It is important to identify who owns relevant IP, before any further steps can be taken in relation to commercialisation or exploitation. Ownership is determined by reference to legislation and case law, the creator’s status and contractual obligations. This is discussed in detail in the University’s
and in respect of employed staff, in Appendix A (Inventions, Patents, Copyright and Post Termination Restrictions) of the University’s terms and conditions of employment.
Academic, Professional Services, Research and Senior Managers
The following is an extract from the University’s Terms & Conditions of Employment for Academic, Professional Services, Research and Senior Managers that came into effect from 1 August 2012.
APPENDIX A – Inventions, Patents, Copyright and Post Termination Restrictions
1. Intellectual property definitions
1.1 The following definitions apply in this clause 1.1.
Employment Inventions: any invention which is made wholly or partially by you at any time during the course of your employment with the University (whether or not during working hours or using the University premises or resources, and whether or not recorded in material form).
Employment IPRs: Intellectual Property Rights created by you in the course of your employment with the University (whether or not during working hours or using the University premises or resources).
Intellectual Property Rights: patents, rights to inventions, copyright and related rights, trademarks, trade names and domain names, rights in get-up, goodwill and the right to sue for passing off, unfair competition rights, rights in designs, rights in computer software, database rights, rights to use and preserve the confidentiality of information (including know-how and trade secrets) and any other intellectual property rights, in each case whether registered or unregistered and including all applications (or rights to apply) for and be granted, renewals or extensions of, and rights to claim priority from, such rights and all similar or equivalent rights or forms of protection which subsist or will subsist now or in the future in any part of the world.
Invention: any invention, idea, discovery, development, improvement or innovation, whether or not patentable or capable of registration, and whether or not recorded in any medium.
1.2 The University has an Intellectual Property Policy which explains and provides more detail as to the University’s approach to IPRs. You are required to comply with this policy.
1.3 The University acknowledges your rights arising from statute.
1.4 You agree that by virtue of the nature of your duties and the responsibilities arising from them, you have a special obligation to further the interests of the University.
1.5 You acknowledge that, subject to the exceptions below, all Employment IPRs, Employment inventions and all materials embodying them shall automatically belong to the University to the fullest extent permitted by law. To the extent that they do not vest in the University automatically, you hold them on trust for the University.
1.6 You agree:
- to give the University full written details of all Employment Inventions promptly on their creation
- at the University’s request and in any event on the termination of your employment to give to the University all originals and copies of correspondence, documents, papers and records on all media which record or relate to any of the Employment IPRs
- not to attempt to register any Employment IPRs nor patent any Employment invention unless requested to do so by the University and
- to keep confidential each Employment invention unless the University has consented in writing to its disclosure by you.
1.7 You agree to execute all documents and do all acts both during and after your employment by the University as may, in the opinion of the University, be necessary or desirable to vest the Employment IPRs in the University, to register them in the name of the University and to protect and maintain the Employment IPRs and the Employment inventions. Such documents may, at the University’s request, include waivers of all and any statutory moral rights relating to any copyright works which form part of the Employment IPRs.
1.8 You agree to give all necessary assistance to the University to enable it to enforce its IPRs against third parties, to defend claims for infringement of third party IPRs and to apply for registration of IPRs, where appropriate throughout the world, and for the full term of those rights. The University agrees to reimburse your reasonable expenses of complying with this clause 1.8
1.9 You hereby irrevocably appoint the University to be your attorney in your name and on your behalf to execute documents, use your name and do all things which are necessary or desirable for the University to obtain for itself or its nominee the full benefit of this clause 1. You acknowledge that a certificate in writing, signed by the Head of Academic Governance (or their deputy) of the University, that any instrument or act falls within the authority conferred by this agreement, shall be conclusive evidence that such is the case so far as any third party is concerned.
1.10 In respect of any employment invention which belongs to the University, it shall be for the University in the first instance to decide whether to apply for patent or other protection. You understand that if information about an Employment invention becomes public then the ability to obtain a registered patent is likely to be lost.
1.11 In the event that the University decides not to apply for patent or other legal protection you have the right to be promptly notified of that decision.
