An introduction to university claims over student IP

Cross-posted by Anthony Williams from Student Intellectual Property Rights.

The world of intellectual property can be murky at the best of times, but where universities can claim IP rights over the work of students, it is especially so. The University College Union says so itself:

“There are real tensions between the rights of creators and users.”

An interesting opening to this world is explained later on in that article:

“It is common for the individual institution to be the first owner of the intellectual property … although many waive their rights to the copyright of standard academic publications.”

The problems that are faced are also accurately summed up here:

“Individual institutions will have differing policies and agreements with regard to the exploitation of intellectual property.”

So, with this already looking like a complicated minefield, just how do individual universities handle this process? Coventry University were my first port of call.

Coventry University and IP

This page provides a list of what the CUE (Coventry University Enterprises Ltd) will do, but more importantly, contains this paragraph:

“Once an Intellectual Property Disclosure Form has been received at CUE a business development manager will arrange a meeting within 5 working days to discuss details which might help in protecting the IP, a patent application for instance, and conduct a commercial opportunities appraisal process. Using the data from the COAP a commercial exploitation plan will be drawn up, with the intention of either licensing out the invention to third parties, or spinning out a company. This plan will involve active participation of the inventor/s and business development staff, who will support the venture in every way possible.”

This describes the process of what goes on, and seems fairly student-friendly, but it doesn’t quite get to the nitty-gritty, so to speak. What are CU’s actual policies? This page provides a to-the-point answer, notably that:

“CU retains ownership of Intellectual Property Rights generated by students. Exceptions – When third parties own the IPR through contracts, i.e. sponsored research projects. If, for any reason, Coventry University decides not to exploit the Intellectual Property Rights, it will assign the rights back to the inventors.”

CU also makes use of the revenue sharing policy that was posted about earlier, and a full regulation document can be found here, which includes details of the IP policy as a whole. A very interesting quote from this document is as follows:

“Coventry University intends that the benefit of having such a Policy will include wider recognition of individual achievements and the reputation of the intellectual contribution made by its students.”

Cambridge, Aberystwyth, and Cardiff

Other universities also have similar approaches to IP. This ranges from Regulation 6 of the university of Cambridge’s IPR Policy, which states that:

“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 trade mark registration associated with another registerable right belonging to the University, 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.” (This is made relevant by the following Guidance): “Where a student is required by the University by virtue of these regulations to assign or license intellectual property rights to the University of a third party, he or she will have the same rights, including a share in any financial return from exploitation, and be subject to the same obligations in relation to that intellectual property as University staff under these regulations.”

…To Aberystwyth university’s Policy:

“The ownership of the IPR in patentable inventions made by University employees and arising from research projects funded publicly or through private sponsorship, belongs in the first instance to the University. If, in the course of any work within their contract, members of staff make an invention which they have reason to believe may be commercially exploitable, they should report the same to CCS and consult with the University on whether and how steps shall be taken to protect and exploit the invention. This applies to every category of researcher using University facilities and receiving payment through the University.

If, as a result of such consultations, the University decides that it does not wish to participate in the development or exploitation of the invention, the benefit of it shall belong exclusively to the member(s) of staff. Otherwise, the University shall undertake responsibility for its further development and exploitation and the member(s) of staff shall, as directed by the University, do any one of the following:

  • Collaborate with the University in the exploitation of the invention;
  • Enter into appropriate agreements for protecting the secrecy of the invention unless and until it is patented;
  • Collaborate with the University in applying for patent protection in the UK or elsewhere;

Whilst the patent rights accrue to the University, the employee inventor(s) will have a right to a “fair share of the benefit” which will be determined in accordance with paragraph on Sharing the Benefits of IPR Exploitation below.

…To Cardiff university’s more individualised Policy (Regulation 13):

“13. The University recognises that students, whether undergraduate or postgraduate, may generate, or contribute to the generation of, intellectual property while carrying out research projects at the University. Notwithstanding the fact that the University is not the employer of students enrolled at the University and, as such, does not normally seek to claim ownership of rights in intellectual property generated by students, the University will take assignment of intellectual property generated by students in the following circumstances:

(i) where the terms of the student’s financial support requires the University to be the owner of any intellectual property created, such as in the case of a postgraduate studentship sponsored by a Research Council-or a company; or

(ii) where the student is the legal owner of intellectual property generated in the course of his or her work but elects, at his/her sole discretion, to assign ownership to the University.

Where the University decides, in its absolute discretion, to exploit commercially any intellectual property assigned to the University in accordance with either (i) or (ii) above, the student inventor will be treated in the same way as an employee inventor. All costs of protecting the intellectual property will be met by the University’s commercialisation company (UC3) and any revenue received by UC3 from commercial exploitation will be shared with the inventor(s), whether students or staff, in accordance with UC3’s revenue-sharing arrangement in force at the time.”

What all this initial research seems to suggest, aside from the fact that this type of ownership seems quite widespread (with the exception of Cardiff University), is that this type of work is best acknowledged as a group, in this instance that everything is seen from a university’s perspective, rather than its students’.

This is an admirable stand, but seems at odds with the way some other aspects of the law work. For example, patents, also administered by the Intellectual Property Office, can be applied for by individuals and aren’t as often recognised from groups.

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