UCL is committed to encouraging the successful exploitation of intellectual property by its staff and students and maximising the value of intellectual property for the benefit of all involved in its creation. UCL seeks to promote the recognition, protection and exploitation of potentially valuable intellectual property produced by its students.
- Policy statement
As a general principle UCL recognises the student as owner of any IPR he/she produces while a registered student of UCL. This principle may be subject to variation in the case of collaborative or externally sponsored work, or other exceptional circumstances.
Collaboration between students and academic staff and between students and sponsors is subject to the revenue-sharing arrangements detailed in the Financial Regulations.
Requests for assignment of IPR in collaborative work between students and their supervisors and research teams will be made by the student's supervisor in consultation with the Head of Department in order to cover any potential revenue-sharing by the student or supervisor, or commercial exploitation (where there would be a claim by UCL).
An agreement on IPR must be established at the outset of the student project. In the case of a project that derives from the IP of academic staff or involves substantial collaboration with academic staff, UCL will retain ownership of individual IPR arising during or from the project in order to ensure it is able to benefit fully from any commercially exploitable opportunities which may arise from the larger programme.
In the case of a project as described in section 5 students will be required to assign any IPR to UCL.
The supervisor of a student project is responsible for determining in consultation with the Head of Department at the start of a project if an assignment of IPR is necessary.
Externally Sponsored Work
Ownership of IP in a student project that is sponsored must be covered by the terms of the research contract between the sponsor and UCL, and students must be informed of the terms of that contract by the project supervisor or Head of Department at the start of the project. If the research contract involves ownership of IP by the sponsor, students will be required to assign IPR to UCL to enable UCL to manage the contract.
Academic Departments are required to have adequate procedures for ensuring that IPR arrangements are implemented in a proper manner; these arrangements are subject to audit under the IQR process.
IPR in Student Creative Work
UCL claims the following rights in relation to students' creative work produced while they are registered at UCL:
- to acquire, on fair and reasonable terms, ownership of the material element of any artistic works produced by students, including without limitation paintings, photographs, sculptures and multi-media works
- to reproduce, without fee, artistic works acquired in this way in UCL publications for educational and promotional use, including databases, web-sites, academic publications, exhibition catalogues, leaflets and prospectuses
- to borrow, for a reasonable period of time, the material element of any works produced by students, and/or a suitable reproduction of these works, for the purposes of publishing these works in publications by UCL and its staff, and/or for the purposes of showing these works to professional statutory bodies for the validation of appropriate degree programmes
For the avoidance of doubt the copyright in all such artistic works shall remain with the student and any reproduction by UCL intended for commercial purposes will be subject to an individual licence to be negotiated with the student and subject to UCL's standard revenue-sharing agreement.
Students who are required to assign IPR to UCL will be treated in the same way as members of staff for the purposes of sharing any revenues arising from the commercial exploitation of that intellectual property.
Duration of student agreements on IPR
Any right to revenue which may accrue under UCL's IP regulations to students who are or were registered at UCL and any obligation to assist UCL in the exploitation of the IP at UCL's expense shall continue in force and effect for the duration of the IPR.
Disputes and Appeals
UCL has established an appeals mechanism consisting of a Student IP Committee and a Student IPR Appeals Panel. Any dispute regarding the assignment of student IPR will be referred in the first instance to the Student IP Committee.
Intellectual Property Rights: definitions
Intellectual Property (IP) is the term given to the productions of original intellectual or creative activity. Intellectual Property Rights (IPR) are the legal rights that exist in those productions. IPR include the following related areas: copyright, patents, designs, trademarks, plant variety rights, database right and analogous rights.
Copyright is an unregistered intellectual property right, which arises automatically by operation of law in the UK when a protectable work is created by a qualifying author, and there is no registration required. ('Protectable' here describes the class of copyright work, these are: literary, dramatic, musical and artistic works, films, broadcasts and cable programmes. 'Qualifying' refers usually to whether the author is recognised under the Copyright, Designs and Patents Act 1988. Most authors are qualifying authors.) A copyright work must be original. (Originality' has a relatively low threshold and is not to be confused in any way with whether a copyright work is novel or new. The term 'originality' only refers to the fact that the author must make some amount of effort to produce the work in the first place. The term 'literary' is merely a reference to a written work.) Computer software is treated as a literary work and as such is protected by copyright in the same way as literary and artistic works. Copyright is governed by the Copyright, Designs and Patents Act 1988. For further guidance on intellectual property in software and datasets please refer to Annex 3.
