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CPGSC Paper 2007/2/7
SPGSC
8 November 2007
Ownership of Postgraduate Student Intellectual Property
Brief description of the paper
This draft paper sets out the case for the University to own the intellectual property (IP)
developed by postgraduate students in the course of their research activities at the University.
It also addresses the need for students to keep as confidential, any University and/or third
party owned IP to which the students gain access during their research. A previous version of
this proposal for the University to own student IP was submitted to CMG in 2003.
Action requested
SPGSC members are asked to review this paper and send comments to Susan Hunter, Academic
Affairs by 30 November 2007 for collation
Risk Assessment
Does the paper include a risk analysis? No
Equality and Diversity
Does the paper have equality and diversity implications? No.
Freedom of Information
Can the paper be included in open business? Yes
Any other relevant information
This is a draft paper which will be presented to Central Management Group on 14 November.
Originator of the paper
Derek Waddell, Director of Research Services
8 November 2007
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CPGSC Paper 2007/2/7
OWNERSHIP OF POSTGRADUATE STUDENT INTELLECTUAL PROPERTY
BACKGROUND
1.1
At present, although the University owns all IP created by its employees in the course
of their employment, it does not automatically own the IP of its students. As a
consequence, this can lead to (for example): exploitation opportunities being missed,
sponsor obligations not being met, problems associated with joint ownership of IP,
and the inefficient use of scarce legal and business development resource through the
additional work required to secure the necessary assignments.
1.2
Postgraduate students tend to be funded to do their postgraduate studies by Research
Councils, commercial companies or charitable organisations and the University enters
into contracts with such sponsors with regard to that funding. It is common in such
contracts for sponsors to stipulate that any IP generated during the funded research
must vest in the host institution and be exploited commercially if possible.
For example, the Wellcome Trust’s standard conditions stipulate that all persons in
receipt of Wellcome Trust funding must be retained on terms that vest in the host
institution, all IP which is created by any such person on Trust-funded activities.
1.3
Many Universities already claim ownership of their students’ IP, some both
undergraduate and postgraduate, so Edinburgh would not be out of line if we changed
our policies. Earlier this year, a survey of Russell Group Universities was carried out
and a summary of the responses received is detailed in Appendix 1 to this paper.
1.4
With some Universities it is part of the matriculation process for students to sign a
specific agreement assigning their future IP to the University. At other Universities
the student agrees, by reference to the University’s conditions of admission, to assign
their IP to the University if the University requests them to do so at any point in the
future. In both examples, in consideration for assignation, the student will receive the
same share of any revenue which flows into the University as a result of the
commercialisation of that IP, as would employee inventors pursuant to the relevant
staff policy. Edinburgh already deals with any student-assigned IP in this way.
1.5
The University provides an environment which is conducive to the creation of
innovative ideas and the infrastructure to support the student in its research activities.
Students often work on projects which are derived from the existing IP of University
academic staff or use compounds and materials supplied by third parties and they will
derive a substantial benefit by being able to draw upon the expertise and reputation of
such academic staff. However, there is a need to avoid fragmented ownership of IP.
IP developed by the student can often form a small but integral / critical part of a
larger piece of technology. If the University does not have ownership of that IP, it can
find itself with a gap in its IP portfolio which precludes it from being able to exploit
the technology.
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1.6
The University will generally have greater negotiating power than an individual
student and should be in a better position to obtain more favourable returns for both
the University and the student in any exploitation deal. The University also has
considerable resources and expertise (through ERI) to facilitate the sourcing of
licensees for technology and the financial resources to meet patent fees and other costs
associated with the management of IP. Students are unlikely to have or have access to
such resources themselves. Indeed, it could be argued that the University has a
responsibility to assist students to comply with their funding conditions which require
that the student ensures IP is protected and exploited
1.7
As postgraduates currently own their own IP, under the law any future use or
development of this IP by University academics or other students requires permission
and a licence from the student creator. Academics are unlikely to be aware of this but
it could lead to disputes particularly if the downstream research produces valuable IP
from which the student inventor does not benefit. Ownership of post-graduate student
IP by the University would avoid such problems and enable researchers and future
students to build on previous students’ research without having to concern themselves
with obtaining the relevant rights.
