UCL Financial Regulations - Intellectual Property and Patents
Note: Work carried out by UCL staff may give rise to Intellectual Property Rights (IPR). Where such IPR result from work expressly required of a person in the course of that person's employment by UCL or done by such a person specifically under the direction and control of UCL, the rights generally vest in UCL. Intellectual Property Rights include:
- copyright in works (including computer software and books, but read on for special provisions applying to books);
- the right to apply for Registered Design protection in relation to designs;
- and all rights, including the right to apply for patent protection, in any work, design or invention.
Notwithstanding the statutory provision whereby the copyright in any work produced by an employee in the course of employment belongs to the employer, UCL normally reassigns ownership of copyright in any work to be published to the author and will waive any claim it may have to benefits arising from publication, with the exception of the following which shall belong to UCL:
- copyright in course materials produced in the course of employment for the purposes of the curriculum of a course being run or to be run by UCL and which are produced, used or disseminated within UCL;
- copyright in any software programme generated during the normal course of University employment;
- copyright in any designs, specification or other works which may be necessary to protect rights in commercially exploitable Intellectual Property.
- Responsibility for the protection and exploitation of Intellectual Property Rights, including any negotiation with external sponsors in respect of such Rights, rests with UCL and shall be handled by UCL Business, from whom specific details and further information may be obtained.
- Premature disclosure of any information in respect of an invention can seriously prejudice the prospects for commercial exploitation. It is therefore essential that staff should notify their Head of Department in writing, and immediately refer all details to UCL Business, if they make an invention or discovery in any of the following instances:
- in the course of work within their contract of employment;
- whilst specifically under the direction and control of UCL;
- whilst engaged in duties for externally sponsored research, or using UCL staff, facilities, material, etc.
- The Director of UCL Business shall inform the member of staff whether UCL wishes to protect and exploit the invention, and shall advise as to whether any delay in publication of the invention is advisable. Should UCL decide not to take up its rights to exploit, UCL will normally offer to assign all rights in the invention to the member of staff (to exploit in the member of staff's own name and at the member of staff's own expense).
- Should UCL Business decide that UCL should protect and exploit the invention, the possibility of obtaining patent protection in the name of UCL will be investigated. Staff, who are inventors according to the Patent Office definition, shall be named as such on the Patent application. The costs of obtaining Patent protection for inventions and discoveries arising out of contract work, where rights belong to the sponsor, shall be at the expense of the sponsor.
- Income received from the exploitation of UCL's IPR shall, after deduction of all relevant expenditure incurred through exploitation or protection including all taxes and employer's staff costs, normally be distributed between UCL, Department and Inventor. In consideration of an Inventor's share, the Inventor shall, at UCL's request, give written confirmation that such IP does belong to UCL and shall undertake to give UCL reasonable assistance in the protection and licensing of the IP.
However, in the case of exploitation through a limited company, the inventor's share would normally be by way of the issue of shares. The Council will, from time to time, lay down guidelines for the distribution of such income but UCL maintains its right to vary the proportionate share of income depending on the circumstances of each case. The inventor shall, at UCL's request, inform UCL of all external funding received from research sponsors for the purposes of carrying out the research leading to discovery of IP which subsequently is the subject of exploitation. Any revenue sharing arrangements between UCL, Department and Inventor shall be made, after any payments to such external sponsors in respect of their funding. For the avoidance of doubt all research grant and contract terms shall prevail. If there is no licence income to UCL from commercialisation of IP generated under a research grant or contract, then there shall be no revenue to share.
- Inventions and discoveries made by students are normally assigned to UCL, and income arising therefrom shall be subject to distribution, as laid down at Financial Regulation 80 above. Students, assigning rights to UCL, shall benefit from the protection and exploitation services provided by UCL Business, and any resulting royalty income shall be distributed on the same basis as for UCL employees.
- Members of staff shall ensure that any original work, manuscript, data, report, or other written material in which copyright belongs to UCL, bears a statement that the copyright belongs to University College London. This should normally take the form of “© University College London” or “© UCL”.
Please refer to further information on the UCL Business webpage.
This page last modified
March 22, 2013
by Web Editor.