Introduction | Entrepreneurial Policy | Monitoring of Commercial Development |
Exploitation and Revenue Sharing Policy | Amendment

Policy for Intellectual Property Exploitation and Revenue Sharing

Introduction

  1. By law (e.g. the Patents Act (1977) and the Copyright, Designs and Patents Act (1988)) the University owns the intellectual property rights (IPR) generated by its employees, provided that these are developed in the course of their normal duties.  This applies to all employees, and in the case of registered students is covered under the policy for student IP.

The University has a policy to reward and encourage employees to bring forward new inventions and developments and to share with them, and the Schoos, the proceeds of exploitation.  This policy is reflected within this document.

Entrepreneurial Policy

  1. The University wishes to be involved in prescribed circumstances in the generation of new spin-out companies, to generate new jobs and wealth, to develop its technology and to share in the wealth created.

The University wishes to foster a spirit of entrepreneurship among its academic staff, and will assist, nurture and support new emerging spin-outs during their early, formative stages.  The University recognises that a delicate balance will need to be struck between its efforts on the one hand to incubate and monitor new ventures, and on the other to protect its position and reputation.  The appropriate protection and commercialisation of the University's emerging intellectual property can create a very valuable source of unfettered income to the University. In addition, it is recognised that academic inventors should receive financial reward for their activities relating to spin-outsThis policy as agreed by the University Court puts in place mechanisms to cover all aspects of exploitation and subsequent revenue sharing.  This policy may be updated and/or amended by the University from time to time.

Monitoring of Commercial Development

  1. The Research Policy Committee has the responsibility to develop strategies for increasing the University’s research and knowledge exchange (KE) income.  The sub-committee for Commercialisation & Income-generation has the devolved remit of distributing the University’s Knowledge Transfer Grant, and monitors commercialisation activity and KE.

  2. Spin-out Companies -

The University Court agreed to the a new policy relating to company spin-outs in May 2008 and as part of that policy agreed to the creation of the Strategic Business Venture Group (SBVG) to have the devolved authority of the University Court, via the Joint, Planning Finance and Estates Committee (JPFEC) (or its successor – Now Policy and Resources Committee) with the following remit:

(i)   To make the final decisions surrounding the creation of spin-out new companies;

(ii)  To be responsible for monitoring the University’s investment in spin-out and subsidiary companies;

(iii) To make the final decisions relating to any sale of equity in spin-out and subsidiary companies;

(iv) To recommend to the University the distribution of any Net Income generated as a result of the sale of equity, along the following principles;

  • a proportion will be available for non-founding staff inventors as agreed at the time of forming the spin-out
  • a proportion to be made available to the School(s) from where the activity arose, subject to approval of any proposed activity using the proceeds
  • and the remaining to be retained and managed centrally for strategic purposes proposed by SBVG, including support for further commercialisation activities.      

Membership

  • Senior Vice-Principal (Convener) or Another VP
  • Vice-Principal for Research and Commercialisation
  • Finance Director
  • Director of Research and Innovation
  • Deputy Director of Research and Innovation
  • Up to two additional members as nominated by the University Court (currently Mr Ian Suttie and Professor Jan Skakle). 

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Exploitation and Revenue Sharing Policy

  1. The two main routes through which the University may become involved in the commercialisation of its research base may be identified as:

5.1 Licensing intellectual property rights to an established company; and

5.2 Setting up a new or “spin-out” company which would develop and commercialise a specific package of intellectual property, also under licence from the University. A spin-out company may be defined as a company which is set up specifically to commercialise a particular University-owned technology. The company may be set up between the inventors and the University alone or in partnership with third party investors

  1. Net income from licensing or sale of technology (i.e. after all IP protection and exploitation costs have been met) is shared 1/3 to the inventor(s) (employees or students who have assigned their intellectual property rights to the University), 1/3 to the Colleges(s) and 1/3 to be retained centrally for strategic purposes.  The inventor’s share may be taken as a personal reward, in which case it is subject to income tax and additional National Insurance payments, or it can be put into a nominated discretionary account according the normal University procedures for discretionary funds.

Should this policy be changed, the policy in force at the time of the University first taking action to protect (or in the absence of formal protection, to exploit) intellectual property rights will be that which applies to income sharing.

  1. The University may consider spin-out companies an appropriate route in the following situations:

7.1. An academic inventor who also has in the reasonable opinion of the University the commercial drive and aspirations to become involved in a new spin-out company directed at commercialising his/her invention.

