of a patent for the invention when it is made to another person or persons who are under no obligation to keep the invention confidential. This can apply whether it is the inventor who releases the information, or someone else.

In consequence, there will be conditions, particularly in relation to research sponsored by outside persons, where University staff must agree not to release information about their inventions in advance of applying for intellectual property protection, and this can be required of them under the conditions referred to in Regulation 9.

Regulation 3 provides that the Ordinance is concerned with intellectual property arising from research undertaken by University staff in the course of employment by the University. It is not concerned with other IPRs which protect results devised or created by staff. The regulation makes clear that advice given during a consultancy is to be regarded as private and so outside employment. Issues concerning consultancy are a matter for the relevant Head of Department or Chairman of a Faculty Board and do not normally affect the ownership of IPRs (WG, para. 3.1.5.9). What activities are to be regarded as falling within the contractual obligation to undertake research may be difficult to work out in particular circumstances and may ultimately require the issue to be put to a Referee for decision under Regulation 12. The time and place at which the nub of the research is realized can be significant evidence of what is within employment, but it should not be taken as the sole criterion (WG, para. 3.1.5.1).

Regulations 4-7 express the root proposals of the Working Group (WG, esp. paras. 3.1.5.2, 3.1.5.7, 3.1.6): formal IPRs, which are acquired by application to a patent office or other official body, should belong ab initio to the University (Regulation 4); but University staff should be entitled to informal rights, notably authors' copyright and confidential know-how (Regulation 5). The Group viewed this solution as providing a reasonable balance of interests and as respecting settled academic expectations. It accords, for instance, with the recommendations already made by the Joint Working Party on Copyright (Reporter, 2001-02, p. 80) and it avoids the result that confidential information and know-how generated during research should belong in general to the University. There is also an important legal reason why patent rights should be regarded as accruing from the outset to the University, which is explained below in relation to pre-research Collaboration Agreements (see the comments relating to Regulation 9).

The relationship between the entitlement to place research results in the public domain (Regulation 2) and the respective entitlements to IPRs under Regulations 4 and 5 needs to be emphasized. Regulation 2 gives the University staff concerned power to decide whether information which might otherwise be the subject of a formal IPR should instead be made freely available as the result of publication or other public dissemination. If they decide instead that the prospects for commercialization should be explored, they become obliged (by Regulation 15) to disclose their research results to the University. This is in order that the University can decide, following the procedures detailed in Regulations 16-21, whether to make the applications for IPRs to which it is entitled under Regulation 4. Given the range of copyrights which Regulation 5 accords to University staff, it is necessary to specify reasonably briefly those circumstances in which it is to be expected that the University will have the copyright in written and other material produced by its employees. This is the purpose of Regulation 6, which creates exceptions for administrative work, work such as examination papers and library catalogues and specially commissioned works, such as reports of working groups and committees. Regulation 7 refers to a series of rights, more or less closely related to authors' copyright, which the law confers at the outset on the investor who sets up and finances the production process. It confirms that in these cases the relevant owner is the University. Regulations 5-7 should be read together with Regulation 25, which deals with specific arrangements concerning copyright and other IPRs in projects for distance learning and database compilation in which the University is a participant (WG 3.1.10).

Regulation 8 confirms that each owner of an IPR has power to deal with the right by assignment of that ownership; or by licence which authorizes another to act within the scope of the right; or in other ways allowed by law. It lays a general foundation for Regulation 9 which provides for IPR arrangements to be made with external funders and other sponsors of research, notably by Collaboration Agreements of the types provided by the Research Services Division's Model. Where, for instance, research grants are to be made on terms that require all relevant IPRs to be held by the University, or assigned or licensed to the third parties or their nominees, University staff and others associated with the research will have to agree to surrender their IPRs in order for the University to enter into the collaboration.

It should be noted that, if the University staff member were to be the initial owner of any entitlement to apply for patents (whether as sole or joint owner), then the Patents Act 1977, Section 42(2),1 could well make it legally ineffective for her or him to give a binding assignment of that right to the University or others in advance of the invention being made.

