Intellectual Property Policy – Staff

1.Introduction

1.1Teesside University wishes to encourage the exploitation of Intellectual Property (IP) in order to:

  • Encourage and support the creativity and innovation of staff and students
  • Maximise benefits for the TeesValley and the region
  • Strengthen the University’s reputation
  • Address the knowledge transfer agenda and the requirements of funding bodies

1.2Through this policy, the University seeks to recognise the achievements of staff who make a contribution to the generation of commercial IP by means of an appropriate reward structure.

1.3This policy applies to all employees of Teesside University , including those on part-time contracts.[1] It also applies to individuals contracted by the University to deliver specific services.

1.4A separate document outlines the Intellectual Property Policy for students of the University.

2Definition

2.1Intellectual Property may broadly be defined as know-how, or knowledge and its application. For the purposes of this policy, all materials generated by staff are considered as potentially generating Intellectual Property Rights (IPR).

3.Ownership and Exclusions

3.1Teesside University asserts its right under the Copyright Design and Patents Act 1988 and the Patents Act 1977 (as amended) to ownership of all intellectual property generated by staff during the course of their employment, or outside the course of their employment where significant University resources have been used, on the understanding that the identification, protection and exploitation of commercially valuable IP are actively encouraged, and that both staff and the University should benefit from exploitation. The types of IP covered by this policy include:

  • Confidential Information (the subject of a Non-Disclosure Agreement)
  • Patents
  • Copyright materials[2]
  • Registered and unregistered designs
  • Performance rights
  • Trade marks
  • Database rights
  • Registered and unregistered plant varieties, microbiological organisms and topographies.
  • Works (excluding coursework) generated by computer hardware or software owned or operated by the University

3.2There are two exceptions to this general rule. In the following cases, the University makes no claim to IP:

3.2.1All scholarly materials, that is materials developed by staff whose primary focus, in keeping with the University’s ethos, is the dissemination of knowledge, are excluded from this policy[3]. These include:

  • Textbooks
  • Academic journal articles
  • Conference papers
  • Personal notes (including lecture notes for personal use)
  • Theses and dissertations
  • Popular non-fiction, novels and poems
  • Artistic works

Materials developed by support staff and technician demonstrators for delivery to staff/students are included in this category.

The University will not normally make a claim to any rights in the academic publications of its members of staff. It does, however, reasonably expect the right to continued use of any teaching materials which have been created and/or used by staff during the period of their University employment.

3.2.2All work contracted by outside organisations, and any IP generated as a result of such work, is excluded from this policy. This includes Knowledge Transfer Partnerships and other forms of contract research, where the determination of IP ownership is to be negotiated between the contracting bodies.

4.Protection of IP

4.1The University and staff must take responsibility for ensuring that its IP is adequately protected, and that the IPR of other individuals and organisations are respected.

4.2Disclosure of potentially commercial IP is an important mechanism for protecting the rights and interests of staff and the University. Disclosure helps to ensure that staff are in a position to benefit from any original IP they develop, and also to minimise the possibility of infringing the IPR of others working in the same area of knowledge.

4.3Staff are therefore required to disclose to the University all potentially commercial IP generated during the course of their normal duties, or as the result of a task specifically assigned by the University.

4.4Staff who believe they have developed commercial IP should contact the Knowledge Transfer and Commercialisation Manager or the relevant Deputy/Assistant Dean for Enterprise, who will ensure that the disclosure is logged, and who will provide advice and help on next steps.

4.5It is not possible to fund the cost of protecting large amounts of IP. The University has a modest IP Protection Fund which can be used to finance patent filing, trademarking and design/copyright registration. This policy makes provision for the recovery of University investment in such protection.

4.5Because the cost of protection must be weighed against the potential return from any IP, a rigorous assessment process has been put in place to ensure that investment is made only in IP with the strongest prospects of generating commercial income. This assessment process is described at Schedule A.

4.7If a member of staff seeks to pursue the exploitation of IP which the University does not wish to commercialise, that IP may be assigned back to the originator for him/her to exploit, potentially with a licensing arrangement for the University. Such an arrangement will be made on an individual basis by negotiation with the individuals concerned, and will take into account all University investment up to the stage of assignment.

5.Portfolio Review

5.1A central record will be maintained within Academic Enterprise of all IP disclosures and their progress. The IP Portfolio will be subject to annual review by the University Enterprise Committee.

6.Revenue Shares

6.1Revenue arising from the successful exploitation of IP owned by the University will be distributed on the basis of the development agreement described in Schedule A. Each case will be considered in the light of individual circumstances (for example, the effort and resources contributed by the various parties), but will be expected to result in a three-way distribution to individual staff members, the School/department and the University.

7.Confidentiality

7.1Both University and staff have an obligation to ensure that potentially commercial IP is protected. Once identified, such IP should be the subject of a Non Disclosure Agreement (NDA) verified by authorised signatories of the University. Records of all discussions relating to the IP must be kept. Improper disclosures of IP which is the subject of an NDA may result in disciplinary procedures.

8.Conflicts of Interest

8.1The University encourages work which is supportive of an individual’s professional responsibilities. However, before a member of staff undertakes any work which may or may not generate commercially exploitable IP, it is essential to inform the University as there may be a conflict of interest. Failure to inform the University may result in disciplinary action.

8.2Once informed, the University will then decide (normally within 5 working days or whatever other period may be agreed or reasonable in the circumstances) if that work will:

a)Interfere with the performance of the individual’s professional responsibilities, or

b)Compete or conflict with the interests of Teesside University .

This decision will be taken by the Dean/Director, acting on the advice of the Department of Academic Enterprise.

8.3In either case Teesside University may, at its sole discretion, require the individual not to undertake the work. Such a requirement will not be made unreasonably and will be subject to full consultation with the individual. The individual will also be provided with full written reasons as to why s/he cannot undertake the work.

(It should also be noted that where it is intended to use the facilities of the University in connection with external work, prior approval from the University must be sought. Failure to seek prior approval may result in disciplinary action.)

9.Disputes and Appeals

9.1In the event of a dispute over the interpretation of this policy, the member of staff will have the right to appeal. The appeal process will entail:

a) Written notice by the staff member to the Legal Services Manager, outlining the facts of the dispute, with copies to other parties to the dispute.

b) The opportunity for other parties to submit comments on the submission.

c) Consideration of the appeal, taking all submissions into account, by at least 2 members of a sub-committee of the Enterprise Committee.

9.2This process will only take place if it has not proved possible to resolve the dispute by discussion between the parties concerned.

10.Guidance and Awareness

10.1In keeping with its aim to encourage the commercialisation as appropriate of valuable IP, and to share the benefits of this commercialisation with staff and Schools/departments, the University will make every effort to promote the contents of this policy to all staff, via:

  • Induction
  • Enterprise Development Programme
  • Specific awareness-raising events
  • Internal newsletter articles
  • Publication of all information relating to the policy, including FAQs and case studies, on the University intranet
  • Enterprise Development Fund seminars

10.2Any enquiries about this policy or about IP and potential commercialisation opportunities in general, should be made to the DAE Knowledge Transfer and Commercialisation Manager, who will provide advice and support to individual members of staff.

11.Review

11.1This policy will be formally reviewed 12 months from the date it comes into effect and at regular intervals thereafter.

Schedule A

Innovation Development Process

This schedule sets out the process by which decisions on investment in IP exploitation will be made and taken forward by the University.

The process includes a number of stages.

Stage 1 – Disclosure

The idea is disclosed by its originator (henceforth referred to as the inventor[4]) to a member of the School Enterprise Team or to the Knowledge Transfer and Commercialisation Manager (Department of Academic Enterprise).

This person is assigned as the idea’s Initial Sponsor.

Basic details of the disclosure are logged on to the University’s Customer Relationship Management System (CRM) and flagged up as a live disclosure.

Stage 2 – Screening

The Initial Sponsor screens the idea and prepares an initial assessment which indicates whether the idea is either:

  1. Unlikely to be useful in addressing an identified problem, or
  2. Potentially useful.

Ideas falling into the first category will not be taken forward by the University. The inventor may seek the assignment of the IP in order to pursue exploitation elsewhere.