7.2. An academic inventor with a technology with appropriate prospects for commercialisation, but who has no aspirations to play a lead role in setting up a new company to commercialise an invention. In this instance, a commercial "driver" would be sought for the Managing Director position in the new company.  Should the inventor wish to have an involvement in the company (other than as a shareholder) he or she may occupy the position of research director (subject to paragraphs  below).

7.3. The University may identify an activity within the University, which it considers to be highly commercial but carries with it an unacceptably high level of liability.

7.4. The University may identify a number of complementary technologies, either within the University or from other third parties sources which together may provide the basis of a new spin-out company.

  1. In all cases, the University will seek an equity stake in the new company. This stake will normally be not less than 20% of the pre-external investment position of the proposed company and will be negotiated on behalf of the University by R&I. The justification for this position reflects the investment the University has made in its human resources, infrastructure and other support in the development of the intellectual property and demonstrates to the new company that the licence to its intellectual property has a value.  The position also allows funders to dilute the University pro-rata with other equity holders.  The final approval for the University’s equity position in spin-outs rests with SBVG.  The IP required for a new spin-out shall normally be licensed to the company and its terms negotiated by R&I on behalf of the University. In all circumstances the University reserves the right to be represented on the Board of the Company.
  2. In advance of approaching funders, the University (through R&I) and the inventors should agree upon equity share between them. If this is done, then all income derived by the University from its subsequent sale of the equity or by any licensing income associated with the technologies will be retained by the University and will not be shared with the original inventors.  The inventors will be required to sign a waiver to any future revenues which the University may derive from its share of the equity in the new company.
  3. In cases where the academic inventors do not become involved in the spin-out company which is directed at the commercial exploitation of their invention and who therefore do not receive any equity share at the outset, they will be eligible for a share from the University of any income derived from any licensing income under the normal licensing arrangements.  In the event where there is a downstream sale of the equity, revenue-sharing will be at the discretion of the University taking into account the employees involved, and the support provided by the relevant School(s). To that end, a register of inventors and participants will be set up and maintained by R&I and in each case the University and the inventors will enter into a formal revenue sharing agreement.  Net Income generated as a result of the University’s equity holding will normally be distributed on the advice of the SBVG as follows;
  • a proportion will be available for non-founding staff participants,
  • to the School(s) from where the activity arose
  • and the remaining to be retained and managed centrally for strategic purpose, including support for further commercialisation activities.
  1. Employees who wish to become involved in commercialisation activity through spin-out companies must first obtain the permission of the University through the Head of School and the Conflicts of Interest Committee. Once this has been obtained, the University's position will be represented by R&I. R&I will negotiate the equity share on behalf of the University and negotiate and prepare the licence agreement between the University and the new company. R&I may also assist the company to raise grant funding for the new venture and aid the evolution of business plans with a view to attracting venture capital funding. In certain circumstances it will be appropriate for the individual member of staff's contract of employment to be amended for the individual's involvement in the spin-out company (or alternatively a charge levied on the company). This will be co-ordinated by R&I and Human Resources, but requires Head of School approval.  SBVG shall consider the proposal and business plan relating to the new company and shall provide the final approval 
  2. The University will not be obliged to provide any administrative or financial services to any spin-out company once set up and except under exceptional circumstances will not do so. In addition, the University will have no involvement in the routine running of the company, other than where the founders have received specific permission and an appropriate secondment or consulting agreement is put in place enabling a member of staff to be seconded or to provide an executive role within the company.
  3. All of the parties involved in this activity must recognise the potential for "conflict of interest" and must undertake to take advice on this important issue as appropriate.  As such all parties involved shall adhere to the University’s Code of Practice on Conflicts of Interest.
  4. All parties involved as a shareholder in a new spin-out company must recognise they have a responsibility to take their own legal and financial advice at their own cost.

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Amendment to the Policy (Approved July 2017)

Terms and Conditions on IPR and Confidentiality

The following sections are to be considered as an amendment to the Policy for Intellectual Property Exploitation and Revenue Sharing (approved 2008), and as a revision to the 2015 Collective Agreement.

1   Overview

1.1   As an employer under the UK Copyright and Patents Act (1988) and as part of our charitable aims to protect intellectual property dedicated to public benefit under the Charity Act Scotland (2005) and subject to third party agreements entered into by the University, the University of Aberdeen asserts its right over all intellectual property created by its Staff (including inventions, software and works created for promotional, administrative and academic (including research and teaching) purposes) in the pursuance of their normal duties or duties assigned to them, subject to the following definitions, conditions and exemptions outlined below.

