ADD02 York St John University Intellectual Property Policy

ADD02 York St John University Intellectual Property Policy

Scope / Intellectual Property Policy applying to all staff and students
Effective Date / 11/10/17
Responsible Dept. / Academic Development Directorate
Last Updated / 4/10/17

Scope

This policy applies to all York St John University (‘the University’) employees (academic and non‐academic, including visiting lecturers, temporary/casual employees and research assistants) and students (taught and research). It also applies to consultants and secondees from outside organisations, unless specified differently in the contract governing their appointment.

Responsibilities

The Deputy Vice Chancellor: Research and International (DVC:RI) is the owner of this policy and is responsible for Intellectual Property throughout the University.

The Executive Director of Finance will oversee the administration of the reward for creation. This process and the profit sharing arrangements are described in Appendix 3

Executive Board shall be responsible for determining the quantum of the reward and how it is to be allocated amongst the co-creators.

The Director of Academic Development is responsible for approving creative commons licences for the non-commercial sharing of learning and teaching material.

Reference to the IP Policy is embedded in all contracts of employment; The Director of Staff and Student Services and the Director of Academic Development are jointly responsible for periodic reminders to staff and students about the reach of the Policy and its terms.

The Vice Chancellor is responsible for hearing appeals against decisions relating to this policy.

Background

The University regards the creation of intellectual property (IP) as an essential element of teaching, research and knowledge exchange activities. IP is an asset that may have commercial value, with three key benefits:

It contributes directly to the financial position of the University and the creators of the IP
It improves the University’s reputation as a socially relevant, world-leading research and teaching organisation
It has public benefit and fits with the University’s charitable status

The University has a responsibility to ensure the effective management of all its assets, including IP, for the good of the University[1]. This policy aims to:

Define what IP is
Establish ownership of IP
Help creators of IP understand and deal with IP Rights (IPRs)
Enable employees and students to make best use of creations arising from their work within the University

Definitions

IP is a general term and describes the outputs of creative endeavour in literary, artistic, industrial and scientific fields which can be protected under legislation. It also refers to know-how.

IPRs are the legal rights that may exist in certain types of creative works. Some of these exist automatically. Others need to be registered to be effective. It is possible that a number of these rights may exist simultaneously in one type of work. The main categories of IPRs are as follow[2]:

Copyright including related rights
Registered and unregistered designs
Trade marks
Patents
Domain Names
Know-how and trade secrets

Disclosable works are outputs arising from academic activity by staff or students that include a new method or idea, or an invention or novel creation. They can be of a literary, artistic, industrial, scientific or engineering nature. They will be something important, new or original[3].

Ownership

IP is a valuable asset that underpins the basis of innovation. Appropriate steps should be taken to protect IP.

IP may arise from employees or students carrying out day-to-day academic activities, research, studies or new enterprise activity. For example:

Works generated by computer hardware or software owned or operated by the University
Films, videos, performance works, multimedia works, notebooks and other presentations
Patentable and non‐patentable inventions
Registered and unregistered designs
Books, articles or other material to be published in an individual capacity
The development of course materials in virtual leaning environments as employees creating teaching materials during the course of their employment do not own the IPRs to the materials they create
Know‐how and other information associated with the above

General Policy
The policy of the University is that it shall own all IP (as defined in Section 3, above) generated by work carried out under its auspices for the benefit of the University as a whole, subject to the exceptions contained in this policy. This policy will include the activities of any trading subsidiaries except where otherwise agreed. The University will use such IP for the benefit of the University.
The University shall encourage:

persons who create IP within the University that has a commercial value or
persons who bring into the University, for the benefit of the University, IP which they own
The University shall use reasonable endeavours to ensure that it does not infringe the IPRs of others.
The University does not claim copyright of teaching materials produced by employees in any previous employment. However, employees must obtain written permission from former employers to continue to use any copyright material during the employees’ employment with the University.
Teaching material, including e-learning material, is normally protected through copyright. The University holds the copyright in works produced by employees in the course of their employment. The University, in consultation with the relevant employee(s), may exploit teaching materials as it sees fit. However, employees may be granted a non-exclusive, royalty-free licence to use such materials for non-commercial purposes and may share material for non-commercial purposes using a creative commons licence approved by the Director of Academic Development.
Where work is supported by external funders, it is expected that the ownership and commercialisation of any IP arising from the work will be specified in the terms of grant or contract. Employees are responsible, under the terms of this policy, for ensuring that the University’s rights in relation to IP are preserved. The DVC:RI can be consulted for advice.
Current or former employees will not be entitled to use any materials in which the University owns the IPR without the written permission of the University. Enquiries should be directed to the DVC:RI.
The University has rules as to the payment of fees to staff, research students or taught course students in respect of IP generated in the course of academic activity. Persons offered a reward under this system shall execute a formal agreement to enshrine the terms of the regard and their obligations. For details of the University’s Financial rewards to creators, see Appendix 3.
The DVC:RI is responsible for directing the University’s IP relating to commercialisation, knowledge transfer, business engagement activities and the non-commercial use of the University’s IP to support learning, teaching and research.
The DVC:RI may seek legal and/or other advice before making decisions on IP matters.
The Director of Staff and Student Services and the Director of Academic Development are jointly responsible for periodic reminders to staff and students about the reach of the Policy and its terms.

