Dr Neil Hayes
Assistant Director, Enterprise and Innovation Programmes
Intellectual Property Solicitor
Links for academics (staff only)
Links for Businesses
Access to ideas
Intellectual Property (IP) is a valuable business asset that can help you establish a competitive edge. Our IP can help you develop new products and services, access new markets and assimilate expertise.
You can access our IP by:
Licensing our IP
Our researchers regularly develop new inventions, processes, software, designs and creative projects. We make these available for licensing under both commercial and easy access terms.
Collaborating with us as a partner
By partnering with us on a research or consultancy project you will have the opportunity to access our IP on fair and reasonable terms.
Collaborating with one of our spin-out companies
Some of our research leads to the development of new spin-out companies through which we commercialise the IP. The University has a healthy portfolio of spin-out companies and a vibrant pipeline of new opportunities, many of which welcome opportunities to collaborate with other businesses.
The University believes that the outcome of its research should be disseminated for the wider social and economic benefit of society. Often the most effective way to achieve this goal is through the commercialisation of research results or ideas in partnership with business and other organisations. This can create further research and ongoing income streams and attract ambitious staff and students to Exeter.
Moreover, UK funding bodies aim to develop and sustain a dynamic and internationally competitive research sector that makes a major contribution to economic prosperity, national wellbeing and the expansion and dissemination of knowledge. They are looking to capture the impact of research on the economy, society, public policy, culture and quality of life, and are recognising the importance of this with additional funding and recognition for researchers.
The protection and subsequent exploitation of potentially valuable IP is a key contributor to the University’s objectives of creating impact, fostering strategic partnerships and maintaining sustainable research income.
The University wishes its students to engage fully with society and to have an entrepreneurial outlook. It therefore provides services to support students wishing to explore self-employment or starting new ventures through its ‘Think, Try, Do’ programme. The University will also make grants or invest in student ventures on mutually agreed terms if it determines that it can add value by doing so.
Students normally own any intellectual property that they develop during their studies (although there are some important exceptions noted in this policy which all students, whether undergraduate or PGR, should carefully consider) and can exploit these ideas freely provided they do not use any University owned or controlled intellectual property, including the University’s brand, without the University’s prior permission. Information on use of University brand and logo can be found here.
This document provides details of the University’s policy for the ownership, management and commercialisation of research results and commercial ideas and the sharing of any resulting revenues with all staff, whether academic or professional services, as well as students. The University also recognises that the inventor(s) have an important role to play in exploitation of IP and therefore should have a say and /or involvement in how the IP is commercialised. Find out more on our REF and Impact pages.
In addition, this policy also in part covers how the University deals with and uses teaching outcomes, particularly in the context of lecture capture.
Please note that this policy should be read in conjunction with the Finance Regulations, in particular provisions D38, G66 and Appendix D.
Intellectual property relates to creations of the mind; for example inventions, know-how, literary, musical, dramatic and artistic works, symbols, names, software, designs and images used in commerce may be protected and enforced via intellectual property rights or similar rights. Rights in those creations of the mind are protected by the use of patents, rights in know-how and confidentiality, copyright (and related rights such as performers’ rights and moral rights), database rights, trademarks, design rights, registered designs and topography rights. IP relates to ideas and inventions expressed in any format, whether on paper or in electronic or digital format.
In relation to performers’ rights, in a higher education context, it is expected that the giving of a lecture, and/or actively participating in a tutorial, seminar or other teaching session, may be a ‘performance’, which is defined in law as a dramatic performance, or reading or recitation of a literary work. Equally, sitting in a lecture and being recorded, without actual active participation, will not constitute a ‘performance’ and performers’ rights are unlikely to apply in such a situation.
For more information on the different types of IP please go to the UK’s Intellectual Property Office website.
A number of individuals and groups in the University are involved in making decisions about the IP it generates.
The University’s IP Policy is within the portfolio of the Deputy Vice-Chancellor for Innovation and External Engagement and the Director of Innovation, Impact and Business who oversee all University activities that generate and commercialise IP, and lead the strategic development of the IP Policy and its incorporation into the University infrastructure.
