GUIDANCE ON THE MANAGEMENT OF
INTELLECTUAL PROPERTY RIGHTS
Research, Development & Commercial Services
Anglia Ruskin University
Revised August 2008
TABLE OF CONTENTS
Page No.
1.
INTRODUCTION – What are these notes for and what
do they cover
1
2.
The Basics of Intellectual Property – What is it and who
owns it?
2
2.1
2.1.1
2.1.2
2.1.3
2.1.4
2.1.5
2.1.6
What is Intellectual Property?
Copyright
Patents
Design Right and Registered Designs
Trademarks
Know How and Confidential Information
Summary
2
2
3
3
4
4
4
2.2
2.2.1
2.2.2
2.2.2.1
2.2.2.2
Who Owns Intellectual Property?
Externally Funded Work
Student Intellectual Property
Undergraduate Students
Postgraduate Students
4
5
5
5
6
3.
Our Intellectual Property Policies and Procedures, Management
Responsibilities and Support Services
3.1
3.2
3.2.1
3.2.2
3.2.3
3.2.4
3.2.5
3.2.6
3.2.7
3.2.8
3.2.9
Intellectual Property Policy Objectives
Management Responsibility and Procedures
Management Responsibility
Day-to-Day Management of Intellectual Property Operations
Managing Actions which Follow an Intellectual Property
Disclosure
Intellectual Property Steering Group and Our Patenting
Strategy
Licensing, Assignment and Option Arrangements
Exploitation Revenue Sharing
Actions Arising from Intention to Undertake Collaborative
Research and Development
Confidentially
Intellectual Property Management and Procedures Flowchart
6
6
7
7
8
9
12
13
14
14
16
18
APPENDICES
Appendix A:
Appendix B:
Appendix C:
Appendix D:
Appendix E:
Appendix F:
Deed of Assignment
Sample Confidentiality Agreement
Extract from Contract of Employment
Agreement Relating to New Intellectual Property (NIP)
Arising in a Forthcoming KTP Programme
Agreement for Collaboration on Research and
Development
Declaration of “Non-Inventorship” by a Post
Graduate Student
2
20
22
31
34
48
52
1. Introduction - What are these notes for and what do they cover?
These Guidance Notes detail the procedures to be followed to ensure compliance with
the Anglia Ruskin University policy on Intellectual Property dated June 2008.
For many years it has been Government policy that universities should own and exploit
their own Intellectual Property. Intellectual Property is a type of intangible asset. It is the
result of original thought and creativity, so universities are, because of their very nature,
producers of Intellectual Property. Some of that Intellectual Property is very valuable, as
it leads to technical innovation. Some of it is valuable in a less obvious way in that it
might not be commercially exploitable in its own right but could be used in association
with other intellectual property to generate commercial income. Musical compositions
and literary works are also forms of Intellectual Property. Some forms of Intellectual
Property are automatically protected by law from being copied without authorisation. In
other cases, Intellectual Property rights have to be established through a registration
process. When Government talks about university Intellectual Property it is generally
thinking about patentable Intellectual Property, and this type of Intellectual Property is
what is principally covered in these notes. Awareness of the value of university
Intellectual Property has grown rapidly in the past twenty years. Government has, over a
number of years, offered funding through various initiatives to raise awareness of
Intellectual Property issues in universities and for universities to recruit specialist
personnel to establish and run technology transfer offices. Most, if not all, universities
now have some formal organisation and a set of procedures for recognising and
protecting Intellectual Property. Government has also supported the production of
Intellectual Property Handbooks for Universities
These notes are about our management of Intellectual Property. They are not intended
as an academic text, but rather are chiefly intended to convey just enough information to
enable readers to take appropriate action in a specific live situation which has Intellectual
Property implications. We wish to avoid the loss of potentially valuable Intellectual
Property, as well as generate additional income benefits for our Institution, Faculties,
staff, and students by commercialising its intellectual property.
The target readership for these notes is a number of distinct internal groups who
between them have the capability and responsibility to protect and create value out of
new knowledge in general and to make use of specific items of intellectual property for
the benefit of both the creators of Intellectual Property and all of us. These Groups are:
 Senior Management which includes Associate Deans with a responsibility for
External Income Generation.
 Individual Academics, especially those involved in science and technology research
 Research students
 Research, Development & Commercial Services team
Why are these particular groups targeted?
1. Senior management, because they need to be aware of and interpret the principles of
Intellectual Property management introduced in this document, and to use their
judgement and authority to sanction the direct financial expenditure which inevitably
arises in connection with actions to protect and commercialise Intellectual Property.
2. Associate Deans (External Income Generation,) because they need to have a basic
awareness of Intellectual Property and be wide awake to situations within their
1
Faculty which could result in potentially valuable knowledge being given away to
collaborative partners, or prematurely placed in the public domain.
3. Individual Academics, because without the basic awareness which these notes can
provide, they could naively give away their ideas orally or by publication.
4. Research students, because they need to be aware of their rights and obligations and
of how to separate Intellectual Property which is theirs from that which belongs to
us.
5. The Research, Development & Commercial Services team, because their specialist
knowledge and skills in evaluating and protecting Intellectual Property guide our
Faculties and individual academics through situations where projects which are
creating new Intellectual Property should operate in an agreed framework.
All the above groups need to be aware of each other’s roles and responsibilities. These
guidelines should help to foster a team effort to avoid the loss of valuable Intellectual
Property and help in reaching agreement on the exploitation of new knowledge.
These notes will form the basis of a programme of awareness training, which will be
organised by individuals in Research, Development & Commercial Services for both staff
and research students.
In summary, the present notes aim to:

Improve the awareness of both management and academic staff of what intellectual
property is, the issues surrounding its identification, ownership, protection and
commercialisation.

Clarify our policy objectives in relation to Intellectual Property and make clear
management responsibilities and procedures, particularly in relation to scientific and
technical know-how, patentable ideas and designs.

Ensure that our staff know what action to take when Intellectual Property issues arise
in the course of their work, what support services we have, and how to tap into
them.
2.0 The Basics of Intellectual Property - What is it and who owns it?
2.1 What is Intellectual Property?
Intellectual Property is the product of human thought, creativity and intellectual effort.
The law recognises that the time and intellectual and creative effort spent in producing
artistic and literary material, and working on new ideas and designs for products and
processes, is an investment which deserves protection from being copied and/or
otherwise exploited by other parties for their benefit without reference to the originator.
The law defines the following forms of intellectual property right:
2.1.1 Copyright
The moment that an original creative work, whether it be a work of art, a piece of music
in manuscript or recorded form, a literary work or a piece of computer software, is
2
completed, it is automatically protected by Copyright. This means that no one has a right
to make a copy without reference to the author.
There is no registration procedure for copyright but it is always useful where possible to
establish a priority date for the copyright by posting the material recorded delivery to
yourself and leaving it unopened. The use of the “C in a circle” symbol has no legal
force, but may be useful as a deterrent. Copyright protection now exists for a period of
70 years after the death of the author.
It is important to understand that Copyright protects the precise form of words
and symbols not the ideas behind them.
Databases are not automatically protected by Copyright, because of doubts about the
creative element in database creation. So in order to recognise the investment made in
database creation, a new Database right was introduced into law in 1997.
The situation for software continues to evolve in that it can now be patented in the
United States of America.
2.1.2 Patents
A Patent is awarded to protect the originator of a useful invention, granting a monopoly
right to prevent it being used without permission.
Patent protection has to be applied for and applies to a specific nation state. Under the
Patent Co-operation Treaty (PCT) it is possible to file patent applications in more than
one country at the same time. It should be noted, however, that not all national states
are party to the PCT. Patent protection is available for a maximum period of 20 years
from the date of initial filing. The date of first filing is the critical date in most countries,
except the United States of America where date of discovery is all-important, so
laboratory notebooks become significant evidence.
The criteria which determine whether a Patent application will succeed or not are:





the invention must have an industrial application - a scientific discovery is not
patentable.
it must be new, therefore special care must be taken not to publish any papers on the
invention before applying for a Patent, as this would destroy any chance of a Patent
being granted.
it must involve an inventive step.
it must not be obvious to someone skilled in the technology concerned
it must not be in one of the excluded categories, which include plant and animal
species, surgical procedures and biological processes.
2.1.3 Design Right and Registered Designs
Design right is an automatic right which works in a very similar way to Copyright, to
protect the originator of a three-dimensional external design. It provides an exclusive
right for five years only; copying under licence is allowed for the next five. Ten years is
the normal maximum term.
3
Registered Design.
If longer term and more secure protection is needed, then the originator of a design with
aesthetic appeal may apply to the Design Registry of the Patent Office. Registered
Designs may be renewed for up to 25 years.
2.1.4 Trademarks
Trademarks are either names or symbols (or a combination of the two) which identify
and distinguish goods and services from a given organisation from those of other
organisations. Protection is granted by registration against others using the mark in ways
which could confuse, and which may thereby damage the business of the holder of the
registered mark.
Common law protection is also provided against actions which misrepresent goods or
services (“passing off”), actions intended to injure the business or goodwill of another
trader, or actions which cause actual damage to the business of another trader.
2.1.5 Know How and Confidential Information
Keeping key technological data confidential may be an effective and much less expensive
alternative to patenting. Confidential information does not need to be reduced to a
particular form, such as is required for a patent application. Nor does the obligation to
keep information confidential always depend on a written contractual obligation. A
breach of confidence can occur if it is made clear to the recipient of information that it
has a confidential content.
Commercial intelligence (about markets and customers, for instance), financial data and
even research methodologies can also constitute confidential information.
2.1.6 Summary
Intellectual Property can exist in a number of forms of output. Most of these are
protected by law. The above is intended to be nothing more than a very brief
introduction to the subject. Intellectual Property Law is a highly specialised subject.
There are many useful sources of detailed information. To quote just two: UK Patent
Office: www.patent.gov.uk
Mewburn Ellis (our current patent agents) www.mewburn.com
2.2 Who Owns Intellectual Property?
Under English Law, which covers England and Wales, intellectual property if related to
an individual’s employment is owned by their employer. Otherwise the originator or
inventor of the Intellectual Property in question is the rightful owner. This is reflected
by the fact that about 80% of applications for Patent protection are made by a
commercial company or other organisation which is the employer of the inventor. The
law recognises that the employer provides the resources, encouragement and financial
4
security, as well as the funding for the process of application. In the Contract of
Employment, we claim our right to intellectual property developed by our employees in
the course of their normal duties or as the result of a task specifically assigned by us. We
will not normally however, claim an interest in creative works and scholarly publications,
including books, musical compositions and recordings and works of art unless we have
specifically commissioned them.
2.2.1 Externally-funded Work
External funders of research fall into four categories. If you are involved with any bid for
external funding, Intellectual Property is likely to be an issue, and you should consult a
member of Research, Development & Commercial Services (ext. 4874):

Research Councils and Government Departments
Intellectual Property arising from Research funded by Research Councils is vested in
us. The ownership of intellectual property generated from work funded by
Government Departments will vary.