Exceptions

There are a number of circumstances in which the general policy of the University on IP ownership may not apply, for example:

7.1The University will not exercise its right of ownership in respect of copyright in scholarly works (such as books, articles and learned papers), performances, recordings (audio or video, such as albums, singles, live musical recordings, music videos, short films, documentaries, etc.), musical scores, graphic designs, illustrations, photographs, works of art and creative writing. Copyright for these shall belong to the author.

7.2The University will not exercise its right of ownership where the University has reached agreement with the creator that the creator should remain the owner of specified IP.

7.3IP that is created by taught-course or research students in the course of their studies will be owned by the students unless the University specifies otherwise in advance of the creation of the IP in question.[4]

7.4IP that is created by staff studying for YSJU taught or research degrees will be owned by them as students (as per 7.3 above), but this does not apply to IP created under their employment contract.

Creators obligations to disclose, identify, protect and secure the University’s IP

8.1 Creators must NOT assign, licence or give any rights in the Disclosable Work or the intellectual property this may contain to any other person nor may they purport to do this on the University’s behalf

8.2 Creators must NOT agree anything with any third party regarding the use or exploitation of Disclosable Works without specific prior written authority from the DVC:RI

8.3Creators must NOT agree anything with any third party regarding the intellectual property rights in any Disclosable Works without specific prior written authority from the DVC:RI

8.4Creators must keep full records of their development of their Disclosable Work

8.5 Creators must notify the DVC:RI and the relevant Head of School at the earliest opportunity full details of all Disclosable Work they produce, the circumstances surrounding its creation and all related information which the University requires, including:

any commercial potential in any IP created
any third party involvement in the creation of the IP
any use of pre-existing University IP relevant to the creation of the IP
any use of their own pre-existing IP

8.6 Creators must keep all Disclosable Work confidential and avoid disclosing them prematurely to third parties[5]

8.7 Creators must only disclose any Disclosable Work and the intellectual property relating to it in accordance with the University’s instructions

8.8 Creators must co-operate with the University in applying for patent or other protection

8.9Creators must provide any information required by the University to ascertain and demonstrate intellectual property ownership

8.10 Creators must take steps to protect the University’s position in its exploitation of the relevant intellectual property by:

Agreeing terms of IP ownership in line with this policy prior to the commencement of any work and including this as part of any collaborative proposal or contract.
Referring to the DVC:RI any collaborative proposal or contract in respect of Intellectual Property prior to it being signed.
Keeping all matters relating to the potential IP confidential until the fact and manner of disclosure are agreed.
Assisting in protecting the University’s rights to the IP by keeping adequate records of the creation of the IP;

8.11Creators must seek the University’s consent to any publication of information relating to any Disclosable Work.

8.12Conflicts of interest may arise in relation to a variety of issues as a result of creation of a Disclosable Work or its exploitation. Any creator with any doubt as to whether a conflict has arisen or may arise must inform the DVC:RI immediately.

8.13Note that the departure of a student or employee from the University or the fact that a contractor’s agreement with the University has come to an end does not change the obligations of that student, employee or contractor under this IP Policy in relation to Disclosable Works created prior to such departure.

Reward for creation of IP

9.1 Where IP is jointly created by staff, or by staff and students, Executive Board shall be responsible for determining the quantum of the reward and how it is to be allocated amongst the co-creators.

9.2 The Executive Director of Finance will oversee the administration of the reward for creation. This process and the profit sharing arrangements are described in Appendix 3.

Notification of infringements

10.1 Persons bound by this policy must inform the University, in writing, addressed to the DVC:RI, if they become aware of, or reasonably suspect:

Any infringement of the University’s IP rights
The infringement by the University of any third party’s IP rights.

Application of policy

11.1 The University will consider submissions to use its IP under license by staff or students. Decisions on such submissions will rest with the DVC:RI for commercialisation, knowledge transfer, business engagement activities, learning and teaching or research activities, who will consult as necessary, including seeking legal and/or other advice when appropriate. Such decisions will be solely at the discretion of the University, but permission will not be unreasonably withheld.