1.12 If the University decides not to register and you wish to apply for patent either yourself or with another, you must first inform the University of your intention to do so. The University will then, within a reasonable time, tell you whether it would object to this.
1.13 If the University objects under clause 1.12 you agree not to apply for patent of the invention concerned or to assist any other person to do so.
1.14 You waive all your present and future moral rights which arise under statute, and all similar rights in other jurisdictions relating to any copyright which forms part of the Employment IPRs, and agree not to support, maintain or permit any claim for infringement of moral rights or false attribution in such copyright works.
1.15 The University has a policy of permitting the authors to be identified on works owned by the University. Accordingly, you may identify yourself appropriately. In the case of joint works you undertake that you will not be identified unless you have first obtained the written consent of your co-authors to be either named or omitted from the list of authors.
1.16 The University’s approach to copyright is detailed in the Intellectual Property Policy but it will claim the Employment IPRs created by you and in particular the copyright in all course materials produced by you and outcomes from research specifically funded or otherwise supported by the University.
1.17 The University will not claim the copyright in certain works and designs as detailed in the Intellectual Property Policy. These include those:
- written, compiled, edited or otherwise brought into existence by you as a ’scholarly work’ produced in furtherance of your professional career. ’scholarly work‘ includes items such as books, contributions to books, articles and conference papers, and shall be construed in the light of the common understanding of the phrase in higher education
- and produced by you for your personal use and reference, including as an aid to teaching, not being part of a course or hand out to course participants.
1.18 You acknowledge that all records, documents and other papers (including copies and summaries thereof) which relate to the finance and administration of the University and which are made or acquired by you in the course of your employment are the property of the University.
1.19 When you join the University you should not assume that materials prepared by you or used by you previously can be used for teaching or any other purpose at the University. You must check the position and, if necessary, obtain permission.
1.20 If you leave the University you should not assume that you can use for teaching, research or otherwise any IPRs owned by the University, whether created by you or not. In each case you must obtain written permission.
1.21 If you have concerns or suggestions about the ownership or licensing of IPRs, Employment IPRs or any other matter referred in this clause 1, it should be raised with the person identified in the Intellectual Property Policy.
2. Post termination restrictions
2.1 The following definitions apply in this clause 2:
Client: Any person, firm, company or other organisation whatsoever to whom the University has supplied services for payment or other consideration, but excluding any person enrolled by the University as a student.
Services: Any services provided by the University to a client in relation to which you have been concerned or involved to any material extent (or in relation to which other employees reporting to you have been concerned or involved to any material extent) during the 12 months preceding the termination of your employment or the date on which you were placed on garden leave if earlier.
2.2 You undertake that you will not (without the consent in writing of the Board of Governors) for a period of 12 months immediately following the termination of your employment, either on your own account or in conjunction with or on behalf of any person, firm, company or other organisation, and whether as an employee, director, principal, agent, consultant, or in any other capacity whatsoever, in competition with the University provide the Services to any Client of the University:
2.2.1 with whom you shall have had personal contact or dealings on behalf of the University during the 12 months immediately preceding the termination of your employment or the date on which you were placed on garden leave if earlier or
2.2.2 with whom employees reporting to you have had personal contact or dealings on behalf of the University during the 12 months immediately preceding the termination of your employment or the date on which you were placed on garden leave if earlier.
2.3 You undertake that you will not (without the consent in writing of the Board of Governors) for a period of 12 months immediately following the termination of your employment or the date on which you were placed on garden leave if earlier, either on your own account or in conjunction with or on behalf of any person, firm, company or other organisation whatsoever in competition with the University solicit, induce or procure any Client.
2.3.1 with whom you shall have had personal contact or dealings on behalf of the University during the 12 months immediately preceding the termination of your employment or
2.3.2 with whom employees reporting to you have had personal contact or dealings on behalf of the University during the 12 months immediately preceding the termination of your employment
2.3.3 to accept the performance or provision the Services by you, whether as an employee, director, principal, agent, consultant or in any other capacity whatsoever.