European Community
The partners submit an exploitation plan as a part of their application for funds, and
all the Intellectual Property is assigned to the partners.

Charities and Charitable Trusts
Arrangements vary considerably and are sometimes subject to negotiation.

Industry and Commerce
Where work is being wholly or partially paid for by external commercial
organisations, whether this work is considered to be research, consultancy or in some
other category, it is essential to negotiate and agree beforehand who will own the
Intellectual Property arising during the project, and particularly whether there will be
rights to publish, rights to royalties etc. for us.
2.2.2 Student Intellectual Property
Students are not our employees. A suitable legal agreement needs to be entered with the
limited number of students who might be involved in projects which are likely to
generate commercially valuable intellectual property. Before one of our students is
presented with a legal agreement the background to why we are asking them to sign it
needs to be carefully explained along with their entitlement to share any revenue which
might be generated from the commercial exploitation of the intellectual property in
question.
2.2.2.1 Undergraduate Students
The issue of Intellectual Property Rights in undergraduate student projects, particularly in
the I.T. area, has arisen on a number of occasions. We would not wish to inhibit the
creativity of an undergraduate student who, for instance as a project constituent of their
degree course, is constructing a programme or device which may eventually have
commercial value. There may be circumstances where a staff member’s ideas have
5
contributed to a student project. Where that is the case, we may agree to collaborate
with them to protect and exploit the Intellectual Property concerned, for the benefit of
both the inventors and ourselves in line with our revenue sharing and intellectual
property exploitation policies in place at the time.
2.2.2.2 Postgraduate Students
In practice, postgraduate students are more likely than undergraduates to become
involved in original work with commercial implications. Some are sponsored by
employers, who may claim rights to inventions. Otherwise, unless we take specific action
to ensure the transfer of Intellectual Property rights, these will belong to the student. In
any case where there is potential commercial application, we should consider the
contribution to the invention made by intellectual input of the supervisor, and consider
asking the student to assign his/her rights to us, so that steps can be taken collaboratively
to exploit the commercial implications of the invention.
It is our intention to require all postgraduate research students to sign an undertaking, on
registration, that, in instances where they are formally notified as working on a project
having commercial sponsors or commercial potential, they will enter into a
confidentiality agreement, and assign their Intellectual Property rights to us unless they
are employed by the organisation funding the research. In return we will treat
postgraduate researcher inventors on such projects on the same financial basis as
staff inventors in respect of Intellectual Property-based income (see 3.2.6). The
proposed wording of that undertaking is given below for reference
“I acknowledge the possibility that I may become involved in a project which produces
new ideas, designs or similar exploitable intellectual property. Where this is the case, and
I am formally notified of that fact by my supervisor or otherwise by a member of Anglia
Ruskin University in writing, I agree, when asked by my supervisor or other responsible
Anglia Ruskin University officer:
 to discuss and quantify my creative contribution in respect of any given item of
intellectual property developed in the course of research in which I am involved, with
my supervisor or otherwise with the nominated Anglia Ruskin University officer; to
assign my rights in such Intellectual Property to Anglia Ruskin University, to be
named as an inventor in and execute any document which may help to secure
protection for Anglia Ruskin University of said Intellectual Property, and to sign any
confidentiality agreement with an external sponsor of research in which I am involved
.
 to be a party to any Intellectual Property agreement which Anglia Ruskin University
may undertake in relation to research work with which I am involved.”
Note that Associates in a Knowledge Transfer Partnership (KTP) are our employees on
short-term contracts and therefore bound by the conditions of any Intellectual Property
Rights agreement between us and the industrial partner, and subject to our rules on
Intellectual Property Rights ownership.
6
3.0
Our Intellectual Property Policies and Procedures, Management
Responsibilities and Support Services
3.1 Intellectual Property Policy Objectives








Intellectual Property is one of the important and measurable outputs of an innovative
University. We recognise the potential of innovative and creative intellectual property
to create tangible and non-tangible benefits for our Institution, staff and students.
We wish to manage our Intellectual Property proactively, selectively and fairly, in
collaboration with staff and students. The obligations of academic staff regarding
disclosure of inventions, as well as delineation of the areas where we would not wish
to manage Intellectual Property outputs, are outlined in our Contracts of
Employment.
We wish to identify new Intellectual Property as it arises, assess its potential and to
make good use of the opportunities it offers for initiating external collaboration and
generating both favourable publicity and alternative sources of income for our
institution, staff and students.
We will provide appropriate support and expertise to identify and evaluate
Intellectual Property selectively and will actively support staff involved by taking the
lead role in exploitation negotiations with external partners.
We recognise the crucial importance of staff and student creativity and innovation in
generating new works and ideas, and wish to reward such qualities and not to inhibit
them in any way by the way Intellectual Property is managed.
We will not normally claim an interest in copyright relating to scholarly, literary and
artistic works developed by our staff and students, apart from teaching material we
have specifically commissioned for delivery on one of our courses face to face or
through distance learning channels or if it is produced for a particular event which
relates to our activities or the individual’s role.
We recognise that where research and development work is done in collaboration
with commercial partners who are fully funding the work, that the commercial
sponsor may retain Intellectual Property rights, or be granted a free licence for
relevant fields of application. However, in other instances of collaborative projects,
we may retain Intellectual Property rights, rights to license third parties for other
fields, and/or negotiate a royalty arrangement to provide us with a share of future
exploitation income.
Good exploitable ideas developed by our staff/students, either alone or in
collaboration with external partners can lead to the establishment of spin-out
companies. Given the proven contribution to local economic development of
university spin-out companies, we will seek to provide incubation facilities and other
support services, which may help them to start and grow. We may decide to have a
stake in such companies depending on whether any of our intellectual property is
required by the venture and/or the level of support services provided.
3.2 Management Responsibility and Procedures
3.2.1 Management Responsibility
Responsibility for implementing the above policies as they apply to patentable ideas,
designs and know-how arising in the course of research activity within Anglia Ruskin
7
rests with the Deputy Vice-Chancellor (Research, Scholarship and Development).
Faculty Deans, Associate Deans (External Income Generation) and Directors of
Research will be closer to the detail of research project activities and will work with
Research, Development & Commercial Services staff to improve staff awareness and
ensure the initiation of suitable steps for dealing with Intellectual Property issues as they
arise.
The Intellectual Property Steering Group (IPSG) will consider the development of
strategies and approve actions needed to implement the policies and strategies for
Intellectual Property, particularly where such actions require the sanctioning of financial
expenditure. The IPSG will be Chaired by the Deputy Vice Chancellor (Research,
Scholarship and Development). Members will be:
Director – Research, Development & Commercial Services
Faculty of Science and Technology Associate Dean (External Income Generation)
Faculty of Health and Social Care Associate Dean (External Income Generation)
Finance Officer
East of England Business Liaison & Regional Support Business Development Manager
– Research, Development & Commercial Services
IPSG will be convened on an ad-hoc basis by the Deputy Vice Chancellor (Research,
Scholarship and Development), whenever there are issues to be considered. The
Committee will consider recommendations for filing of patent applications, investments
in research which may lead to innovation, and will follow and recommend actions related
to the progress of specific external collaborations with Intellectual Property implications.
It will receive and consider regular reports on Intellectual Property income and
expenditure and will report to the External Funding Committee.
Responsibility for the safe keeping of all official papers relating to our registered
Intellectual Property and taking legal action, if required, lies with the Secretary and
Clerk’s Office.
3.2.2
“Day-to day” Management of Intellectual Property Operations
There are two basic initial situations which will require attention that could trigger
activity to protect our Intellectual Property. Both situations should be identified as early
as possible through pro-active investigation by a combination of Research, Development
& Commercial Services and Faculty staff working alongside academic researchers. These
two situations are:


The identification of emerging Intellectual Property, arising from any of our research
activities, which could have industrial application. This is formally referred to as
“Disclosure”, because the Employment Contract states that staff must disclose their
inventions. In practice, the commercial implications may often be spotted by
someone other than the academic directly involved. All disclosures will be reported
to IPSG, whether or not they result in a recommendation for further action.
The initiation of collaboration with an external partner, possibly a joint bid for
research funds or a discussion about collaboration on a research and development
project where we have some expertise and the industrial partner wishes to explore a
8
new idea which could bring new product or process innovation to their business.
(Collaborative Research)
To illustrate the actions and decision process which follows the initiation of one of the
above scenarios, please see Flowcharts A and B on pages 10 and 11.
3.2.3 Managing Actions which follow an Intellectual Property Disclosure
When Intellectual Property thought to have commercial significance is identified and/or
disclosed (Disclosure) a number of actions follow:
a) Action to guard against premature disclosure. If an eventual patent application is to
succeed, the invention, concept or design must be kept secret. Has there been any
publication? Who else amongst us knows about it? Are any research students
involved? Action will be necessary if for instance, publications have been sent to the
printers and students have not completed the necessary intellectual property
assignment form to us. Any staff who are “in the know” should be reminded of the
need for confidentiality, which is a requirement of their contract.
b) In each case where an Intellectual Property Disclosure is made and there is a
possibility that a postgraduate student has contributed to the invention, the situation
needs careful handling. Invention is a matter of fact backed by evidence, not a
matter of opinion. Claims by postgraduate students to have invented or contributed
to the invention need to be taken seriously and agreement reached on the precise
nature of the contribution without pressure of seniority. Where the student has not
contributed, but is party to key information, he/she will be asked to sign a
declaration, such as the one included in Appendix F. In other cases, the student
would be asked to assign the Intellectual Property to us, using a form of assignment
included in Appendix A.
c) an initial low cost appraisal of the opportunity will be initiated and carried out by
Research, Development & Commercial Services personnel working with Faculty
staff and the academic/s closest to the project. Each case will be given a unique
IPD (Intellectual Property Disclosure) reference code. The initial appraisal will
include:










Do we own the rights exclusively? Are there inventors other than our employees?
What is the Intellectual Property developed or being developed?
Is the idea/technology/design novel?
Does it meet all the other criteria for patentability?
What stage of development is it at?
How much more work and time may be needed to prove the concept – will it work?
What are the possible applications?
Have we any idea of the size of the market opportunity?
Is there an existing or potential external partner involved?
What is the attitude and aspirations of the inventor to the Intellectual Property?
9
DISCLOSURE FLOWCHART
Disclosure of new idea/design/invention
No
No
No
 Novel?
 And not disclosed?
Yes/
Possibly
Industrial application?
Ownership
clear?
Yes
Commercial potential?
Clarify
ownership
Yes
Confidentiality agreement
ABANDON
REPORT AND RECOMMENDATION TO IPSG
Patent Agent instructed
UK Patent Application filed
No
Search for potential
licensee/customer
Yes
Negotiate heads of
agreement
ABANDON (if no deal in
2 years)
Formal license /sale
agreement
ROYALTY FLOW TO US
10

No
COLLABORATIVE RESEARCH - FLOWCHART
Disclosure of
collaborative research
project
Inform and
works with
RD&CS
Yes
“Fully”
funded?