Databases are protected in one of two ways. Some databases can be protected as copyright works (see above) when the person compiling the database is judged to have used sufficient skill, labour and judgement in devising the compilation. Other databases are protected by a separate Database Right. This lasts for 15 years. Databases protected by Database Right tend to protect the content, as opposed to the organisation and structure of a database. Even so, Database Right is a valuable intellectual property right. It is governed by the Copyright and Rights in Databases Regulations 1997.
Patents protect original inventions (subject to some exclusions) with industrial application. They are one of the strongest forms of intellectual property right, conferring a 20-year monopoly upon their proprietor and they are infringed even if there is no conscious copying. They have to be applied for and are granted by the state through the Patent Office. They must pass through a rigorous vetting procedure for compliance with the legal requirements, before they are granted. Patents are governed by the Patents Act 1977.
Design Rights under English law can exist in unregistered or registered form. Design rights are in some ways similar to copyright but for three-dimensional articles. Registered designs protect the shape, configuration, pattern or ornament of an article to the extent that they have "eye appeal". The main legislation in the UK is the Registered Designs Act 1949.
Unregistered Design Right arises automatically by operation of law and, as its name suggests, it does not require to be registered anywhere. Unregistered design right is a proprietary right which subsists in an original design. "Design" for these purposes means the "design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article." Unregistered design right does not subsist unless and until the design has been recorded in a design document or an article which has been made to the design. Unregistered Design Rights are governed by the Copyright, Designs and Patents Act 1988. Recent changes have been introduced by way of EU legislation which has created Community design rights that afford designs protection throughout the European Union.
Trade Marks can be registered or unregistered. A registered trade mark is often much more valuable than an unregistered trade mark which can only give the owner a right to sue for passing off. It is more difficult and expensive to bring an action for passing off than for straightforward infringement of a registered trademark; so possession of a registered trademark is highly desirable. Registered trade marks are governed in the UK by the Trade Marks Act 1994. There is also a Community Trade Mark which gives a mark protection throughout the EU.
Assignment is the term given to the outright transfer of ownership of IPR from one person or party to another. It is often, but not always, done in return for a fee. Whilst transfer of ownership of physical property is achieved by delivery of the property from one person to another, intellectual property must be transferred in a written document which is referred to as an assignment.
Licence and licensing are the terms given to the permission, which the owner of an intellectual property right may give to any other person or parties to use that IPR. Someone using an intellectual property right without a licence infringes that intellectual property right. The owner may charge a fee in return for the grant of a licence and can impose terms and conditions on its use as part of a licence. There is no transfer of ownership, just a licensing of use and it can be thought of as similar to hiring or renting out other forms of property. Licences are usually divided as follows. A non exclusive licence means that the licensor himself can use the rights and he can have any number of licensees. A sole licence means that the rights owner can use the rights but can only create one licence in favour of his licensee. An exclusive licence means that the licensor himself cannot use the rights and only one licence can be created. As can be seen, an exclusive or a sole licence will tend to command more royalty rights or income than a non exclusive licence.
A moral right is not an intellectual property right but is something which allows authors or film directors to assert their rights to be known as the author (the "paternity right") and to object to any derogatory treatment of the right ("the integrity right"). The moral right is usually asserted where copyright is assigned and the assertion binds the assignee.
IPR and students
Issues around IPR for students can arise:
- in research work undertaken in a team with academic staff (collaborative work)
- in the reproduction or exploitation of creative work (art work, plans, drawings etc)
- in work that is supported by a sponsor
These are examples, there are other situations in which IPR must be considered.
What to do if you have questions about IPR and your work
Consult your Supervisor or Head of Department in the first instance, who will seek guidance, as appropriate, from the UCL Copyright Officer and/or UCL Business. If you are unsure if there is an IPR issue, then you should consult as appropriate.