1.2   Notwithstanding clauses 3.1 and 4.1, activities occurring and materials created outwith the course of duties of employment and using personal materials and resources are not within the scope of this Policy

1.3   Definitions

1.3.1  Commercial activity: The commercialisation of intellectual property (including through working with industry and the licensing of patents, software and copyright) refers to any activity that is carried out to use or exploit intellectual property. In the case of patents and other registered IP, commercialisation commonly refers to exploitation through spin-out companies and other licence agreements with third parties.

1.3.2  Scholarly Works: “Scholarly Works” refer to the dissemination of research findings and outputs through publication in academic journals, monographs, book chapters, briefing papers, the publication of software for research purposes, and the like, whether paper-based or electronic, and through presentation at conferences, exhibitions and events.

1.3.3  Staff: Staff shall mean all employees of the University, including part time staff, acting in the course of their employment.

1.3.4  Teaching Materials: “Teaching Materials” refers to any teaching materials in any format (including e-learning environments) created specifically by Staff for the purpose of:

1.3.4.1   use by students in the course of their studies at the University of Aberdeen, or;

1.3.4.2   teaching and learning for and by members of the public or third party organisations, or;

1.3.4.3   administration, promotion or examination during teaching and learning.

 

2   Scholarly Works

2.1  As part of its status as a charity dedicated to the public benefit through education and the dissemination of knowledge, the University welcomes and encourages the production and dissemination of Scholarly Works. With reference to Scholarly Works, the following terms and conditions apply:

2.1.1     Subject to third party agreements entered into by the University and clauses 2.1.2, 3.1 and 3.2, the University of Aberdeen waives its rights of ownership of copyright in Scholarly Works. This means that copyright is owned by the author(s)/creator(s) of the Scholarly Works in question and that Staff (in consultation with co-authors and co-creators) are free to enter into publication contracts with external bodies, but are advised to take advice where necessary before doing so.

2.1.2     Staff grant the University of Aberdeen a perpetual, royalty-free, non-exclusive licence to the Scholarly Works to use, copy, publish and distribute for academic (i.e. research and teaching), promotional and administrative purposes including for archival and open access requirements.

2.1.3     In the event that a member of Staff wishes to publish a Scholarly Work under the protection of the University1, they shall return copyright ownership to the University, subject to the University’s income-sharing policy (outlined in its IP and Spin out policy (available above)) and any relevant third-party agreements. This may require a formal assignation in some cases. Subject to any third-party agreements, their moral rights are not affected.

3    Commercialisation of and Confidentiality in Scholarly Works

3.1   In the event that a Staff member in the normal course of their duties or the University contemplates and enacts commercialisation of the intellectual property in Scholarly Works, the University asserts its rights of ownership in any inventions described therein, subject to the University’s income-sharing policy with the author(s)/creator(s) and the rights of third parties.

3.2   Staff should be aware that the ability to patent inventions may be adversely affected by the prior disclosure (either in spoken, printed or electronic form) of the invention in question. With respect to such registerable IP and patenting and commercialisation possibilities, Staff should contact Research and Innovation at the earliest opportunity.

4  Software

4.1   In the event that a Staff member in the normal course of their duties or the University contemplates and enacts commercialisation of the intellectual property in software, the University asserts its rights of ownership in the software and any inventions contained therein, subject to the University’s income-sharing policy with the author(s)/creator(s) of the software and the rights of third parties.

4.2   Staff should seek to protect IP produced under the aegis of the University, either through the use of a copyright statement (“©The University of Aberdeen”), an Easy Access IP licence, a Creative Commons licence or through an open source agreement, and are required to exercise appropriate care in abiding by their legal protocols.  Research & Innovation will provide advice on methods for protection of software.

4.3    Subject to third party rights and notwithstanding Clause 5.2, the University waives its ownership of open source software created by Staff for teaching purposes. Staff creating open source software for teaching purposes should be aware of the conditions imposed by open source publication.

5   Teaching Materials

5.1   Subject to third-party agreements, Teaching Materials created by Staff of the University within the course of their duties shall belong to the University, subject to the University’s income-sharing policy with the author(s)/creator(s) if Teaching Materials are used for commercial purposes.