• Consultancy
rules apply
• Paying party
usually owns all,
but confirm
what original
contract for
work says
No
Negotiate
agreement with
collaborators if
one is not
already in place
ISSUES :
• confidentiality
• ownership of IP and
exploitation rights
• licensing
• royalties
• exclusivity
• publications
11
If it is evident that the Intellectual Property which has been disclosed fails to meet the
novelty criterion or other criteria for patentability, the Disclosure should be recorded and
a brief report made to IPSG and kept on file, but no recommendation for further action
will be made.
In all other cases an appraisal report will conclude with a recommendation for action,
which will be considered by IPSG. In many cases, where patentable technology is
disclosed, that recommendation will be for an initial UK Patent Application to be filed.
The reasons why this is frequently an appropriate recommendation is explained in the
following paragraph.
3.2.4 Intellectual Property Steering Group and Our Patenting Strategy
(See also paragraph 3.2.3 above.) IPSG’s remit is to oversee the management of
Intellectual Property and approve specific actions in relation to disclosures of specific
new Intellectual Property. Much of the work of IPSG since its first meeting in 1998 has
been concerned with patenting. A patenting strategy has evolved, based on a pragmatic
and low-cost approach to Intellectual Property protection in our University situation.
The following elements are important in this strategy:
 We are not interested in paying out to protect Intellectual Property over the long
term.
 We will wish to assign or license commercially significant Intellectual Property to
a commercial partner within a short period following the initial filing.
 We will normally limit novelty patent searches prior to filing to those that can be
done free on the Internet. This will be done by members of Research,
Development & Commercial Services.
 The academic inventor will be responsible for searching academic publications
databases to establish novelty.
 We will use a patent agent to prepare the initial UK application (cost < £2K).
(This provides a twelve month window of opportunity for finding and
negotiating with licensees which can be extended at relatively low cost if there is
commercial interest)
 We will not continue to invest in overseas patents through the national phase,
unless a license (or similar) agreement is in place or imminent
 With Exclusive licence agreements We will transfer the financial obligations
involved in protecting Intellectual Property to the licensee.
 Income from the licensing or sale of Intellectual Property will be offset against
the direct costs involved, and, once these costs have been covered, what remains
will be divided between the inventors and our University, following an agreed
formula (see 3.2.6)
This strategy is based on minimising both our risk and expenditure. We are helped
considerably in this quest by two significant features of the current patenting system:
a) The initial UK filing triggers a search carried out by the UK patent office on behalf of
the applicant. This search provides important evidence as to the novelty of the invention
at a subsidised rate. The Patent office charges far less than a commercial agent would to
carry out a novelty search.
b) Filing an initial application with the UK office establishes priority for the invention
without major expenditure. Decisions about any foreign filings can be delayed for
twelve months, but will then refer back to the priority date established by the UK filing.
12
In practice this period can be extended to eighteen months, with relatively small further
expenditure, delaying the major expenditure which would be required for overseas
national applications, particularly where translations into other languages are needed.
During this period, individuals in Research, Development & Commercial Services will
actively seek to identify and negotiate with external parties interested in the technology,
with a view to licensing the Intellectual Property involved.
Before the initial filing, inventors will be required formally to assign their Intellectual
Property to Anglia Ruskin University. This is for two reasons:
a) it clarifies the ownership situation
b) the USA will only accept an application for a patent from the employer of an inventor
if the Intellectual Property has been formally assigned to the employer by the inventor.
The form of words for this formal assignment is at Appendix A.
3.2.5
Licensing, Assignment and Option Arrangements.
The process of commercialising Intellectual Property depends very much on the
individual case, and these guidelines can only provide a general indication of what is
involved.
If the Intellectual Property is at an early stage and only laboratory-based proof of its
effectiveness exists, there may be a case for an alliance with a potential licensee under
confidentiality arrangements, possibly even delaying the initial filing, until the technology
is more proven. This type of arrangement could be subject to an Option Fee, where the
collaborator would pay us to reserve a right to an exclusive licence, during the period of
collaboration to prove the principle.
Assigning the Intellectual Property, and the associated patent rights to an industrial party
means selling the property outright. Income will be immediate, but may or may not
represent the value of the property.
An exclusive licence will offer us the possibility of transferring Intellectual Property
costs to the licensee, much more easily than a non-exclusive licence. We would retain
ownership of the Intellectual Property and have to keep the patents in force, but would,
if the right licensee is selected, receive royalty income over a number of years during
which the licensee uses the technology.
On the other hand a series of non-exclusive licences could provide the opportunity for
maximising income, but with the risk that none of the licensees provides much royalty
income. We, in this case would be obliged to maintain patent protection, often a very
costly operation.
Between the initial filing and potential licensing deals there will be a period of
uncertainty as to whether the latter can be achieved. At all stages of the process of
protecting and commercialising the Intellectual Property, there is a need for good
communication and collaboration between the academic inventor and the designated
individual in Research, Development & Commercial Services. Academics need to be
prepared to spend a good deal of time working with the patent agent initially, and
subsequently working with Research, Development & Commercial Services staff and
meeting potential customers for the purpose of demonstrating or presenting the benefits
of the technology. Responsibility for the negotiation of deals, drawing up propositions
for licensing or assignment, and for the eventual preparation of licensing documents
rests with members of Research, Development & Commercial Services, but it is the
13
responsibility of those in the Secretary and Clerk’s Office to seek appropriate legal
advise in relation to any documents produced. It is also the responsibility of those in the
Secretary and Clerk’s Office to approve and obtain due authorisation of all legal
documents entered into. Any Licence or assignment granted or awarded is made subject
to the interests of our University which reserves the right to seek a royalty or other
payment in recognition of the value of the Intellectual Property Rights transferred that
results or has resulted from the commercial exploitation of such property.
3.2.6 Exploitation Revenue Sharing
The revenue sharing arrangement is outlined in the table below.
Cumulative Residual Income* Sharing Formula
Residual Income
University
Inventor
up to £100,000
£100,001-£1,000,000
£1,000,001 and above
0%
50%
70%
100%
50%
30%
*Residual Income is defined as the gross income from the exploitation of a given item of
intellectual property, less past and future costs which are directly attributable to the
exploitation. Such costs may for instance include legal, technical and commercial advice,
patent fees, expenses, and any past or future commitment of internal resources
specifically used for the commercialisation of the specific item of Intellectual Property
3.2.7 Actions Arising from Intention to Undertake Collaborative Research and
Development
Actions will be based on a number of agreed principles These are:
 Intellectual Property in Commercial projects which are paid for at full economic
cost by the customer, which could be categorised as Contract Research or
Consultancy shall generally belong outright to the customer.
 Intellectual Property in KTP or similar projects will generally belong to the
commercial partner, but where new Intellectual Property arises to which our
employees have contributed significantly, then the commercial partner will reward
us, either in the form of a one-off fee, or through a royalty arrangement. See
standard KTP Intellectual Property Agreement in Appendix D.
 Intellectual Property in other collaborative R&D projects, where two or more
parties contribute, whether or not this is in cash, shall belong to the party best
placed to exploit the Intellectual Property, usually the commercial partner, with an
appropriate royalty arrangement for us, where our employees have contributed to
the new Intellectual Property. See the example attached at Appendix E as an
illustration only of arrangements for a funded studentship project.
 In all cases, wording should be included which ensures that we are able to use
ideas and knowledge developed in collaborative R&D projects both in our own
research and in projects with organisations whose commercial interests do not
conflict with those of the initial collaborator.
Whenever we contemplate undertaking research with an external party (industry,
commerce, health trust, Government and others), we have to consider how to protect
the products of our intellectual input we expect to put into the project. If we enter into a
collaborative project without any agreement as to who owns the intellectual property
rights generated then it could cause difficulties at the end of the project.
14
The important initial step is to involve the relevant Research, Development &
Commercial Services staff in any discussions with the potential partner. Few academics
have experience of negotiating commercial agreements, but many commercial companies
have taken advantage of this fact in the past. Many companies will take advantage given
the opportunity. Over the years many significant breakthroughs in technology have
simply been transferred into industry with no financial benefit to the universities who
generated the Intellectual Property. Basically, there must be clarity on all the issues below
and an agreement signed BEFORE entering into any joint project or bid, where the
outcomes could be “useful and applicable”:
 Confidentiality. Even before any formal agreement is reached it is best to sign a
confidentiality agreement. This can help the free exchange of information, and
help to build trust in each other’s abilities. However, the essence of negotiating
these is to give away just enough to raise confidence and wh et the appetite
without disclosing anything which might be new! Whether or not discussions took
place in the framework of a confidentiality agreement, there certainly needs to be a
paragraph on confidentiality in the project agreement. This is best framed in such a
way that all parties agree to keep quiet about anything confidential disclosed by any
of the others. A sample agreement is in Appendix B, which has been approved by
IPSG. Research, Development & Commercial Services staff will draw up a suitable
version for you at short notice based on the standard template produced by
personnel in the Secretary and Clerk’s Office which will need to be duly authorised
by a designated individual through them. All which needs to be provided is the
technology under discussion and the names and addresses of the others involved.
 Ownership and Rights to exploit the Intellectual Property. Our normal
practice would be for the commercial partner to own the rights exclusively at the
end of the contract, simply because they are probably in a better position to use
the technology, and it may be contentious in a collaborative project to sort out
who first thought of a good idea. So it is simpler if they make the decisions about
patenting and bear the costs. We though need to make sure of two things in the
agreement: a) that we will be able to use the knowledge developed for future
research (and maybe also the right to use the knowledge in fields which do not
affect the commercial interests of the commercial partner) and b) that the
industrial partner does exploit the knowledge and does pay us a Royalty when it
does so.
 Licensing. An alternative to the above arrangement, particularly where the
original idea and its development clearly came from us, is for the Patent to be
taken out by us and rights licensed back to the commercial partner. This is one way
of ensuring that the door is left open for additional non-exclusive licenses to be
granted to other companies. However, it does mean that we would have to make
all the decisions and bear the costs of longer term Intellectual Property protection.
 Royalties. We, when granting licence rights to a commercial partner will negotiate
for a Royalty to be paid based on the use which the commercial partner makes of
the technology. Normally, royalties are based on sales value and paid annually in
arrears. The licensor will need to reserve rights to access a licensee’s accounts.
 Exclusivity. Sometimes the commercial partner will want to have an assurance, in
addition to the normal confidentiality arrangements, which will ensure that we do
not carry out research of a similar nature, for a number of years with one of its
direct competitors.
 Publication. Universities survive by publishing the results of their research.
However, the commercial collaborator will not wish to have the detailed technical
results of a project published, because of the potential damage to their commercial
interests. Agreements on this issue usually contain a time delay element, which
15
allows the company to apply for patents, thus effectively protecting critical new
knowledge before publication of results in journals or through a PhD thesis.
Any examples included in these notes should be used for guidance only. Research,
Development & Commercial Services staff will advise and help negotiate suitable
arrangements for each case of collaborative R&D.