Rules and procedure for dealing with IPR in students' work
As a general principle UCL recognises that students own the IPR in any work that they produce as part of their course of study at UCL. However, there are some circumstances where ownership has to be shared or granted to UCL or a third party.
Students who are sponsored
Any conditions made by the sponsor regarding ownership of IP developed during the period of sponsorship, particularly granting ownership to the sponsor, must be respected. Sponsored students are therefore advised to check the terms of their sponsorship agreement at the outset of the project or programme of study.
Students working on a sponsored project as part of their coursework or research
Ownership of IP from the project should be covered by the research contract between the sponsor and UCL. Students must be informed of these terms by the project supervisor or Head of Department before starting work on the project. If the research contract involves ownership of IP by the sponsor, it will be necessary for students to assign IPR to UCL so that UCL can in turn assign or licence these intellectual property rights to the sponsor.
Students who are working on a project that derives from the IP of academic staff or involves substantial collaboration with academic staff.
Such projects, which form a part of many graduate and undergraduate degree programmes, will often be connected in some way to academics' ongoing research/professional interests and may be part of a much larger research programme. In these cases it is necessary for UCL to have ownership of individual students' IPR produced during the project to ensure it is able to benefit fully from any commercially exploitable opportunities which may arise from the larger programme. In such cases students will be required to assign IPR to UCL. It is the responsibility of the supervisor of a student project to determine in consultation with the Head of Department at the start of a project if an assignment of IPR is necessary.
Students who are required to assign IPR to UCL will be treated in the same way as a member of staff for the purposes of sharing any revenues arising from the commercial exploitation of that intellectual property. (See Annex 2: revenue sharing arrangements)
Student IPR in Creative Work
UCL claims the right to acquire ownership, on fair and reasonable terms, of the physical work in any artistic works produced by students; including, without limitation, paintings, photographs, sculptures and multi-media works. UCL also claims the right to reproduce, without fee, artistic works acquired in this way in UCL publications for educational and promotional use, including databases, web-sites, academic publications, exhibition catalogues, leaflets and prospectuses. For the avoidance of doubt the copyright in all such artistic works shall remain with the student and any reproduction by UCL intended for commercial purposes will be subject to an individual licence negotiated with the student and subject to UCL's standard revenue-sharing agreement. For further guidance about copyright in artistic works students should seek the advice of the UCL Copyright Officer and the Curator of UCL Art Collections.
Borrowing Student Work
UCL claims the right to borrow, for a reasonable period of time, the physical work in any works produced by students, and/or a suitable reproduction of these works, for the purposes of publishing these works in publications by UCL and its staff, and/or for the purposes of showing these works to professional statutory bodies for the validation of appropriate degree programmes.
UCL recognises the moral rights of authors in relation to their copyright works. In displaying and borrowing student works UCL will have regard to the students' moral rights and will provide for appropriate notice of authorship. If this is not practical, then a waiver of these moral rights will be sought.
UCL reserves the right to impose confidentiality obligations on students who create, or work on, patentable inventions. The main reason for this is that any disclosure of the invention may destroy novelty and hence render the invention non-patentable. The obligation of confidentiality usually lasts until a patent application is filed. Confidentiality agreements may also apply to projects that are sponsored, where it may form part of the agreement between the student and the sponsor.
If students have any doubts about the meaning and effect of the assignment forms, they should seek independent legal advice. If any student declines to assign IPR at the start of a project when requested, whenever possible they should be offered an alternative project on which to work.
Assignment of IPR to publishers
Authors are strongly advised not to assign the IPR in their work to a publisher, but to seek a licensing agreement for publication. It is suggested that if authors do assign their copyright to a publisher they assert their moral rights (see above). Guidance can be obtained from the UCL Copyright Officer.
Length of IPR and after graduation
Any right to revenue which may accrue to students under UCL's IP regulations and any obligation to assist UCL in the exploitation of the IP at its expense will continue in force and effect for the duration of the IPR.
Disputes and queries
In the event that a student considers that a request to assign IPR to UCL is unfair they can appeal to the Student IP Committee. The committee will comprise: a student nominated by the UCL Union, an academic nominated by the Vice-Provost (Teaching and Learning), the UCL Copyright Officer and a representative of UCL Business. The Committee will be chaired by the Dean of a Faculty which is not that of the student or any staff involved. The student may be supported by a member of UCL Business, UCL Union or a member of UCL nominated by the student. The Registrar will nominate the clerk to the committee. Final appeal will be to the Student IPR Appeals Panel (details attached at Annex 1).