1.8
An issue having a significant impact on IP within the University is that of
confidentiality. At present, University students come into regular contact with
research work being carried out by academic colleagues and other students through
their normal research activities. Postgraduate students also regularly use materials and
compounds supplied to the University under material transfer agreements (MTAs).
This is to be encouraged. However, it raises a potential problem where novel ideas
and concepts are disclosed to individuals who are not employed by the University, as
this could jeopardise the patentability of such ideas and concepts where such
disclosure occurs outwith the scope of a confidentiality agreement. Furthermore,
when the University is undertaking research funded by certain sponsors (mainly
industrial sponsors and some governmental departments), it is normally bound by
confidentiality provisions within the sponsor’s contract. MTAs normally require that
only University employees can use the materials / compounds and that the detailed
information / data of such is kept confidential. Unless the student has signed a written
confidentiality agreement, the student is not under a legal obligation to maintain
confidential any results or work they come into contact with. Indeed, there have been
situations where students have taken University IP into companies that they have
formed. The University may also find itself breaching legal agreements with third
parties about the use of materials / compounds. It is therefore proposed that students
enter into formal confidentiality agreements with the University to regulate their
access to such valuable IP during their research activities.
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2.
PROPOSALS
2.1
That the IP of all postgraduate students which is created in the course of the student’s
research at the University, should be assigned to the University at matriculation.
2.2
That ERI will take over responsibility for the exploitation of postgraduate student IP
in line with existing activities to exploit other University IP.
2.3
That postgraduate students who have developed IP that is commercialised by the
University, will benefit form the University revenue sharing policy as outlined in
SAM 5.7 in exactly the same way as if they were a member of University staff.
2.4
That all postgraduate students are required to sign a confidentiality agreement to
prevent unauthorised disclosure of University IP and third party owned IP. For the
avoidance of doubt, this will not restrict the ability of the student to publish the results
of their work in accordance with normal academic practice or the student’s use of their
own research in their subsequent career.
2.5
That the University works to implement such changes by the commencement of
academic year 2008/09.
3.
IMPLEMENTATION
3.1
Implementation of the proposal will require the amendment of the Terms and
Conditions of Admission & matriculation documentation for postgraduate students to
provide that by signing the matriculation documentation the student, insofar as they
are able to, assigns all future IP which he/she will create in the course of their studies
and to keep University and third party owned IP of which they gain knowledge during
their research work confidential.
3.2
The amended matriculation documentation should also place an obligation on the
student to sign all necessary documentation in the future, as may be required to assign
any IP that is not yet in existence. It should also provide that the student appoints the
University as his/her attorney on his/her behalf to sign any documentation required to
enable the University to enjoy the benefit of the IP if for any reason the student does
not sign.
3.3
In return for the assignation, students would then be entitled to enjoy the benefit of the
University’s revenue sharing policy, as set out in the University’s Staff Administration
Manual, in the same way as an employee does when the University commercialises
any IP which was created by that employee. Such students should also be entitled to
benefit, in the same way as a staff member, in any future policy that the University
may adopt with regard to the allocation of equity in spin-out companies.
3.4
Certain other University documentation would also require to be amended to reflect
the new proposal, such as the Student Handbook, The Code of Good Practice in
Research and any other relevant documentation or regulations.
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RESOURCING
There are no additional resourcing issues required at this time. However, on the assumption
that this proposal will result in increased levels of patent activity, it is likely that additional
funds to help secure patents for student IP will be required in 2008/9.
CONCLUSION
CMG are invited to consider the proposal as outlined above and to decide upon whether the
University should seek ownership of student IP and should require students to enter into
confidentiality agreements as proposed.