3.2.8 Confidentiality
When entering into discussions with any external party about technical research and
development collaboration, it is imperative to talk under cover of a formal confidentiality
agreement.
Where a candidate or we wish the thesis to remain confidential for a period of time after
completion of the research, application for approval shall normally be made to the
Research Degrees Committee at the time of seeking approval of the research proposal.
In cases where the need for confidentiality emerges at a subsequent stage, a special
application for the thesis to remain confidential after submission must be made
immediately to the Research Degrees Committee. The period approved shall normally
not exceed two years from the date of the oral examination.
Where the confidential nature of the candidate’s work is such to preclude the thesis being
made freely available in our Library, Collaborating Establishment or Regional Partner
College the thesis shall be retained by our University on restricted access and, shall only
be made available to those who were directly involved in the project.
The Research Degrees Committee shall normally only approve an application for
confidentiality in order to enable a patent application to be lodged or to protect
commercially or politically sensitive material. A thesis shall not be restricted in this way
in order to protect research leads. While the normal maximum period of confidentiality
is two years, in exceptional circumstances the Research Degrees Committee may approve
a longer period. Where a shorter period would be adequate the Research Degrees
Committee shall not automatically grant confidentiality for two years.
Any information which may contain original ideas or technology that could have
commercial value must be protected by getting the other party or parties to sign a formal
confidentiality (or non-disclosure) agreement. We have developed three standard proforma agreements, which are attached, at Appendix B. One of these agreements is for
situations where both parties would wish to share information as a prelude to
collaborative work. The second is more suited to the situation where we only wish to
divulge some technology prior to patenting action, in order to gauge the level of external
interest. The third covers the situation where a third party wishes to divulge confidential
information to members of our University. These standard forms of words can be
adapted to the circumstances of the case, in consultation with members of Research,
Development & Commercial Services but any amendments will need to be formally
approved by personnel in the Secretary and Clerk’s Office before an agreement can be
issued and authorised.
Such a Confidentiality agreement is needed whenever we wish to make a joint bid, or
induce an external organisation to help with the funding of further research and
development, or to enter into a collaborative framework which may lead to
commercialisation. Academics need to make a habit of informing relevant members of
Research, Development & Commercial Services whenever such situations arise. It is
16
useful to remember at this stage students are not our employees which means under
English Law they are not covered by any agreement entered into by us. Where students
are likely to be involved in dealing with confidential information and/or developing
commercial valuable intellectual property they need to sign our agreements which cover
confidentiality, ownership of the intellectual property and the division of revenue
resulting from exploitation.
17
3.2.9. Intellectual Property Management and Procedure Flowchart
KNOWLEDGE MANAGEMENT AND EXPLOITATION ADVICE AVAILABLE THROUGH
RESEARCH, DEVELOPMENT & COMMERCIAL SERVICES (RDCS)
Intellectual Property (IP) comes about through, research, development, design, invention,
innovation and creation.
Please contact RDCS if you think your work might be generating valuable IP
Assessing the nature,
possible application and
potential of the new IP
Look for research
and/or teaching
applications for
the new IP
Identifying ownership of the new IP
(the Foreground)
and of any underpinning IP
(the Background)
RDCS will help
to evaluate IP
and confirm our
ownership by:
If ‘No’
then:
Investigating the commercial
(exploitable) potential
If ‘Yes’
then:
Exploitation and/or Collaboration Agreement with identified licensee
RDCS will help
you to protect
IP rights via:
Protection of Background IP and/or negotiated use of third party
owned IP
£
£
£
£
£
£
£
£
£
£
£
£
£
£
£
£
50,000
30,000
20,000
10,000
5,000
3,000
1,000
Trade Secrecy
Patent
Applied for via
the Patent
Office
Registered
Design
Taken out with the
Patent Office
Trade Mark
Taken out with
the Patents
Office
Knowledge &
Know How
Protected by
Confidentiality
Agreements and
Non-disclosure
practices
Likely cost environment
Copyright
Automatic IP Rights
(IPRs) that can be
assigned or licensed
£
out
RDCS will help to exploit (commercialise) the IP via direct sale of IPR or:
Licensing Out
Allow use of IP by
second party in
return for fees
and/or profit share
(royalties)
Spin Out
New company set up
with investment
capital based on a
business plan 18
Joint Venture
Partnership with
company to create,
sell and distribute a
product or service
Consultancy
Services
One off service or
branded provision
for an identified
market
APPENDICES
The Agreements provided are the ones currently in use at the time of publication. It is
strongly recommended you download the relevant agreement from http://secclerk.anglia.ac.uk/ to ensure you are using the current version.
19
APPENDIX A: DEED OF ASSIGNMENT
THIS DEED is made this ( ----------) day of (-----------) Two thousand and (----)
BETWEEN (----------- -----------), hereinafter called “the inventor/s” which expression
shall unless the context admits include their personal representatives and assignees, of
the one part
AND
Anglia Ruskin University Higher Education Corporation of Bishop Hall Lane,
Chelmsford, Essex CM1 1SQ, hereinafter called “the University” of the other part.
WHEREAS:A
The inventor has made an invention (hereinafter called “the Invention”) short
particulars of which are set out in the Schedule hereto and wishes to assign to the
University all rights in the Invention with the right to apply for patent or similar
protection in respect thereof in consideration of the following and
B
The University wishes to accept assignment of the Invention
NOW THIS DEED WITNESSETH as follows:1.
The Inventor warrants to the University that he/she is the true inventor of the
said Invention.
2.
The Inventor agrees
a) to execute at the direction and expense of the University such documents as
the University shall require in connection with any application for any patent,
registered design or similar protection in any part of the world in respect of the
said Invention and to confirm the absolute legal and beneficial ownership of the
University in the said Invention and all intellectual property rights relating thereto
and
b) without prejudice to the generality of the foregoing will at the request of the
University assign in writing to the University the copyright in the drawings and
sketches and transfer to the University all models or three-dimensional things
setting out the Invention in whole or in part.
3.
The Inventor undertakes not to disclose or to assist others to disclose any
information concerning the said Invention other than as may be permitted by the
University.
4.
In consideration of the undertaking made by the Inventor the University hereby
agrees to a) pay the Inventor the sum of £1 on signature of this Agreement and
b) to pay the Inventor a proportion of the Net Residual Income arising from the
use made by the University of the Invention and the intellectual property rights
assigned by the Inventor in this Agreement, as set out in the University’s “Notes
20
for Guidance on the Management of Intellectual Property”. Net Residual
Income is defined as the gross income from the exploitation of a given item of
intellectual property, less past and future costs which are directly attributable to
the exploitation. Such costs may for instance include legal, technical and
commercial advice, patent fees, expenses, and any past or future commitment of
internal resources specifically used for the commercialisation of the specific item
of Intellectual Property
5.
The University has the right at its own expense to apply for patent, design or
similar protection in any part of the world whether in the Inventor’s name or
otherwise.
6.
The Inventor makes no warranty as to whether or not the Invention infringes any
intellectual property rights not held by the Inventor.
7.
Nothing in this Agreement shall constitute the University an agent of the
Inventor and the University shall be at liberty to exploit the invention or not as it
shall determine in its absolute discretion
Signed for and on behalf of Anglia Ruskin University
Name and Title:
Signature:
Date:
Signed by the said Inventor
Name and Title:
Signature:
Date:
21
APPENDIX B: SAMPLE CONFIDENTIALITY AGREEMENTS
Two examples follow which are applicable in different situations:
1. This one is to be used, with name of company and technology inserted, where
technical information will be passed between us and a collaborating external partner
which they have developed.
CONFIDENTIALITY AGREEMENT
This CONFIDENTIALITY AGREEMENT is made the ……..day
of……….between Anglia Ruskin University Higher Education Corporation, Rivermead,
Bishop Hall Lane, Chelmsford, Essex, CM1 1SQ (“The University”)
and………………………………..of…………………………….(“The Company”).
BACKGROUND
A
The Company has developed methods and techniques for….…..
…………………….(“the Techniques”).
B.
The University has expressed interest in examining and evaluating
information relating to the Techniques (“the Information”).
C.
The University and the Company agree that any discussions and
exchanges of information relating to the Techniques shall be governed by
the following conditions.
IT IS NOW AGREED THAT:
1.
The Company shall disclose on a non-exclusive basis the Information to the
University to enable the University to evaluate the same.
2.
In consideration of the disclosure of the Information by the Company the
University agrees at all times that it shall treat the Information with reasonable
and practicable care to avoid disclosure of the same to any other person or
organisation and the University shall be liable for unauthorised disclosure or
failure to exercise reasonable and practicable care with respect to the
Information. The University shall have no obligation with respect to the
Information or any part thereof which
2.1
is at the time of disclosure already known to the University other than
from the Company and the University so informs the Company of the
same; or
2.2
becomes known to the University from a third party lawfully entitled to
disclose the same and the University so informs the Company in writing
to the nominated authority within thirty (30) days of receipt of such
information; or
22
2.3
is approved for release from the provisions of this Confidentiality
Agreement by written authorisation from the Company; or
2.4
was at the time of disclosure by the Company in the public domain or
subsequently becomes the subject of public knowledge through no fault
of the University; or
2.5
was subsequently developed by the University independently of
confidential information received from the Company.
3.
The University at the written request of the Company shall promptly return the
Information together with any copies or extracts thereof which have been made.
4.
The University shall be entitled during the evaluation to subject the Information
to such tests analyses experiments or studies as are warranted in its judgement to
be of interest to it and to disclose the Information in confidence to its employees
and through a signed confidentiality agreement to any consultant or agent not an
employee of the University for preliminary evaluation purposes only.
5.
The University shall use reasonable endeavours to ensure that the Information is
treated as restricted information within the University and that the Information
is not disclosed to any third party not directly concerned with the evaluation of
the Information. The University shall take reasonable steps to ensure that
persons to whom the Information is disclosed at all times keep the same secret
and confidential and not use the same other than for the purpose of evaluating
the Techniques.
6.
This Confidential Agreement confers no rights to the University to use the
Information other than for the evaluation purposes stated herein such evaluation
unless otherwise stated in writing between the parties hereto to be completed
within sixty (60) days of the date hereof.
7.
Should during the evaluation of the Information the University disclose to the
Company information which is designated to be of a confidential nature
belonging to the University the Company hereby covenants that it shall treat such
University confidential information in like manner as provided herein in respect
of the Information.
8.
The obligations of confidentiality and non-use set out in Clauses 2, 5 and 7 above
shall subsist for a period of five (5) years from the date the University advises the
Company that it has no further interest in the techniques.
9.
This Agreement is governed by and is to be construed in accordance with
English law. The English Courts shall have exclusive jurisdiction to deal with any
dispute which has arisen or may arise out of or in connection with this
Agreement.
SIGNED for and on behalf of Anglia Ruskin University Higher Education Corporation
…………………………………………………………………………………………
23
NAME (Block Capitals)
………………………………………………………………………
POSITION
…………………………………………………………………………………….