Copyright matters: UCL Copyright Officer on +44 (0) 20 7679 7834
Patents: UCL Business on +44 (0) 20 7679 9000
Data protection: UCL Data Protection Officer on +44 (0) 20 7679 7783
General: UCL Union Rights and Advice Centre on +44 (0) 20 7679 2998
- Annex 1: IPR Appeals Panel
The following constitution is proposed for the panel which would consider appeals against decisions of the Student IPR Committee:
- chair: to be appointed by the Registrar in consultation with the UCL Copyright Officer from the Panel of persons independent of UCL appointed by Council, as and when the Panel needs to be convened
- one member, to be appointed by the Registrar in consultation with the UCL Copyright Officer, from the Panel of persons independent of UCL appointed by Council, as and when the Panel needs to be convened
- one student from a university other than UCL, normally within the London area, to be appointed by the Registrar in consultation with UCL Union Sabbatical Officers as and when the Panel needs to be convened
- secretary: to be appointed by the Registrar
Terms of reference
To consider and determine any appeals against decisions of the Student IPR Committee.
Student IPR Appeals Panel
Any appeal against a decision of the Student IPR Committee must be submitted in writing to the UCL Copyright Officer within 28 days of the date of formal notification of the decision against which the appeal is being made. All documentation pertaining to the grounds on which the appeal is made must be submitted at the same time. No further communications will be accepted for consideration under an appeal after this time.
Such an appeal should normally be made only on one or more of the following grounds:
- the consideration of the matter by the Student IPR Committee was not conducted according to the proper procedure
- fresh material has become available which was not, and could not reasonably have been, available to the Student IPR Committee
- the decision of the Student IPR Committee was unreasonable or unfair
As soon as is practicable after receipt of the appeal the UCL Copyright Officer shall present the documentation relevant to the appeal, including the relevant minutes or report of the Student IPR Committee, to the Chair of the Appeals Panel who shall decide on the evidence available whether or not the appeal should be proceeded with and shall notify the UCL Copyright Officer to that effect normally within ten days of receipt of the documentation.
If it is decided not to proceed with the appeal, the UCL Copyright Officer shall inform the appellant in writing of the decision of the Chair of the Panel normally within five clear working days of receiving it.
Where it is decided that the appeal shall be proceeded with, or UCL Copyright Officer shall inform all the parties of the decision of the Chair of the Appeals Panel and will make the necessary arrangements for the appeal to be heard as early as possible.
The constitution of the IPR Appeals Panel shall be as follows:
- chair: to be appointed by the Registrar in consultation with the UCL Copyright Officer, as and when the Appeals Panel needs to be convened, from the Panel of persons independent of UCL appointed by Council
- one member to be appointed by the Registrar in consultation with the UCL Copyright Officer, as and when the Appeals Panel needs to be convened, from the Panel of persons independent of UCL appointed by Council
- one registered student normally from within the University of London but not from UCL, to be appointed by the Registrar in consultation with UCL Union Sabbatical Officers as and when the Appeals Panel needs to be convened
Note: Members of the Appeals Panel shall be asked at the time of appointment to declare any interest in or connection with the appellant which might be likely to prejudice their participation in the hearing.
The appeal shall normally be determined at a hearing but may be determined by correspondence if the Chair deems this appropriate and the appellant consents to this. All parties shall be informed of the date of any hearing.
The appellant shall be invited to the hearing and may attend throughout except when the Panel deliberates upon its decision.
The Panel may invite such other persons to the hearing and seek evidence from them as its sees fit.
The quorum for a meeting of the Panel shall be three including the Chair.
Procedural matters for a hearing of the Panel other than those prescribed in this procedure shall be determined by the Panel as it sees fit.
The Panel shall deliberate on its decision in private and the Chair will then communicate the decision to the appellant. The Panel shall have power to reverse or modify the decision appealed from in any way that it thinks fit.
