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 –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 CourseworkThesesJournal articles Lab notebooksDesign drawingsWebsites Teaching materialsPresentationsImages & photos SoftwareTeaching videosInternal 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 co- authors’ 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: –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 co- authors 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: –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 –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