5.2   Subject to third-party agreements, the University grants the creator(s)/author(s) of Teaching Materials a royalty-free, non-exclusive, worldwide licence to use them (or jointly by them with other University Staff) for non-commercial teaching and research purposes for as long as they remain Staff of the University.

5.3    Staff leaving the University may request, in the first instance from the Head of School, a copy of Teaching Materials created by them for personal use and for non-commercial teaching and research. Permission may be granted or withdrawn by the University but will not be unreasonably withheld or withdrawn by University.

5.4    Where Scholarly Works arise out of the practice of teaching and learning at the University, they shall be subject to clauses 2, 3 and 4 above.

6  Confidentiality

The University of Aberdeen’s status as a charitable educational institution involves an obligation on the part of all Staff to ensure the dissemination of research and teaching knowledge for the public benefit, and to protect the intellectual property its creates for the public benefit. All Staff of the University of Aberdeen are required to ensure they engage appropriately with the data, information and intellectual property obligations of the institution as a whole, and as laid out in the legal statutes of the Data Protection Act 1998, the Copyright and Patent Act 1988 and the Charities and Trustee Investment (Scotland) Act 2005, amongst others. These include:

6.1   Personal and Sensitive Data on Individuals and Groups

6.1.1  All Staff of the University are required to observe confidentiality regarding the sensitive personal data of students and Staff, most particularly in dealings with third parties outwith the University (such as in the case of professional or employment references), unless that information is released for that purpose by the student or Staff member in question, or under the instructions of a court order.

6.1.2   Staff are advised that they should be aware of and maintain confidentiality consistent with their duties under the relevant professional codes of their status.

6.1.3  Staff are required to maintain the confidentiality of those aspects of research data classified as such by the ethics committee relevant to their work, unless instructed to reveal that data by law or by a requirement of a regulatory body.

6.2  Intellectual Property

6.2.1  Staff are required to maintain the confidentiality of all IP intended for commercialisation generated by Staff and students within the University, unless that IP has been rendered public elsewhere or permission granted by the owner of the IP. In particular, where IP has been created and is intended for commercialisation, Staff are required to keep data, results, electronic files, software, notebooks and the like (whether their own or that of another member of Staff or student) confidential from third parties unless instructed to do so by the University or required to disclose by law or by a requirement of a regulatory body.

6.2.2   Staff are advised to make all registerable IP-related information known to the University, either through their Head of School or through the University’s Research & Innovation department. Staff are reminded that the ability to patent inventions may be adversely affected by the prior dissemination (either in spoken, printed or electronic form) of the IP in question, and are advised to maintain confidentiality with regards to the IP in question until such time as patenting and commercialisation arrangements are secured. With respect to such registerable IP, patenting and commercialisation possibilities, Staff are strongly advised to contact the University’s Research and Innovation department at the earliest opportunity. The University’s disclosure form can be found at https://www.abdn.ac.uk/staffnet/secure/intellectual-property-258.php for such purpose.

6.2.3   Staff are advised that confidentiality over material and information may be subject to pre-existing third party agreements (such as research agreements, Intellectual Property and Confidentiality / Non-Disclosure agreements) and in that event they will be legally obliged to maintain confidentiality. With reference to sensitive information or commercialisable IP, Staff are advised to contact Research & Innovation to have appropriate confidentiality/non-disclosure agreements put in place prior to engaging with third parties outwith the University. When proposing such agreements, Staff should be cognisant of the University’s overall charitable obligations, and aware that the University may be required to relinquish data by law or by a requirement of a regulatory body2.

6.2.4    Staff are advised that the authorised signatories on behalf of the University on matters related to IP (including licences, material transfer agreements, assignations/assignments and confidentiality/non-disclosure agreements) shall be the Directorate of Research & Innovation as contained in the University’s Financial Regulations.

1 In this situation, the University will undertake responsibility for entering into legal agreements)

 

Sensitive personal data is defined by the Data Protection Act 1998 as including:

  • their racial or ethnic origin;
  • their political opinions;
  • their religious beliefs or other beliefs of a similar nature;
  • their membership of a trade union (within the meaning of the Trade Union and Labour Relations (Consolidation) Act 1992);
  • their physical or mental health or condition;
  • their sexual life;
  • their commission or alleged commission of any offence, and;
  • any proceedings for any offence committed or alleged to have been committed by him, the disposal of such proceedings or the sentence of any court in such proceedings.

 

2 If required to make such a disclosure, Staff should discuss with their Head of School in consultation with the Director of Research and Innovation at the earliest opportunity.

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