INTELLECTUAL PROPERTY POLICY GUIDANCE |
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1
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Background and Context
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1.1
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The University’s Intellectual Property Policy as set out in the University Ordinance 22 has been reviewed and amended in accordance with the recommendations of Internal Audit. The opportunity was also taken generally to update and refine the Policy in the light of the experiences of the operation of the Policy in the years since it was first introduced.
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1.2
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This Guidance is not intended to substitute or replace the provisions of the Intellectual Property Policy (as revised) but rather to explain the provisions in a practical way. The provisions of the Intellectual Property Policy take precedence over this Guidance.
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1.3
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For further information regarding Intellectual Property (“IP”): in particular the types of Intellectual Property that arise in the University context go to http://www.bath.ac.uk/ipls/
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1.4
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References to clause and paragraph numbers and headings refer to those used in the Intellectual Property Policy (as revised).
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2
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Statement of Principles
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2.1
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General equitable principles are described and the obligation to report arising IP is set out at 22.1.
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2.2
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The University is committed to fair treatment of staff and students and others with whom it has dealings such as visiting academics and collaborators.
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2.3
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In relation to the obligation to report potentially exploitable IP, this is intended to apply only in circumstances where the University owns the IP in question. The provisions on ownership of IP appear later in the policy at paragraph 22.3 (on which see more detail below). But it may be helpful to note at the outset that the University does not claim ownership of all IP generated by students, and owns such IP only in specific circumstances.
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2.4
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Where the University does own IP staff and students (where relevant ) may comply with this requirement to report by informing the supervisor or primary investigator of any results which are unusual or which the member of staff or student in question thinks may be of interest or value. If in doubt the Head of Department should be informed.
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2.5
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Also set out at 22.1 is a requirement for staff and relevant students to keep key information confidential until the relevant supervisor or principal investigator (or if in doubt your Head of Department) has authorised its disclosure. This cloak of secrecy may seem strange for a University and so perhaps merits some explanation. For the University public dissemination of the results of research conducted here will invariably be the ultimate goal and will often be a requirement for the award of a degree (e.g. publication of a thesis). However there may be a strategic issue as to what precisely is published and when so as to create the most impact and prestige for our research activity, without prejudicing or delaying the award of degrees and maintaining commercial opportunities.
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3
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Definition of Intellectual Property
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This is set out at 22.2
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Intellectual Property Rights protect creativity and inventiveness in their many forms: practical, artistic, technical and intellectual. These rights attach to much of what is generated here from teaching materials to research data. The Intellectual Property Policy sets out a generic definition but for more comprehensive guidance on the types of IP arising in the University context and how these are best protected see the IP and Legal Services website.
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4
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Ownership of Intellectual Property
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4.1
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The rules as to what rights the University has over IP devised at the University or in connection with a persons work and/or studies here are set out in 22.3.
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4.2
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In relation to staff the University claims ownership of all IP which arises in the course of their employment. This derives from the Patents Act 1977 and employment law. This claim covers all IP which relates to a staff member’s area of academic activity. Thus even where IP doesn’t arise from specific work that the staff member is undertaking at the University, the University will own if the IP relates to the staff member’s field, including cases where the thinking and/or flash of insight didn’t occur here at the University but elsewhere. The University’s rights derive from the broad and flexible employment relationship it has with its staff and the facilities and learning opportunities made available over an academic career.
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4.3
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Further examples of ways in which IP may be developed by staff are set out at 22.3, such as where specific duties are assigned (which could entail the production of learning resources). Also specified is the situation where the IP is developed under a contract made between the University and a separate entity such as another research organisation or commercial collaborator. These examples illustrate the importance of the University’s ownership of IP as a matter of business necessity: the University needs to comply with obligations to third parties regarding IP (which it can only comply with if it owns).
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4.4
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In relation to students (see 22.3b) the University no longer claims that it owns all IP generated by all its students and now only owns IP generated by specific students and/or where specific circumstances arise. Thus where the student is sponsored and fees are paid and /or a stipend is made the University owns IP. Such sponsored studentships form the majority of PhDs undertaken at the University and their subject matter and supervision are core to the University’s research expertise and interests.
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4.5
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Also where a student is on a placement or the University enters into a contract regarding the student working within or with a company, the University owns the IP. This is essential so that the University is able to grant to the company in question relevant and necessary IP rights. So for example, in the case of an undergraduate student on a placement, or an Eng D working on a company’s research projects, the University can assign to the company any IP which the student generates.
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4.6
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It is worth noting here that often the companies in question will want the students to enter into direct personal obligations of confidentiality as well.
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4.7
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But the ownership by the University of IP means that the University can assign IP and the companies do not need to get individual students each to assign IP. So the policy is designed to be convenient and efficient and reassuring for our many highly valued industrial partners: the University owns the IP so that it can pass it to its collaborators (having reserved legitimate rights such as thesis examination research etc (which will vary depending on the circumstances)).
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4.8
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In addition the University owns IP where the student generates IP jointly with member of staff. This enables staff freely (subject to the students agreeing confidentiality obligations) to discuss their current research interests with students without any fear that this might be detrimental to them or the University.
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4.9
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Where a student devises or contributes to IP which is later commercialised and this gives rise to revenues or a spin out they may benefit from a financial or equity entitlement (see 22.5 (d) and 22.6).
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4.10
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If a student develops IP in the course of their studies, which doesn’t belong to the University under the provisions at 22.3(b), the student owns and can freely exploit but if the IP forms part of the student’s studies or has been generated by using University facilities, the University does have the right to use this IP for research (so any exploitation by the student would be subject to that research licence).
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4.11
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22.3 (e) maintains the exception to the University’s ownership of IP in the case of copyright in scholarly output generated by academic staff and students. Thus copyright in academic publications belongs to the academic author who may deal with this on their own account. IP and Legal Services is willing offer staff limited advice regarding this (so they don’t assign more than necessary and/or get the requisite licence back to the extent that they may wish to continue to use such copyright materials).
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4.12
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22.3 (f) is a special provision reserving to the University the right to permit students to record lectures for use in personal study where an educational psychologist or other professional so recommends. The instances where this will be allowed will be handled by student services.
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4.13
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In other instances where the University wishes to permit others to use scholarly output it will formally request the author for a licence on this basis. For example if the University wishes to record a lecture and make it available as an open educational resource it will need a licence from the academic author permitting the University to make the lecture available in this way. It is hoped and anticipated that staff will accede to this request on the basis of the public benefit of such initiatives.
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4.14
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22.3 (j) anticipates that the University may assign and licence its IP rights to collaborators of various types. The way that IP rights are divided will depend on the circumstances. For a fuller discussion of this see the IPLS website .In the event that under the negotiated terms of the research collaboration the University subsequently receives a royalty payment this will be shared with the staff or students who contributed to the IP in question.
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4.15
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Commercial Exploitation arrangements are discussed later in the Ordinance (see 22.4). However 22.3 (k) anticipates a situation where the University owns IP which is potentially of commercial interest but decides later not to pursue this opportunity. This often arises in relation to patents. An invention may appear to be capable of patent protection but it may later emerge that the scope of the patent that would be likely to be granted would be rather narrow and perhaps given the market opportunity (which also may be less attractive than initially thought e.g. because of competitive products or because the market is now moving in a different direction) and the very high costs of patent prosecution the University may decide not to pursue and in such circumstances may afford the inventor(s) the opportunity to take on the patent.
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4.16
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In most circumstances the University via Bath Ventures will take the lead in commercialisation arrangements and work with the IP originators to secure patent protection and development of the opportunity with a view to a licence or spin out in. In exceptional circumstances the University may decide from the outset that it does not wish to be directly involved in commercialisation of particular IP and in these circumstances the IP originators will come to an accommodation with the University as to the terms on which the University will permit them or their designates to lead the exploitation.
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5
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Commercial Exploitation Arrangements
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5.1
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The different types of exploitation arrangements are described at 22.4 (a).
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5.2
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Where IP of potential commercial utility is identified this should be reported within the University as anticipated at 22.1. Discussions should then be held involving relevant staff, departmental representatives and professional support services such as Bath Ventures and/or IP and Legal Services so that a plan of action can be agreed.
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5.3
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It is advisable for the issue of determination of respective individuals’ contribution to the IP to be addressed at the earliest opportunity – it can be adjusted later if there are further developments. In the event of dispute the matter can be referred to the Dean.
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6
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Distribution of Residual Income
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6.1
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Where the University derives income from an IP exploitation arrangement to which staff have contributed the University shares such income with the academic originators.
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6.2
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Revenues are distributed in accordance with the University’s Financial Regulations (which, as amended from time to time, take precedence over this Guidance). Under the current regulations, in respect of any revenues received the first £3000 goes to the staff team, revenues between £3,000 and £10,000 are distributed as to 25% to the Faculty/ School and 75% to the staff; thereafter revenues are shared as to 1/3 to the staff team, 1/3 to Faculty/ School and 1/3 to the University.
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6.3
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Where IP has been generated by students but belongs to the University (pursuant to 22.3 (b)) and is licensed or assigned by the University generating revenues it is anticipated that the student will be treated on the same basis as members of staff regarding their entitlement to a share of revenues.
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6.4
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Any such revenue share on the part of staff and /or students may be subject to tax and where this is the case payments will be made net of tax required to be deducted (see 22.5 (f))
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7
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Shareholdings
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7.1
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Where the University establishes a spin out company with a view to the development and exploitation of IP then the academic originators will be entitled to subscribe for shares awarding them 33% of the total shares of the Company, the University owning the remaining 67% in respect of its rights over the IP. The University and originators’ shareholdings will be diluted on a pro rata basis by any further investment in the spin out company. For more detail on spin out companies see in particular the Guide to Spin Out Companies on the IP and Legal Services website.
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March 2011
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