Regulation 10 provides for the conditions which may be placed on University officers and employees in relation to externally sponsored research to apply equally to visitors and to others. The inclusion of College Teaching Officers and College Research Fellows relates to their participation in research funded through arrangements made by the University. Some adjustment of the revenue-sharing arrangements under Regulation 20 may be called for as between the University and the College. Current practice is to give some part of the University's portion to the College.

Regulation 11 provides for students to give similar undertakings in order to participate in particular research projects. They will be required, when they accept to become students of the University, to accept that they must give such undertakings if they are sought. Whatever the choice made by a student concerning these undertakings, the University will ensure that assessment of her or his performance is not affected as a result.

Regulation 12 provides for the referral of disputes relating to the provisions of the Ordinance to a University Technology Transfer Referee in accordance with Regulations 28-35 (see below). The latter regulations establish a panel of such referees and specify the steps to be followed in determining a dispute. Regulation 30 provides for an appeal from a Referee's decision to a Technology Transfer Appeal Tribunal as defined in Regulation 31. Power to make procedural rules is conferred by Regulation 32.

Regulation 13 determines the date from which the Ordinance is to take effect. From that date it will apply to all University officers and others affected but, in general, only in relation to subsequently created subject-matter. Previously created material will continue to be dealt with in accordance with the present provisions there mentioned; but these will cease to have effect for the future (see WG, paras. 3.1.2, 3.1.10).

Regulation 14 states that when 'the University' is referred to in the Ordinance in relation to executive powers and responsibilities this is a reference to the Council and persons to whom the Council delegates authority.

Regulations 15-27 (Administration of the University's IPR Provisions)

Regulation 15 imposes on University staff the duty to report research results with potential commercial value arising out of University employment to the Technology Transfer Office (under present arrangements) and the relevant Department. This duty arises once a staff member has decided that the results should be commercialized, rather than placed in the public domain (WG, para. 3.1.5.6). It is required to the extent that the relevant rights call for registration or grant by an authority, since those are the forms of IPR to which the University is entitled by Regulation 4. In cases of doubt about whether any such rights are reasonably capable of being procured, it will be advisable to consult the Technology Transfer Office. This could be so, for instance, in relation to software, where the possibility of securing patent protection is changing in various patent regimes round the world. If necessary any dispute may be referred to a Referee under Regulation 12.

Regulation 16 gives the University power (through the Council or a duly designated officer) to pursue its entitlements and imposes obligations on both it and the staff member to ensure that all inventors, devisers, and creators are identified. So far as patents are concerned, this gives effect to an entitlement to be named which arises under legislation. It is also intended to assist over claims to shares of revenue under Regulation 20 (WG, para. 3.1.5.10).

Regulations 17 and 18 impose on the University a six-month time limit in which to decide whether to seek the IP protection to which it is entitled and provides for appropriate action to be taken when it decides not to proceed. What should happen will depend on the particular circumstances. If a dispute arises it could be the subject of a Regulation 12 reference (WG, para. 3.1.5.8).

Regulation 19 requires collaboration between the Technology Transfer Office and University staff, in which all reasonable proposals by the latter for organizing commercialization must be brought into account. It deals expressly with the situation where the bundle of rights protecting a technological innovation belong in part to the University and in part to a staff member. The latter is placed under no duty to assign or otherwise deal with her or his own rights; but if an irreconcilable dispute arises between the two sides, in order that opportunities should not be lost through a stalemate, the dispute should be open to resolution by a Regulation 12 reference.

Regulation 20 provides the terms for distribution of revenue accruing to the University from the exploitation of IPRs, including the proportional scale that is currently in use under Grace 6 of 21 March 2001. Additional provisions now deal with the termination of University employment and death of a staff member (WG, para 2.3 and 3.1.13).

Regulation 21 requires mutual confidence to be preserved during the period between notification of research results and the lodging of relevant applications for rights (mainly for patents) which must not be revealed in advance of those applications.

Regulation 22 deals with the situation where the only relevant IPRs will belong initially to University staff. It enables them to seek assistance from the Technology Transfer Office on terms of the type there mentioned.