Pro-Vice-Chancellors are responsible for the activities of their College and the research groups and Centres within them. Any disputes regarding IP generated by staff or students within a College or the routes to commercialisation will normally be referred to the relevant Pro-Vice-Chancellor for resolution who may delegate decision-making powers regarding IP issues to their respective Associate Dean for Research or Impact Transfer and/or College Registrar.
Innovation, Impact and Business (IIB) is the first point of contact for all matters relating to the University's IP commercialisation and impact generation activities.
The IP Solicitor based in Legal Services and the Assistant Director, Commercial and Business Programmes based in IIB, are the principal contact points for all University IP matters.
Innovation, Impact and Business
The Innovation Centre
University of Exeter
Tel: 01392 723180
Read more about support for Intellectual Property and Commercialisation
Under UK law, inventions and other forms of IP generated by an employee belong to the employer if made in the course of the employee's normal or assigned duties. However, in certain cases, the University may not automatically own all rights on creation (see the Lecture Capture section below) or it may decide not to assert ownership over all types of IP (see section on copyright below). Alternatively, the IP may by agreement vest in a third party (see section on Third Party IP below).
It is important to remember that information, including results, disclosed to a student as part of a research programme may be valuable IP and before it is non-confidentially disclosed, may require protection through, for example, the filing of a patent application or the student may be asked to sign a confidentiality agreement. Supervisors should therefore inform students as to which information should be kept confidential until protection is in place. For more, see the section on Confidentiality below.
In the event that an honorary post holder creates IP during the course of his or her appointment, ownership and rights to commercialisation will depend on whether the IP has been generated in collaboration with University staff, students and/or third parties, funding sources, the use of University facilities and resources, and any specific contractual terms agreed with the University and/or third party sponsors.
For more information please see our pages on the Honorary Appointments.
Undergraduate and postgraduate students will normally own the IP they generate in the course of their studies. The exceptions to this statement are as follows:
- when a student is also an employee of the University and the IP is generated in the course of his or her normal or assigned employment duties;
- where, in relation to an ongoing research programme or taught programme module, there are sponsors who claim ownership of any IP that arises from their studentship, research or taught programme module; or
- where the University has directly funded a project or initiative that the student has undertaken or been involved in from which IP has arisen (University funding in this context does not include fee waivers; travel & subsistence allowances and other similar payments, unless otherwise agreed on a case by case basis); or
- where a student is working with employees of the University (for example their supervisor) and it is impossible to decipher separate contributions. Unless one of the other exceptions above applies (in which case it will take precedence), in these cases, the IP is jointly owned, but the University would be free to use it for academic research and teaching purposes and commercialisation, with the student participating under the revenue sharing arrangements. The student would also have the option to assign his or her interest in the jointly owned IP to the University in order to benefit from the resources we can bring to bear on exploitation as well as participate in the revenue sharing arrangements.
In all of these circumstances, except as stated above, any such IP is to vest in the University (and/or sponsors). Students will be asked to execute assignments and other agreements to vest title to the IP in the relevant party, and if any revenues arise and are received by the University, the student would be able to participate in the revenue sharing arrangements (see section on commercial exploitation below).
Students who own IP generated in the course of their studies may take advantage of the University's IP and Innovation disclosure process (described below) and can make use of the IP management and commercialisation services provided by IIB. Any IP disclosures made by students will be treated as confidential and IIB will work with the student to determine the best route to commercialisation. If the student and IIB agree the best option is for the IP to be assigned to the University (and it is in the absolute discretion of the student, in such circumstances, on whether he or she assigns the IP to the University), the University will take on legal responsibilities for registering and maintaining the IP, if appropriate. In the event that the student prefers to retain or share ownership of their IP, support for commercialisation from IIB will be negotiable on a case by case basis.
If the University successfully commercialises IP generated by students and any revenues arise, the relevant student(s) will be eligible to participate in the revenue share reward scheme (see section on commercial exploitation below).
For information about student entrepreneurship and support available to students wishing to start their own business, please go to Student Enterprise Support
Students are also advised to read the University Lecture Capture policy (see below for some further information) to understand how teaching and other educational sessions may be recorded and used by the University. Students are reminded that if they wish to record any event, such as a lecture or other teaching session, before making such a recording, they must seek the consent of the performer(s) (i.e. the lecturer and any other performing participant), they must be granted such consent by the performer(s) and must only use those recordings for their personal educational use and nothing else.
IP and Innovation Disclosures
Employees must disclose to IIB any IP that has been developed or invented during the course of, and arising from their employment at the University and which can reasonably be considered as having commercial potential. This includes novel devices, materials, products or processes and computer code but may also include literary works, rights in performances, databases and know how (secret technical or practical information).
The University's online Innovation disclosure form should be used for disclosures as appropriate:
The Innovation Disclosure Form can be used as part of an academic's portfolio of evidence to describe their contribution to impact. Once IP is generated it is important to declare on the Innovation Disclosure Form those who have contributed to the generation of the IP, and the agreed distribution as a percentage between the inventors of any income which may arise from any subsequent commercialisation. In the event that percentages are not specified, revenue shall be shared equally amongst the inventors.
Ownership of copyright
The University will waive ownership of copyright in materials of a scholarly nature created by its employees in the course of their employment such as text books (unless such text books were developed using University administered-funds paid specifically to support textbook development), academic journal articles, conference papers and related presentations and materials created for personal use, but excluding any materials which are “University Materials” (see below).
In return for the University waiving ownership of copyright the owners will, unless a sponsor or publisher requires otherwise, grant to the University a non-exclusive, irrevocable, worldwide, royalty-free licence to use and adapt the material for teaching, administrative and operational purposes, with a right to sub-license to third parties.
However the University reserves the right to assert ownership of the following types of materials (“University Materials”):
- materials used or created by the University for administrative purposes, promotion and marketing, student and staff recruitment, assessment and examination, handbooks, or for any other institutional purpose (including where materials are being developed for sponsors and other third parties);
- materials that are primarily intended to be used or accessed for any course of study (including course materials, whether to be delivered as flexible and distributed learning material or e-learning material, or on virtual learning environments);
- materials specified under contract or in writing to be owned by the University;
- materials generated by prior agreement as part of a joint venture with the University; or
- computer code, that can be reasonably considered to have commercial potential
If joint authorship is planned between students and/or staff of different institutions, all co-authors must declare their copyright obligations and secure written agreement from the co-authors that these rights will be honoured.
Students will automatically own the copyright to their theses unless the sponsor of their research requires ownership.
To warn others against infringing copyright, it is recommended that authors incorporate into the work the copyright symbol © followed by the owner's name and the date. Be aware that other parties may acquire interests in a work, e.g. exclusive rights to publish or copyright in the typographical arrangement, which do not affect ownership of content but which may limit the author's or owner's rights to make copies of published material.
The lecture capture policy sets out the University's policy for the use of the lecture capture service (ReCap), and covers all University of Exeter campuses, utilising the ReCap service for 'live' sessions or pre-recorded materials. The policy will be regularly reviewed and monitored by the Education Executive and Governance and Compliance Directorate during its implementation and roll out. Staff and students should read both the lecture capture policy and this policy together. They should also be read in conjunction with the University Information Security Policy, the Regulations relating to the Use of IT Facilities and Data Protection Policy and relevant HR policies. For the purposes of the Data Protection Act, although consent is already given for collection of personal information in recordings, where sensitive information will be collected, explicit consent will be sought.
Unless separate contract terms apply, the University owns the copyright in recordings made by its employees in the course of their employment (or duties assigned to them) or where a recording is made automatically and the University has made the arrangements for that to happen. Ownership of copyright in recordings made by students using their personal devices, for example, will vest in the student. However, students must, in advance of recording, seek the consent of the performers (i.e. the lecturer and any other performing participant) and must be granted such consent by the performer(s), and must only use such recordings for their personal educational use and nothing else.
Additionally, under the Copyright, Designs and Patents Act 1988, those staff and students who actively participate in a session which is recorded, may have certain performers' rights in their 'performance' (see 'definitions' section 2 of this policy).
The University agrees and acknowledges that all performers' rights that they may have in such performances are owned by the relevant employee or student. By the incorporation of this IP policy into (a) staff terms and conditions of employment, as amended from time to time, and (b) the student terms, as amended from time to time, which apply whilst a registered student of the University, each employee and student of the University gives to the University and its subsidiaries:
- consent for recordings of teaching and educational sessions to take place with the option to opt out as detailed in the lecture capture policy; and
- a royalty-free, non-exclusive licence for their performers' rights in those recordings, or their own pre-recorded performances to be uploaded to and used on the VLE for educational and administrative purposes only. The licence period is 5 years following the end of the academic year it is captured in, subject to opt out and/or staff take-down requests (for example, when they leave the employment of the University), as detailed in the Lecture Capture Policy.
Please note that recordings are not designed nor intended as a discipline/capability/performance tool and their use will not be the basis for instigating performance or disciplinary proceedings; any other uses, e.g. commercial, will be with the express and separate consent of the relevant performer.
In addition, each student also grants the University a royalty-free, non-exclusive licence to use any intellectual property owned by him or her which is used in such recorded sessions for the same purposes. Again, the licence period is 5 years following the end of the academic year in which the student's IP is captured, subject to opt out by the student.
Similarly under the Copyright, Designs and Patents Act 1988, staff and students have certain personal, moral rights in their performance (the right to be identified as the performer and the right to object to derogatory treatment of their performance). Generally speaking, employers are released from the burden of its employees' moral rights, if any, under exemptions in ss. 79 and 82 CDPA. However, in the context of lecture capture, performers have moral rights in their performance in any audio recording (under s. 205C of the CDPA) and it is the usual practice of the University to acknowledge authorship/performance on reproduction of those audio recordings through the electronic recording system. It is possible that staff or students may be asked to waive their moral rights in their performance in an audio recording, but this waiver must be expressly agreed in writing by the performer, so will need to be done on a case-by-case basis, if at all required.
Staff and students are encouraged to remain aware of their responsibilities to ensure any confidential information they know, whether pertaining to the University or a third party, is not disclosed without permission from the proprietor; this includes any unauthorized disclosure of unpublished patentable results of new research, which could be the subject of a new patent application, which will jeopardize the novelty, and therefore the granting of such a patent.
Academics are also asked to inform students when lectures are being recorded, and are encouraged to ensure that third party intellectual property or copyright content in their lecture/presentation materials is legally obtained and appropriately licensed and acknowledged. Under the Copyright, Designs and Patents Act 1988, there are certain exemptions, which allow for the use of copyright works in certain situations for example for the sole purpose of illustration of instruction (section 32) or the copying and use of extracts of copyright works by educational establishments (section 36), subject to certain restrictions and conditions. Third party IP which is subject to Creative Commons' licences may also be useful, but users should again be clearly aware of the uses permitted by such licence terms. For more on this, please go to the University Copyright guidance notes and also the Creative Commons web pages.
The University reserves the right, as it deems necessary, to take down any material from the VLE which is or may infringe third party intellectual property or other legal rights or which may cause reputational harm to the University or its partners.
For non-University staff or non-University students partaking in a 'live' or pre-recorded teaching session, then separate express consent will be required. Please see the Recap guidance notes and Lecture Capture Policy.
Third Party IP
New staff or students, honorary appointments, and other third party individuals and organisations may come to the University with IP rights of commercial value generated outside the University. The University requires notification of these rights, if the IP brought into the University is to be further developed using University resources (money, facilities, and expertise).
Conversely, the same situation applies to IP created at the University being developed at other institutions. It is important that the respective parties agree on IP ownership and exploitation before appointments are made.
The nature of the funding source that sponsored the activities resulting in the creation of IP has implications for its ownership. The exploitation of any IP generated by a project is normally subject to an agreement between the University and the sponsoring body, and different funding streams can contribute to the same project. In addition, since a student is not normally an employee of the University, it is important that the student should be a party to a contract which includes provision for the protection, publication and exploitation of the research results.
External funding may not be cash: it can be 'in kind' (e.g. goods or services), and may still carry implications as to ownership of IP rights. For example, if significant University resources have been used without payment at standard rates, then the University has legitimate claim to a stake in any resulting IP.
It is important that ownership of IP is determined before contracts are signed. Prior to agreeing to any external funding contract, IIB must be consulted. Likewise, IIB must be notified prior to any commercial exploitation discussions with funding bodies or interested parties.
If IP is potentially patentable, registrable as a design, or is unpatented technical or practical information or results (know-how) with perceived commercial value, it is vital to consider whether and when disclosure, other than to IIB using the Innovation Disclosure Form, is prudent. Examples of such information are project results, chemical formulae, notes from a laboratory notebook, source code or experimental techniques or procedures. It does not matter how informal a disclosure might seem, written or oral, whether at a conference, by publication of a journal article, or otherwise. Non-confidential disclosures can seriously hamper the ability to file a patent application or registered design, meaning IP protection is lost, potentially to the significant detriment of the IP’s commercial value.
Under UK law, employees have a duty of confidentiality to their employer. This means it is generally acceptable to share confidential information with colleagues who are employed by the same employer. Visiting academics, students, secondees and consultants may not be co-employees, so confidentiality agreements may be required before sharing information.
Disclosures to and from individuals from other institutions, research groups, or commercial organisations are likely to require a confidentiality agreement. Staff and students should be familiar with confidentiality provisions in the research collaboration agreements, studentships and consultancy agreements they are involved in. If a disclosure is made in breach of confidentiality, the University, and potentially, the individual who made the disclosure, may be sued and liable to pay damages. Some parties, particularly commercial sponsors, may require absolute secrecy about the research project they are undertaking with the University, and their permission must be sought prior to any disclosure for marketing purposes or otherwise.
Non Disclosure Agreements (NDAs)
The purpose of an NDA is to allow the sharing of confidential information and encourage an open discussion between parties, without compromising the confidentiality and value of the information being discussed. NDAs can be two-way (mutually binding both parties to confidentiality terms) or one-way (designed to protect the disclosing party’s confidential information only). If the information that is subject of the agreement is disclosed or used outside the permitted purposes, specified in the agreement, it may be possible to bring a claim for damages against the defaulting party. However, this may not be compensation enough, if valuable information is lost in this way, so if in doubt, do not disclose at all.
The University has a standard NDA form, but in certain cases the University will accept external NDAs, subject to approval by IIB/Legal Services. Further guidance on confidentiality and how to request an NDA can be found at Discussing your ideas (NDAs)
General Commercialisation Strategy
The University will only actively exploit IP that it recognises as having commercial potential. Several factors are involved when evaluating this – validity, protectability, market readiness, demand, competition, and likely costs vs. returns. The commercial potential will be assessed at a number of key decision points. In the event that IP is determined to have commercial potential IIB will work with the originators to develop and pursue an appropriate commercialisation strategy from the point of initial disclosure for a period of at least 12 months. After this period, if no obvious progress is being made with commercialisation, the University may decide to offer the IP as part of a package to an appropriate strategic partner in return for a research collaboration, or with the agreement of the originators the IP may be made available to external organisations under the EasyAccessIP scheme.
Where patents are concerned, protection and maintenance costs increase significantly once a patent reaches the regional/national filing phase, by which time the University will have already invested somewhere in the region of £6,000-12,000 in IP protection. Other forms of IP have lower registration fees, if any, but depending upon the type of IP and complexity of the issues, the University’s outlay in terms of fees for professional and legal services can be considerable. Consequently the University needs to ensure there is a clear strategy to attempt to recover these costs and maximise the return on this investment.
The University will not normally continue to prosecute patents into the regional/national filing phase if there is no obvious prospect of successful commercialisation, generation of an impact case study or utilisation of the IP to secure future research collaboration. In the event that the University declines to proceed with commercialisation (or to vest the IP in a strategic relationship) the IP will be offered free of charge (with the consent of the originators) under the EasyAccessIP scheme to any party producing an acceptable business plan and prepared to commit to exploiting the IP for the benefit of society and the economy on condition that the University is given a royalty free licence to use the IP for research and educational purposes in perpetuity.
Assessment, management and commercialisation of University IP will be conducted in accordance with IIB’s ISO 9001 accredited procedures.
Licence, Assign or Spin-out?
The University’s default position for commercialisation will be to pursue a licence or assignment of the IP with the intent of developing a long term, sustainable, strategic relationship with the recipient that leads to follow on research funding/collaboration, unless there are compelling commercial reasons to form a spin-out company. The University may also be prepared to exchange the provision of its services or expertise in return for an equity stake in a company, providing appropriate precautions have been taken to indemnify the University against liability and for protection of its reputation and charitable status.
Circumstances in which a spin-out strategy may be considered:
- The IP has many potential applications and the market(s) are not dominated by a limited number of large players
- A stronger impact case study can be developed through creation of a new venture rather than by licensing
- The IP is too early in its development to attract a licensee and requires investment to realise commercial exploitation
- There is no existing route to market for the IP but clear evidence of market need
- Both the University and an external partner wish to combine IP / know how for commercial exploitation and believe this is best realised through either a joint venture or spin-out company
Additionally the following criteria should also be met
- The inventors are able to commit time and energy to the new venture.
- There is a clear route to early revenue generation to enable the venture to become self-sustaining and not reliant on repeated investment cycles in order to survive.
Decision to form a spin-out company
The decision to form a spin-out company based on University IP will be made jointly by the Director of IIB and the PVC of the College from which the IP originated. The default process for formation of a University spin-out company is:
- Heads of Terms are agreed between the University and the originators defining the intent to form a spin-out company, the products and services it will supply, details of any University IP or facilities the company wishes to use and the proposed management structure.
- The company is incorporated by the originators and/or investors/University with a standard set of Memorandum and Articles. At this stage the company will not be trading such that the company may be dissolved at minimum risk and cost in the event that investment cannot be secured.
- On securing appropriate seed investment the company is established as an arms’ length spin-out company, founders shares are distributed to the originators and the University and the management and governance of the company is regulated by a shareholders agreement.
However alternative processes for spin-out company formation may be adopted where required by external investors or to access specific funding schemes with the prior approval of the Director of IIB and PVC of the College(s) from which the IP originated.
Vesting of IP in a spin-out company
On formation of a spin-out company the University will grant the company, in return for a shareholding, a royalty free licence to commercially exploit the IP in certain specified field(s) of use. On achievement of certain agreed product development, revenue generation or inward investment milestones the University may then assign the IP to the company but will require back licensing of the IP for research and educational purposes and for commercial exploitation outside the agreed fields of use.
As a general rule the University will take no more than 24.9 per cent of the equity in a spin-out company after securing seed investment with the remainder being available for distribution among the originators and investors. Where the originators are shareholders they are excluded from sharing in revenue generated as a result of the subsequent sale of the University’s shares in the company as they have received their shareholding in place of the revenue share. Where one or more originators elect not to receive a personal shareholding in a spin-out company but to benefit under the University’s revenue sharing policy instead, the University reserves the right to revise the percentage equity it expects to take in order to ensure all originators are fairly compensated in line with their respective contribution to creation of the IP.
All revenue sharing to be made by the University and equity distributions to be allotted to originator(s) pursuant to this IP policy will be subject to the deduction of any applicable income tax and employer’s and employee’s national insurance at source.
Board of Directors
As a default position, for as long as the University holds at least 5 per cent of the total equity in the spin out company it shall have the right to appoint, at its discretion, either a Director or Observer to the board of the company. In the event that the University elects not to appoint either a Director or Observer it shall have the right to receive board papers in the same way as if an appointment had been made.
The University has adopted the EasyAccessIP scheme developed by the Universities of Glasgow, Bristol and Kings College London. EasyAccessIP is designed to address IP that is difficult to commercialise by traditional routes, the opportunities included in the scheme are at the discretion of the University and there is no compulsion to place any specific opportunity within the scheme. Through EasyAccessIP opportunities are made available under licence for no immediate financial return; the licensee must produce an acceptable business plan and may take on any future IP maintenance or prosecution costs. EasyAccessIP licences are reviewed after 3 years and if insufficient progress has been made the licence rights may be recovered by the University.
The main attraction of the scheme is that IP which would otherwise be allowed to lapse can be transferred to the commercial sector where it can continue to be developed generating impact for the originators and the University. By making the IP available free at the point the initial licence is granted, the financial barriers to evaluation of new technologies are removed. However, this does not preclude the University and/or originators benefiting from future contract research or consultancy services provided to the licensee in support of development of the IP. University IP will only be included in this scheme with the consent of the originators who will also be consulted over any licences that may be entered into. In effect this scheme swaps the potential to generate income for the potential to generate impact (which of course can generate income in an indirect way through the REF and Research Council projects).
The University shares its net revenue from the commercialisation of any of its IP (or bundle of IP) according to the table below:
|Cumulative net revenue||£0 - 2,000||£2,001 - 50,000||£50,001 - 200,000||£200,001 - 500,000||£500,001 +|
|Inventor(s)||100 per cent||75 per cent||60 per cent||45 per cent||30 per cent|
|University||0 per cent||12.5 per cent||20 per cent||30 per cent||40 per cent|
|College||0 per cent||12.5 per cent||20 per cent||25 per cent||30 per cent|
Revenue received by the University from the commercialisation of its IP is made up of payments for assignment(s) made, or licence(s) or right(s) granted, in respect of any of the relevant IP by the University, but not:
- shares in a spin-out company (or proceeds from them) where the inventor(s) have already received share(s) themselves in such spin-out company in lieu of a revenue share (see below); or
- income representing payments for teaching or research; or
- any sponsorship or payment made to support a student.
Net revenue is the University’s total such revenue less:
- VAT or applicable sales tax;
- all expenses incurred by the University in connection with the registration, maintenance, marketing and commercialisation of the relevant IP (including patent costs and all fees of patent agents and lawyers);
- any payments received by the University from or in respect of students for undertaking a course using learning materials over which the University has asserted ownership as referred to in the earlier section on “Ownership of Copyright”.
Prof. A and Dr B devise an invention that the University files a patent application to cover and subsequently licenses to company C. A and B agree that they made an equal contribution to generation of the IP and will divide any share of the net revenue due to the inventors equally. Prior to entering into the licence agreement the University incurs patent prosecution and other costs amounting to £6,500, under the licence agreement C agrees to cover costs incurred to date and the ongoing costs for patent prosecution (£10,000 per annum) and to provide the University with a royalty of 5 per cent of net revenue generated from exploitation of the IP. The income received by the University and distributed according to the IP policy over the first 5 years of the agreement is shown below:
|Year one||Year two||Year three||Year four||Year five|
|Income and payments due from company||Net revenue generated by C||100,000||200,000||400,000||1,000,000||2,000,000|
|Five per cent royalty||5,000||10,000||20,000||50,000||100,000|
|Contribution to costs||16,500||10,000||10,000||10,000||10,000|
|Amounts received by University||Total received by University||21,500||20,000||30,000||60,000||110,000|
|UoE costs incurred||16,500||10,000||10,000||10,000||10,000|
|Distribution of income by the University||Receipts available for distribution||5,000||10,000||20,000||50,000||100,000|
|Cumulative receipts distributed||5,000||15,000||35,000||85,000||185,000|
|Amount due to A||2,125||3,750||7,500||16,125||30,000|
|Amount due to B||2,125||3,750||7,500||16,125||30,000|
|Amount due to College||375||1,250||2,500||8,875||20,000|
|Amount due to University||375||1,250||2,500||8,875||20,000|
After year 5 company C approached the University to buy out ownership of the IP, the University agreed to assign the IP to C in return for a one off payment equivalent to 3 times the income received over the last 5 years (£555,000). This resulted in a further distribution of income of:
- Prof A - £108,000.
- Dr B - £108,000.
- College – £150,000.
- University - £189,000.
The overall cumulative total received by each of the parties out of the available pot for distribution of £740,000 is therefore:
- Prof A - £167,500.
- Dr B - £167,500.
- College - £183,000.
- University - £222,000.
Each inventor who is no longer employed by the University, must ensure that the University is notified in writing at all times of his or her current address to where any revenue payments due to him or her may be sent. If the University is not given such current address details, then such an inventor will be a ‘missing inventor’.
All unclaimed revenue for such missing inventors may be invested in a deposit account until such revenue is claimed. The University will not be a trustee of any such unclaimed revenue. Any revenue remaining unclaimed for 5 years from the date it is received by the University will, after that date, be forfeited. Such revenue will revert to the University, which may distribute such revenue payments, plus any net interest actually earned, between any others entitled to share in such revenue stream, excluding the missing inventor, or allocate it to the College in which the missing inventor had worked.