SIGNED for and on behalf of
…………………………………………………………………………………………
NAME (Block Capitals)
………………………………………………………………………
POSITION
……………………………………………………………………………………..
24
In situations where we have developed some new Intellectual Property and wish to
discuss its details with an external body, possibly in order to assess its applicability and
commercial value the following may be appropriate:
CONFIDENTIALITY AGREEMENT
This CONFIDENTIALITY AGREEMENT is made the ……..day
of……….between Anglia Ruskin University Higher Education Corporation , Rivermead,
Bishop Hall Lane, Chelmsford, Essex, CM1 1SQ (“The University”)
and…………………of…….
………………………………………….(“The
Company”).
BACKGROUND
A The University has developed methods and techniques for………
…………………..(“The Techniques”).
B. The Company has expressed interest in examining and evaluating information
relating to the Techniques (“the Information”).
C. The University and the Company agree that any discussions and exchanges of
information relating to the Techniques shall be governed by the following
conditions.
IT IS NOW AGREED:
1.
The University shall disclose on a non-exclusive basis the Information to the
Company to enable the Company to evaluate the same.
2.
In consideration of the disclosure of the Information by the University the
Company agrees that at all times it will treat the Information with all reasonable
and practicable care to avoid disclosure of the same to any other person firm or
organisation and the Company shall be liable for unauthorised disclosure or
failure to exercise reasonable and practicable care with respect to the
Information. The Company shall have no obligation with respect to the
Information or any part thereof which
2.1
is at the time of disclosure already known to the Company other than
from the University and the Company so informs the University of the
same; or
2.2
becomes known to the Company from a third party lawfully entitled to
disclose the same and the Company so informs the University in writing
to the nominated authority within thirty (30) days of receipt of such
information; or
2.3
is approved for release from the provisions of this Confidentiality
Agreement by written authorisation from the University; or
2.4
was at the time of disclosure by the University in the public domain or
subsequently becomes the subject of public knowledge through no fault
of the Company.
25
3.
The Company at the written request of the University shall promptly return the
Information together with any copies or extracts thereof which have been
made.
4.
The Company shall be entitled during the evaluation to subject the Information
to such tests analyses experiments or studies as are warranted in its judgement to
be of interest to it and to disclose the Information in confidence to its employees
and through a signed confidentiality agreement to any consultant or agent not an
employee of the Company for preliminary evaluation purposes only.
5.
The Company shall use its best endeavours to ensure that the Information is
treated as restricted information within the Company and that the Information is
not to be disclosed to any third party not directly concerned with the evaluation
of the Information. The Company shall take all reasonable steps to ensure that
persons to whom the Information is disclosed at all times keep the same secret
and confidential and not use the same other than for the purpose of evaluating
the Techniques.
6.
This Confidential Agreement confers no rights to the Company to use the
Information other than for the evaluation purposes stated herein such evaluation
unless otherwise stated in writing between the parties hereto to be completed
within sixty (60) days of the date hereof.
7.
Should during the evaluation of the Information the Company disclose to the
University information which is designated to be of a confidential nature
belonging to the Company the University hereby covenants that it shall treat such
Company confidential information in like manner as provided herein in respect
of the Information.
8.
The obligations of confidentiality and non-use set out in Clauses 2, 5 and 7 above
shall subsist for a period of five (5) years from the date the Company advises the
University that it has no further interest in the Techniques.
9.
This Agreement is governed by and is to be construed in accordance with
English law. The English Courts shall have exclusive jurisdiction to deal with any
dispute which has arisen or may arise out of or in connection with this
Agreement.
SIGNED for and on behalf of Anglia Ruskin University Higher Education Corporation
…………………………………………………………………………………………
NAME (Block Capitals)
………………………………………………………………………
POSITION
…………………………………………………………………………………….
26
SIGNED for and on behalf of
…………………………………………………………………………………………
NAME (Block Capitals)
………………………………………………………………………
POSITION ………………
27
This agreement is best suited when both we and a third party wish to exchange
information on the same subject developed independently from each other
MUTUAL CONFIDENTIALITY AGREEMENT
This Confidentiality Agreement is made the
date once both parties have signed] between:
day of
200
, [only
Anglia Ruskin University Higher Education Corporation with its place of business at
Bishop Hall Lane, Chelmsford, Essex, CM1 1SQ (“ARU”)
and
[insert Company Name] “Company” with its place of business at [insert registered
office address]
together the “Parties” to this Agreement
BACKGROUND
Both Parties are furnishing confidential information relating to …………………..
[insert detail] (“Purpose”). Such confidential information includes, without limitation
financial data, plans such as business plans, marketing plans, and product
development plans, customer data, research results, product design data, and
manufacturing methods, specifications or materials, which is owned, controlled or
possessed by any Party in either written, oral or visual form (the “Confidential
Information”).
IT IS NOW AGREED:
1.
The Parties shall not use received Confidential Information other than for the
agreed Purpose.
2.
The Parties shall not disclose received Confidential Information to others
except as agreed with the disclosing party.
3.
The Parties shall not disclose to others that they are undertaking the
Purpose, nor shall they disclose the results to others.
4.
The Parties shall limit access to received Confidential Information to its
employees on a strictly need to know basis. Each Party shall be liable for
unauthorised use or disclosure of received Confidential Information by its
employees.
5.
Confidential Information shall remain the property of the disclosing party.
Upon the disclosing party’s written request, the receiving party shall return to
the disclosing party all the disclosing party’s Confidential Information in its
possession and destroy all records relating thereto.
28
6.
Each Party represents and warrants that it has the legal right to disclose the
Confidential Information and that by disclosing such Confidential Information
it is not violating the rights of any third party to such Confidential Information.
7.
For the University the project manager shall be [insert name], [insert
faculty/department] or such other person as the University may appoint in
his/her place.
8.
For the Company the project manager shall be [insert name], [insert job title]
or such other person as the Company may appoint in his/her place.
9.
The obligations in paragraphs 1 and 2 shall not apply to received Confidential
Information:
(a)
which was developed by the receiving party and was contained in
writing in the receiving party’s possession before its receipt from the
disclosing party; or
(b)
which at the time of its disclosure to the receiving party is, or
thereafter becomes through no act or failure to act on the part of the
receiving party, part of the public domain; or
(c)
which has been rightfully furnished to the receiving party by a third
party without restriction on disclosure or use and not in violation of any
rights of, or obligations to, the disclosing party and the receiving party
so informs the other party in writing within thirty (30) days of receipt of
the same; or
(d)
which is subsequently developed by the receiving party independently
of Confidential Information received from the disclosing party; or
(e)
is approved for release from the provisions of this Agreement by
written authorisation from the disclosing party; or
(f)
which is required to be disclosed by valid legal process.
The ability of a receiving party to use Confidential Information as a result of
the occurrence of any of the above exceptions shall not be construed as an
expressed or implied grant of any rights under any of the disclosing party’s
patents or other intellectual property rights. An individual feature of the
Confidential Information shall not be considered within the above exceptions
merely because the feature is embraced by more general information within
the exceptions. A combination of features of the Confidential Information
shall not be considered within the above exceptions unless the combination
itself and its principle of operation are within the exceptions.
10.
With respect to any given item of Confidential Information, the obligations
under paragraphs 1 and 2 shall terminate five (5) years from the date of the
disclosure of such Confidential Information. Disclosure shall be made on
[insert date].
11.
The disclosing party makes no warranties, representations or guarantees
regarding disclosed Confidential Information and shall not be liable for losses
or damages arising out of its use.
29
12.
Nothing herein shall be construed as a promise by any Party to purchase or
sell products or services from one another or to enter into any business
arrangement other than as set forth in this Agreement.
13.
This Agreement cannot be assigned, sold or transferred in any manner by
any Party, save to the successor to all or substantially all of the assets of a
Party, or applicable division thereof, by sale of assets, merger, or otherwise
and such successor shall be bound by all the terms and conditions hereof;
provided, however, no such transfer or assignment shall relieve the
transferring or assigning Party of its obligations of confidentiality hereunder.
14.
This Agreement constitutes the entire agreement between the Parties with
respect to the subject matter hereof, and all prior understandings or
agreements between the Parties relating to such subject matter, whether oral
or written, are automatically cancelled by the execution of this Agreement.
The terms and conditions set forth herein may only be modified in a
subsequent writing signed by the Parties.
15.
The Contracts (Rights of Third Parties) Act 1999 is excluded from applying to
this Agreement and nothing in this Agreement confers or purports to confer
on any third party any benefit or any right to enforce any term of this
Agreement.
16.
Any notice or other communication given under or in connection with this
Agreement shall be in writing and shall be delivered to the Company
addressed to the Secretary at its registered office, or to the University
addressed to the Secretary and Clerk at the University’s office shown in this
Agreement. Any such notice or other communication shall be deemed well
served if it is served personally or if sent by first class post or is sent by fax.
In the case of post the day of service shall (unless the contrary is proved) be
deemed to be two days after the date of posting.
17.
This Agreement shall be governed by and interpreted in accordance with the
laws of England and Wales, and the Parties hereby agree that all matters
arising out of or in connection with this Agreement shall be subject to the sole
jurisdiction of the courts of England and Wales.
Signed for and on behalf of
Anglia Ruskin University Higher
Education Corporation by:
Signed for and on behalf of
[insert Company name] by:
……………………………..
[signature]
……………………………….
[signature]
Name: [in BLOCK capitals]
Name: [in BLOCK capitals]
Title:
Title:
[in BLOCK capitals]
[in BLOCK capitals]
MCA/LA/January07
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APPENDIX C:
Extracts from Contracts of Employment
ACADEMIC STAFF
15. Patents and Inventions
15.1
The provisions of sections 39,40,41,42, and 43 of the Patents Act 1977 relating to
the ownership of employees’ inventions and the compensation of employees for
certain inventions are acknowledged by the University and by you.
15.2
You agree that by virtue of the nature of your duties and the responsibilities
arising from them you have a special obligation to further the interest of the
University.
15.3
Any matter or thing capable of being patented under the Patents Act 1977, made,
developed or discovered by you either alone or in concert, whilst in the
performance of your normal duties, duties specifically assigned to you or arising
out of anything done by you to which paragraph 15.2 applies, shall forthwith be
disclosed to the University and subject to the provision of the Patents Act shall
belong to and be the absolute property of the University.
15.4
You shall (and notwithstanding the termination of your employment), sign and
execute all such documents and do all such acts as the University may reasonably
require:-
15.4.1 to apply for and obtain in the sole name of the University, (unless it otherwise
directs) patent, registered design or other protection of any nature whatsoever in
respect of the inventions in any country throughout the world and, when so
obtained or vested, to renew and maintain the same;
15.4.2 to resist any objection or opposition to obtaining, and any petitions or
applications for revocation of, any such patent, registered design or other
protection;
15.4.3 to bring any proceedings for infringement of any such patent, registered design
or other protection;
15.4.4 the University hereby undertakes to indemnify you in respect of all costs, claims
and damages, howsoever and wheresoever incurred, in connection with the
discharge by you of any and all such requests under 15.4.1, 15.4.2 and 15.4.3.
