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.
IP and Confidentiality Guidance
Management and Protection of Information: IP and Confidentiality Checklist
Notes and procedures on information disclosure and dissemination, giving presentations and talks, generating publicity, applying for grants, dealing with the media and other matters that will arise as you progress your idea.
Nature of Knowledge Exchange
|1. Information Dissemination|
|Scholarly materials, such as journals/papers/articles/books||Papers to journals (and similar) are normally considered as provided in confidence, although mark “Confidential pre-publication in journal”. However, once published, these are considered as open/public and possibilities for patent protection are then limited to a few countries. Remember many materials are printed on-line before they appear in the hard copy journal. Remember publishing observations may not be patentable, so if you publish you may be “giving away” key information and which may limit the scope of any future patent (or deny you the opportunity entirely).||Send a copy of any journal submissions to UMIP one month before, but at the latest, at the same time as sending to journals/editors. UMIP can start work with an early draft, in order to provide advice, so you do not need to wait until a final version. Keep secret in the meantime at least.|
|Considered an open process unless ALL attendees/participants have signed up to a Confidentiality Agreement in advance, therefore there is no protection unless arranged specifically and every single person who is not an employee of UoM signs (i.e. even one not signing would affect the confidentiality). This means that publication before filing for a priority patent (unless full confidentiality is obtained/evidenced) would harm the chances for obtaining a patent in most countries.||If new data/concepts/breakthroughs are to be revealed then a register acknowledging confidentiality obligation should be signed in advance by all seminar/talk attendees.
Presentation material should be marked “confidential and copyright” and (if it is the case) patent pending. Send a copy to UMIP prior to events for evaluation. Ideally, wait until a patent specification is filed or, if possible, until a filed patent is published.
|Poster sessions||Considered an open process – work/results disclosed in a poster will not be protected (unless a priority patent has been filed beforehand).||Posters should be marked “copyright”. Check with UMIP prior to making the poster publicly available (there may be patent possibilities).|
|Grants||Applications to Research Councils and major charities are usually considered as provided in confidence, including assessment/peer review aspect, although you should check and anyway mark “Confidential”. Could be subject to Freedom of Information requests, as could data arising from grant work (and at any time during the grant).||If the grant submission, or work/data arising, is not already covered by a patent or patent application – send grant proposal (and data) to UMIP. Only include information which is necessary to obtain the grant.|
|Interviews/filming with representatives from the media||It can be easy to say or demonstrate more than you intended, given that it is not a usual or familiar activity. Sharing anything to a journalist (even if not subsequently published) will in itself, constitute a disclosure and hence could limit patent possibilities later.||Check with UMIP first.
Consider media training if you anticipate that giving interviews will be something you will be asked to do (or plan to do).
|Websites/social media||Be sure to check that any details/material on any website (eg. your School’s research page) does not disclose any information which could be something with commercial potential (that hasn’t first been protected).
Information on social media (eg. Twitter) will be considered a disclosure.
|Check with UMIP first.
Do not disclose your own information unless you are certain that it is not relevant for commercialisation.
Never disclose/pass on others’ information.
|University Employees||Are generally covered by law and contract from an IP & Confidentiality point of view. Ownership of IP is with the UoM in line with the IP Policy revenue-share. Will own copyright (only) in scholarly materials.||Duty to disclose IP/inventions to UMIP.|
|Individual/occasional visitors to labs||Will not owe any obligation of confidentiality to UoM unless they sign a Confidentiality Agreement.
Active collaborators are likely to be IP owners and/or contributors, depending upon degree of collaboration.
|No information should be disclosed unless it is already covered by a patent or patent application. The University Research Office (URO) should be contacted to put in place a Confidentiality Agreement prior to the visit. Even when a Confidentiality Agreement is in place only disclose what is necessary. Do not disclose others’ confidential information to which you are party.|
|Company Representatives||Will be very concerned about sharing their information and will never do so without a confidentiality agreement in place. This will often take the form of a 2-way mutual confidentiality arrangement – however do not disclose University information without an agreement in place which protects the University.||Never disclose companies’ information to third parties in any event. Ensure the University is covered by a confidentiality agreement. Check with UMIP or the URO.|
|Academic Collaborators||May not be covered by an explicit obligation of confidentiality.||If the collaboration is formal – check the terms of the arrangement. If it is informal – make sure an agreement for confidentiality is put in place.|
|Scholars – resident/visiting||May not be covered by an obligation of confidentiality.||Check with the University/IP Policy or with “host” academic collaborator/supervisor.|
|Students||Are not covered (unless on a special scheme eg. EngD) and therefore will own IP generated solely by themselves or jointly if generated with a UoM employee.||Must be subject to a separate agreement if to be involved in a commercial project or UoM invention eg. confidentiality and IP agreement. Contact URO. Check with supervisors to obtain permission to use students in any IP project.|
|3. IP/Commercial Contractual Arrangements|
|Patents/Copyright/Designs||Even though a patent application may be in place, any details of eg. progress with exemplifying the patent through proof-of-principle or grant research may prejudice both the IP position and the commercial position, hence it is usually best not to disclose information until the patent is published.