Following the hearing the UCL Copyright Officer will formally convey in writing the decision of the Panel to the appellant. The decision will also be communicated to the members of the Student IPR Committee.
A decision of the Panel shall be final as far as internal UCL procedures are concerned.
If the decision of the Panel fails to satisfy the student, the student may petition the UCL Visitor who is the Master of the Rolls, normally not later than six calendar months after the date of the Panel's decision.
- Annex 2: revenue-sharing arrangements
Principles, Purpose and Effect
Capitalised terms used in this Revenue Sharing Policy Statement (Policy) have the meaning defined in Schedule 1.
This Policy is supplemental to and should be read in conjunction with:
- UCL’s Policy Statement on Intellectual Property Rights/Copyright in relation to Staff
- Intellectual property rights: policy for students (this policy)
When taken together these are the IPP.
The IPP sets out the circumstances in which Originators are entitled to a share of revenue derived from commercialisation of Applicable Intellectual Property (IP) by or on behalf of UCL or UCL Business (UCLB).
This Policy sets out the arrangements that apply to the distribution of revenue derived from the commercialisation of an Originator’s Applicable IP, where the right to a revenue share arises under the IPP, with effect from 1 January 2015.
In the event of any conflict or inconsistency between this Policy and the IPP, the terms of the IPP shall prevail to the extent necessary to resolve the inconsistency.
An Originator’s right to a share of revenue arises under the IPP only and not this Policy. No right of an Originator to a share of revenue arises unless the same is expressly provided for in the IPP.
For the avoidance of doubt, save in respect of Inventions, no share of any revenue shall be payable where UCL is the owner of the Applicable IP unless expressly provided for in the IPP.
Commercialisation activity is typically undertaken by UCLB but may, in some limited cases, be undertaken by UCL. Where UCL is commercialising Applicable IP, references to UCLB in this policy shall be read as references to UCL, where
This Policy will apply in respect of any IP first disclosed to UCLB on or after 1 January 2015. Where new IP is disclosed to UCLB after 1 January 2015 and these are commercialised as part of a package including IP disclosed prior to 1 January 2015, a fair apportionment between the previous revenue sharing distribution and the current revenue sharing distribution will be made. In case of dispute the Vice-Provost (Enterprise) will determine the appropriate distribution. In such circumstances, the Vice-Provost (Enterprise) will act as expert, not arbitrator, and their decision will be final and binding on all parties.
In circumstances where this Policy is not applicable pursuant to the above, UCL’s previous policies in respect of revenue sharing will apply (if appropriate) in respect of any right to share of revenues. These are detailed in Schedule 2 of this Policy
For the purposes of this Policy, in the case of any Intellectual Property which is, at the sole discretion of UCLB, capable of commercialisation:
- originators will be determined by their creative or inventive contribution as set out in the relevant UK law governing the subject IP
- in the case of patentable inventions, only pending patent applications or PCT applications shall be considered for the purposes of determining the Originators that are eligible for revenue sharing
- only the individuals who have made an inventive contribution identified in a pending patent application(s) or issued patent(s) shall be considered eligible Originators
- an individual who was previously identified as an inventor on a pending patent application, but is no longer so identified because a change in the claims of the patent application necessitated a change in the named inventors on such application, may still be recognised as an Originator and entitled to a share of revenue under this Policy, provided that all named inventors on such pending patent application agreeing to such an inclusion in writing
The aggregate total Net Revenue received by UCLB from commercialisation of Applicable IP will be disbursed:
Net Revenue (£) Originator(s) (%) UCLB/ UCL (%) Department (%) ≤£100,000 80 10 10 >£100,000 but ≤£1m 50 30 20 >£1m 30 40 30
It is acknowledged by the Originator by entering into any revenue sharing agreement with UCL or UCLB that in relation to revenue sharing provided for in the IPP and this Policy in relation to Intellectual Property or any equity holding in a company in addition to or in lieu of all or part of their revenue share pursuant to the above that:
- revenue is not guaranteed
- UCL is complying with its obligations to share revenue under the IPP and this Policy
- the share is just and fair for the purposes of s40 to 42 of the Patents Act 1977 or any other equivalent provision in respect of other Intellectual Property in force
Originators will enter into a separate agreement in writing to give effect to this Policy and any arrangement made in respect of payment of the Originators’ revenue shares will take precedence over this Policy.