15.5.1 The University acknowledges section 7 and 42 of the Patents Act. In respect of
any invention which belongs to the University by virtue of section 39 of the
Patents Act, it shall be for the University in the first instance to decide whether to
apply for patent or other protection.
15.5.2 in the event that the University decides not to apply for patent or other legal
protection you have the right to be notified of that decision as soon as is
reasonably practicable thereafter.
15.5.3 if, following such a decision by the University you wish to apply for Patent either
yourself or with another you must first inform the University of your intention to
do so. Within a reasonable period of time following such notification the
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University must tell you whether it would object to your proposed application.
The sole ground for such objection is that the patenting of the invention will
involve or result in the disclosure to third parties of trade secrets or other
confidential information belonging to the University and that such disclosure
may damage the interests of the University.
15.5.4 where the University objects under 15.5.3 you hereby undertake in consideration
of the payment of compensation to be determined under 15.5.5 below, not to
proceed to apply for patent of the invention concerned nor to assist any other
person to do so.
15.5.5 the calculation of compensation referred to above shall have regard to those
factors set out in section 41 of the Patents Act. In the event that the University
cannot agree the amount of compensation, it shall be for either you or the
University to apply to the President of the Law Society to appoint an arbitrator
under the terms of the Arbitration Act, whose decision shall be binding.
SUPPORT STAFF
17.
COPYRIGHT, INVENTIONS AND PATENTS
If during the course or as a result of your employment you invent or design
anything which has some connection with the work you are employed to carry
out, details of the invention must not be disclosed to anybody until the matter
has been reported by you to the Vice-Chancellor and s/he lets you know that
there is no objection to your disclosing details. The right to register the design or
patent of the invention may be lost by a premature disclosure of its nature and, as
a result, your interests or those of the University might be prejudiced.
SENIOR MANAGEMENT GRADE STAFF
18.
COPYRIGHT, INVENTIONS AND PATENTS
18.1
All records, documents and papers (including copies and summaries thereof)
made or acquired by you in the course of your employment shall be the property
of the University. The copyright in all such records, documents and papers shall
at all times belong to the University.
18.2
The provisions of Section 39 and 40 of the Patents Act 1977 (‘the Patents Act’)
relating to the ownership of employees’ inventions and the compensation of
employees for certain inventions are acknowledged by the University and by you.
18.3
You agree that by virtue of the nature of your duties and the responsibilities
arising from them you have a special obligation to further the interests of the
University.
18.4
Any invention, development, process, plan, design, formula, specification
programme or other matter of work whatsoever (collectively ‘the inventions’)
made, developed or discovered by you, either alone or in concert, whilst you are
employed by the University shall forthwith be disclosed to the University and,
subject to Section 39 of the Patents Act, shall belong to and be the absolute
property of the University.
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18.5
With respect to those rights in the Inventions (collectively ‘Your Rights’) which
do not belong to the University pursuant to Section 39 of the Patents Act, you
shall at the request and cost of the University (and notwithstanding the
termination of your employment) forthwith license or assign (as determined by
the University) to the University Your Rights and shall deliver to the University
all documents and other materials relating to the Inventions. The University shall
pay to you such compensation as it shall determine in its absolute discretion,
subject to Section 40 of the Patents Act.
18.6
You shall at the request and cost of the University (and notwithstanding the
termination of your employment) sign and execute all such documents and do all
such acts as the University may reasonably require:
18.6.1 to apply for and obtain in the sole name of the University (unless it
otherwise directs) patent, registered design, or other protection of any
nature whatsoever in respect of the Inventions in any country throughout
the world and, when so obtained or vested, to renew and maintain the
same;
18.6.2 to resist any objection or opposition to obtaining, and any petitions or
application for revocation of, any such patent, registered design or other
protection; and
18.6.3 to bring any proceedings for infringement of any such patent, registered
design or other protection.
18.7
The University shall decide, in its sole discretion, whether and when to apply for
patent, registered design or other protection in respect of the Inventions and
reserves the right to work any of the Inventions as a secret process.
HOURLY PAID LECTURERS
COPYRIGHT, INVENTIONS AND PATENTS
The University’s Policy and Procedures relating to Intellectual Property Rights are set out
in a separate booklet available from the Human Resources Department. The right to
register a design or patent of an invention arising out of the performance of your normal
duties or duties specifically assigned to you, may be lost by a premature disclosure of its
nature and, as a result, your interests or those of the University might be prejudiced.
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APPENDIX D : KNOWLEDGE TRANSFER PARTNERSHIP PROGRAMME
AGREEMENT
This AGREEMENT IS MADE THE ………..…DAY OF ……………..…………
BETWEEN:
(1)
Anglia Ruskin University
Higher Education Corporation of
Bishop Hall Lane
Chelmsford
Essex CM1 1SQ
(the University)
AND
(2)
(the Company)
(hereinafter referred to collectively as the “Parties” and each as the “Party”)
WHEREAS:The Parties to this Agreement have made a proposal to Momenta Ltd and have signed a
Joint Commitment Statement and will be in receipt of a Grant Offer (the “Grant Offer”)
from Momenta Ltd in respect of the Grant Application and Proposal Form (as
hereinafter defined), which award will be accepted by both Parties (“the Project”).
NOW therefore the parties hereby CONTRACT and AGREE as follows:1.
DEFINITIONS AND INTERPRETATION
“Associate”: the individual (normally a recent graduate) selected jointly by the
University and the Company. The Associate will be an employee of the University,
but will undertake the KTP work within the Company.
"Background Intellectual Property": all and any Intellectual Property excluding
the Foreground Intellectual Property belonging to either Party as at the
Commencement Date or which either Party has the right to disclose to the other
and any Intellectual Property developed independently by either Party during the
course of the Project which is not included in the definition of Foreground
Intellectual Property.
“Commencement Date”: the first day of the Associate’s employment with the
University as specified in the University’s contract of employment with the
Associate.
“Confidential Information”: any results, commercial, financial or technical
information including but not limited to designs, drawings, reports, specifications,
procedure instructions, software and other technical information or data in visual
or electronic form disclosed by one Party to the other and identified by a suitable
legend or marking as being confidential or proprietary as well as information
disclosed orally by one Party to the another which was described as being
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proprietary or confidential at the time of disclosure and all other information that
is regarded by either Party as being confidential.
“Final Report”: consisting of three parts written by the 1) the Associate 2) the
Company and 3) the University none of which constitute the Final Report
separately.
“Foreground Intellectual Property": all and any Intellectual Property created or
developed in the course of and relating to the Project including but not limited to
copyright in the Final Report.
“Grant Application and Proposal Form”: the Grant Application and Proposal
Form submitted jointly by the Parties to Momenta Ltd and any mutually agreed
amendments there to, dated ……………… attached at Schedule A.
“Grant Offer”: the Grant Offer letter received from Momenta Ltd by the
University Dated …………….. attached at Schedule C.
"Intellectual Property": shall mean all intellectual property including but not
limited to, trade secrets, know-how, information, data, discoveries, improvements,
inventions, specifications, diagrams, expertise, techniques, technology, patents,
patent applications, copyright, database rights, inventions, designs and design rights
(both registered and unregistered), research, information, methods of formulation,
results of tests and field trials, specifications of materials, composites of materials,
formulae, trade marks whether recorded in any manner or otherwise and all rights
pertaining thereto.
“Indemnified Parties” : the signatory parties to this Agreement
“Local Management Committee”: the KTP management group as indicated in
part 7.3 of the Grant Application and Proposal Form attached at Schedule A and
as may from time to time be amended by agreement of the KTP Local
Management Committee and verified by Momenta Ltd
“Joint Commitment Statement”: the Joint Commitment Statement signed by
both Parties and dated ………………. to be found in Section 13 of the Grant
Application and Proposal Form attached at Schedule B.
“Project": the Project as defined and as may from time to time be amended by
agreement of the KTP Local Management Committee, to be carried out in
accordance with the framework detailed in the Grant Application and Proposal
Form attached at Schedule A.
2.
INTERPRETATION
2.1
The headings in this Agreement shall not affect its interpretation and
references to Clauses and Schedules are to Clauses and Schedules to this
Agreement and all of the Schedules to this Agreement constitute an integral
part thereof. The Recital to this Agreement constitutes an integral part of
this Agreement.
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3.
4.
5.
2.2
References to persons shall include bodies corporate unincorporated
associations partnerships and individuals.
2.3
The neuter gender shall include the masculine and feminine and vice versa
and the singular number shall include the plural and vice versa.
2.4
All covenants, agreements and obligations given or entered into by more
than one person are given or entered into jointly and severally.
COMMENCEMENT AND DURATION
3.1
This Agreement is conditional upon the Parties receiving the Grant Offer
from Momenta Ltd and accepting the Grant Offer within thirty (30) days of
the Grant Offer being made.
3.2
This Agreement shall commence on the Commencement Date
(notwithstanding the date or dates hereof) and subject to the termination
provisions contained herein shall continue until 3 months following
submission of the Final Report.
SERVICES TO BE PROVIDED BY THE PARTIES
4.1
The University and the Company shall use their reasonable endeavours to
carry out the Project at the Company’s and at the University’s premises
subject to the appointment of the Associate. The Parties agree to provide
such training, personal development, and other support for the Project as is
set out in the Grant Application and Proposal Form and Joint Commitment
Statement.
4.2
The University's work in relation to the Project shall be undertaken by the
Associate under the direction of ………………… ("the Academic
Supervisor"). The Company's work in relation to the Project shall be carried
out under the direction of …………………. ("the Industrial Supervisor").
4.3
If either the Academic Supervisor or the Industrial Supervisor is unable or
unwilling to continue with the work of the Project the University or the
Company will endeavour to appoint a successor as appropriate.
EQUIPMENT REQUIREMENTS AND FACILITIES
5.1
The University and the Company undertake to provide facilities and to
purchase or procure where appropriate, such special equipment as shall be
agreed in advance by the Parties to be necessary for the purposes of the
Project, the cost of which is included in the cost summary of the Project, as
detailed in the Joint Commitment Statement and Grant Application and
Proposal Form.
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5.2
6.
7.
8.
All such equipment is the property of the University and is subject to the
most recent University policy during the lifetime of the Project on
procurement, replacement and insurances against damage, loss or theft.
FINANCIAL PROVISIONS
6.1
The Company shall pay to the University the required contribution towards
the project grant as detailed in the Joint Commitment Statement and Grant
Application and Proposal Form.
6.2
In addition to the foregoing, the Company shall also reimburse the
University and/or the Associate for any unanticipated travel and
accommodation expenses incurred by the Associate or the Academic
Supervisor in connection with the Project subject to prior notification and
agreement by the Company of such expenses.
6.3
The University shall invoice the Company in respect of the above payments
monthly in arrears and the Company shall make payment of such sums
within thirty days of the date of invoice. The University shall be entitled to
charge interest at the rate of 4% per annum above the bank base rate of
Barclays Bank on overdue payments, such interest to run from the due date
for payment until payment in full is received.