In the event that CMG are in favour of the proposal, it is suggested that this paper should go
forward to the academic policy committee, prior to which, consultation will require to be held
with appropriate stakeholders within the University, including student bodies such as the
Students Union. It will be important at this stage that arguments illustrating the benefits to
students and staff are clear and unambiguous in order to pre-empt, or at least minimise,
concerns that are likely to be raised over issues such as academic freedom. It will also be
necessary to identify all of the regulations, procedures and documents within the University
that will require amendment to give effect to the proposal. These will include the Terms and
Conditions of Admission, the matriculation documentation, the Student Handbook and The
Code of Good Practice in Research.
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Appendix 1 –Summary of responses received from Russell Group Universities
1.
University of Oxford
Oxford has quite a hard regime, asserting ownership of all IP developed by students, (under
and postgraduate), whether pursuant to taught or research degrees. The relevant Regulations
are quite broadly stated. Oxford does not assert any rights in the copyright in artistic works.
Students are treated as employees for the purposes of royalty-sharing.
2.
University of Nottingham
Nottingham seem to divide postgraduates into three classes and have different regulations for
each set, further ‘complicated’ by each case being dealt with at a School or Departmental
level. The default position at Nottingham is that since postgraduates sign up to regulations,
they are bound to assign IP if requested. Nottingham appears to be very much in favour of
building up justification enabling it to require future assignation rather than seeking to
implement assignation via registration. Students who have assigned IP are entitled to benefit
from the University’s revenue sharing policy as if they were staff.
3.
University of Sheffield
Sheffield makes it a condition of registration for a degree programme that the student agrees
to assign IP to the University. Sheffield confirms that it will, in the event of exploitation,
grant to the student a reasonable share of the benefits arising therefrom.
4.
University of Newcastle
Didn’t really state a position, but has been involved in a national statistical research project
which appears to have shown a shift away from blanket ownership towards a more micromanagement approach.
5.
University of Southampton
A more all-encompassing approach than some other Universities. Southampton has
University Regulations which, at least in relation to IPRs, apply across the board to staff and
students, without, apparently, any distinction between under/postgraduate or taught/research
activity. The Regulations go so far as to require that anything created actually refers to
University of Southampton copyright. Although there is no mention in the Regulations of any
subsequent obligation to assign, Southampton’s Senior Contract manager has pointed out that,
in cases where perhaps the University has an obligation to third parties, the University will
usually also have the student sign up to something. Although Southampton seems to take
what might be seen as a hard line, from the generalisation about ownership of IP generated
are excluded copyright in books, articles and lectures, as well as physical artistic works (albeit
with a right to acquire) and copyright therein (which remains with students). Southampton
has in place a slightly convoluted compensation structure.
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CPGSC Paper 2007/2/7
University of Cambridge
Balance tilts towards the students, pretty well like Edinburgh’s current position. Default
position is that IP vests in the student, subject to certain exceptions. For example, third party
sponsored research. Advice is to flag any such need to assign as soon as possible, and at least
before the start of the relevant research. Students will benefit in same way as would staff.
7.
University of Liverpool
Liverpool adopts a very straightforward position, one it has apparently arrived at following
legal advice. This position is that students assign IP rights as a condition of registration, and
are thereafter treated in the same way as staff, (for these purposes). This assignation relates
expressly to IP arising as a result of the student’s studies or research.
8.
University College London
A fairly weak position. They set out in a student handbook that there are circumstances
where student IP might need to be assigned to the University at a later date. When a
qualifying project arises, the student will be asked to sign an agreement to assign, and will
actually assign at some later date, either during or after the project. Not really definitive
guidance. Students will benefit under the University’s ‘normal’, (ie, presumably staff),
revenue share arrangements.
9.
University of Manchester
Manchester provides that IP created by a student will belong to that student, although the
University’s IP policy provides, apparently in relation to almost all students, whether under or
postgraduate, that students will be required at registration to sign an Intellectual Property
Acknowledgement Form, alerting them to the fact that at some time in the future they may be
asked to formally assign IP to the University. Manchester has fairly thorough provisions
relating to the generation, ownership and use of ‘student IP’. Where IP is assigned to the
University the student is treated in the same way as an employee for the purposes of sharing
benefit from exploitation.
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