Regulations 23 and 24 provide for the frequent case of prior financial support or other collaboration with an external sponsor, which is dealt with in outline by Regulation 9. In practice, these are the subject of Research Collaboration Agreements and research grants negotiated by the Research Services Division. These now cover the situations (i) where the University is treated as owner of all relevant IPRs; and (ii) where the sponsor or a nominee acquires the relevant IPRs or becomes a licensee of them. Regulation 23 imposes requirements on University staff involved in research under such Agreements to notify results and to assign or license IPRs to which they become entitled under Regulation 5 in circumstances where these are the terms of the Research Collaboration Agreement or research grant.

By Regulation 25, where the University is a party to, or itself establishes, a distance learning or database project, it is given power to require a University staff member to deal with her or his IPRs as part of an overall agreement for the management of the project. In reaching such agreements, the University will seek, unless it would be unreasonable, to preserve the ability of University staff to place data in the public domain from a database which they have compiled (WG, para. 3.1.9).

Regulation 26 gives the University, acting by departmental decision, the power to use teaching material prepared by a staff member for teaching in the University by others.

Regulation 27, for clarity, asserts the University's exclusive rights to use its own name, arms, and trade marks. It then allows arrangements to be made for University staff to use those signs in projects which are essentially their own, subject to appropriate safe-guards.

Regulations 28-35 (Adjudication and Appeal)

Regulations 28-35, which give effect to Regulation 12, lay down new procedures for resolving disputes over IPRs covered by the Ordinance, whether the issues are between the University and a staff member, a person referred to under Regulation 10 or a student, or between two or more such people. A dispute is referred in the first instance to a member of a Panel of Referees established by the Council (Regulation 28). From the decision of a referee an appeal may be taken to an Appeal Tribunal, as constituted by Regulation 31 (WG, paras. 3.1.5.8, 3.1.10, 3.1.11).

29 March 2004ALISON RICHARD, Vice-ChancellorDAVID S. INGRAMMARTIN REES
 Z. BARANSKIIAN LESLIEG. A. REID
 JOHN BOYDA. M. LONSDALELIBA TAUB
 WILLIAM BROWND. LOWTHERJOAN M. WHITEHEAD
 D. A. GOODD. W. B. MACDONALD 

29 March 2004ALISON RICHARD, Vice-ChancellorN. O. A. BULLOCKD. W. B. MACDONALD
 JOHN BELLH. A. CHASEMELVEENA MCKENDRICK
 TOM BLUNDELLM. J. DAUNTONROGER PARKER
 WILLIAM BROWNPETER LANDSHOFFKEITH PETERS

Annex: Draft Ordinance

Intellectual Property Rights

General

1. The following regulations apply to all University officers, as described in the Statutes and Ordinances of the University, and to all other persons employed by the University. The term 'University staff' in these regulations denotes all the above persons. The provisions of these regulations may also be applied to visitors to the University, and to associates and students of it, by virtue of Regulations 10 and 11.

Freedom to make research public

2. University staff are entitled to decide that the results of any research undertaken by them in the course of their employment by the University shall be published or disseminated to other persons to use or disclose as they wish in accordance with normal academic practice. However, where, by virtue of Regulation 9 below, a University staff member must keep research results confidential until applications for intellectual property rights have been lodged with patent offices or other authorities, he or she must abide by that obligation.

Initial entitlement to intellectual property rights

3. Where intellectual property rights arise from research undertaken by University staff in the course of their employment by the University, the initial entitlement to those rights shall be as provided in the following regulations. Research undertaken by University staff in the course of their employment by the University shall include all research conducted under the obligation to do so, expressed or implied, in their terms of employment. The time when, and the place where, particular research results are reached or achieved shall be factors to be taken into consideration in assessing whether the research is in the course of employment. Where a person external to the University consults a University staff member for advice, that advice will normally be regarded as private and therefore as forming no part of her or his obligations in the course of employment by the University.