6.4
Value Added Tax as may be applicable will be added at the rate ruling at the
date of invoice.
REPORTING
7.1
Preparation of reports shall be carried out by the Parties in accordance with
the provisions of the Grant Application and Proposal Form submitted to
Momenta Ltd.
7.2
Management of the Project shall be carried out by the Parties in accordance
with the provisions of the Joint Commitment Statement.
INTELLECTUAL PROPERTY
8.1
For the avoidance of doubt, it is acknowledged that all and any Background
Intellectual Property which belongs to either Party and which may be
contributed to or disclosed by that Party in connection with the Project, shall
at all times remain the sole and exclusive property of that Party.
8.2
Foreground Intellectual Property will be made freely available between the
Parties for the purposes and duration of the Project, but the Foreground
Intellectual Property shall be owned by the [Insert University or Company as
per negotiation].
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9.
10.
EXPLOITATION OF FOREGROUND AND LICENSING OPTION
9.1
In the event that the [University/Company] wishes to exploit the
Foreground Intellectual Property owned by the [University/Company] and
in consideration of the University’s/Company’s] contribution of Background
Intellectual Property knowledge and know how and to the costs of the
Project, the [University/Company] hereby grants the [University/Company]
an option to obtain a licence to the [University’s/Company’s] Foreground
Intellectual Property resulting from the Project. Such licence shall be
negotiated between the Parties and shall be on commercial terms to be
agreed in advance of commercialisation and shall recognize the obligations
placed on the Parties by the Grant Offer (attached as Schedule B) to ensure
that Foreground Intellectual Property is not exploited, licensed or sublicensed outside the European Economic Area for a period of five years after
the date on which the Associate was deemed to be available for work on the
Project; unless the Parties, in consultation, have previously obtained the
written consent of the Secretary of State. For the avoidance of doubt the
exploitation of the Foreground Intellectual Property shall not be deemed to
include the sale outside the European Economic Area of goods
manufactured within it.
9.2
The {University/Company] may exercise its option at any time during the
Project and for a period of 3 months from the completion or termination of
the Project (completion or termination of the Project for the purposes of
this Agreement shall be deemed to be when the Final Report on the Project
is submitted to Momenta Ltd. in accordance with Clause 8 of the Grant
Offer). In the event of the [University/Company] exercising its option, the
{University/Company], where it is free to do so, also undertakes to grant the
[University/Company] a non-exclusive licence on commercial terms to any
[University/Company] owned Background which the University/Company
may require for the purpose of exploiting the Foreground.
9.3
If the [University/Company] does not exercise such option as above
provided (or if agreement is not reached between the Company and the
University as to the terms of the Licence on the expiry of a period of three
months from the date of exercise of such option) then the
[University/Company] shall be at liberty to enter into any licence or other
agreements or arrangements with any third party or parties to exploit the
results of the Project entirely at its discretion, (subject always to the
[University’s/Company’s] obligation of confidentiality as provided in Clause
9.1 hereof).
CONFIDENTIALITY
10.1 The Company shall at all times both during the contract term and for a
period of three years thereafter maintain confidentiality in respect of the
University's Confidential Information and shall not make any disclosure
concerning any aspect of the same to any third party except in so far as may
be necessary to facilitate the exploitation of Foreground Intellectual Property
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by the Company as provided in Clause 9 and shall have been authorised by
the University.
10.2 The University shall at all times both during the contract term and for a
period of three years thereafter maintain confidentiality in relation to the
Company's Confidential Information (except in so far as disclosure shall
have been authorised by the Company).
10.3 Each Party shall use reasonable endeavours to ensure that its researcher(s),
staff, agents, distributors and all other parties to whom disclosure of any
Confidential Information is permitted hereunder shall maintain
confidentiality on the foregoing terms.
10.4 The above obligations of confidentiality shall not apply to (i) information
which is in the public domain or enters the public domain otherwise than by
virtue of a breach of this Agreement, (ii) information which was already
known by the receiving Party prior to disclosure by the disclosing Party,
provided that such prior knowledge can be substantiated and proved by
documentation or (iii) information which was made available to the receiving
Party during the period of this Agreement or thereafter by a third party
without breach of any obligation of confidence; (iv) information
independently generated by either Party outside the scope of the Project.
11.
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FREEDOM OF INFORMATION ACT 2000
11.3
The Company acknowledges that the University is subject to the
requirements of the Freedom of Information Act 2000 (the “FOIA”) (as
amended from time to time) and the Company agrees it shall, at its own
expense, co-operate and provide all necessary assistance as may be
reasonably requested by the University to comply with its obligations under
the FOIA.
11.4
Notwithstanding the generality of clause 11.3 above, the Company shall
provide the University within five (5) working days of receipt of a request
for assistance from the University with such information in its possession
or power as may be reasonably requested in order to assist the University
to comply with its obligations under the FOIA.
PUBLICITY
Any announcement or publicity in relation to the Project by either of the
Parties shall first be approved in writing by each of the Parties hereto and
either Party shall unless otherwise requested acknowledge by name the other
Party in all publicity relating to the Project.
13.
PUBLICATION OF RESULTS
13.1 The University agrees that if it wishes to submit any results of the Project for
publication or other disclosure during the course of the Project it shall
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submit details and text of such proposed publications and/or disclosure to
the Company at least 30 days prior to the intended date of such publication
and/or disclosure for approval by the Company. Such approval by the
Company shall not be unreasonably withheld.
13.2 The Company shall have a period of thirty days from receipt of such details
and/or text within which to notify the University of its approval thereof or
to request amendment to protect the Company's commercial interests. If no
such notification is received by the University within such thirty day period
the Company shall be deemed to have given its approval as aforesaid. The
publication of any article may be delayed at the Company's request for a
period of three months (or longer if agreed by the Parties) to enable patent
applications to be filed.
14.
THE RESULTS OF THE PROJECT
14.1 No warranty shall be given by the University in relation to the Project or the
uses to which the Foreground Intellectual Property and/or the Final Report
may be put by the Company or their fitness or suitability for any particular
purpose or under any previously unspecified conditions.
15.
CONTRACTS WITH THE ASSOCIATE
15.1 The Company hereby acknowledges that the Associate is an employee of
the University and as such (i) Intellectual Property generated by the
Associate during the course of his/her employment shall be subject to the
provisions of Clause 8; and ii) the Associate is subject to the provisions of
Clause 10 (Confidentiality). The Company shall not contract directly with
the Associate in relation to the Project, including (without limitation) any
contract purporting to transfer Intellectual Property and/or impose
confidentiality restrictions on the Associate without the prior written
consent of the University, and any such contract shall be void unless such
prior written consent has been given. For the avoidance of doubt the
Associate shall have no authority contractually to bind the University or
give consent for or on behalf of the University.
16.
LIABILITY/INDEMNITY
16.1 The Company hereby agrees to indemnify the University, the Academic
Supervisor and/or the Associate ("the Indemnified Parties") against any
costs, claims, liabilities, damages and expenses in respect of Indemnified
Parties' liability at law arising directly out of (a) the negligence of the
Company and/or any persons for whom the Company is responsible and/or
(b) any actions, claims, proceedings or demands which may be brought by
any third party against the Indemnified Parties in respect of any loss,
injury, death or damage arising from the manufacture, use or sale of any
products or services developed by the Company based in whole or in part
on, or which in any way utilise, the results of the Project. The indemnity
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given by the Company under this Clause 15.1 shall not apply to any loss,
liability, or damage to the extent that such loss, liability or damage is
attributable to the negligence or wilful misconduct of the University or
any of its employees or agents in carrying out the Project. For the
avoidance of doubt the provisions of this Clause 15.1 are intended to
create legal rights for the Academic Supervisor and/or the Associate,
which they can enforce against the Company by way of a Court action in
their own name(s).
16.2 Each Party shall give the other prompt notice of any claim or potential claim
which may be brought by a third party arising in connection with this
Agreement. The Parties shall consult in good faith and use all reasonable
endeavours mutually to determine the manner in which such claim is to be
defended or settled and to act in accordance with the mutual decision taken
on how best to proceed.
17.
FORCE MAJEURE
17.1 Neither party shall be liable for any breach of its obligations hereunder
resulting from causes beyond its reasonable control including, but not
limited to, explosions, flood, tempest, fire, accident or measures of any kind
on the part of any governmental parliamentary or local authority strikes,
industrial action, or trade disputes.
17.2 Each of the parties hereto agrees to give notice forthwith to the other upon
becoming aware of any event referred to in sub-clause 16.1 above such
notice to contain full details of the circumstances giving rise to the event.
18.
TERMINATION
18.1 Without prejudice to any other rights, either Party shall be entitled to
terminate this Agreement forthwith by written notice to the other Party if
that other Party commits a material breach of any provision of this
Agreement or any other agreement or undertaking between the Parties and
(in the case of a breach capable of remedy) fails to remedy the same within
30 days of the service of a written notice giving full particulars of the breach
and requiring it to be remedied. For these purposes a breach shall be
considered capable of remedy if the Party in breach can comply with the
provision in question in all material respects other than as to the time of
performance (provided that time of performance is not of the essence).
18.2 This Agreement may be terminated by the University by written notice to the
Company on the occurrence of either of the following:
(i) in the event of the liquidation or receivership of the Company or the
appointment of an administrator or the Company ceasing to trade or the
sale of the Company's business or all its assets.
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(ii) in the event of any sum due from the Company to the University
hereunder remaining unpaid for more than thirty days after due demand
from the University.
18.3 Termination shall be without prejudice to accrued rights and liabilities of the
Parties.
18.4 Other than as set out in sub clause 17.5 termination or expiry of this
Agreement shall not affect the rights or obligations of the Parties which due
to nature thereof are due to be performed after such termination or expiry,
including (but not limited to) Clause 8 (Intellectual Property), Clause 9
(Licensing Option), Clause 10 (Confidentiality), Clause 13 (Publication of
Results), Clause 14 (The Results of the Project) and Clause 15
(Liability/Indemnity).
18.5 Where this Agreement is terminated under this Clause 17 and as distinct
from the conditions set out in sub clause 17.4 then:18.5.1
18.5.2
18.5.3
Clauses 8.2 (Intellectual Property) and 9 (Licensing Option) shall
not survive such termination; and
Both Parties shall have an obligation to return any papers,
correspondence, or documentation which they have obtained as a
result of participation in the Project, and hold at the date of
termination, to the originating Party; and
The Company shall within 30 days of receipt of the University’s
invoice pay the University the greater of
18.5.3.1 The balance of the total contribution due by the Company
during the Project Term under Clause 6.1; or
18.5.3.2 A sum equivalent to 3 months salary of the
Associate/contribution due under Clause 6.1 which ever is
the greater.
19.
THIRD PARTIES
19.1
20.
The Contracts (Right of Third Parties) Act 1999 is excluded from applying
to this Agreement and nothing in this Agreement confers or purports to
confer on any third party any benefit or any right to enforce any term of
this Agreement.
