Regulations 2011-12

Regulation 32: Intellectual Property

32.1.1 These Regulations have been formulated in order to provide a framework for the successful identification, protection and exploitation of potentially valuable research results and prosecution of technology transfer. They are intended, by identifying possible routes of exploitation and providing financial incentives for individuals and departments, to encourage researchers to identify and develop commercial projects.

32.1.2 Except as otherwise agreed in writing, the College claims ownership of the following intellectual property created by staff in the course of their employment or by students in the course of their studies or on College-based projects:

1 patentable and non-patentable inventions;
2 the filing of patent applications in the name of the College in UK and/or elsewhere;
3 College-commissioned literary, artistic, dramatic or musical performance works;
4 teaching packages;
5 lectures;
6 registered and unregistered designs.

32.1.3 For the avoidance of doubt the College does not intend to assert any possible ownership of copyright in books, articles, lectures or other written work or art work, other than that specifically commissioned by the College including its departments or commissioned by outside agencies from the College including its departments.

32.1.4 The College asserts its ownership of the intellectual property referred to in 32.1.2 above in order to ensure the applicability of the following Regulations and to achieve the joint exploitation of the property and/or subsequent technology with its originator(s).

In the Regulations that follow the term 'intellectual property' refers only to those items detailed in 32.1.2 above. For the purpose of the Regulations, a 'researcher' is defined as a member of staff or student of the College.

32.2 Regulations

32.2.1 Where a researcher creates intellectual property which is, in his or her opinion, capable of commercial exploitation he or she shall report its existence to his or her Head of Department, where applicable, and to the Registrar and Secretary or his or her nominee.

32.2.2 In consultation with the researcher and, where applicable, the Head of Department, the Registrar and Secretary or his or her nominee shall determine whether the College wishes to become involved in the exploitation process.

32.2.3 If the College does not wish to be involved in the exploitation process the researcher shall be free to protect and exploit the intellectual property or otherwise at his or her discretion, subject to the interests of third parties.

32.2.4 In the event of disagreement concerning the ownership of the intellectual property which cannot be resolved between the researcher and the Registrar and Secretary the matter shall be referred to an adjudicator to be agreed between the researcher and the Registrar and Secretary. If not so agreed within thirty days of a request by either of them to do so, then the matter shall be referred for determination by a committee appointed by the Council under the procedures for the Hearing of a Grievance of a Member of the Academic or Academic Related Staff.

38.2.5 If it should be decided in any particular case that the intellectual property is owned jointly by the researcher and the College or wholly by the latter the researcher or the inventor, for the purpose of dealing with third parties, shall be deemed to have given the College authority to nominate an attorney for him or her in his or her name and to sign such documents and deeds on his or her behalf and to take such action as the College deems necessary for the purposes of these Regulations, but such authority shall be without prejudice to the provisions of Regulation 32.2.4.

32.2.6 Where it is decided to seek exploitation in partnership with the College discussions between interested parties will be held to determine the appropriate action to be taken. This may include one or more of the following:

1 the retention of confidentiality and strict avoidance of prior disclosure;
2 the filing of a UK patent application in the name of the College with the researcher as named inventor;
3 the identification of potential licensees;
4 the assignment of the rights to a third party such as the British Technology Group, Research Corporation Ltd or an industrial company;
5 the formation of a limited liability company to exploit the property and/or technology.

32.2.7 Notwithstanding the provisions of Regulation 32.2.6.(1) above the Registrar and Secretary or his or her nominee may consult, on a confidential basis, with appropriate experts in the field of the intellectual property in question in order to assist with the assessment of innovation and commercial potential.

32.2.8 Where it is decided jointly to seek exploitation the researcher shall provide reasonable assistance in the exploitation process by, for example, providing information promptly upon request, attending meetings with potential licensees and advising on further development.

32.2.9 The College shall decide within three months of the initial contact by the researcher whether it wishes to be associated with the exploitation of the intellectual property. In cases where the College does not wish to pursue exploitation the intellectual property rights shall, if he or she wishes, promptly be assigned to the researcher at his or her expense in order to enable him or her to take such action as he or she sees fit consistent with Regulation 32.2.3 above.

32.2.10 Net Income (revenue minus all relevant costs) received by the College as a result of the exploitation of intellectual property shall be distributed as follows:

32.2.11 Where more than one researcher is involved the distribution of their share of the income between themselves shall be a matter for them to determine save that where there is failure to agree the income shall be distributed to them in equal proportions.

32.2.12 The revenue sharing arrangements in Regulation 32.2.10 above shall not be applicable to members of the academic-related or non-academic staff who are contractually obliged to commercialise intellectual property. Any payments to staff in this category shall be the subject of ad hoc determination by the Registrar and Secretary or his or her nominee and the appropriate Head of Department at the time of receipt of income.

32.2.13 Where costs are incurred in protecting and exploiting intellectual property, these shall unless otherwise agreed be shared on an equal basis between the College and the appropriate department.

32.2.14 The appropriate share of the income arising from the commercialisation of the intellectual property will continue to be paid to a researcher who has left the College. In the event of death, the entitlement shall continue be paid to their estate.

32.2.15  Authorised signatories on behalf of the College on matters relating to intellectual property shall be as specified in the Financial Regulations or Associated Documents.