4. The University shall have the initial right to apply for a patent for an invention, for another right in novel technology such as a utility model or petty patent, for a plant variety right or plant patent, and for a registered design for a product, any associated trade mark registration or any other type of intellectual property that is dependent on registration, deposit, or grant. The University or its delegated nominee (currently the University's wholly owned subsidiary, Cambridge University Technical Services Ltd (CUTS)) will become the proprietor of any intellectual property right that is in consequence granted or registered. A University staff member who is the relevant inventor or deviser shall be named as such in the application.

5. Other intellectual property rights, arising from the activities of University staff in the course of their employment by the University, which exist without the need for any formal application, belong to the University staff member who creates, works out, or expresses the results subject to any third party rights which they may have previously agreed. This applies in particular to copyright and moral rights in literary, dramatic, musical, and artistic works; copyright in software, notwithstanding that there may also be patentable results embodied in the software; copyright arising from authorship of a database; performers' rights; unregistered design rights; and rights over information (such as trade secrets and confidential know-how).

6. Notwithstanding Regulation 5, the University shall own copyright, database rights, and other unregistered rights in (a) works created for the administrative and managerial purposes of the University, including advice to students other than teaching materials; (b) works such as examination papers and library catalogues; and (c) any other works commissioned by the University, such as special reports on its policy or management. For the purposes of this regulation, works commissioned by Cambridge University Press in the course of its business shall not be regarded as such commissioned works.

7. Rights against copying which are accorded to investors in the production of sound recordings, films, broadcasts, the typographical arrangements of published works, and sui generis rights of extraction and utilization of databases belong initially to the University in cases where the University is the investor or co-investor in such products and/or when they are made with University equipment. These rights over products are additional to, and do not affect, the copyrights and performers' rights referred to in Regulation 5 that protect works and performances included in the products. The University shall not transfer or assign these rights to a third party without consultation with the creators who shall have rights of referral to a University Technology Referee in accordance with Regulations 28-35.

8. The party initially entitled to an intellectual property right by virtue of Regulations 4-7, whether the University or a University staff member, may deal with the right by assignment, licence, waiver, or other dealing entered into before or after creation of the subject-matter of the right, so far as is permitted by law. The University may elect to assign its intellectual property rights in appropriate cases to CUTS or another nominee company.

9. In order to reach agreement with an external sponsor of research, or with a collaborating partner, on the terms under which the research is to be conducted or on which materials for research are to be transferred to or from a third party, the University may seek to obtain from University staff who engage in the research, an undertaking to assign to the University or a third party or otherwise deal with such intellectual property rights as will be accorded to them by virtue of Regulation 5 above. University staff may also be required to undertake to maintain the confidentiality of any results arising from such sponsored or collaborative research on agreed terms. External sponsors include government departments, research councils or other public bodies, charities, industrial, financial or commercial firms, and other sources that are willing to finance or collaborate in other ways in a project to be administered by the University or a third party. The University staff member's undertaking may be made a condition for the University's acceptance of such sponsorship. It may also become a condition for permitting that person or additional persons to engage or participate in the research, either at its commencement or subsequently.

10. The University shall require academic and other visitors to the University, other non-University staff engaged or permitted by the University to work on research projects, whether or not under a contract for services, and College Teaching Officers and College Research Fellows working on University research projects, to agree to be bound by the regulations in the same manner as University staff or by such other terms as may be agreed in the circumstances. In the case of College Teaching Officers or College Research Fellows, it will be for the College to agree with the University what share (if any) in the portion of net revenue accorded to central funds under Regulation 20 shall instead be allotted to the College.

11. The University has no initial entitlement to intellectual property rights in material invented, created, or devised by students, except in respect of the rights referred to in Regulation 7 and by virtue of Regulation 9. Where, however, such material results from collaboration with others in research, the University may at any stage require the student to assign her or his intellectual property rights to it in order to secure the commercial exploitation of the results of the research as a whole. An undertaking to do so shall form part of the student's terms of enrolment. The University may also require the student to undertake to keep those results confidential while steps are being taken to secure the intellectual property or to establish the exploitation arrangements. When the University obtains such an assignment, it undertakes to provide the student with a share in such financial returns from the exploitation as there may be on the same basis as that applying to University staff by virtue of Regulation 20 or on previously agreed terms. A student who refuses to sign these undertakings may be offered an alternative project on which to work. The University will ensure that the student's choice does not interfere with the assessment of her or his academic performance.

12. Where a dispute occurs between the University and a University staff member, a person referred to in Regulation 10 or a student, or between staff members, a person referred to in Regulation 10 and/or a student, as to the application of these regulations or the terms of the agreement on which they should enter, or on which they have already agreed to proceed, concerning the commercial exploitation of research results, the dispute shall, at the request of either, be referred to a University Technology Referee in accordance with Regulations 28-35.

Scope of application

13. These regulations apply to all intellectual property rights relating to subject-matter invented, devised, made, or created on or after [Date on which Grace takes effect] save to the extent that a University staff member has, before that date, entered into an explicit arrangement to the contrary with the University or the University has previously entered into an agreement with a third party relating to those rights. Intellectual property rights in subject-matter invented, devised, made, or created before that date shall be governed by the previous agreements, rules, policies, and notifications of the University which affect them. In all other respects the present regulations shall replace and supersede the General Board Notice on commercial exploitation of inventions funded by Research Councils, dated 26 February 19872 and Grace 6 of 21 March 2001.

Interpretation

14. In these regulations, references to acts to be done by or in relation to the University in the exercise of any right or power, or in fulfilment of any duty or responsibility, are to acts done by or on behalf of the University Council or by a duly designated officer and to directions given by the Council.

ADMINISTRATION OF THE UNIVERSITY'S INTELLECTUAL PROPERTY PROVISIONS

15. If University staff decide that the results of their research should be the subject of commercial exploitation, and that the rights to those results are reasonably capable of including rights to which the University is initially entitled by virtue of Regulation 4, they must notify the University, through the Technology Transfer Office, and the relevant Head of Department or Chairman of Faculty Board and provide the University with full disclosure of the relevant results in order that the steps referred to in Regulations 16-21 may take place.

16. If the University, with the agreement of the University staff member, decides that a patent or other form of intellectual property right requiring registration should be applied for in respect of one or more countries in the world, it may exercise its entitlement to do so in the University's name, or in the name of CUTS, in accordance with Regulation 4. In respect of any such application, the University staff member shall assist the University to take reasonable steps to determine who all the inventors, devisers, or creators of the subject-matter are and must include them in any application which requires them to be named.

17. The University shall decide, within six months of receiving notification of sufficiently detailed research results, whether it wishes to make the application referred to in Regulations 4 and 16. If it does, it must inform the University staff who have notified the results and it must make and prosecute the application with all reasonable diligence.

18. If the University decides not to pursue an application, to withdraw an application, or not to maintain a granted or registered right, it must forthwith inform the University staff who have invented or devised the subject-matter of its decision. The University will seek to determine with those persons the future course of action and financial arrangements, subject, if necessary, to a reference under Regulations 28-35.

19. During the period following receipt of notification of the research results from a University staff member, the Technology Transfer Office will consider with her or him how commercial exploitation of the results will or may be pursued, having regard to all reasonable proposals for that exploitation made by the staff member. The Technology Transfer Office and the University staff member will keep each other informed and will co-operate fully in order to achieve an agreed outcome. Where a University staff member is entitled to intellectual property rights or similar rights under Regulation 5 over information in the results of the research and those rights are relevant to the exploitation of the University's rights under Regulation 4, the staff member may agree to assign or license her or his intellectual property rights either to the University, to CUTS, or to a third party in furtherance of such arrangements for exploitation as may be reached.

20. Where the University or CUTS receives income from the commercialization of intellectual property rights by virtue of Regulation 4, or by virtue of any assignment to the University or CUTS of a University staff member's intellectual property rights under Regulation 5, whether in association with the exploitation of the University's rights under Regulation 4 or by virtue of Regulation 22, any direct costs (such as patent filing costs, legal fees, and other disbursements borne by the University) will be deducted and the net revenue will be shared between the inventor or other creator of the research results (here referred to together as 'inventors') protected by intellectual property rights, her or his Department or Faculty, and the University as specified in the Schedule to these regulations.

Where University staff together contribute to the creation of intellectual property that is subsequently exploited, the distribution of the inventors' share of revenue shall be a matter for those staff members to determine, referring the matter if necessary in accordance with Regulation 12. They should notify the Technology Transfer Office of the resulting arrangements. If the staff members do not reach an agreement the Technology Transfer Office will cause the inventors' revenue to be distributed equally amongst the inventors.

A royalty sharing arrangement under this regulation shall continue in effect after the person concerned ceases to be a University staff member or to hold a position or status which makes the regulation applicable. Upon the death of such a person, her or his share under this regulation will continue to be payable to her or his estate or a nominee thereof.

21. During any period in which either the University or a University staff member is considering whether to make an intellectual property application or applications that entail keeping the subject-matter from being available to the public beforehand, each shall be obliged to keep the research results confidential until those applications have been made and are therefore no longer in jeopardy from any prior publication.

Where a University staff member is solely entitled to intellectual property rights under Regulation 5

22. Where a University staff member is entitled under Regulation 5 to all intellectual property rights in research results, he or she may seek the assistance of the Technology Transfer Office in arranging exploitation of the rights, for instance by agreeing a fee for management by CUTS, or by assigning the rights to CUTS in return for use of the University's name, arms, or trade marks and then adopting the revenue-sharing arrangement described in Regulation 20.

External sponsorship

23. An agreement of the kind specified in Regulation 9 may be reached by the University with an external sponsor of research or a third party, under which, in return for the agreed level of funding or sponsorship for research, transfer of materials, or other collaboration, the third party shall be assigned, or shall be granted an exclusive or non-exclusive licence over all or any intellectual property rights that the University may subsequently own in the results of the research.

24. University staff who are to conduct the research under such an agreement shall assign to the University pursuant to the undertaking referred to in Regulation 9, any intellectual property rights arising from the research to which they are entitled in accordance with Regulation 5. Such agreements shall designate the person to whom University staff must notify relevant research results and the period within which the notification must be given. Standard terms for these undertakings may be included in the Model Research Collaboration Agreement that is available from the Research Services Division.

Specific exceptions concerning copyright and database right

25. Where the University participates in, or establishes, a specific project to organize teaching or other dissemination of knowledge, otherwise than to its own students, or in a project to set up and maintain a database it may require that copyright arising in relation to material incorporated into the project or arising from it be assigned or licensed to it as part of an agreement for the management of the project.

26. In relation to teaching materials prepared by a University staff member for use in the teaching of the University's students, and the Department or Faculty Board responsible for teaching so resolves, the University shall have a non-exclusive, royalty-free, perpetual licence to use the material for teaching in the University.

Use of the University's name, arms, and trade and service marks

27. The University is solely entitled to use its name and arms, and to trade marks, service marks, corporate names, and domain names in which either appears, where the use of the name, shield, or mark is such as to suggest that the University is engaged in, or is connected with, or sponsors, the activities. In appropriate circumstances the Council or a duly authorized officer may, subject to such conditions as may be determined in a particular case, permit a University staff member wishing to commercialize her or his intellectual property rights under Regulation 5 to use the name, arms, or mark for commercial activities with which they are or will be associated.

ADJUDICATION AND APPEAL

28. The Council shall maintain a panel of persons to serve as University Technology Referees. Such persons need not be members of the University. One member of the panel shall be designated by the Council as Chairman of the panel. The Council may appoint a Deputy Chairman to serve if the Chairman is not able or willing to act in a particular case.

29. If a dispute arises to which Regulation 7 or 12 applies:

(a) the University staff member, a person referred to under Regulation 10 or the student concerned, or a duly authorized person representing the University, shall send written notice to the Secretary of the panel of referees of the facts of the dispute within thirty days of the dispute arising (or such other period as may be agreed), and shall at the same time send the same material to the other parties to the dispute;

(b) the Secretary shall notify the Chairman (or Deputy Chairman) who will act herself or himself or who will designate a member of the panel to act as the Referee in a particular case; the Secretary shall notify the persons referred to in sub-paragraph (a) of this appointment;

(c) the Referee shall consider the material submitted by the University staff member, person referred to under Regulation 10, student or authorized representative of the University who has raised the dispute and any relevant assertions of fact or law made by the other persons mentioned in sub-paragraph (a);

(d) at her or his discretion the Referee may hold a hearing at which all those identified in sub-paragraph (a) shall normally be entitled to be present;

(e) following consideration and hearing the Referee will issue a written adjudication, to be communicated to the Registrary, and the persons mentioned in sub-paragraph (a). Such adjudication shall include recommendations as to the resolution of the matter in dispute;

(f) the Chairman, or the Referee if a referee has been appointed, may dismiss summarily a complaint which, in her or his opinion, is trivial, vexatious, or out of time.

30. Any participating party aggrieved by the Referee's adjudication may within thirty days of notification of the adjudication appeal to a Technology Appeal Tribunal. Such appeal should be made in writing to the Clerk of the Tribunal, and shall include full documentation. A copy of such papers shall be sent by the appellant to those mentioned in Regulation 29(a).

31. The Technology Appeal Tribunal shall consist of:

(a) a legally qualified Chairman, designated by the Registrary to serve in a particular case from a panel of Chairmen to be maintained by the Council;

(b) two members of the Regent House, designated by the Registrary from a panel of members of the Tribunal to be maintained by the Council.

No person shall serve on the Tribunal if he or she has previously served as Chairman, Deputy Chairman, or Referee in the initial reference of the particular case or is subject to a conflict of interest.

32. The Chairman of the Tribunal for the particular case shall determine whether the proceedings shall be dealt with on the basis of written representations, or at an oral hearing, or both, provided that the Chairman shall normally determine that an oral hearing shall take place if one of the parties requests it.

33. The decision of the Tribunal shall be notified in writing to the parties, and to the Registrary.

34. The Chairman of the panel of Referees and the Chairman of the Tribunal may from time to time make procedural rules about the respective procedures, either of general application, or in respect of a particular case. A decision of the Tribunal in a particular case shall bind the parties, subject to any rights which a member of the academic staff has under Statute U, to any disciplinary proceedings brought by the University under Statutes B and U, to any review proceedings before the Commissary under Statute D, V, to any legal proceedings, and in respect of students, to the Students' complaints procedures.

35. The Registrary shall designate a person to act as Secretary of the Panel of Referees, and as Clerk of the Tribunal.

SCHEDULE

  University
  
 Inventors (jointly)DepartmentCentral Funds
Net income(%)(%)(%)
First £20,0009055
Next £40,000701515
Next £40,000502525
Above £100,00033.433.333.3

Note of Dissent

I do not agree with this Report. Until 2001, the University prospered under a liberal IP policy which protected academic freedom. Serious grounds for concern have arisen since then. The attempt to tighten IP policy still further in 2002 was rightly resisted by the Regent House (Reporter, no. 5901, 30 October 2002). The compromise advocated by the Cornish Committee was considered deeply unsatisfactory by a clear majority of discussants (Reporter, no. 5938, 29 October 2003). The present Report is even less liberal than the Cornish proposals. I will ask the Regent House to repeal Grace 6 of 21 March 2001 instead, and thus return the University to the tried and tested IP policy that we operated with such conspicuous success for so many years.

ROSS J. ANDERSON

1 Section 42(2) applies to contracts made by an employee with an employer or another person requested by the employer (see Section 42(1)). It provides that 'any term in [such] a contract which diminishes the employee's rights in inventions ... made by him ... after the date of the contract or in or under patents for those inventions or applications for such patents, shall be unenforceable against him to the extent that it diminishes his rights in an invention of that description so made, or in or under a patent for such an invention or application for any such patent'.

2 Reporter, 1986-87, p. 440.


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Cambridge University Reporter 31 March 2004
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