IP Policy Executive Summary
The University of Manchester regards the creation of intellectual property and know-how (IP) as one of its major objectives; complementary to the core objectives of knowledge creation, scholarship and learning. The central features of its IP Policy are:
Clear incentives for the creation of IP
Effective and efficient University services which can evaluate and protect IP, and then decide on the most appropriate arrangements for its transfer into use. Arrangements for sharing any commercial returns from commercialisation of IP which provides for generous rewards to its originators.
The University’s Intellectual Property Policy deals with IP created by its and its subsidiaries’ employees and students as well as the interface with others who may fund or collaborate with the University. This document is a summary of the main points in the University’s IP Policy. It is not a substitute for reading the relevant parts of the
IP Policy itself.
Many people may be involved with the work that leads up to the creation of IP and the work that subsequently reduces it to practice. However many of those involved will not own any of the IP created as at law they have not been involved at the actual pointof creation.
The University asserts its rights to IP created by employees in the course of his or her employment. If other IP is created by an employee or any IP is created by a student outside the course of his/her University studies with more than incidental use of University resources the employee or student will be deemed to have agreed to transfer such IP to the University.
IP created in the course of or pursuant to a sponsored research or other agreement with an outside body will initially belong to the University and then be determined according to the terms of such agreement. Students will be expected to transfer such IP to the University initially. Students will grant to the University a continuing licence to use other IP created by a student in the course of his/her studies with the University, for administrative, promotional, educational and teaching purposes of the University.
The University generally waives its rights to the copyright in scholarly materials (but not teaching materials), allowing employees to commercialise the materials to their own benefit. The University does not waive its rights where any use of material might bring the University into disrepute. If there is any doubt about this the matter should be discussed with the creator’s Head of School.
Where the University has waived its rights it will have a continuing licence to use such IP for its administrative, promotional, educational and teaching purposes and to sub-license. It is the responsibility of an individual employee to make any publisher, or any other party interested in the potential commercialisation of such material, aware of
IP Protection and Commercialisation
The University owns and uses The University of Manchester Intellectual Property Limited (UMIP) as a management company to advise on and facilitate the protection and commercialisation of IP (other than teaching materials). Where UMIP considers there is potential for profitable commercialisation, it will try to arrange the protection of IP generated by employees and students by patenting or other means, generally at its own expense.
UMIP will have the “first rights” to commercialise IP owned by the University. If UMIP does not do so in a timely manner or decides it does not wish to do so then the originator(s) (whether employees or students) may ask for such IP to be transferred to them and will be free to pursue alternative routes. If an originator of IP believes that their best commercialisation route involves partners other than UMIP, they may make a case to that effect to the University.
Employees and students must keep secret any confidential information to which he or she has access as an employee or student of the University.
There is no general obligation on an employer to reward employees for IP which is generated in the course of their employment. The only exception is where an invention is of ‘outstanding benefit’ to the employer. However, the University’s IP policy is designed to create strong incentives for the creation and development of IP. Hence the sharing of rewards is strongly biased in favour of employees and students.
The University will not retain more than 15% of the value of IP created by University employees and (where their IP belongs to the University) students, in cases when the University or UMIP has no involvement in the commercialisation of such IP or their only involvement is in reviewing the IP, undertaking legal due diligence on it and advising the originator on the next steps to be taken. This 15% value may be represented by shares in a spin-out company or in royalties from a licence.
If a special fee is paid for the creation of any teaching materials then this will be instead of any share of commercialisation revenue or if the originator has been employed specifically to create the IP then they will not be entitled to any share of commercialisation revenue.
The Inland Revenue treats any sharing of income by the University with employees, students and others with an honorary association with the University as if it were a bonus on salary. Income tax and national insurance contributions will generally be deducted from an individual’s share by the University before payment is made or an indemnity for such taxes will be required by the University.
The Policy is a living document and may be subject to change by the University. Major changes will be communicated to the departments, employees and students affected by the changes. All queries arising from this document should be addressed to the Registrar and Secretary. For general advice a publication called “Intellectual Property & Confidentiality: An Academic’s Guide” is available from UMIP.