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Third 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:

Summary

1. This Third Joint Report of the Council and the General Board provides a clear and comprehensive framework for the ownership and control of intellectual property in the University. Within the constraints of maintaining academic freedom and fulfilling obligations to sponsors, the policy presented provides as much consistency as possible across the spectrum of research funding sources. It enshrines the rights to make research results public and, where a creator of intellectual property wishes to exploit commercially, provides the creator with a great deal of control. The policy allows the University to fulfil its duty of care to employees and students by requiring disclosure, setting conditions for ownership of intellectual property arising from collaborative environments, and specifying a dispute resolution procedure to which all parties within the University have access. The policy is generous to inventors relative to other universities; the Council and the General Board are of the view that this will encourage those who wish to engage in commercialization of their research.

Following the main body of this Report are six annexes:

Introduction

2. This Report of the Council and General Board is a response to the Discussion of 11 and 18 of May 2004 (Reporter, 2003-04, p. 738). It contains revised proposals in response to the remarks made at the Discussion. The Council and the General Board are grateful to all who have contributed to the debate.

3. Cambridge Enterprise, now separated from the Research Services Division (RSD) of the Unified Administrative Service, encompasses the Technology Transfer Office of the University. The role of RSD is to manage the administration of research grants and contracts, including ensuring that obligations to sponsors are fulfilled. The role of Cambridge Enterprise is to aid the process of commercial knowledge exchange, in particular in the commercialization of research results. In general, references in the previous Report to the Technology Transfer Office are replaced here with references to Cambridge Enterprise.

4. The intention of the attached draft Ordinance is to give reassurance and clarity in respect of the rights of individuals to control how the intellectual property that they create is disseminated and exploited. There are also many changes of detail that arise from specific suggestions made in Discussion. The two major revisions are, firstly, an explicit statement that wherever possible agreements that affect the ownership of IPR must be entered into prior to the creation of that IPR; and, secondly, confirmation of the explicit freedom of the creator to choose a commercialization path other than through Cambridge Enterprise when funding rules allow. However, as in the previous draft, the right to apply for a patent initially belongs to the University.

Purpose of a University IPR policy

5. The purpose of a University IPR policy is to define clearly the ownership and control of commercialization of intellectual property created in the University in a manner that is consistent both with the charitable objectives, aspirations, and culture of the University and with the external environment in which the University operates. There are a number of issues that the policy must address:

(i) Clarity of ownership.
(ii) Consistency across the University in treatment of intellectual property.
(iii) Freedom for academics to place their results in the public domain.
(iv) Students often work in a collaborative setting where there is joint creation of intellectual property. Students should understand their position before intellectual property is created, not after.
(v) In many research contracts and grants there are IPR and confidentiality agreements that may affect both students and staff.
(vi) The University has an obligation to sponsors to provide processes for technology transfer of the results of sponsored research and to share any revenues accrued amongst the University, individual creators, and, in some cases, the sponsor.
(viii) In many cases the creator of intellectual property is well placed to understand how it can be exploited, and, in all cases, the creator's wishes are critical to its commercialization.

6. The policy must ensure that creators of intellectual property are recognized and rewarded fairly. It must make clear the obligations which the University has to sponsors of research. It must also recognize the increase in collaborative research and the importance of uniform treatment of those involved in collaborations even when there are multiple sponsors of the collaboration.

7. There is also an historical context that is important. Externally funded research has continued to rise: research grants and contracts represent over one third of the University's income.1 Research activities that are unfunded (or 'internally funded') are nonetheless important, but on the whole give rise to IPR in the form of copyright rather than patents. Many sponsors prescribe ownership of the IPR that results from the research they sponsor. Many place an obligation on the University to exploit research results in an appropriate manner and give guidance on revenue sharing. Grants from Research Councils and charities represent a large proportion of the University's research income. The IPR policy of the Research Councils and the larger medical charities are provided in Annex B, but are summarized below. The Research Councils are moving to a common set of core research grant conditions; RG22 of the Cross-Council research grant terms and conditions which governs commercialization, in summary, provides that ownership of IPR and responsibility for its commercialization rest with the University unless specifically stated otherwise.

Sponsor2OwnershipShare Revenue
with Sponsor?
Obligation
to Exploit?
Funding 03/04 (£m)
WellcomeUniversityYesYes31.6
EPRSCRG22 RG2226.7
MRCRG22 RG2214.5
BBSRCRG22 RG2210.5
CRUKUniversity or CRUKYesYes, else to CRUK7.4
PPARCRG22 RG226.9
NERCRG22 RG224.6
BHFUniversityYesYes3.7
ESRCRG22 RG223.3
AHRCRG22 RG221.4

8. Industrial funders typically identify either the funder or the University as the owner of IPR, or state that resulting IPR will be placed in the public domain. Projects funded under the European Framework Programmes are subject to specific agreements in which the institutions are principals for the purpose of IPR ownership. US charities and agencies operate largely in the context of the Bayh-Dole Act which assigns to universities ownership of IPR arising from research sponsored by the Federal Government.

9. Patent rights that arise from research governed by contracts that do not either assign ownership and/or place an obligation on the University to exploit IPR can thus be assumed to be a small part3 of the landscape.

10. Consistency of ownership policy across types of intellectual property and across the activities of the University is a difficult issue. There are requirements that are inherently in conflict: freedom to publish and the need to maintain confidentiality of certain information can be considerations in a single piece of research. One goal of the proposed policy is to minimize the inconsistencies arising from these conflicting requirements. But some inconsistencies will continue to arise: on the one hand, the University is required to take ownership of intellectual property arising from a significant portion of research funding, while on the other the Council and General Board have no desire to place restrictions on academics publishing their work, nor on the activities they engage in outside the University.

11. There are agreements that the University, on behalf of individuals, including students, enters into with their prior knowledge, in order to receive funding or gain access to certain materials. The University's IPR policy cannot subvert these agreements, and, for the purpose of clarity, it is important that the IPR policy gives notice that the default provisions of the policy may be overridden by these agreements. Such agreements are a fact of life and have been for decades. However, the proposed regulations of the Report of 29 March 2004 (Reporter, 2003-04, p. 599) were not explicit in stating that such agreements would have to be entered into before work was carried out. This is remedied in the attached draft regulations. The responsibility to ensure that visitors do not compromise these agreements is placed as a responsibility on principal investigators or other persons designated by Heads of Department.

12. Initial ownership of patent rights allows the University to determine who all the inventors are, thus discharging its obligations to employees, sponsors, and students in ensuring benefit and recognition to all relevant parties.

13. The views of the creators of IPR concerning, and their involvement in, the commercialization of IPR are critical to the success of commercialization. At the same time the University has an obligation to have in place mechanisms for the commercialization of intellectual property rights that arise from much of the research that it carries out. These mechanisms should be developed as a service for creators and the University, but the Council and General Board also recognize a need to allow academics to bypass these mechanisms if better alternatives exist and where the conditions of funding allow. It is proposed to handle this by requiring a discussion between creators and Cambridge Enterprise, giving guidelines and constraints, but not imposing the outcome of those discussions.