Payment and allocation of the Originator's share
Payment of the Originator(s) share of Net Revenue will be made by UCLB in accordance with the terms of any revenue sharing agreement signed with each eligible Originator. In the absence of any revenue sharing agreement, payment shall be made to the Originator every six months in arrears.
In the case of employee Originators, payments will be subject to the deduction of income tax under section 874, Income Tax Act 2007 (Sections 929 -938 ITA 2007) or any other applicable legislation in force at the time of payment.
Originators are free to:
- request in writing to UCLB that UCLB pay their revenue share, in whole or in part, on a case by case or ongoing basis to another person or to UCL to support their teaching and research at UCL (for the avoidance of doubt this cannot be paid into discretionary accounts)
- withdraw any previous instruction given to UCLB pursuant to this paragraph provided that any such requests may (at UCLB’s option) require the execution of additional documents to give effect to the request and any instructions will only apply to subsequent payments to be made by UCLB after the later of the date of those instructions and execution of those documents
Any payment made by UCLB to an Originator or any other person nominated pursuant tothe above shall constitute a full and adequate discharge of UCLB’s obligation to make such payment.
An Originator that leaves the employment of UCL (or completes his/her period of study) shall continue to be entitled to his/her revenue share. In the case of deceased Originators, the estate of the Originator shall be entitled to the Originator's share on
the terms of this Policy. It shall be the responsibility of the Originator (or their personal representatives) to provide forwarding and contact details to UCLB and such other information that UCLB may reasonably require.
The share of Net Revenue allocated to Originator(s) as identified in the table above represents the total proportion payable by UCLB in respect of all eligible Originators.
Where there is more than one Originator entitled to a share of Net Revenue arising from exploitation of Applicable IP, the percentage of Net Revenue identified in the above table will be divided among all the Originators based upon the relative
contributions of all the Originators.
An agreement to revenue share allocation:
- will be documented in a written revenue sharing agreement signed by all eligible Originators and, unless UCLB agrees otherwise in writing, the UCLB
- may include an individual who has made a contribution to the Intellectual Property but is not an Originator, for the purpose of revenue distribution under this Policy, provided that the named Originators sacrificing a portion of their revenue share in favour of the individual agree to such an inclusion in writing
UCLB accepts no responsibility for any payment in accordance with this Policy where an agreement has not been complied with.
If there is disagreement among Originators over the percentage allocation of their respective personal contribution and they are unable to agree and/or execute a revenue sharing agreement, any individual Originator may apply to the Vice-Provost
(Enterprise) for consideration of their case. The Vice-Provost (Enterprise) will determine any reference made to him and the most appropriate action to enable resolution of the dispute. In such circumstances, the Vice-Provost (Enterprise) shall act as expert and not arbitrator.
Payment of the Department share
Payment of the Department share, will be transferred from UCLB to UCL no later than 60 days after the end of each UCLB financial year and will be allocated by UCL to the relevant Faculty(ies) for disbursement to the relevant Department(s).
The relevant Department(s) for the purposes of the Policy is/are the principal Department(s) where the Originator(s) hold(s) their primary appointment(s) with UCL (and/or, in the case of students, their primary focus of study). Where there are multiple
Originators, the split in payment to Departments follows apportionment in the ratio of the affiliated Originators’ shares.
The relevant Faculty(ies) for the purposes of this Policy will be the UCL Faculty(ies) with which the relevant Department(s) is/are affiliated by UCL. In the event of any doubt regarding the appropriate Department and/or Faculty for the purposes of this Policy, a final determination shall be made by the UCL Vice-Provost (Enterprise).
Share of Equity
Originators may be given the option of taking equity in any corporate vehicle in which Intellectual Property created by them is vested (often referred to as a “spin-out” company) in addition to, as provided for below, or in lieu of all or part of their
The share of equity of an Originator in a spin-out company will be negotiated on a case by case basis having due regard to the potential value of the business being created and the respective contributions, commitments or involvement, including but not limited to intellectual, creative, financial and benefits in kind, of the Originators, UCL and/or UCLB.
