Intellectual Property
…at The University of Manchester
Kaisa Mattila, Intellectual Property Lawyer
Eversheds LLP
19 May 2010
Today’s session:
• Overview: how is IP dealt with at The
University of Manchester?
• Ownership of IP: staff and students
• Common IP issues and “hot topics”
• Key provisions of the University’s IP Policy
• Case study
• Feedback & questions
“IP” vs. “Copyright”
• “IP” – collective term to describe various different
rights protecting intellectual creations
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Patents
Trade marks
Designs
Copyright
• “Copyright” - written material, music & art, films
and broadcasts, software etc.
– Most common type of IP at UoM (along with patentable
inventions and know-how)
A closer look at….
Copyright
Coursework
Theses
Journal articles
Lab notebooks
Design drawings
Websites
Teaching materials
Presentations
Images & photos
Software
Teaching videos
Internal literature
• “Layers” of copyright in a work
• No need to register – arises automatically
• Needs to be recorded – does not protect “ideas”,
but the expression of ideas
• Must be original – i.e. not copied
• Minimum effort – but relatively low threshold
Copyright – Ownership
• Basic position under English law: the creator or “author” is
the first owner of copyright (can assign ownership)
• Exception: copyright created by employees in the course
of employment usually owned by employer, unless agreed
otherwise
• Co-authorship:
– Who is an “author”?
– Ownership:
• Distinct “shares” – need permission to use coauthors’ shares, or whole work
• Joint authorship – no individual co-author can
exercise any rights without agreement of others
– Remember “layers”!
Copyright – Owner’s rights
• Exclusive right to:
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Copy
Distribute
Publish
Rent or lend
Perform or show in public
Adapt
Allow others to do any of the above
• Co-authors may need permission from other coauthors to exercise these rights
Copyright – Infringement
• Doing any of the things reserved exclusively to
the copyright owner, without permission
• Copying:
– No need to copy whole work – “substantial”
copying is enough
• Not ‘insubstantial’
• Small but significant or important part
• Consider “layers” of copyright
– Copying does not need to be exact
Copyright – Student Theses
Third party copyright
• eScholar: theses increasingly published online
• Students need to be very careful if using third party
copyright as part of thesis
– Extracts from books, journals, websites etc.
– Illustrations e.g. images, photos, graphs, maps etc.
• Should always get permission before use
• “Fair dealing” exemption for purposes of criticism and
review could apply
– Original work must have been ‘published’
– Use must be “fair”
– Need sufficient acknowledgement
Best practice: always seek copyright owner’s
permission
Student Theses –
Open Access
• Default position: examined theses are made closed-access
• Who decides whether to make a thesis open access (OA)?
– If STUDENT owns IP:
• Student can request OA (NB: still need permission to
use any third party material!)
• School can decline to make thesis OA but cannot stop
student publishing elsewhere
• If student does not want OA, UoM cannot publish
– If UNIVERSITY owns IP:
• University can make thesis open access – does not
need student’s permission
• Student cannot make thesis OA or publish elsewhere
without University’s permission
Student Theses –
Open Access
Publication & Alternative Format Theses
• Possibility that OA may deter future publishers
–Check publisher’s policy and terms
–May want to restrict access to thesis
• If student has already published one or more papers
in a journal:
–Publisher may have exclusive rights
–Publisher might even own the IP!
Need to check whether publisher will allow article to be
used as part of a thesis
• If publisher refuses permission:
–Restrict access; or
–Redact parts that publisher owns (if possible)
Introduction to…
The University’s IP Policy
• Creation of IP is one of University’s key objectives
• IP Policy aims:
– Staff & students can create valuable new IP
– Provide effective University services to protect and
commercialise IP
– Sharing commercial returns with creators of IP –
provide an incentive for further creativity
• Why?
– Ensure best possible use is made of valuable IP
– “Framework” for commercialisation – allows UoM to
manage IP more effectively through UMIP
– Encourage innovation & attract new research talent
Introduction to…
The University’s IP Policy
Overview:
• Ownership: Clause 3
– Employees
– Students
– Collaborators & other third parties
• What staff & students can do with IP they create
• Protection & Commercialisation: Clause 4
– Role of UMIP
– Commercialisation process
• Revenue-sharing: Clause 8
IP Policy – Ownership (clause 3)
Employees
• IP created by University employees in the normal course of
employment automatically belongs to the University
(reflects normal position at law)
• IP created on employee’s own time usually belongs to the
employee; BUT:
– If ‘more than incidental’ use of University resources
(equipment, facilities, staff) then must transfer IP to
University
• Rationale: UoM cannot “give away” assets like IP –
charitable status, grant conditions etc.
• More efficient for commercialisation to ‘centralise’ IP
• Employees still rewarded generously under IP Policy
IP Policy – Ownership (clause 3)
Employees
• Some IP does not need to be owned by UoM:
– ‘Scholarly’ Materials (text books, conference papers,
theses, dissertations)
– UoM generally waives its copyright in Scholarly
Materials, but not any other IP described in them
– UoM gets a licence back
• NO waiver if:
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Sponsored research / collaboration with outside body
‘More than incidental’ use of UoM resources
Any ‘Teaching’ or ‘University’ materials included
Publication would damage UoM reputation
IP Policy – Ownership (clause 3)
Students
• IP created in the course of studies generally belongs to
the student (reflects normal position at law)
• Can use as they wish – subject to third party copyright and
UoM confidential information
• Exceptions (where student is required to assign IP)
– Outside studies, but using ‘more than incidental’
University resources
– Copyright-restricted facilities (rare)
– Sponsored studentships & Funded research
• Outside body may require UoM to control IP
• Students to agree that IP initially belongs to UoM;
ownership then depends on terms of agreement
IP Policy – Ownership (clause 3)
IP Assignment by students (a.k.a. IP “waiver”)
• Where taking part in funded research, sponsored
studentship, industry-related scheme etc.
• IP Policy requires student to assign IP to the
University – see Appendix 2 of Policy
– University may be obliged to control IP
– May also be used in internally funded research
projects and collaborations – administratively
simpler to ‘centralise’ IP
– Other situations: matter of department policy
IP Policy – Ownership (clause 3)
IP Assignment by students
Implications of assignment:
• University will own IP – student will need UoM
permission to use or publish the materials
• Student rewarded, if IP is commercialised
• If refuse to assign: can be excluded from
research group or studentship
Others:
• Consultants/secondees – required to assign IP
• Third party funders – check grant conditions
IP Policy – Commercialisation (clause 4)
UMIP
• IP management company, advising University on
protection and commercialisation of IP owned by
University
• “First rights” to commercialise this IP
– Review IP to assess potential
– Explore commercialisation routes
– Put commercialisation into practice – use
experience and network of contacts
IP Policy – Commercialisation (clause 4)
• IP owned by University: limitations on permitted uses
by staff & students
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Don’t publish articles “giving away” patents etc.
Remember UoM confidential information!
‘Teaching Materials’ owned by University
Students’ assigned IP: need UoM permission to use
• If want to publish:
– Make case to Authoriser – UoM may allow this
• If UMIP cannot/doesn’t want to commercialise or if
originator does not want to use UMIP:
– Put case forward to University – UoM may agree to
assign IP to originator
IP Policy – Revenue-sharing (clause 8)
• Basic position: University retains no more than
15% of returns on IP
– Assumes UoM/UMIP have little or no involvement
in commercialisation
– Share may be higher (up to 45%) if UoM is more
heavily involved & has invested more resources
• Shares at University’s discretion – but agreed upfront
• Currently an exception for Teaching Materials –
position under review
• No revenue share for University Materials
Case Study
• 4 groups
• Scenario with 4 sections
• Discuss in groups – 30 minutes
• Refer to IP Policy & ‘workflows’
• Feedback and discussion
Intellectual Property
…at The University of
Manchester
Any questions?
Intellectual Property
…at The University of Manchester
Thank You!
Kaisa Mattila, Intellectual Property Lawyer
Eversheds LLP
19 May 2010