AMENDMENTS AND VARIATION
20.1
The provisions of this Agreement may only be varied or amended by
agreement in writing between persons duly authorized by the Parties.
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21.
NO PARTNERSHIP
21.1
22.
Nothing contained in this Agreement shall be deemed to create a
partnership between the Parties hereto.
WAIVER
22.1
The failure of either party to seek redress for any breach or to insist on the
strict performance by the other party of any term condition or provision of
this Agreement or the failure or delay by either Party in respect of the
exercise of any right, power, privilege or remedy provided under this
Agreement shall not operate as a waiver thereof or as a waiver of any
preceding or succeeding breach by the other party. Any single or partial
exercise of any such right, power, privilege or remedy shall not preclude
any other or further exercise of such right, power, privilege or remedy.
22.2
No waiver of any of the terms, conditions or provisions of this
Agreement between the Company and the University shall be effective
unless waiver is in writing.
232. NOTICES
23.1
24.
Any notice or other communication given under or in connection with
this Agreement shall be in writing and shall be delivered to the Company
addressed to the Secretary at its registered office, or to the University
addressed to the Secretary and Clerk at the University’s office shown in
this Agreement. Any such notice or other communication shall be
deemed well served if it is served personally or if sent by first class post
or is sent by fax. In the case of post the day of service shall (unless the
contrary is proved) be deemed to be two days after the date of posting.
SEVERABILITY
24.1 If any provisions of this Agreement is deemed to be prohibited or
otherwise adjudged by a court unlawful, void or for any reason
unenforceable such a provision shall to the extent required in compliance
with judicial order, be severed from the Agreement and rendered
ineffective as far as possible without modifying the remaining provisions of
this Agreement and shall not in any way affect the validity or enforceability
of the remaining provision of this Agreement.
25.
CANCELLATION OF PREVIOUS AGREEMENTS
25.1 This Agreement is substitution for all previous Agreements
correspondence or understandings of any nature whatsoever relating to the
subject matter of this Agreement between the Company and the University
which shall be deemed to have been terminated by mutual consent as from
the date on which this Agreement takes effect.
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26.
ARBITRATION
26.1 Any dispute difference or question arising between the parties in relation
to this Agreement or touching the construction meaning or effect thereof
or arising out of these premises shall if the parties cannot amicably settle
the same be referred to a single arbitrator to be nominated (if the parties
cannot agree) by the President of the Law Society in England for the
time being pursuant to the Arbitration Acts 1950-1979 or any statutory
modification or re-enactment thereof for the time being in force.
27.
LAW AND JURISDICTION
27.1 This Agreement shall be governed by and construed in accordance with
English law and the parties submit to the non exclusive jurisdiction of the
English Courts.
AS WITNESS the hands of the parties hereto or their duly authorized signatories on the
date set out at the beginning.
Signed for and on behalf of the University:
Name (Print):
Position:
Signature:
Signed for and on behalf of the Company:
Name (Print):
Position:
Signature:
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SCHEDULE A
This is the schedule referred to in the foregoing Agreement.
Grant Application and Proposal Form
*************************************
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SCHEDULE B
This is the schedule referred to in the foregoing Agreement.
Joint Commitment Statement
*************************************
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SCHEDULE C
This is the schedule referred to in the foregoing Agreement.
Grant Offer
*****************************
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APPENDIX E:
related to
Agreement for Collaboration on Research and Development
1. Parties
The Parties to this Agreement are:
a) xxxxxxxxxxxxx (the Company). N.B. This term includes all employees of the
Company.
b) Anglia Ruskin University, a Higher Education Corporation, of Bishop Hall Lane,
Chelmsford, Essex, CM1 1SQ (the University). N.B. This term includes all
employees of the University.
c) Xxxxxxxxxxxxxxxxx of Chelmsford Essex, CM1, a registered research student of the
University (the Student)
2. The Collaborative Project (the Project)
The Collaborative Project results from the agreement of the Company to sponsor a
research studentship at the University, jointly supervised by the Company and the
University, which will investigate technical and scientific characteristics of ….. The
Parties agree that desirable outcomes of the Project will be:
3. Confidentiality
The Parties agree to share openly all scientific, technological and commercial nonconfidential and confidential information and data owned by them or that they have the
right to use which is, or which becomes available to them, and which is material to the
satisfactory completion of the objective of the Project described in paragraph 2 above.
Information which is considered confidential, and which should not be disclosed to any
third party, will be identified as such orally, or preferably, in writing. The Parties will
exercise the same degree of care in protecting information and data so identified from
public disclosure as they would in relation to their own proprietary information. Only
with the written consent of the other Party shall any information or data identified as
confidential be disclosed to any Third Party.
Where such consent is granted, it shall be a condition that the third party involved
accepts similar obligations of confidentiality to those contained in this agreement. The
Parties will restrict dissemination of confidential information and data, as defined in this
agreement, to employees within their respective organisations on a strict “need to know”
basis.
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4.
Contributions to the Project
4.1 The Student is expected to work on the Project on a full time basis for a period of
three years.
4.2 The University will provide a Director of Studies and direct supervision of the
Student for the duration of the project, and will use its reasonable endeavours to
work towards specific defined outcomes agreed from time to time with the
Company. The University's background Intellectual Property and technical expertise
will be provided to the Project and adapted to the end of developing new
technology appropriate for the Company's needs.
4.3 The Company will provide appropriate commercial and technical input for the
duration of the project. The Company will contribute a sum of …………………..
per annum for a period of three years. This sum is intended:
a) to offset the cost of the Student's fees and expenses
b) to cover a part of the cost of University supervision
5. Intellectual Property
5.1
The Student agrees to assign any new Intellectual Property developed during the
Project, of which s/he might otherwise claim ownership, to the Company for its
use in the field only of ………………. in markets defined in paragraph 7 below. In
return, the University agrees to treat the Student as if s/he were a member of the
University's academic staff in respect of any and all Intellectual Property-related
income received from the Company as a consequence of this Agreement. Financial
rewards to the Student as inventor will be made in accordance with the University's
published "Guidelines for the Management of Intellectual Property", and especially
paragraph 3.2.6 (page 14 of the document).
5.2
The University agrees to assign new Intellectual Property developed in the course
of the Project to the Company for its use in the field only of ……………….. in
markets defined in paragraph 7 below.
5.3
The Company will take responsibility for, and bear the costs of defining and
registering, where appropriate by filing Patent applications, all Intellectual Property
of commercial value to the Company, arising in the course of the Project,
acknowledging therein the inventive contributions of both the Student and
University personnel.
5.4
The Parties agree to collaborate in securing the formal protection, on behalf of the
Company, of commercially valuable Intellectual Property arising in the course of
the project, whosoever its inventors might be, and to undertake whatever actions
and to sign whatever documents may be needed to secure such protection at the
expense of the Company.
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6. Exploitation of Intellectual Property and Royalty payments
The Company will exploit new Intellectual Property by incorporating usable innovations
and inventions developed during the Project into its existing or new products, systems or
services.
6.1
The Company agrees to make annual Royalty payments to the University based on
the value of sales of any products, systems or services which incorporate or
otherwise make use of innovations, inventions or new intellectual property
developed during the Project. The Company shall make royalty payments for a
period of xxx years, commencing xxxx. Payments will be at the rate of x% of net
(after tax) invoiced value of all goods and services as defined above, based on sales
made by the Company in a twelve-month period ending on the xxxx prior to the
date of payment.
6.2
The Company agrees to inform the University of all existing and future agreements
with any Third Party, (for example by licence, agency agreement) which it has or
may make, which would permit the manufacture or sale of products, systems or
services which incorporate or otherwise make use of innovations, inventions or
new intellectual property developed during the Project. The Term "Third Party" in
this context shall be understood to include subsidiaries of the Company and
Associated and Group companies as defined by the Companies Act.
6.3
The University and the Company agree to negotiate in good faith an appropriate
arrangement for a Royalty payment or payments to the University in respect of all
such Third Party agreements defined in 6.2 above.
6.4
The University shall have the right to access the Company's, premises, accounts
and records for a period of xxxx years from the date of this agreement, for the
purposes only of ascertaining the accuracy of Royalty payments made by the
Company to the University according to the undertaking in this Agreement. Any
information on company trading or financial data acquired by the University
thereby shall be regarded as Confidential Information as defined in paragraph 3 of
this Agreement.
7. Exclusivity
The University agrees, in recognition of the contractual and Royalty arrangements made
by this Agreement, that it will, for a period of xxxx years from the date of signature of
this Agreement, not enter any arrangement involving the transfer of technical and
scientific intellectual property to any company involved in any field in which the
Company has or may develop an interest namely:
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8. Publications
The Parties agree that any publication of materials relating to the Project, its progress and
outcomes, will be subject to the agreement of all Parties. Drafts of any proposed
publication will be circulated for approval by signature.
The Student will take steps with the University authorities to ensure that any thesis
resulting from the Project is examined externally as Confidential Information and that its
Publication by Anglia Ruskin University is embargoed for a minimum period of two
years, in accordance with Anglia Ruskin University’s Postgraduate degree regulations.
9.
Term and Termination
The present agreement will terminate xxxx years from the date of signature, excepting
the obligations regarding confidentiality, (paragraph 3) exclusivity (paragraph 7) and
obligations regarding the payment of royalties and associated obligations listed in
paragraph 6 above, which will last for xxxx years from the date of signature.
The Agreement will terminate with immediate effect if any of the Parties is not able to
fulfil its obligations to contribute set out in paragraph 4. In particular, the Agreement will
be terminated automatically by the insolvency of any of the Parties or material breach of
any of the Terms set out in this Agreement, particularly a proven breach of confidence or
failure to make payments, or refusal to provide information material to the achievement
of the objective of the Collaborative Project.
10. Disputes
Any disputes between the Parties, which cannot be solved by negotiation, shall be
referred for resolution to a mutually acceptable Arbitrator, or in the event of failure to
agree on a mutually acceptable Arbitrator, to …………….
11. Jurisdiction
The interpretation of this agreement and the resolution of any actions arising therefrom
shall be subject to the jurisdiction of the English Courts.
12. Signatures
a) For the Company
xxxxxxxxxxxxxx Managing Director
Date:
b) For Anglia Ruskin University
XXXXXXXXXX
c)
Date:
(the student)
Date:
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APPENDIX F: Declaration of “non-inventorship” by a Post Graduate student.
I, nnnnn sssss, a Registered Postgraduate student of Anglia Ruskin University, have
noted the intention of the University to apply for formal protection of intellectual
property which has been developed in a project with which I am also involved and of
which I have detailed knowledge, namely:
(description of the invention and the technology)
I hereby agree
1.
2.
3.
That I do not claim to have made a creative contribution to the
inventive step or steps which have led to the invention. Whatever
work I have undertaken in the course of the project has been done
under instruction from my Supervisor, Dr. AA. BBBB, who is
named as the inventor.
That I will protect the interests of the University and of the
inventor by keeping confidential any and all information and data
concerning the above invention and technology which is not
already in the public domain.
To assist the University, if required to do so, in making application
for formal protection of the invention at its cost
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