Research Intellectual Property policy - guidance and procedures

Research Intellectual Property (henceforth referred to as IP) will be manged as described In the Knowledge Transfer and Commercialisation (KTC) process.

1. Process for identification and exploitation of IP

1.1 IP can be created during or at the end of the research project, or when undertaking innovation activity for use within the OU. Originator(s) (any individual(s) making an intellectual contribution to the creation of IP) should contact the RES Intellectual Property team if they have/think they have created IP.

1.2 The Research, Enterprise and Scholarship Unit's Enterprise team (henceforth referred to as RES) regularly review new records on the Awards Management System (AMS). Where projects are deemed to have a potential to generate commercially valuable IP, the originator(s) will be contacted by RES to discuss IP arising from their research.

1.3 If the IP is identified as having the potential for commercialisation, an Invention Disclosure form (F1) will be sent to the originator(s) to complete. The form will then be evaluated by RES and a decision made in conjunction with the originator(s) on whether to proceed with the commercialisation process.

1.4 Where the decision Is made to proceed, RES will carry out:

• an internal due diligence to check there are no contractual or existing IP obligations that prevent the commercialisation of the IP.
• an external due diligence to provide information on whether there is a potential market for the IP. A detailed market analysis will be carried out if appropriate.

1.5 Where the results of the due diligence checks show no barriers to commercialisation and a potential market is identified, RES will support the originator(s) in developing an Exploitation Plan and subsequent exploitation activities.

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2. IP assignment

2.1 If RES decide not to exploit the IP (e.g. in cases where income or impact appears low), agreement can be sought from Knowledge Exchange (KE) Board to assign the IP to the originator(s). An Originator Declaration form (F4) is required to certify the originator(s) of the IP. A Release of Intellectual Property Request form (F5) will be sent to the originator(s) to allow them to officially request assignment of IP.

2.2 Where IP assignment is approved by the Knowledge Exchange (KE) Board, RES will work with Legal Services to develop the IP assignment agreement. The originator(s) will be advised to seek independent legal advice before entering into a legal agreement.

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3. IP protection

3.1 Originators with questions regarding the protection of IP such as patents, trade marks, registered designs and copyright should contact the RES Intellectual Property team.

3.2 All non-automatic protection of IP (i.e. patenting, trade marks and registered designs) must be managed by RES on behalf of the University.

3.3 For inventions that are potentially patentable, originators must ensure confidentiality of the IP. It is essential that information about the IP is not disclosed externally (for example via conference proceedings, papers, posters, reports, or presentations) before discussing with RES. This is to ensure the patentability of the invention. The University is unable to apply for patent protection if the IP has been disclosed.

3.4 The decision to submit a patent application is a joint decision taken by RES and the originator(s). Due to the cost involved in the preparation, submission and on-going maintenance of patents, formal approval to proceed is required from the Head of Research and Enterprise. The cost of the patenting process is paid for from a central innovation budget (e.g. HEIF) subject to sufficient funds.

3.5 RES will commission the drafting of the patent application by the University’s appointed patent agents, and will work with the originator(s) and patent agent to produce and submit to the patent application. The date of the first submission is referred to as the 'Priority Date'.

3.6 During the 12-month period following the Priority Date the originator(s) are required to participate in the KTC process to fully explore the commercial potential of the IP.

3.7 Towards the end of the 12-month period consideration to maintain the patent will be given to justify continued investment based on the potential commercial or social value of the IP and, where necessary, the continued engagement by the originator(s).

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4. Research IP income management

4.1 If commercial income is anticipated from the exploitation of IP, an Originators Declaration form (F4) must be completed to (i) certify the identity of the originator(s) of the IP and (ii) declare the contribution of each originator. The information will be used to apportion the net income with the originator(s).

4.2 An AMS record will be set up by RES to record the income and will be subject to standard AMS approvals process.

4.3 Allocation of net income to the originator(s) will be calculated by RES as set out in Section 7 of the Research IP policy.

4.4 Payment of the originator’s share of IP income will be processed upon receipt by the University. If multiple receipts are due for the same IP in a financial year, a single payment will be processed as soon as possible following the end of that financial year.

4.5 Originators have the option of either receiving their share of IP income as personal income or having their share retained by the OU to support knowledge exchange activities.

4.6 If an originator chooses to receive their share of income as personal income, Payroll will be instructed to include the amount in the originator's monthly pay. The payment is subject to tax and National Insurance deductions as required by HMRC.

4.7 If an originator chooses to waive their right to their share of IP income, the income would be retained by the University. The Income will be managed by the faculty or RES and may support the in-year creation of a budget to support KE activities:

• Where the originator(s) waive income exceeding £10k, the faculty is encouraged to identify or create a budget equal to their share of the IP income for KE activity. The budget can be used in the current year. The income/budget cannot be carried forward.
• Where the Income Is less than £10k, and creation of a unique budget is not practical, priority will be given for the originator(s) and their research group to utilise HEIF to an equivalent amount for KE activity.
• The budget can be spent on the activities aligned to KE including, but not limited to:
  • Raising the technology/innovation readiness level of IP
  • Conference attendance
  • Travel and meetings with non-HEI organisations
  • Organising KE and showcasing events
  • KE training and development
  • Short secondments to/from business

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5. Spin-out activity

5.1 If a spin-out is deemed to be the most appropriate route for exploitation of the IP, RES will support the originator(s) in this endeavour. RES will use the USIT guide as a basis for work.

5.2 The process for approving spin-outs is currently under review and will be added to the next iteration of this guidance document.

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Knowledge Transfer and Commercialisation process

Long description

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