Assignment

12.1 The University may assign or license its IP rights to the creators or others if it has reason to believe that there would be no benefit to retaining the IP, or if better use of the IP would be achieved thereby.

12.2. Applications for the assignment or license of University IP rights should be made in writing to the DVC:RI for commercialisation, knowledge transfer, business engagement activities, learning and teaching or research activities.

Breach of policy

13.1 A breach relating to this policy may lead to disciplinary action through established staff or student disciplinary procedures. The University may also seek legal redress and compensation where failure to follow this policy results in a loss of income or other damage to the University.

Disputes and appeals

14.1 Disputes arising from the application of these regulations will be communicated in writing to the Head of Human Resources in the case of staff, and through the University’s complaints procedure, for students.

14.2 Appeals against decisions relating to this policy will be heard by the Vice Chancellor.

14.3 Grounds for appeal

a serious procedural error that resulted in significant detriment to the employee or student
new evidence that has only come to light after the decision was made
the original decision was unfair and unreasonable in the circumstances

14.4 The appeal should be submitted in writing to the Vice Chancellor within 20 working days of the decision being made, citing the ground(s) for the appeal. An appeal hearing will normally be held within 20 working days of the request for an appeal being received. The appellant will be informed in writing of the time, date and venue for the appeal and will be asked to advise of disability-related access requirements that they have. The appellant can be accompanied by a trade union representative (for staff) or a YSJ Student Union representative (for students) or workplace colleague. An HR representative will be present at all appeal hearings involving a member of staff. A note taker will also be in attendance.

14.5 At appeal, the decision will be reviewed against the specific grounds on which the appeal is based. The appeal panel can either:

Dismiss the appeal and confirm the sanction issued.
Uphold the appeal and review/reduce the level of sanctions.
In exceptional circumstances, instruct a re-investigation/re-hearing of the case.

14.6 The appellant should be told the decision of the appeal panel as soon as possible after the hearing. The decision should be confirmed in writing within 3 working days. If there is to be a delay a written explanation will be sent to the appellant giving a date when a decision will be made and communicated. The appeal is the final stage of the University’s internal procedures.

Appendix 1- Main classes of intellectual property

There are four main classes of intellectual property: copyright, trademarks, designs, and patents. This section explains these protections, along with some related issues: domain names, confidential information, know-how, and unfair competition.

Copyright protects original creative works that have been recorded in some way. The protection arises as soon as the work is recorded; registration is not required. Copyright protects works belonging to seven categories:

Literary
Dramatic
Musical
Artistic
Films
Sound recordings
Broadcasts

Computer programs are protected as literary works.

The standard period of copyright protection in the UK is 70 years from the death of the author or creator.

The benefits afforded by copyright can be split into two categories:

Economic – the rights to copy, adapt, distribute and perform the work;
Moral – the right to be identified as the author or creator, and to not have your work used in a derogatory manner.

Compilations of information in the form of a database are protected by Database Right. Because of the lesser standard of creativity, protection is only for 15 years. Database right protects the contents of the database from unauthorised extraction or re-utilisation.

All significant material in which copyright belonging to YSJ subsists should include a copyright claim. This includes prospectuses, brochures, academic papers or posters, but not internal notes and working documents. The claim should be on each page if the document is loose-leaf.

The standard copyright notice to display clearly on documents and packaging should be:

For highly significant or valuable copyright works such as computer software, strategy documents, examination papers, & wherever space allows, the following wording should be used:

“Copyright © York St John University [date]. The copyright in this work is vested in York St John University. This work, either in whole or in part, must not be used, sold, transferred, copied or reproduced for purposes other than that for which it is supplied, without the prior written permission of York St John University.”

Any document (in whatever media) which is revised or updated outside of the year of its first publication should be dated with the year of each revision. For example the notice for a document created in 2012 and updated annually should read:

It is important to avoid infringing the copyright of others. When reusing copyright material, there are four questions to consider:

Is the work protected by copyright? If the copyright has expired or been waived, or if the work is not from a protected category, then it is not protected by copyright. Copyright does not protect facts.
Is there an exception in the law[6] that would allow you to copy? There are exceptions in copyright law that allow acts of copying for a specific purpose. Many of these are subject to a ‘fair dealing’ requirement, meaning that you may only copy a small amount and no more than is required for the purpose. To find out more about the copyright exceptions, see the University guidance at issuu.com/ysjils/docs/copyright-issuu
Is there a licence that would legitimise the copying? The University holds the CLA[7], NLA[8] and ERA[9] licences. Furthermore, some online content may be released for use under an open licence, such as Creative Commons.
Can I seek permission directly from the copyright owner to copy? This is best done in writing, so that you have a written record. No response does not mean permission is granted to use.

More information can be found here: