Research Intellectual Property policy

Summary of policy

This policy sets out the University’s position on the ownership, development, protection and exploitation of Research Intellectual Property (Research IP), arising from all types of research and scholarship. It applies the widest possible concept of Research IP from all fields of intellectual activity. It contains the following sections:

IP ownership, responsibilities and confidentiality
Protection, exploitation and sharing of IP income
Conflicts, dispute resolution and breach of policy
Equality and Diversity

Scope

Who and which circumstances this policy covers

The policy applies to all staff, students and visiting academics who make an intellectual contribution to the creation of Research IP or Enterprise-Related IP.

Who and which circumstances this policy does not cover

Introduction

The Open University (OU) acknowledges the need for a Research Intellectual Property policy (IP policy) which will promote the OU’s reputation as a leading research and teaching institution and will directly contribute to the financial position of the OU by realising the commercial value of its research. It sets out the sharing of net income from the commercialisation of Research IP between the Originator(s) and the OU.

Policy

1. Purpose

1.1 The purpose of this policy is to set out the OU’s position with regards to the management of Research IP, and to outline the responsibilities and requirements of individuals engaging in its creation. The objectives of this IP Policy are:

To define what the OU classifies as Research IP and Enterprise-Related IP
To set out the OU’s position on ownership of the IP assets
To set out the responsibilities of those involved in the creation and on-going development of Research IP
To describe the protection and exploitation of Research IP
To describe management of income derived from the commercialisatin of Research IP
To outline the conflicts of interest and process for dispute resolution that may arise from activities covered by this IP Policy

2. Policy principles

2.1 Research and knowledge exchange (KE) are fundamental to the OUs founding principle: to be 'open to people, places, methods and ideas’. These principals are embedded in our Research Plan 2022-27 and KE Plan 2023-27 (internal link only).

2.2 The Research Plan and KE Plan set out the OU’s strategy to increase the scale and impact of our research and knowledge exchange activities through building a distinctive capacity in engaged research, including enhanced KE activities with businesses, policy makers, practitioners and other stakeholders.

2.3 The KE Plan comprises five over-arching objectives, of which the following objective is directly related this IP Policy:

Activity 2: Commercial Knowledge Transfer

3. Research IP

3.1 It is expected that identification of IP assets will take place when staff, students, and those engaged by the OU are involved in creating and developing Research IP. Much of the Research IP which will be created may be anticipated prior to its creation depending on the nature of the work and outputs that are expected to be generated. Examples of such outputs which are likely to generate Research IP include (but are not limited to):

Inventions (whether or not patentable)
Know-How (new knowledge)
Methodologies
Research data
Design/artistic products
Software
Databases
Questionnaires
Educational/training materials and tools
Modelling tools
Solutions to technical problems

3.2 Copyright in content created for University teaching activities is not covered by this policy.

3.3 The guidance and procedures in this IP Policy may apply to Enterprise-Related IP generated from non-research activities where the IP requires protection and exploitation. An example of this type of Enterprise-Related IP may be an educational technology developed by the OU for the benefit of its students, but subsequently assessed for wider commercialisation.

3.4 This IP Policy is solely for operational guidance and clarification of IP rights, where applicable during and after employment or engagement with the OU. For the avoidance of doubt, where any terms in this IP Policy conflict with an individual's contract of employment or contract of engagement, the terms relating to the relevant contract of employment or engagement will prevail.

3.5 This IP Policy applies to students and all employees of the OU including academic staff, academic related staff, research staff, support staff, honorary and emeritus role holders and personnel in collaborating organisations who are under an OU contract of employment, signed agreement or letter of appointment.

4. Ownership of research IP

4.1 Clarity on ownership of Research IP is essential to enable it to be effectively managed and is usually determined by: who created the IP, the nature of the IP, under what circumstances the IP was generated, and whether there are contractual conditions that affect ownership.

Employees

4.2 In alignment with the OU’s employee terms and conditions the following apply:

Copyright in Academic Work, except copyright in course material or work related to administration of the OU and its courses, belongs to the employee.
Copyright in any other works, including computer programs, produced by an employee in the course of their employment, belong to the OU.
Furthermore, whenever the OU is required to assign or licence IP to a third party, IP assignments will be requested from Originators. The contractual arrangements between the OU and the assignee or licensee cannot be concluded until the appropriate Originator IP assignments are in place.
For staff who have a formal engagement with another institution it is important that, where appropriate, an agreement is in place between the OU and the other institution(s) defining the IP arrangements.

4.3 Research IP created by employees during the course of their normal duties or in work specifically assigned to them or through externally funded work (including research/laboratory notebooks) belong to the University. This accords with the OU’s terms and conditions of employment.

4.4 Should the OU decide that it does not wish to develop or exploit its Research IP, the Originator(s) may request a ‘release of invention.’ If such release does not violate the terms of external funding agreements and is in the best interests of the OU, the OU may agree to assign the Research IP to the Originator(s). This will be conditional upon:

Reimbursement to the OU of a reasonable proportion of associated expenditure and fees incurred by the OU, and
Granting a royalty free, non-exclusive licence to the OU to use the Research IP for research and teaching purposes.

4.5 When a member of staff leaves the OU’s employment, ownership of Research IP created during the period of employment will normally remain with the OU. However, the OU will not seek to restrict the use of Research IP which it has not previously exploited, and permission to use such IP will not normally be withheld upon written request to the OU. Where IP is transferred to a new owner (the “assignee”), any contractual obligations with respect to dissemination, use and granting of access rights will also pass to the assignee.

4.6 Employees, Research Students and visiting academics, in conjunction with the OU, are responsible for collection, management and retention of research data in compliance with the OU’s requirements for research data management. In the case of data retained in support of patent applications, the data must be retained for the lifetime of the patent (up to 20 years or until the patent expires or is lapsed).

4.7 Ownership of Research IP is clearly defined in contracts and collaboration agreements and will cover:

Ownership of Background IP and Foreground IP
Licences to use Background IP and Foreground IP where appropriate
Rights to commercialise IP where appropriate

The terms of such agreements may be negotiable, but many collaborators and funders will not deviate from their standard conditions relating to IP.

Students

4.8 Upon registration, Research Students, including Research Students in industry-related schemes, are asked to assign Research IP generated during the course of their studentship to the OU, except where the Research Student is bound by an existing intellectual property agreement with a third party. Ownership of Research IP created by self-funded Research Students is negotiated prior to being accepted to undertake a research degree at the OU.

4.9 Research IP created by Research Students purely in a personal capacity without use of the OU’s facilities or resources (including supervisor input) is owned by the Research Student.

4.10 IP created by undergraduates, Taught Masters Students and self-funded Research Students who choose not to assign their Research IP to the OU is the property of the student. However, the OU is prepared to discuss the potential assignment of such IP to the OU so that it can be exploited for the benefit of all concerned.

4.11 Research IP generated by Taught Masters Students and Research Students in receipt of a fee waiver will be owned by the OU.

4.12 Copyright in scholarly works such as journal articles, personal notes (excluding research/laboratory notebooks), theses, dissertations and books are owned by the student.

4.13 Research Students will benefit from sharing in the cumulative net IP income as set out in Section 5 if the IP is commercialised.

Affiliated Research Centres

4.14 Ownership of Background IP remains the property of the institution that contributes it to the OU Research Degree Programme (Degree Programme). It is expected that each institution grants the other a royalty-free, non-exclusive licence to use its Background IP for the purpose of carrying out the Degree Programme.

4.15 Research Students based at Affiliated Research Centres are required to make a written declaration on registration with their Affiliated Research Centre confirming whether they will be assigning IP generated during the Degree Programme to the Affiliated Research Centre or to the OU.

4.16 Where IP is assigned to an Affiliated Research Centre and the OU has contributed either financially or intellectually to any exploitable IP, then the institutions will negotiate a suitable revenue sharing agreement which will reflect the contribution of each institution to the creation of the Research IP.

4.17 Each institution grants to the other a royalty-free, non-transferable, non-exclusive licence to use its Foreground IP arising from the Degree Programme for their own non-commercial activities such as teaching and scientific or clinical research. If commercial use of an institution’s Foreground IP or Background IP is required, then the institutions will negotiate a licence on fair and reasonable terms. Where the OU receives revenue from the commercial exploitation of Research IP, the Research Students will benefit from sharing in the cumulative net IP income as set out in Section 5.

5. Responsibility and confidentiality for research IP

5.1 For Research IP which has the potential to be commercially exploited, reasonable steps should be taken to maintain confidentiality in order to register protection and/or maintain a commercial advantage. Adequate records and notes of the development of Research IP (reports, notebooks, data, designs etc.) should be kept in compliance with the OU’s Research Code of Practice.

