IP policy at West Midlands universities part 2

Cross-posted from Student Intellectual Property Rights

This post is intended to be a follow-up to part 1, which I posted previously, and will look at the IP policy of the University of Birmingham, University of Warwick, University of Wolverhampton and University of Worcester. Below I have included a table to briefly summarise the policy of each university.

University of Birmingham

The University of Birmingham have published a six-step guide on their ‘Patent protection and exploitation of IP’page, which in this instance serves as their policy page.

It contains an explanatory table, which can be found here, and provides a more visual aspect to help understanding of the policy, which is rare amongst the research I have done so far.

It is not fully clear in the information provided who owns the IP to any ideas that have been submitted to Alta Innovations, but there are a few important pieces of information that hint at differing owners, such as this one in step 2:

“If the University, after going through the assessment process, decides not to file a patent to protect your idea you will be informed of that decision and you will be able to publish your work.”

This would imply that you only have a right to own the IP to your ideas if the university decides not to protect it, but later on in step 3, it is said that,

“A granted patent gives the University a monopoly to prevent others from using the invention and this can be important if the invention is going to be exploited commercially.”

This would make sense when trying to convince someone to gain IP via the university, but not if ownership is truly allowed to be claimed by individuals. The confusing messages continue, as in step 4 it states that:

“Alta will also establish that there is an opportunity to recoup the patent costs by, for example, selling rights to the patent to a company and see if the invention fits with the University strategy.”

This would imply that IP applications, at certain points, might be neither student nor university owned. This again is rare judging by the research I have conducted so far.

Finally, there is also a mention of an Easy Access IP policy, which is an initiative that allows certain universities to easily transfer their IP to industry. More information on this can be found here.

University of Warwick

Thankfully for those who appreciate plain English, Warwick’s IP policy is much simpler! This page provides some brief details on what their policy is, and under the ‘The University and You’ heading, clearly states that:

“Ownership of IPR is dealt with through UK statute and common law. In the UK, employees are subject to the provisions of the Copyright Designs and Patents Act 1988 and the Patents Act 1977. The basic principle is that the employer will normally own the intellectual property rights to any work generated by the employee in the normal course of their employment. This is interpreted quite widely in the courts. To clarify the situation within the University the policy relating to intellectual property rights stated in the University’s Financial Regulations, in financial procedure 13.”

Financial Procedure 13 is as follows:

“Financial Procedure 13:

  • Inventions made by all grades of academic staff and research staff, in the course of University duties or when using University premises are deemed to be relevant inventions.
  • Registered students working on research projects are included in these provisions.
  • University owns relevant inventions.
  • Staff must disclose to the University and participate in applications for protection.
  • University takes responsibility and pays for protection, development and exploitation.
  • Income generated as a result is then shared between the inventor(s) and the University.”

This makes it clear that, in line with common practice, Warwick own the IP rights for work generated as part of university studies. This page of information also hints at the existence of a commercial arm in Warwick Ventures.

University of Wolverhampton

Wolverhampton does not seem to have a section discussing IP on its website, however, the do have a policy document in the form of a PDF, which can be found here.

The relevant section for students is 5.0, located on page 35, and this states that:

“University of Wolverhampton is the first owner of IP created by employees in the course of their normal duties or as the result of a task specifically assigned by the University [Patents Act 1977, Copyright Designs and Patents Act 1988] or at any other time when using University facilities.”

However, it does then go on to state that:

“During the course of an undergraduate or postgraduate student’s University project, particularly research or creative projects, the student may generate some novel work, i.e. create IP.  The University recognises that it cannot automatically assume ownership of IP created by students in the course of their studies.  However, as stated in both the undergraduate and postgraduate prospectuses students may be required to sign an agreement assigning first ownership of such rights to the University as a condition of participation on a specific project.  This is most likely to arise where: –

•  The IP that may be created by the student will be needed to enable use to be made of the whole idea, concept, design or invention (the “technology”) – in such cases the University needs to protect the integrity of IP ownership so that there isn’t a small gap in its IP portfolio that may preclude it from exploiting the whole technology in terms of licensing, joint-venture or spinout company

•  The IP that the student may create will be based on advice and ideas contributed by many others (staff, students and third party sponsors or collaborative partners) in a University School, Research Institute, Department or Centre, or in a third party organisation.  This advice and ideas may be based on confidential, proprietary or otherwise valuable information that already belongs to the University, another university/institute or to a third party organisation

•  a third party organisation sponsors, in part or whole, the research or work. For research students in particular, it is often necessary for the University to ensure that IP and IPR vest with the University before the student embarks on any research.

Generally, where, in the opinion of the student’s project supervisor, the student is likely to generate IP that falls in one or more of the above categorises, whilst working on the project, the University will require the student, to complete a confidentiality and IP assignment prior to commencing work on the project.”

This would again imply that IP can be both owned by Wolverhampton and its students at various points, but this is clarified in sections 5.2.1, 5.2.2 and 5.2.3:

“5.2.1 In the event that an undergraduate student or a postgraduate student on a taught course creates IP in the course of a University project, either solely or in collaboration (where the collaborators may be fellow students, members of University of Wolverhampton staff, employees of a sponsoring organisation or collaborative partner or a combination thereof), he or she will be asked to assign to the University any IP that he or she may create.  Assignment will only take place in the event that IP is created.  A student shall then give to the University all reasonable assistance to enable the University to obtain patents or other forms of legal protection for the IP.

5.2.2 if the University seeks to exploit commercially any IP created by an undergraduate or taught postgraduate student, it shall ensure that the student is treated in the same way as an employee in accordance with the University’s Revenue Sharing Scheme in force at the time, as set out in the University of Wolverhampton Intellectual Property Management Procedures.

5.2.3 Where the sponsor of the project has not negotiated a separate agreement with the University and/or the student, and the University decides it does not wish to participate in the development or exploitation of the work, the University shall notify the student in writing, and the University will agree to re-assign ownership of any potential IPR to the student so that the benefit of the work shall belong exclusively to the student.”

This also outlines that a revenue sharing policy does exist.

University of Worcester

Worcester’s IP policy can be found, once again as a PDF file, here. It is broadly the same as the other policies outlined in this post, and the relevant details are outlined in regulations 4.5 onwards:

“Students

4.5 Students generating IP in the course of their academic studies and/or research own that IP in their own right.

4.6 Exceptions to this include (but are not limited to):

4.6.1 A sponsored studentship where the sponsor has a claim on IP arising from the terms of the sponsorship.

4.6.2 where the student is part of a research team where the sponsor of that research owns any IP arising from that research.

4.6.3 where a specific agreement has been made between the student and the University to the contrary (e.g. the student has used University facilities and resources through an agreement with the University that it shall own all or part of the resulting IP)

4.6.4 Where the student generates IP resulting from collaboration or work with an employee of the university working in the course of his or her employment.

4.7 Where a University employee is concurrently registered as a student, the employee status takes precedence for the purposes of this Policy.”

The details of the university’s revenue sharing policy are outlined here:

“7.3 Any remaining revenue shall be apportioned as follows:

7.3.1 Up to £250,000:

  • 50% for the Creator(s)
  • 33.33% for the University
  • 16.67% for the Institute or Department

7.3.2 More than £250,000:

  • To be determined by the Vice Chancellor’s Advisory Group on a case-by-case basis”

In future I won’t be talking as much about individual policies, although they may require mentions, as in further posts I will be aiming to investigate practical uses of IP by West Midlands based universities and get details of student experiences of them.

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