14. Many have asked for a financial justification for the proposed IPR policy. The motivation for the policy is not primarily financial. The Council and the General Board wish to see the results of research conducted in Cambridge exploited for public good and for economic growth of the country. They also wish to help the University's academic community achieve these goals. In addition, many sponsors require the University to have technology transfer mechanisms in place. There is also funding ('third stream funding') from the HEFCE which supports, and is dependent upon, these technology transfer mechanisms. The investment in technology transfer is in place and is not dependent on the University's IPR policy; the policy proposed here does not imply an increase in expenditure on technology transfer.

15. Revenue from technology transfer activities is not expected to be high relative to the University's turnover. Experience from the US, amongst institutions that we would consider our peers, is that returns are positive but in most cases modest.

16. The principal components of the proposed IPR policy are:

(i) The University may enter into agreements relating to specific research activities, on behalf of and with the prior knowledge and consent of individuals, that place confidentiality constraints upon those individuals and upon intellectual property created from the specific research activity. These agreements should be entered into prior to commencement of the research activity. Academics, including contract research staff, and students may have to agree to be bound by such agreements before joining an existing activity covered by an agreement.
(ii) Students may enter into agreements related to their third party funding that place conditions on the IPR that they create. Any such agreement should be entered into when funding is agreed.
(iii) In the absence of an agreement to the contrary under (i), academics own the copyright in works they create and have a right to place all the results of their work in the public domain.
(iv) Working practices for students across the University vary. Many work independently, while others work within large teams or in laboratories whose facilities are funded by external sponsors. In the former case, subject to (i) and (ii) above, students should own the intellectual property they create; in the latter case students may be required, prior to the commencement of research, to enter into ownership agreements covering the intellectual property that they create. Such agreements should treat students no differently than academics.
(v) Subject to (i) and (iii), the University owns the initial right to apply for patents and other registerable rights to protect intellectual property created by its employees in the normal course of their employment.
(vi) The University owns copyright in material prepared and/or commissioned for its administration, except for material that is subject to open source obligations or where a determination is made that placing the material in the public domain is advantageous to the goals of the University. This determination can be made under the authority of the Head of the relevant University institution; this authority may be delegated.
(vii) All other copyright rests with the creator unless specifically assigned to a third party by an agreement under (i) or (ii).
(viii) Investors rights related to copyright (database rights, typographical rights, etc.) which are accorded by law to the University will be assigned on request to the creator.
(ix) When the creator(s) of IPR have determined that it should be protected by patent, all relevant information should be disclosed to RSD. RSD will determine who the creators are and determine any constraints on the ownership of IPR based on any relevant sponsorship agreements. The creator(s) and Cambridge Enterprise will discuss the best path for protection and the best path for commercialization, for example whether by licensing or by creation of a new venture.
(x) If the creators, acting jointly, decide that the most appropriate route for commercialization is not via Cambridge Enterprise, they shall inform RSD giving their reasons. RSD will examine the funding conditions (if any) to ensure that the University is not in breach of its obligations to funders in assigning IPR to the creators. Otherwise an assignment will be made in return for a share of royalties or equity. The only grounds for refusing to make this assignment are a disagreement amongst the creators or if such an assignment would place the University in breach of a third-party agreement.
(xi) There will be no obligation on Cambridge Enterprise to apply for a patent or other registered right, although there will be a time limit of 30 days after all relevant information is disclosed for Cambridge Enterprise to determine whether it wishes to apply. Likewise, there will be no obligation on the creators to be involved in commercialization of the IPR in any way. However, if they agree that a patent should be filed by Cambridge Enterprise, they shall use their reasonable endeavours to aid the patent application process.
(xii) When Cambridge Enterprise is not being used in the commercialization process, the University will assign rights to the creators for a licence revenue or equity share. There will also be a reporting obligation placed on the assignees. If Cambridge Enterprise has paid out patent costs, reimbursement of these costs will be a precondition of assignment.
(xiii) The share of revenue from royalties will be determined by schedule. This schedule will take into account whether or not Cambridge Enterprise has been involved in the commercialization. Shares of equity in new ventures shall be determined on a case by case basis.

17. Any individual dissatisfied by the interpretation of the policy by any individual in the University may appeal to the Technology Transfer Referee as defined in the draft Ordinance.

18. The Council and General Board recommend that the regulations to govern intellectual property rights in the University as set out in the draft Ordinance of this Report be approved.

23 May 2005ALISON RICHARD, Vice-ChancellorGEMMA DONALDSONDAVID SIMON
 TONY BADGERD. LOWTHERWES STREETING
 Z. BARANSKID. W. B. MACDONALDJOAN M. WHITEHEAD
 NIGEL BROWNMARTIN REESRICHARD WILSON
 WILLIAM BROWNG. A. REID 

11 May 2005ALISON RICHARD, Vice-ChancellorM. J. DAUNTONMELVEENA MCKENDRICK
 JOHN BELLRICHARD FRIENDROGER PARKER
 TOM BLUNDELLRICHARD HUNTERKEITH PETERS
 WILLIAM BROWNDREW LIVINGSTONI. H. WHITE
 H. A. CHASED. W. B. MACDONALD 

Note of dissent

We are unable to support this policy as it will undermine academic freedom and will have a chilling effect on the commercial exploitation of research. We hereby give notice that amendments will be introduced to the Regent House in due course.

23 May 2005R. J. ANDERSON
 M. R. CLARK
 R. J. DOWLING

Annex A: 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 concern visitors to the University, and to associates and students of it, by virtue of Regulations 12, 13, and 14.

2. Nothing in these regulations shall override the requirement for employees and students to keep confidential material the disclosure of which would be inconsistent with their duties under professional codes; material that is decreed to be confidential by a relevant ethics committee; or material that is obtained under the terms of a Non Disclosure Agreement. Moreover, nothing in these regulations shall override agreements that University staff or students have entered into with third parties as a condition of sponsorship or research funding.

Definitions

3. In the following regulations, the following definitions shall apply:

'creator': a person who invents, devises, designs, develops, breeds, works out, discovers, conceives, performs, produces, translates, or expresses;

'creates': invents, devises, designs, develops, breeds, works out, discovers, conceives, performs, produces, translates, or expresses;

'relevant creator': a creator eligible to be named in an application for registerable rights, for example inventors in the case of a patent; or any creator in the case of nonregisterable rights.

Freedom to make research public

4. 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. University staff should be aware that publication or dissemination may prejudice any future commercialization; this should be considered in any decision.

If University staff decide that the results of their research should be commercialized, they may be required to keep results confidential while applications for its protection are prepared.

Initial entitlement to intellectual property rights

5. Where intellectual property rights arise, or the right to apply for such rights arises, from the results of activities 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.

6. The University shall have the initial right to apply throughout the world 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 at the time that these regulations are approved. 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 creator shall be named as such in the application.

7. 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 at the time these regulations are approved, belong to the University staff member who creates the results subject to any third party rights which he or she 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).

8. The University shall own any registered trademark associated with the University's teaching and research activities created by University staff for that purpose. Notwithstanding Regulation 7, the University shall own copyright, database rights, and other unregistered rights arising from the activities of University staff in the course of their employment by the University in (a) subject matter created for the administrative and managerial purposes of the University, including advice to students other than teaching materials; (b) subject matter such as examination papers and library catalogues; and (c) any other subject matter 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 subject matter.

9. Material or other subject matter that is developed in the University of which the copyright is owned by the University, including any that may fall under Regulation 8, may be released under Open Source or similar arrangements on the authority of the Head of Department in which the material is created. The Head of Department may delegate such authority within a Department without restriction. (When material is derived from material acquired under Open Source arrangements that require any distribution of derived material to be under the same arrangements, no authority to distribute need be sought.)

10. The law accords rights against exploitation of certain products by third parties to creators who organize their production; these include sound recordings, films, broadcasts, published works (in respect of their typographical arrangement) and databases (in respect of extraction and utilization of their content). These rights over products are additional to, and do not affect, copyrights and performers' rights of the kind referred to in Regulation 7 that protect works and performances included in the products. In any case where, because the University is the investor or co-investor in such products, it acquires these rights by operation of law, the University:

(a)by virtue of these regulations grants licence to these rights to each creator free of charge or other obligation; and
(b)undertakes, on the joint request of all who contributed to the creation of the product, to assign these rights to those persons free of charge or other obligation on the latters' part.

11. The party initially entitled to an intellectual property right by virtue of Regulations 6-8, 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 a nominee company.

12. The University shall require 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. It shall be for the relevant College to agree with the University what share (if any) in the portion of net revenue accorded to central funds under Regulation 25 shall instead be allotted to the College.

13. It shall be the responsibility of a University staff member to ensure that visitors or other non-University employees, working on a University project for which the University staff member is named as principal investigator, do not compromise the University's intellectual property obligations to third parties with respect to that project. University staff members named as principal investigators on research grants and contracts should consider whether visitors or other non-University employees should be asked to enter into agreements in order to achieve this.

14. The entitlement to intellectual property rights in material created by a student shall rest with the student, with the following exceptions:

(a)Where a student is sponsored by a third party, a condition of sponsorship may be that the sponsor may own any intellectual property developed during the period of sponsorship. Sponsored students are, therefore, advised to check the terms of their sponsorship agreement.
(b)Where a student is working on a sponsored project as part of her or his course-work or research, the sponsor may own any intellectual property that the student develops. This will be specified in the research contract and the supervisor or Department should inform students if this is the case as early as possible in the admissions process and in any case prior to start of their research.
(c)Where a student is working in collaboration with others in a manner that gives rise to joint creation of intellectual property, or interdependent intellectual property, the student may be required to assign intellectual property to the University or place the results in the public domain without restriction. He or she will be treated in the same way as University staff under these regulations. If this case is likely to arise, students should be so informed at the offer of admission where practical, and in any case prior to the start of their research.

A student who believes that clause (c) above has been inappropriately applied may make an application to the University Technology Referee under Regulation 15.

A sponsorship agreement may also place a requirement on the student and her or his Examiners to undertake to keep results confidential while steps are being taken to protect intellectual property or to establish exploitation arrangements. The student may also be required to submit the dissertation to the sponsor for scrutiny before submitting it for examination. Any confidentiality agreement whose purpose is to delay public disclosure for the purpose of protection should usually not have effect for longer than three months from the time the sponsor is notified of intent to publish. When the University obtains an assignment of student-created intellectual property, 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 25.

15. Where a dispute occurs between the University and a University staff member, a person referred to in Regulation 12 or a student, or between staff members, a person referred to in Regulation 12 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 any intellectual property rights, or the subject matter to which such rights relate, the dispute shall, at the request of either, be referred to a University Technology Referee in accordance with Regulations 32-39.

Scope of application

16. These regulations shall apply to all intellectual property rights relating to subject-matter 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 policy set out in the General Board Notice4 on commercial exploitation of inventions funded by Research Councils, and that approved by Grace 6 of 21 March 2001.

Interpretation

17. 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 Council or by a duly designated officer and to directions given by the Council.

Administration of the University's intellectual property provisions

General

18. If University staff decide that the results of their activities 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 6, they must notify the University, through the Research Services Division, and the relevant Chairman of Faculty Board, or Head of Department or other institution and provide the University with full disclosure of the relevant results in order that the steps referred to in Regulations 19-24 may take place. University staff shall assist the Research Services Division to take reasonable steps to determine who all the creators of the subject matter are and whether any agreements govern the ownership or exploitation of the subject matter. The Research Services Division shall ensure that students' supervisors or contract researchers' line managers are aware of the intention to exploit commercially.

19. The University staff shall discuss with Cambridge Enterprise the path for exploitation, with the aim of reaching agreement on confidentiality, whether a patent application should be filed, and whether a company should be formed to exploit the technology.

20. If Cambridge Enterprise, with the agreement of the University staff member(s), 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 its designated nominee, in accordance with Regulation 6. In respect of any such application, all inventors shall be included in any application that requires them to be named.

21. The relevant creator of the subject matter, or creators acting jointly, may decide that they do not wish it to be exploited through Cambridge Enterprise and then may require the University to assign the rights referred to in Regulations 6 and 20. If not in contravention of any agreement governing ownership or exploitation of the subject-matter, this assignment may be to the creators for a fixed percentage of royalty income in the case where the creators decide to license or assign the rights to a third party; or under negotiated licence/equity terms when the creators are forming a company to exploit the rights. In the last-mentioned case, the guiding principle shall be that a fixed percentage of the rights attributed, on a fair and reasonable basis, to intellectual property, often referred to as inventors' rights, shall be assigned to the University. Any assignment by the University shall be conditional on the repayment of any funds expended by Cambridge Enterprise on protection of the subject-matter. If the creators cannot reach agreement, Cambridge Enterprise shall make a decision, against which any party may make application to the Technology Referee. The fixed percentages referred to in this regulation are set out in the Schedule attached to these regulations.

22. In the case where the creators do wish to commercialize through Cambridge Enterprise, Cambridge Enterprise shall decide, within 30 days, or such longer time as it and the University staff may agree to, of receiving notification of sufficiently detailed research results, whether to make any application, in the UK or elsewhere, of the type referred to in Regulations 6 and 20. 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.

23. If Cambridge Enterprise 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 created the subject-matter of its decision. The University shall seek to determine with those persons the future course of action with financial arrangements as in Regulation 21.

24. During the period following receipt of notification of the research results from a University staff member, Cambridge Enterprise shall consider with her or him how commercial exploitation of the results shall or may be pursued, having regard to all reasonable proposals for that exploitation made by the staff member. Cambridge Enterprise and the University staff member shall keep each other informed and shall co-operate fully in order to achieve an agreed outcome. Where a University staff member is entitled to intellectual property rights under Regulation 7 over information in subject matter or other material and those rights are relevant to the exploitation of the University's rights under Regulation 6, the staff member may agree to assign or license her or his intellectual property rights either to the University, to the University's designated nominee, or to a third party in furtherance of such arrangements for exploitation as may be reached.