5.2 The key responsibilities for the OU and researchers are:

To ensure appropriate contractual arrangements are in place before work commences to avoid issues connected to ownership of and rights to the Research IP. The need for such contracts is a general condition of awards from most funders.
Originators who have identified potentially exploitable IP are required to contact the Research & Enterprise Office (R&E) to discuss the opportunity. The Originator(s) are required to participate in the Knowledge Transfer and Commercialisation (KTC) process. The Originator(s) are required to complete an Invention Declaration Form for R&E to assess the Research IP. The outcome of the assessment will be discussed with the Originator(s) and a joint decision will be taken on how best to exploit the Research IP.
Successful exploitation of Research IP will depend on the commitment of the Originator(s) to the KTC process, including attending meetings with potential licensees or investors, and advising on further development opportunities. Any out-of-pocket expenses will be reimbursed in line with the OU’s Travel and Subsistence Policy.
The assessment of the Research IP may indicate that the most appropriate route for exploitation is through the setting up of a ‘Spin-Out’. This means the setting up of an external business to take the commercial opportunity forward.
It is important for the OU to understand what Background IP is being used in specific projects, particularly if the OU will be required to assign its IP to a third party or put in place licences for use. R&E will support employees and students to ensure that there is clarity of Research IP for their projects.
Details of Research IP should not be disclosed to third parties except under a Non-Disclosure Agreement (NDA). R&E will support employees and Research Students in the preparation of NDAs.

5.3 The OU’s management of Research IP complies with the General Data Protection Regulations (GDPR).

6. Protection and exploitation of research IP

6.1 The OU will only exploit Research IP that it recognises, in conjunction with the Originator(s), as having commercial potential or social impact. Commercial potential will be assessed based on a range of criteria, such as ability to protect the IP, market readiness, demand, impact, competition, public benefit, cultural importance and likely costs versus return. Some forms of Research IP require active steps to be taken in order to obtain protection (e.g. patent applications, registered trademarks and registered designs). Other forms of Research IP are protected upon creation (e.g. copyright) but still require appropriate management to maximise the protection available. Proprietary copyright material made publicly available should include a copyright notice.

6.2 Routes to Research IP protection and exploitation are as follows:

Research IP may be commercially exploited by several vehicles such as: joint ventures, spin-out companies, consultancies, contract research, collaborations, licencing, assignment, Knowledge Transfer Partnerships, or through industry-related schemes.
Decisions concerning whether to file a patent application will be made promptly to ensure that publication opportunities are not restricted.
In the case of Research IP being jointly owned by the OU and a third party, the OU, in consultation with its Originator(s), will negotiate with the third party to agree the terms for IP protection and exploitation.

7. Sharing of IP income

7.1 This IP Policy aims to encourage the identification and exploitation of Research IP supported through the provision of a financial incentive for the Originators. Income from the commercialisation of the OU’s Research IP belongs to the OU. However, there is a commitment to grant an equitable share of the net IP income to the Originators.

7.2 The allocation of net income will be calculated based on income bandings. The percentage of net IP income allocated to the OU will increase as income increases. This enables the OU to attribute IP income to the appropriate Faculty.

7.3 Net IP income is calculated as gross IP income realised over a defined period less all associated attributable costs over the same period. Associated costs may include, but are not limited to, payment for external advice, patent fees, employer national insurance contributions, recovery of OU investment, associated OU indirect costs, any other committed costs used in the commercialisation of the IP and any payment due under a revenue sharing agreement to a third party involved in the creation of the invention.

7.4 R&E will complete an annual review and calculate the apportionment of IP income for commercialised IP. On apportionment, each banding will be applied, in turn, against the cumulative net IP licencing income until the total available net income has been fully apportioned.

7.5 The apportionment of cumulative net IP income is shown in table A.

Table A: Apportionment of cumulative net IP income

Band	Net IP income	Originator's share	Faculty/OU's share
Band 1	Up to £75,000	100%	Nil
Band 2	£75,001+	50%	50%

7.6 The OU does not accept any liability if the IP income is lower than expected. However, the OU underwrites all commercialisation expenses and will carry forward unrecovered commercialisation expenses on specific IP projects. Apportionment of net IP income can only take place once all attributable costs and carried forward commercialisation expenses have been recovered.

7.7 In cases where the Originators cannot reach an agreed allocation of net IP income based on their relative contributions, the OU will decide through the OU’s Knowledge Exchange Board (KE Board) and after consultation with the Originators the appropriate allocation.

7.8 An Originator’s entitlement to a share of IP income under this policy will continue should they leave the OU. In the event of death, the entitlement will continue for the benefit of their estate.

7.9 It is the responsibility of the Originator or their beneficiaries to notify the OU of any changes of address and/or contact details. If current details are not available, any unclaimed funds will be retained by the OU for a period of three years. Any income payments remaining unclaimed after the three-year period will be forfeited and revert to the OU.

7.10 Any payment made by the OU to an Originator or an Originator’s estate will be subject to the deduction of applicable income tax and employees’ National Insurance contributions, and VAT and other taxes in line with HM Revenue and Customs regulations in force at the time of payment. For payments to individuals residing outside the United Kingdom, further deductions may be applicable subject to country specific legislation.