Contributions of new Intellectual Property and funding beyond formation are matters for individual negotiation and agreement thereafter.
Where equity is agreed then this shall be in lieu of a revenue share except in limited circumstances and agreed in writing. It is possible in some circumstances to permit an Originator to take a revenue share and equity together where the Originator is not involved in the management or running of the spin-out company. This is to ensure that there is no conflict of interest, potential or actual. Any such agreement shall be made in writing. For the avoidance of doubt, where there is no conflict of interest, potential or actual, the Originator may be able to partake in both equity and revenue sharing dependent on the circumstances of the business and agreement.
For the avoidance of doubt, where UCL or UCLB receives an interest in a company other than in return for the licensing of rights in Intellectual Property to the new company, including without limitation by way of investment of its own funds or in
consideration for access to facilities, Originators shall not be entitled to share income generated from such an interest.
Schedule 1: definitions
Applicable IP means any Intellectual Property created by an Originator that attracts a revenue share in accordance with the IPP and this Policy.
Costs means all costs, fees, expenses (whether internal or external, but excluding internal UCLB/UCL staff and facilities costs), taxes and duties and including without limitation:
- costs, fees and expenses paid to patenting, legal, accounting, auditing and other external advisers and consultants
- official fees paid to patent offices and other external bodies
- VAT and withholding tax to the extent that it is not recovered from HM Revenue and Customs or any other tax authority
- payments to third parties who have a legal interest in the Intellectual Property or income derived from the Intellectual Property (Third Party Contributors), including without limitation
- payments that:
- UCLB and/or UCL has an obligation to make to any charity, company or other person or entity that funded some or all of the research conducted at UCL from which the relevant IP arose or was developed
- that are related to the benefits that UCLB and/or UCL obtains from exploitation of the such Intellectual Property which should reasonably be deducted as a direct cost rather than being allocated among contributors after deduction of direct costs.
For the avoidance of doubt, and subject to prior agreement in each case, payments to Third Party Contributor(s) should normally be allocated among contributors (including UCL) after deduction of direct costs:
- expenditure incurred in relation to litigation and claims, including damages and payments in settlement paid to any third party
- the amount of any cash investment by UCL and/or UCLB in proof of concept or other development activities with respect to the Invention
- travel and other expenses incurred by UCLB staff or others.
Department means a department of UCL, as identified on the UCL website (as amended from time to time).
Faculty means a faculty of UCL, as identified on the UCL website (as amended from time to time).
Intellectual Property (IP) means patents, rights to inventions, copyright and related rights, trade marks, rights in designs, rights in computer software, database rights, rights to use, and protect the confidentiality of, confidential information (including know-how) and all other intellectual property rights, in each case whether registered or unregistered and including all
applications or rights to apply for them and together with all extensions and renewals of them, and in each and every case all rights or forms of protection having equivalent or similar effect anywhere in the world.
Invention means any invention, whether patentable or not.
IPP means UCL’s Policy Statement on Intellectual Property Rights/Copyright in relation to
Staff and Intellectual Property Rights: policy for students, as applicable.
Net Revenue means the total Revenue received by UCL/UCLB less all Costs.
Originator means the inventor, author, creator or other generator of Intellectual Property (as determined by relevant statute) who is an employee and/or student of UCL at the time of invention, authorship, creation or other generation.
Policy means this revenue sharing policy statement.
Revenue means the aggregate of all income received by UCL and/or UCLB through an agreement with a third party under which Applicable IP has been commercialised, including all forms of tangible revenue such as (but not limited to) income from license agreements, royalties and cash received through sale of equity taken as part of a licensing transaction. Revenue shall not include patent cost reimbursements or expense reclaims or any funds received for the purposes of carrying out research under collaborative research agreements.
Schedule 2: previous revenue sharing scheme
The following outlines UCL's formula for sharing revenue with staff in force from 1 April 2003 until 31 December 2014.
Net cumulative income (£) Exploitation fee (%) Inventors/ author (%) UCL Central Funds (%) Department (%) <50k 30 50 10 10 >50k 30 30 30 10
The income allocated to inventors/authors is shared on the basis of their contribution to the patent/paper. For example, equal inventors/authors would each receive half of this income.