For ideas demonstrating potential the sponsor completes a short assessment report indicating the reasoning behind the decision, and disseminates this to the University’s Innovation Assessment Team (IAT).

Stage 3 – Initial Commercial Assessment

The IAT, drawing on the expertise of appropriate colleagues, assesses the proposal for:

  1. Fit with University strategic objectives
  2. Likely resource requirements
  3. Potential routes to market
  4. Capacity of University to add significant value

The inventor has the option to attend this assessment panel to present his/her proposal and answer questions upon it.

A decision is made either to invest or divest. If the decision is made to DIVEST then the IAT inform the inventor that the University does not wish to invest further in the idea. The inventor is then free to develop the idea in his/her own time without any reliance upon University resources. The IP will be assigned to the inventor and the University will not lay claim to any rewards gained as a result of successful exploitation.

If the decision is made to INVEST then an investment package adding value to the innovation is developed by the IAT with the aim of maximising the opportunity for commercialisation. This investment will usually be focused upon further development of the invention and/or adding value through product enhancement (via, for example, design). Commercialisation routes may include a University Enterprise Company (e.g. licensing to a third party, sales through UTEL), or a spin-out company with or without external investment.

In return for this investment the Inventor and the University will complete a development agreement which covers:

  1. The responsibilities of the University and the Inventor(s) to progress the idea to a commercial product/service
  1. An outline of the investment being made. This can include:

Support from the Enterprise Development Fund (EDF), University Research Fund (URF)

Initial IP protection

Development of business plan

Provision of market research data (internal or external)

Design and development work

Preparation of NSTAR POC and / or DTI Grant for R and D applications

  1. The proportion of any resulting rewards to the University / Inventor(s).
  1. The assignment of an Innovation Sponsor to the project from the IAT. This may be the initial sponsor if s/he is familiar with the technology or market involved.

The negotiation and signing of a development agreement is a prerequisite for any investment by the University.Relative shares will be determined according to the levels of investment made by the University, and according to overall levels of revenue; but as a general principle will normally fall within the range of 20% to 80% for the inventor. All cases will be negotiated on an individual basis.

The potentially contentious issue of relative rewards to the Inventor and the University will be practically determined through assessment of the idea against the Problem / Solution matrix.

For example, in case A the Inventor has identified a problem and is close to developing a viable solution to the problem. In this case, the balance of the rewards may go to the inventor and any external investors needed to commercialise the concept.

In case C the Inventor has identified a problem but has achieved little by way of a viable solution. If the University is to invest in this case, the proportion of any future rewards should reflect the scale of the investment (time, financial and other).

Case B illustrates a more balanced sharing of future rewards.

In many cases the commercialisation will involve future investment by external investors and this will dilute further the proportion of rewards to both the University and the Inventor.

In all cases, the investment will be made according to an agreed business plan which will include critical milestones against which progress and stage investment will be reviewed by the Innovation Sponsor. Both investment and business plan progress will be reviewed at critical stages, with reports back to the IAT at appropriate intervals.

Stage 4 Post Investment Management

Once a commercialisation project is under way, the innovation sponsor remains responsible for project monitoring until such time as the project is commercialised or has been formally closed. The IAT will continue to monitor the project throughout this period.

Document Control : Intellectual Property (Staff)
Due for review by:
Approved by: / EPC on 10 July 2007
Author: / Director of Academic Enterprise
Department: / Academic Enterprise

S:\PER\ADMIN\POLICY DEVELOPMENT PROCESS - 2007\Agreed Policies\Intellectual Property - Staff - EPC 10 July 2007.doc

[1]The normal expectation is that IP developed by staff will originate from work relating to their employment at the University. Exceptions will be dealt with case by case.

[2] For further information, see the University Guide to Copyright at

[3] While staff have the right to publish, they should be aware that publication of information about potentially commercial inventions or ideas may constitute disclosure, and could prevent the protection and exploitation of any IP.

[4]The term “inventor” may equally refer to one or more individuals.