7.11 An Originator may choose to have their share of IP income retained by the OU to support research activities. This income would be managed by R&E and ringfenced to support knowledge exchange activities aligned with the Originator’s research group/area.

8.Conflicts of interest

8.1 Employees and Research Students must declare any potential conflict of interest that they have in relation to Research IP to R&E and their Head of School or Academic Supervisor, as applicable, as soon as possible.

9. Dispute resolution

9.1 Any disputes regarding the intellectual contributions to Research IP will be handled based on OU’s normal employee or Research Student dispute procedures outlined in their contractual terms and conditions.

9.2 In the event of a dispute concerning the ownership of Research IP, the matter will be referred to KE Board. If the dispute is not resolved within 30 days of referral to KE Board, KE Board will identify and appoint an independent expert to provide conciliatory dispute resolution services.

9.3 Any attempt to settle any claim, dispute or controversy arising in connection with this IP Policy, including without limitation any controversy regarding the interpretation of this IP Policy, will be through consultation and negotiation in good faith and a spirit of mutual co-operation. Where such claims or disputes cannot be settled amicably, they may be taken to court.

9.4 This IP Policy is governed by English Law.

10. Breach of policy

10.1 Breaches of this IP Policy will be investigated, and intentional or serious breaches will be dealt with via the Disciplinary Procedures for Academic and Academic-Related Staff. Misappropriation or use of others’ ideas or intellectual property without acknowledgement or permission is in scope of the OU’s Code of Practice for Research and will therefore be investigated according to the Procedures for Dealing with Allegations of Research Malpractice or Misconduct.

11. Equality, Diversity and Inclusion

11.1 Policies are inclusive of all OU staff and students, regardless of age, care experience, caring status or dependency, civil status, disability, family status, gender, gender expression, gender identity, gender reassignment, marital status, marriage and civil partnership, membership of the Traveller community, political opinion, pregnancy and maternity, race, religion or belief, sex, sexual orientation, socio-economic background or trades union membership status.

Knowledge Transfer and Commercialisation process

Long description

Glossary of terms

Academic work

Academic Work refers to all works prepared by staff and students in the course of their scholarship and research including journal articles, books, book reviews, but excluding works prepared in connection with OU teaching and learning content.

Background IP

Shall mean IP created prior to or outside the scope of a particular project or activity and utilised in that project or activity.

Disclosable work

Shall mean such work that is novel, original and/or important and is likely to bring impact and enhance the Originators’ reputation. This work is characterised by the intellectual property it generates.

Enterprise-related IP

Shall mean non-research IP and is used to distinguish these IP assets from content developed for the University’s teaching and learning activities.

Foreground IP

Shall mean newly created Research IP generated in a particular project or activity.

Knowledge Exchange Board (KE Board)

Is the body responsible for monitoring the IP Policy and Research IP procedures within the OU. Referred to in this document as ‘KE Board’.

Invention Disclosure form

Is the form to be completed when the Originator(s) has a research project with identified commercial potential. This form is to be completed by the Originator(s) and provided to R&E for evaluation/assessment of the Research IP.

Non-Disclosure Agreement (NDA)

Non-Disclosure Agreement is a legal contract between two or more parties wishing to share confidential material, knowledge or proprietary information with one another for certain purposes, but wish to restrict access to other parties.

Originator

Shall mean an employee, student or visiting researcher within the OU providing an inventive contribution to the Disclosable Work.

Research and Enterprise Office (R&E)

Is the central Research and Enterprise Office (referred to in this document as ‘R&E’) which sits within the Research, Enterprise and Scholarship Unit and is responsible for the management of Research IP as set out in this IP Policy. The Research and Enterprise Office is contactable via email.

Research students

Shall mean full or part-time students studying for a research degree under a student agreement.

The Open University Student Charter principles

This policy aligns with the following Student Charter principle:

Principle 4: We work together to secure the University’s mission and to promote the University’s values.

Further clarification

If you have any queries around the content provided within this document and how to interpret it, please contact the Research and Enterprise team.

If you have any comments about this policy document and how it might be improved, please submit these to the Research and Enterprise team.

Alternative format

If you require this document in an alternative format, please contact the Research and Enterprise team.

Summary of significant changes since last version

There are four significant changes from the previous version of the policy. These are:

Policy extended to included Enterprise-Related IP (Policy: 3.3)
Policy extended to include non-academic/research staff (Policy: 3.5)
Utilisation of incentivisation payments (Policy: 7.11)
Amended revenue sharing bandings (Policy: 7.2 – 7.5)

Policies superseded by this document

The document replaces the Research Intellectual Property policy (2019).

Document information

Version number: 1.1

Approved by: Reserch Committee (10 July 2024)

Effective from: 1 August 2024

Date for review: 1 March 2027

Research at The Open University

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