Net Cumulative Income is Gross Cumulative Income less patent, legal and development costs incurred by UCL or its nominee.
- Annex 3: guidance for students using licensed software or datasets
During the course of their studies at UCL, students may use software or datasets licensed to UCL by the owners of the software or datasets. A student must use such software or datasets solely for academic or educational purposes. Use for other purposes (for example commercial purposes) may well result in the student or UCL being in breach of copyright and facing legal action for copyright infringement. The rules by which students may use software or datasets are set out below.
Software or datasets licensed to UCL are in most instances provided strictly for the purposes of teaching, research or personal educational development. Their use for commercial activities (i.e. consultancy or services which lead to the commercial exploitation of licensed software or datasets) is prohibited. Use of software of datasets for non academic or non educational purposes is a disciplinary offence. Students may, depending on the extent or seriousness of non academic use, face expulsion from UCL.
Students must ensure that they adhere to the requirements of the agreements and licences under which access to software or datasets is provided. Copies of the relevant agreements and licences may be checked via Information Systems, the student's Academic Department and via the Eduserve Chest service. The student is responsible for familiarising his/her self with the obligations contained within such agreements.
Students must adhere to the regulations governing the use of any service that provides access to software and datasets, whether UCL or another organisation controls these services.
Students must not remove or alter any copyright statement contained within copies of software or datasets used by them.
Students must ensure that the security and confidentiality of any software or data sets released to them are maintained. Furthermore, they should not make any further copies from them or knowingly permit others to do so, unless allowed under the relevant licence. Back-up copies for security against loss are usually permitted.
Students may only use the software or datasets for academic purposes and only on computer systems covered by the agreement or licence.
Students may only incorporate software or datasets, or part thereof, in any work, program or article produced by themselves, where this is permitted by the licence or where the express permission of the Licensor has been obtained.
Students must not reverse engineer or decompile software products / data sets or attempt to do so unless this is explicitly permitted within the terms of the licence governing the software or dataset.
Students are not allowed to continue to use software or datasets provided for their academic work once their course/year/period of employment at UCL finishes.
- Annex 4a: IPR issues in software developed by students
In the case of UCL spin-off companies developing software where students own the copyright, the IPR in this software would be subject to the standard UCL licence from UCL Ventures. When this involves co-working with a supervisor the standard revenue sharing agreement would apply
Student web sites
For web-sites developed as part of assessed student coursework where UCL might wish to use the material, a licence form (as the 'Slade' form, see Annex 5) would be required. A formal procedure is particularly important if UCL or the department wishes to use the web site for publicity purposes.
Use of third party images
In the case of third party images, there is a need for a clear audit trail on the use of images in web sites. Students should be told that acknowledgement is good practice.
Students using any third party multi-media digital objects must also have permission for use and/or give clear references.
UCL may wish to have a non-exclusive licence in perpetuity for student-generated code. Should this code be marketable, or have input from a supervisor then UCL Ventures should be involved and normal revenue-sharing arrangements will apply.
Derived data used in processing
The rights to derived data, if used for re-publication, should be negotiated with the original supplier.
Students and staff should be aware of the ESRC procedures that apply to use of numerical data.
Overseas material is protected by the Berne convention
- Annex 4b: IPR and open source software
Students who wish to make software available through open source should consult their Department and the UCL Copyright Officer who will advise on the appropriate licence.
Students who then wish to proceed with open source distribution should sign a short statement in their department indicating that they have evaluated the potential commercial interests and that an open source strategy is best.
Students are advised to take great care and to seek appropriate advice before making software available through open source, as it is difficult to withdraw once committed.
There are potential difficulties if the software material made available through the GPL open source licence, which is 'viral', as this means that any derivatives must also be made available in the same way.
Open source licences can apply not only to programme code but also to specifications such as XML schemas.
Students should note that:
- open source does not mean public domain, it is a licence giving freedom to modify and extend the software
- commercialisation is excluded in some open source licences
- open source licences offer no warranty and no support
- Annex 4c: open source licence
The UCL Open Source Licence is under development.
Students must take appropriate advice from their department and the UCL Copyright Officer before proceeding with any open source licence.
- Annex 5: assignment, transfer and licence forms