25. Where the University or its designated nominee receives licensing income from the commercialization of intellectual property rights by virtue of Regulation 6, or by virtue of any assignment to the University or nominee of a University staff member's intellectual property rights under Regulation 7, whether in association with the exploitation of the University's rights under Regulation 6 or by virtue of Regulation 27, any direct costs, as defined in the Schedule to these regulations, shall be deducted and the net revenue shall be shared between the relevant creators of the material or other subject matter (here referred to together as 'inventors') protected by intellectual property rights, her or his Department, Faculty, or other institution, 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 15. They shall notify Cambridge Enterprise of the resulting arrangements. If the staff members do not reach an agreement, Cambridge Enterprise shall refer the matter, by application, to the Technology Referee under Regulation 33.

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 shall continue to be payable to her or his estate or a nominee thereof.

26. During any period in which either Cambridge Enterprise 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 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 7

27. Where a University staff member is entitled to any intellectual property right in accordance with Regulation 7, he or she may seek the assistance of Cambridge Enterprise in arranging exploitation of the rights, for instance by agreeing a fee for management by the University's designated nominee, or by assigning the rights to the nominee in return for use of the University's name, arms, or trade marks and then adopting the revenue-sharing arrangement described in Regulation 25.

External sponsorship

28. An agreement 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 entitled to the intellectual property rights relating to the results of the research, or the right to apply for any such rights, or a licence over or other interest in any such rights that the University may subsequently own. University staff, in agreeing to conduct research under such an agreement shall be deemed to have agreed to comply with the terms of the agreement. In particular the University staff shall execute any assignment of intellectual property required by the agreement and abide by any confidentiality conditions specified in the agreement. 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

29. 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 a project to set up and maintain a database it may require that intellectual property rights 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. If such a requirement exists it shall be made and agreement sought before the project is begun.

30. In relation to teaching materials prepared by a University staff member for use in the teaching primarily of the University's students, unless the Faculty Board or other body responsible for teaching has agreed explicitly to the contrary, 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

31. 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 7 or 21 to use the name, arms, or mark for commercial activities with which they are or will be associated.

Adjudication and appeal

32. 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. A Secretary of the Panel of University Technology Referees shall be appointed in accordance with Regulation 39. The identity of the members of the Panel of University Technology Referees, its Chairman, and Secretary shall be published in the Reporter.

The Council shall also maintain a panel of persons to serve on a Technology Appeal Tribunal in accordance with Regulation 35.

33. If a dispute arises as to the interpretation of these regulations:

(a)the University staff member, or a person referred to under Regulation 12 or the student concerned, or a duly authorized person representing the University, hereinafter the 'applicant', 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, and shall at the same time send the same material to the other parties to the dispute;
(b)any other party to the dispute may submit comments on the applicant's submission to the Secretary within fourteen days of receipt of the submission.
(c)the Secretary shall notify the Chairman (or Deputy Chairman) who shall act herself or himself or shall designate a member of the panel to act as the Referee in a particular case; the Secretary shall notify the applicant and other parties to the dispute of this appointment;
(d)the Referee shall consider the material submitted by the applicant and other parties to the dispute;
(e)at her or his discretion the Referee may hold a hearing at which all parties to the dispute shall normally be entitled to be present and to be represented. The Referee may also request evidence be given in writing, or by way of oral hearing, by any other member of the University staff, College Teaching Officer, College Research Fellow, or student, as the Referee sees fit;
(f)following consideration and hearing the Referee shall issue a written adjudication, to be communicated to the Registrary, and the parties to the dispute. Such adjudication shall include recommendations as to the resolution of the matter in dispute. The Referee shall make reasonable efforts to issue this adjudication within 45 days of the original application to the Secretary of the Panel of Referees;
(g)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.

34. 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 33(a).

35. 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)either
 
(i)(when the referral does not involve a student) two members of the Regent House, designated by the Registrary from a panel of members of the Tribunal to be maintained by the Council;
or 
(ii)(when the referral does involve a student), two members of the Regent House, one designated by the Registrary from a panel of members of the Tribunal to be maintained by the Council, the other nominated by the Senior Tutors' Committee,
(c)(when the referral involves a student) a student chosen from a panel of members of the University in statu pupillari appointed by the Council under the procedure used to choose a student member of the Court of Discipline.5

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.

36. 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.

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

38. 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.

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

SCHEDULE

Royalty income

In the following, net royalty refers to royalty income less expenditure on:

(a)all reasonable expenses paid outside the University and Cambridge Enterprise, including patent agent fees, for the filing, prosecution, and maintenance of intellectual property rights;
(b)all reasonable external legal fees incurred in the commercialization of the intellectual property;
(c)all reasonable external legal fees expended on litigation;
(d)all reasonable expenditure on insurance relating to the maintenance and enforcement of intellectual property rights;
(e)any revenue due to third parties, for example sponsors; and
(f)any other expenditure that is agreed with the inventors.

Where Cambridge Enterprise is involved in exploitation, the share of revenues from net royalties shall be as follows.

Net IncomeInventors (jointly)DepartmentCambridge Enterprise
First £100,00090%5%5%
Next £100,00060%20%20%
Above £200,00034%33%33%

Where Cambridge Enterprise is not involved in exploitation, the share of revenues from net royalties shall be as follows.

Net IncomeInventors (jointly)DepartmentCentral Funds
First £50,000100%0%0%
Above £50,00085%7.5%7.5%

Where the inventors form a company under Regulation 21, that is, without the involvement of Cambridge Enterprise, the fixed percentage of inventors' rights referred to therein shall be 15%.

Thresholds in these schedules shall be index linked from [date Grace comes into effect] using the Retail Prices Index.

Share of equity in new businesses

The share of equity in new businesses shall be negotiated on a case by case basis having due regard of the contribution of creators to the business beyond the creation of IPR and of any funding that is made available by the University or Cambridge Enterprise.

Annex B: Policies of Funders

A great deal of research is sponsored by third parties, that is, it is not funded from the direct HEFCE block grant or internal University sources such as endowment. Indeed, our research income is only stated in terms of third-party sponsorship. A significant amount of this comes from the Research Councils, the Medical Charities, the Royal Society, the Leverhulme Trust, and the Isaac Newton Trust.

This Annex summarizes the IPR policies of these bodies.

The Research Councils have a common set of core research conditions. The condition covering commercial exploitation is RG22:

RG 22 Commercial Exploitation

Unless stated otherwise, the ownership of intellectual property, and responsibility for its exploitation, rests with the Research Organisation. The Research Council may, in individual cases, reserve the right to retain ownership of intellectual property and to arrange for it to be exploited for the national benefit and that of the Research Organisation involved. This right, if exercised, will be set out in an additional condition. It is the responsibility of the Research Organisation, and all engaged in the research, to make every effort to ensure that any potentially valuable results obtained in the course of the research are exploited, and that there is a suitable return to the Research Organisation and the researchers from any such exploitation. The Research Organisation must ensure that all those associated with the research are aware of, and accept, the arrangements for exploitation. Collaborative arrangements are expected to be put on a formal basis through an agreement covering the contributions and rights of the organisations and individuals concerning exploitation. Such agreements must be in place before the research begins. The terms of collaboration agreements must not conflict with the Research Councils' terms and conditions of research grants.

1. Engineering and Physical Sciences Research Council (EPSRC)

RG22, plus for Industrial Collaborations:

EPSRC itself makes no claim to the intellectual property rights arising from research that it supports, but delegates responsibility for it to the funded institution. EPSRC does not lay down any rules about the identification, ownership and management of intellectual property since these should reflect the individual circumstances of each case. However, EPSRC expects that universities will have suitable mechanisms in place, particularly to ensure that the generators of the intellectual property gain the appropriate benefit from its exploitation.

[EPSRC Intellectual Property Brief, available at
http://www.epsrc.ac.uk/IndustrialCollaboration/IntellectualProperty.htm]

2. Medical Research Council (MRC)

RG22

3. Biotechnology and Biological Sciences Research Council (BBSRC)

RG22

4. Particle Physics and Astronomy Research Council (PPARC)

RG22

5. Natural Environment Research Council (NERC)

RG22

6. Economic and Social Research Council (ESRC)

RG22 plus

19.2 Intellectual property, royalties and income

19.2.1

The ownership of the intellectual property arising from a research project should be clear from the outset. The ESRC will assume that this will rest with the university or institution receiving the ESRC award, unless otherwise stated to the contrary.

19.2.2

The distribution of royalty/income sharing also needs to be clear from the outset. Whoever holds the intellectual property, it should be clear what the distribution of any income might be. For income up to £10,000 the ESRC will assume that this will normally rest with the principal investigators and the research team, unless otherwise stated to the contrary. For income between £10,000 and £50,000 the ESRC will assume that the major part will accrue to the university or institution, but the ESRC reserves the right to reclaim up to one third of the total, up to the value of its original award. For income over £50,000 the ESRC requires that the major part of any income should accrue to the university or institution, and again reserves the right to reclaim up to one third of the total up to the value of its original award.

[ESRC Research Funding Rules: Commercial Exploitation
http://www.esrc.ac.uk/esrccontent/ResearchFunding/sec19.asp]

7. Arts and Humanities Research Council (AHRC)

RG22 plus:

11. Commercial issues and development

The Board acknowledges that there are no ideal arrangements for knowledge transfer and commercial development, and that individual arrangements will differ. It will not impose or prescribe rules that must be rigidly followed. However, it does expect that satisfactory support for exploitation opportunities should be provided to try to ensure that potentially valuable results or products arising from work funded by the AHRC are, where practicable, developed. Much of the initiative for identification, assessment and protection of commercial development opportunities must come from those who conduct the work, supported by their HEI. The Board expects HEIs to ensure that opportunities for commercial development are not missed, and to have in place the necessary machinery to achieve this.

12. Intellectual property, royalties and income

The ownership of the intellectual property arising from work supported by the Board should be clear from the outset. The Board will assume that this will rest with the institution receiving the award, unless stated to the contrary.

The distribution of royalty and/or income also needs to be clear from the outset. Whoever holds the intellectual property, it should be clear what the distribution of any income might be. Royalty and/or income distribution between the researcher and the institution is usually arrived at using a formula that gives most of the income to the researcher when the total is small, but with the institution taking a progressively larger share as the income increases. Royalty income of over £10,000 should be reported to the Board, which reserves the right to amend its allocation of funds where royalty income exceeds £10,000.

[AHRC Terms and Conditions of Project Fund Awards
http://www.ahrb.ac.uk/images/4_91165.doc]

8. The Wellcome Trust

The Trust requires the institution to develop and implement strategies and procedures for the identification, protection, management and exploitation of Trust-funded intellectual property (IP). The Trust also requires the Institution to ensure that all persons in receipt of Trust funding or working on a Trust-funded activity (including employees, students, visiting fellows and subcontractors) are employed or retained on terms that vest in the Institution all Trust-funded IP.

[Wellcome Trust Grant Conditions para 7.1 available at
http://www.wellcome.ac.uk/assets/wtd004057.pdf]

9. Cancer Research UK (CRUK)

The CRUK IP policy is concerned with the relationship between the host institution and CRUK, and places an obligation on the host institution to transfer IP to CRUK when the host institution does not have an adequate strategy for exploitation. When the host institution does have an adequate exploitation strategy, the policy provides for a revenue share for CRUK. Those interested in the details should read the entire policy section of nine paragraphs.

12.1 Cancer Research UK is committed to funding research into the causes and treatment of cancer without expectation that the fruits of such research (including any intellectual property and research materials) will result in any commercial exploitation. However, Cancer Research UK, as a UK medical research charity, is obliged to ensure that the fruits of Cancer Research UK-funded research are used and disseminated so that the understanding, diagnosis and treatment of cancer is maximised for the benefit of the cancer patient and the general population. According to the circumstances this may be best achieved through the protection of intellectual property and commercial exploitation. Cancer Research UK is also obliged to ensure that it obtains a fair share of such fruits and intellectual property (and value arising from the exploitation thereof). All principal investigators and their host institutions are required to co-operate in this. Cancer Research UK meets these obligations in the main through its wholly owned subsidiary Cancer Research Technology Limited (CRT) (which expression shall include its successors). In order to meet these objectives, upon receipt of a request made by CRT or Cancer Research UK, the host institution will be expected to agree with CRT (and these Terms and Conditions accordingly incentivise the host institution to agree) the terms of an IP management/technology transfer agreement under which CRT will take assignment of any intellectual property or materials generated through Cancer Research UK funded research for no payment other than payment of a revenue share in respect of net income received by CRT arising from the commercial exploitation of the intellectual property or materials. In some circumstances having regard to the nature of the research, Cancer Research UK may require that a satisfactory arrangement between the host institution and Cancer Research UK (or direct with CRT) concerning exploitation be agreed before a grant will be awarded (but see also 12.5).

[Terms and Conditions and Administration Information
for Research Grants & Awards, para 12.1 available at
http://science.cancerresearchuk.org/reps/pdfs/termscond.pdf]

10. British Heart Foundation (BHF)

7.2 The BHF requires the institution and grant holders to:

(i) notify …. ;

(ii) ensure that all persons in receipt of BHF funding of working on a BHF funded activity (including employees, students, visiting staff and subcontractors) are employed of retained on terms that vest in the institution all Intellectual Property which is created or acquired by any such person;

[British Heart Foundation Standard Conditions of Award, available at
http://www.bhf.org.uk/professionals/uploaded/conditions.pdf]

11. Royal Society

The majority of Royal Society awards are in the form of Research Fellowships and Research Professorships.

For Research Fellowships:

6 All rights in any invention made by the holder of a research award arising during the course of the employment, and any know-how relating thereto, shall be the property of the employer, viz. the host institution. That institution, if one with approved arrangements for the exploitation of inventions pursuant to paragraph 9 of the statement issued by the Secretary of State for Education and Science on 14 May 1985 or any variation thereto, shall undertake, at its own expense, or, where licensing out, that of a third party, to procure patent or other appropriate protection for intellectual property generated by holders of research appointments, to maintain that protection and to exploit the intellectual property, all so far as it is reasonable to do so with regard to commercial considerations.

[Royal Society Research Fellowship Awards: Condition of Tenure, available at
http://www.royalsoc.ac.uk/trackdoc.asp?id=846&pId=1121]

The IPR conditions for Research Professorships (clause 11 in Royal Society Research Professorship Awards: Condition of Tenure) are virtually identical.

12. Isaac Newton Trust

In the case of grants made to University Departments, the Trust has agreed that its ownership of Intellectual Property Rights will be vested in the University. In return the University will pay the Trust a share of any income arising from the project on an agreed pro rata basis. Payments made by the University to the investigator and his or her Department under its revenue-sharing scheme will be based on the University's net share of any income.

[Newton Trust, Grants for Research Purposes in the University of Cambridge:
Follow up Procedures, available at
http://www.newtontrust.cam.ac.uk/cam/research/f.html]

Annex C: Policy on student IPR for University of Oxford, Imperial College, and University College London

Oxford

Oxford owns all student-created IPR, but will not assert rights in copyright except in databases and software with commercial value:

5. (1) The University claims ownership of all intellectual property specified in section 6 of this statute which is devised, made, or created:

(a) by persons employed by the University in the course of their employment;

(b) by student members in the course of or incidentally to their studies;

(c) 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

(d) by persons engaged by the University under contracts for services during the course of or incidentally to that engagement.

(2) The University's rights under sub-section (1) above in relation to any particular piece of intellectual property may be waived or modified by agreement in writing with the person concerned.

6. The intellectual property of which ownership is claimed under section 5 (1) of this statute comprises:

(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; and

(7) know-how and information associated with the above.

7. Notwithstanding section 6 of this statute, the University will not assert any claim to the ownership of copyright in:

(1) artistic works, books, articles, plays, lyrics, scores, or lectures, apart from those specifically commissioned by the University;

(2) audio or visual aids to the giving of lectures; or

(3) computer-related works other than those specified in section 6 of this statute.

[Oxford Statutes and Regulations: Statute XVI, available at
http://www.admin.ox.ac.uk/statutes/790-121.shtml#_Toc28143157]

Imperial College

Students own student-created IPR except where covered by a third-party agreement or where it 'derives from IP of academic staff' in which case it must be assigned to the University.

The initial presumption is that where a student has developed IP that they wish to commercialise, the student owns IP. However, the following exceptions may apply:

1. 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.

2. 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. This will be part of the research contract and the supervisor or department should inform students prior to starting the project. In such cases they will be required to assign any resultant IP to the College.

3. 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. If such projects result in a commercialisable opportunity that the College wishes to exploit, the student will be required to assign their IP to the College.

Where a student assigns their IP to the College, they will be treated as a member of staff for this purpose and will receive the same benefits as outlined in the College Awards to Inventors Policy unless a prior obligation has been made by the College 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, Imperial Innovations would encourage the sponsor to reward the student directly. If students are in any doubt they are advised to consult Imperial Innovations in the first instance.

[Policy for student intellectual property, available at
www.imperial.ac.uk/registry/publications/proced_regs/intellectualpropert.pdf]

University College London

Unlike members of staff, UCL students (undergraduate and post graduate) own their Intellectual Property as they are not employees of the university. However, students may be asked to assign their intellectual property rights to UCL if their work has:

[Information for Academics, UCL website,
http://www.ucl.com/uclbusiness/pages/info_academics/techtransferfaqs.html#IPstudents]

Annex D: Revenue Share Policies of University of Oxford, Imperial College, and University College London

Oxford

The University owns all intellectual property (including that of students) but will not assert any claim to the ownerships of copyright except for copyright in databases and software with commercial value.

The licence revenue share agreement is based on net revenue which includes a 30% charge to fund Isis. Based on this net, the split is as follows:

Net RevenueResearchersCentralDepartments 
< £50,00087.2%12.8%0% 
£50,000 to £500,00045%30%25% 
> 500,00022.5%40%37.5% 

Considering the charge for Isis as post net, this equates to:

Net RevenueResearchersCentralDepartmentsIsis
< £50,00061%9%0%30%
£50,000 to £500,00031.5%21%17.5%30%
> 500,00015.8%28%26.2%30%

The policy where there is to be a start up company is that equity be negotiated on a case by case basis.

Imperial

Students: Student owns IP except for third-party agreements or if working on something that 'derives from IP of academic staff' in which case it must be assigned to the University.

Intellectual property rights in work done by employees of the College in the course of their normal duties belongs to the College, rather than to the employee personally. Inventions and discoveries must be reported to the Pro Rector (Public and Corporate Affairs) as soon as they are identified by the inventor or originator.

The licence revenue share agreement is based on net revenue which includes a 30% charge to fund Imperial Innovations. Based on this net, the split is as follows:

Net RevenueResearchersCentralDepartments 
< £50,00075%12.5%12.5% 
£50,000 to £250,00050%25%25% 
> 250,00025%37.5%37.5% 

Considering the charge for Imperial Innovations as post net, this equates to:

Net RevenueResearchersCentralDepartmentsImperial In.
< £50,00052.5%8.8%8.8%30%
£50,000 to £250,00035%17.5%17.5%30%
> 250,00017.5%26.25%26.25%30%

The policy where there is to be a start up company is that equity be negotiated on a case by case basis.

University College London

UCL claim ownership of IPR including software copyright.

Revenue share is as follows.

Net RevenueResearchersCentralDepartmentsTTO
< £50,00050%10%10%30%
> £50,00030%30%10%30%

Equity splits are negotiated on a case by case basis.

A comparison of these with the proposed policy for royalty share involving Cambridge Enterprise is shown below:

Annex E: Proposed Guidance to Graduate Students on Intellectual Property Rights

[Suggested replacement to the Board of Graduate Studies' advice on IPR, currently in Section A.5 of Submitting your thesis for the Ph.D., M.Sc., and M.Litt. Degrees. This might possibly be also issued in a separate document.]

Intellectual Property Rights

Practices within the University with respect to the execution of research by graduate students vary. This is reflected in the University's policy on intellectual property rights for students. Where a student works as part of a research team, he or she may be required to assign the intellectual property (IP) he or she creates to the University. Where a student works largely independently and is the substantial creator of the IP, the University recognizes the right of the student to own that IP.

A student may be required to assign his or her IP to the University (or other organization) as a condition of sponsorship by outside organizations, either of the student directly or of resources used by the student.

When such an assignment is made, students will be treated in the same way as University employees for the purposes of sharing and financial benefit arising from the commercialization of the results, in accordance with the University's Policy on the Ownership of IPRs. [ref].

It is the University's policy that students should be made aware of the potential requirement to assign IPR before that IPR is created. If you are in any doubt on this matter you should consult your supervisor.

Circumstances in which IP assignment would be required are:

Students often change the direction of their research and as a consequence may change research groups. Such a change may as a consequence require new agreements to be entered.

If you require further information on your Intellectual Property rights please contact your supervisor who may then draw on the expertise of the Research Services Division.

If you have entered into a formal agreement under any of the circumstances described in the section above, you should check whether this commits you to any particular arrangement concerning the submission and examination of your thesis and access to your work and results. This may involve you, your Examiners or the University making certain undertakings. For example:

Please read the sections below. You should discuss the implications of your contract with your supervisor; he or she may draw on the expertise of the University's Research Services Division.

Scrutiny of the dissertation by others prior to submission

You should check whether this is required by your sponsorship agreement; if it is required, you must not submit your dissertation for examination without doing so. You will be expected to submit written confirmation from your sponsor (or industrial supervisor, as appropriate) that they have seen and approved the final version of the work.

In the normal course of your studies, the Board would expect your supervisor to have seen the final draft and approve, for his or her part, the submission of the work under the terms of any IP agreement you may have with him/her or the group in which you work.

Please note, however, that you are ultimately responsible for the work submitted and the approval of your supervisor and/or sponsor for the submission of your dissertation under the terms of your IP agreement cannot be interpreted as a guarantee that the work is adequate for the degree sought.

Confidentiality of your dissertation while under examination

If your agreement with a sponsor or anyone else has specified that your Examiners must undertake to keep confidential the work submitted to them for examination, they should be asked to sign a confidentiality agreement regarding the contents of your dissertation for the period of the examination and for any period thereafter for which restricted access may be granted. The Degree Committee appoints Examiners and will arrange for this to be done when your Examiners are appointed providing they are notified of the requirement in good time. If your contract requires such confidentiality, you are therefore asked to apply for it to be arranged when you request the appointment of Examiners.

Copyright

Under the Copyright, Designs and Patents Act, 1988, ownership of the copyright of unpublished dissertations and theses and their summaries rests with the author for the duration of his or her lifetime and a given number of years thereafter, unless he or she specifically transfers it to another person.

When you submit your dissertation for examination, the Board's staff will ask you to sign a statement acknowledging your ownership of copyright in the dissertation and asserting your right to be identified as the author of the dissertation. You should check whether you have entered into any agreement that requires you to reassign the copyright.

Access to your thesis

An important outcome of your training and examination for a research degree is that your work should be made available for consultation as soon as is reasonably possible.

The University requires that each dissertation approved for the Ph.D., M.Sc., M.Litt., together with its summary, shall be available for consultation in the University Library and that photocopies of them shall be made available by the Library to those who wish to consult them elsewhere.

The Board may make summaries available for copying and publication, including publication by ASLIB in their Index to Theses.

The University Library is also authorised to make available copies of dissertations for those wishing to consult them elsewhere, including microfilming for the British Library Supply Centres inter-library loan service. Your thesis will be considered to be in the public domain, unless you have been granted restricted access (see below), as soon as it has been catalogued by the University Library.

When a borrower seeks access to your dissertation, or requests a copy, the Library will require him or her to sign a declaration recognising that the copyright of the dissertation and summary belongs to the author [or other owner of the copyright]. (S)he agrees that the dissertation or a substantial part of it will not be copied without the author's [copyright owner's] written consent and undertakes that the copy will be used for private study and not for the purposes of commercial exploitation. In addition, the dissertation and summary themselves, and any photocopy supplied by the Library, will contain a prominent notice drawing attention to the same points.

Restricted access

The University is subject to the Freedom of Information Act 2000 (http://www.freedom-of-information-act.co.uk/).

The FOIA gives a general right of access to all information held by the University, including information held in the University Library. As a matter of normal practice we will only make your work available in accordance with the restrictions you have placed upon it. However, if someone specifically asks to see it, we must give them access unless the material qualifies for an exemption under the Act.

The most common exemptions relevant to dissertations are:

If you believe that any of these categories apply to your dissertation (or if you believe you have any other reason for exemption under the Act), you should complete the relevant application form [weblink] and submit it, together with any supporting documentation, to the Secretary of the Board, before you submit your dissertation for examination.

If someone asks to see your work, we will use this information to decide whether or not we can refuse the request.

Please note that in most cases the Board will limit the period of restriction you may apply for to not more than two years from the date of the degree being approved. However, in the converse situation, in which, under the terms of your contract, you are prevented from making your own work available in the public domain, the Board will not expect this restriction to exceed 3 months. The Board also recognizes that in some circumstances, access to your dissertation and summary might reasonably be restricted for a longer period of time (for example, the last two bullet points above).

N.B. If your Degree Committee requires a second copy of the thesis to be retained in the Department Library, you should ask your Department librarian about restriction of access under the FOIA.

Annex F: IPR Policy at Massachusetts Institute of Technology and Stanford

Massachusetts Institute of Technology

Excerpt from MIT website [http://web.mit.edu/policies/13.1.html]:

13.1.1 Ownership of Intellectual Property

With the exception of student theses as described below in Section 13.1.3 (Ownership of Copyrights in Theses), rights in patentable inventions, mask works, tangible research property, trademarks, and copyrightable works, including software ('Intellectual Property'), made or created by MIT faculty, students, staff, and others participating in MIT programs, including visitors, are as follows:

a) Inventor(s)/author(s) will own Intellectual Property that is:

i) not developed in the course of or pursuant to a sponsored research or other agreement (the faculty advisor, administrative officer, or the Office of Sponsored Programs contracts administrator can advise on the terms of the agreements that apply to specific research); and

ii) not created as a 'work-for-hire' by operation of copyright law (a 'work-for-hire' is defined, in part, as a work prepared by an employee within the scope of his or her employment) and not created pursuant to a written agreement with MIT providing for a transfer of copyright or ownership of Intellectual Property to MIT; and

iii) not developed with the significant use of funds or facilities administered by MIT ('significant use' is discussed in Section 2.1.2 of the Guide).

b) Ownership of all other Intellectual Property will be as follows:

i) ownership of Intellectual Property developed in the course of or pursuant to a sponsored research or other agreement will be determined according to the terms of such agreement;

ii) ownership of copyrightable works created as 'works-for-hire' or pursuant to a written agreement with MIT providing for the transfer of any Intellectual Property or ownership to MIT will vest with MIT;

iii) ownership of Intellectual Property developed by faculty, students, staff, and others participating in MIT programs, including visitors, with the significant use of funds or facilities administered by MIT will vest with MIT.

13.1.2 Significant Use of MIT-Administered Resources

When Intellectual Property is developed by MIT faculty, students, staff, visitors, or others participating in MIT programs using significant MIT funds or facilities, MIT will own the Intellectual Property. If the material is not subject to a sponsored research or other agreement giving a third party rights, the issue of whether or not a significant use was made of MIT funds or facilities will be reviewed by the inventor's/author's laboratory director or department head, and a recommendation forwarded to the Technology Licensing Office (TLO). The Vice President for Research will make the final decision on this issue and on any dispute or interpretation of policy relating to Intellectual Property.

Textbooks developed in conjunction with class teaching are excluded from the 'significant use' category and not considered 'works-for-hire,' unless such textbooks were developed using MIT-administered funds paid specifically to support textbook development. Otherwise, the author is the owner.

Generally, an invention, software, or other copyrightable material, mask work, or tangible research property will not be considered to have been developed using MIT funds or facilities if:

a) only a minimal amount of unrestricted funds has been used; and

b) the Intellectual Property has been developed outside of the assigned area of research of the inventor(s)/author(s) under a research assistantship or sponsored project; and

c) only a minimal amount of time has been spent using significant MIT facilities or only insignificant facilities and equipment have been utilized (note: use of office, library, machine shop facilities, and of traditional desktop personal computers are examples of facilities and equipment that are not considered significant); and

d) the development has been made on the personal, unpaid time of the inventor(s)/author(s).

When an Intellectual Property is not subject to a sponsored research or other agreement (such as an equipment agreement), but has been developed using significant MIT funds or facilities, the Technology Licensing Office may, at its discretion and consistent with the public interest, license the inventor(s)/author(s) exclusively or nonexclusively on a royalty basis. The inventor(s)/author(s) must demonstrate technical and financial capability to commercialize the Intellectual Property, and the TLO will have the right to terminate such license if the inventor(s)/author(s) have not achieved effective dissemination within three years. Where such a license is issued, the inventor(s)/author(s) may be required to assume the costs of filing, prosecuting, and maintaining any patent rights.

[http://web.mit.edu/policies/13.1.html]

Stanford

From the Stanford website[http://www.stanford.edu/dept/DoR/rph/5-1.html]:

1. PATENT POLICY

A. BOARD POLICY

1. All potentially patentable inventions conceived or first reduced to practice in whole or in part by members of the faculty or staff (including student employees) of the University in the course of their University responsibilities or with more than incidental use of University resources, shall be disclosed on a timely basis to the University. Title to such inventions shall be assigned to the University, regardless of the source of funding, if any.

2. The University shall share royalties from inventions assigned to the University with the inventor.

3. The inventors, acting collectively where there is more than one, are free to place their inventions in the public domain if they believe that would be in the best interest of technology transfer and if doing so is not in violation of the terms of any agreements that supported or related to the work.

4. If the University cannot, or decides not to, proceed in a timely manner to patent and/or license an invention, it may reassign ownership to the inventors upon request to the extent possible under the terms of any agreements that supported or related to the work.

5. Waivers of the provisions of this policy may be granted by the President or the President's designate on a case-by-case basis, giving consideration among other things to University obligations to sponsors, whether the waiver would be in the best interest of technology transfer, whether the waiver would be in the best interest of the University and whether the waiver would result in a conflict of interest. In addition, the President may expand upon these provisions and shall adopt rules, based on the same factors as well as appropriateness to the University's relationship with inventors, for the ownership of potentially patentable inventions created or discovered with more than incidental use of University resources by students when not working as employees of the University, by visiting scholars and by others not in the University's employ.

6. This policy shall apply to all inventions conceived or first reduced to practice on or after September 1, 1994.

B. ADDITIONAL PROVISIONS (promulgated by the University President, reference section 5 of the Board Policy, above)

1. In addition to faculty and staff (including student employees), the provisions of the University's patent policy will extend to:

a. all graduate students and postdoctoral fellows

b. non-employees who participate or intend to participate in research projects at Stanford (including visiting faculty, industrial personnel, fellows, etc.)

The Board policy will apply as stated for graduate students and postdoctoral fellows. In the case of non-employees, all potentially patentable inventions conceived or first reduced to practice in whole or in part in the course of their participation in research projects at Stanford, or with more than incidental use of University resources, shall be disclosed on a timely basis to the University, and title shall be assigned to the University, unless a waiver has been approved.

2. The President's authority to grant waivers of provisions of this policy is delegated to the Vice Provost and Dean of Research and Graduate Policy.

2. ADMINISTRATIVE PROCEDURES

A. OFFICE OF SPONSORED RESEARCH (OSR)

OSR is responsible for reviewing terms and conditions of the University's grants and contracts for compliance with University policies on intellectual property rights and openness in research.

B. OFFICE OF TECHNOLOGY LICENSING (OTL)

The mission of OTL is to promote the transfer of Stanford technology for society's use and benefit while generating unrestricted income to support research and education. OTL is responsible for the administration of the University's invention reporting and licensing program, the commercial evaluation of inventions, patent filing decisions, petitions to agencies for greater rights in inventions, and negotiation of licensing agreements with industry.

C. PATENT AND COPYRIGHT AGREEMENTS (SU-18 and SU-18A)

All faculty, staff, student employees, graduate students and postdoctoral fellows must sign the Stanford University Patent and Copyright Agreement (referred to as 'SU-18'). In addition, non-employees who participate or intend to participate in research projects at Stanford must also sign a Patent and Copyright Agreement. A variation of this agreement has been created for individuals with prior obligations regarding the disclosure and assignment of intellectual property. See Patent and Copyright Agreement for Personnel at Stanford who have a Prior Existing and Conflicting Intellectual Property Agreement with Another Employer (SU-18A).

Each department is responsible for getting the Patent and Copyright Agreement signed, normally at the time of the individual's initial association with Stanford.

D. INVENTION DISCLOSURES

An invention disclosure is a document which provides information about inventor(s), what was invented, circumstances leading to the invention, and facts concerning subsequent activities. It provides the basis for a determination of patentability and the technical information for drafting a patent application. An invention disclosure is also used to report technology that may not be patented but is protected by other means such as copyrights.

Inventors must prepare and submit on a timely basis an invention disclosure for each potentially patentable invention conceived or first actually reduced to practice in whole or in part in the course of their University responsibilities or with more than incidental use of University resources.

A disclosure form [pdf file] describing the invention and including other related facts should be prepared by the inventor and forwarded to OTL, or to the SLAC Inventions Administrator, as appropriate. Forms may be requested from these offices.

The following practical considerations relate to invention disclosures:

1. Individuals covered by this policy are expected to apply reasonable judgment as to whether an invention has potential for commercial marketing. If such commercial potential exists, the invention should be considered 'potentially patentable,' and disclosed to Stanford.

2. Individuals may not use University resources, including facilities, personnel, equipment, or confidential information, except in a purely incidental way, for any non-University purposes, including outside consulting activities or other activities in pursuit of personal gain.

'More than incidental use of University resources' would include:

The occasional and infrequent use of the following would typically not constitute 'more than incidental use of University resources':

E. ALTERNATIVE DISPOSITION OF RIGHTS

The inventor, or inventors acting collectively when there are more than one, is free to place inventions in the public domain if that would be in the best interest of technology transfer and if doing so is not in violation of the terms of any agreements that supported or governed the work. The University will not assert intellectual property rights when inventors have placed their inventions in the public domain.

If OTL cannot, or decides not to, proceed in a timely manner to patent and/or license an invention, OTL may reassign ownership to the inventor or inventors upon request to the extent possible under the terms of any agreements that supported or related to the work. In the case of an invention resulting from a government-sponsored project, where OTL cannot or chooses not to retain ownership, rights would then typically be retained by the government. In such cases, the inventor may request and be granted rights by the sponsoring agency to an invention made under such an award, provided that a well-conceived and detailed plan for commercial development accompanies the request.

[http://www.stanford.edu/dept/DoR/rph/5-1.html]

1 Excluding the income of the Local Examinations Syndicate (UCLES) whose accounts have recently been consolidated with those of the University.

2 EPRSC: Engineering and Physical Sciences Research Council; MRC: Medical Research Council; BBSRC: Biotechnology and Biological Sciences Research Council; CRUK: Cancer Research UK; PPARC: Particle Physics and Astronomy Research Council; NERC: Natural Environment Research Council; BHF: British Heart Foundation; ESRC: Economic and Social Research Council; AHRC: Arts and Humanities Research Council.

3 Currently, it is difficult to quantify the size of this 'part of the landscape' since such rights need not be declared to the University, nor the revenue which is generated.

4 Reporter, 1986-87, p. 440, dated 26 February 1987.

5 See Statutes and Ordinances, p. 193.


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Cambridge University Reporter 25 May 2005
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