For licensing, as a principle, the University seeks to offer/grant non-exclusive licences on its patents. The University can offer limited exclusivity under this broad principle, eg. non-exclusive rights, but exclusive in a geographical area and/or to sell, but not make, and/or use in defined areas of applications.
Copyright protects items such as written works and computer source code. The right arises automatically once an idea/knowledge has been expressed in written form.
Designs protect 3D objects or designs applied to them.
Do not use others’ copyright or designs without permission. Never infringe others’ patent(s).
|Involve UMIP/UMI3 in any such discussions or negotiations at the earliest stage.
For spin-outs, also involve the spin-out CEO.
Your works or codes may not be copied by others as a matter of law, but nevertheless you may still wish to keep their details confidential.
The design rights can arise automatically but it is advisable to check with UMIP whether they should be registered at the UK Intellectual Property Office.
Carry out relevant searches.
|R&D||Contracts need to ensure protection of background IP (i.e. existing UoM IP), sideground IP (i.e. IP generated outside of any contract terms for its duration) and a well-defined and limited licence on arising IP (i.e. arising from the contract project work) for the R&D project. Any further rights in arising IP will depend upon the amount invested by the other party in the R&D (eg. FEC or otherwise) and the legal arrangement for this.||The URO must be informed of all proposed R&D contracts and will generate the proposed agreements. The URO should be involved in the earliest stage of discussions/negotiations.|
|Consultancy and Know-how
Access to Facilities/Equipment
Supply of materials
|A consultancy assignment will use existing IP or expertise to solve a problem, design a system or process, or provide expert opinion but will not principally be aimed at creating IP (except for copyright in any report). Nevertheless consider if IP could be likely to arise and inform the URO if so.
Know-how is very difficult to protect/police – best seen as “secret” information and not disclosed. It can only be protected by a Confidentiality Agreement or other agreements which include confidentiality provisions.
Use of facilities does not involve genuine academic work or IP.
Materials need to be supplied along with a Terms and Conditions of Supply note. Consideration needs to be given to the physical materials and the IP in those materials.
|A Consultancy Agreement must be in place prior to carrying out the assignment. The URO will generate the document and must be informed at the earliest stage.
A Confidentiality Agreement is important, but disclosing what the know-how achieves, rather than what it is, can be the best way to handle it. Contact the URO.
Commercial use of equipment requires permission of grant body or sponsor. Contact the URO.
Contact the URO or UMI3.
|4. Data Storage|
|Computer and data security (cyber security and hard copy)||The development, implementation and management of a System Level Security Policy will help to demonstrate understanding of information governance risks and commitment to address the security and confidentiality needs of a particular system. In this context, a system relates to the complete data handling solution (electronic or otherwise) for confidential data.
An effective SLSP will contain a considered and specific view of the range of security policy and management issues relevant to a system and that may encompass a range of technical, operational and procedural security topics.
|A template for the production of a SLSP can be found at: http://www.itservices.manchester.ac.uk/secure-it/encryptionsw/
The Faculty Information Services Team can arrange a site visit if required to audit existing IT systems and working processes, and provide guidance around best practice in data handling, IT and information security.
|5. Good Practice|
|Laboratory notebooks||A well maintained and regularly completed laboratory notebook establishes your permanent record of research activities and findings. Notebooks can be important in establishing your discoveries and the details and dates of inventions. These are used for academic and commercial reasons, whether for proof of compliance to grant and contract provisions, or for intellectual property rights purposes.||Check on University and School guidance for laboratory notebook practice. Ensure daily recording and countersignature. Check with UMIP and/or the URO.|