Mike's home-page on the Central Unix Service
This page last updated on 26th January 2006, version 18.
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This document should be regarded as work in progress, the date it was last amended is at the bottom of the page. Please return here at regular intervals to see any corrections, changes, and additions. My Email address is at the bottom and I welcome any comments, suggestions, or corrections.
Please note that this is my own personal analysis of the Cambridge University Intellectual Property Rights Policy, originally published as a Report in July of 2002 and followed up with several discussions and amendments. Following several iterations the University finally was balloted and approved the policy referenced at the bottom under the "2005 policy". Here I will make reference to published documents and other web sites, including official publications from the University of Cambridge. You should be aware that some of these statements are personal comments and opinions, not the official policy or opinions of the University, or my Department, Faculty or School. I have created these web pages because in my opinion I find some of the policy details to be controversial, misguided, and my comments are designed to stimulate further discussion and review by my colleagues and others within the University who may fall within the bounds of this policy.
What I would emphasize immediately is that what I am paying attention to are the potential legal implications and interpretations of the changes to Statutes and Ordinances, and also legal contracts of employment and other associated legal contracts, deeds and agreements covering IPR. The point is that members of Council, the General Board or others in authority within the University might express liberal views to allay our concerns, but these views can change over time and with different personnel in these posts, however in the final assessment (particularly where disputes arise), what really counts is an interpretation of the true legal position.
You might like to read this web page in the context of the Campaign for Cambridge Freedoms and of Dr Ross Anderson's web page on the detailed effects of the Vice-Chancellor's proposal.
To quote from the University's own policy guidelines
" 'IPR' means all rights arising from intellectual property devised, created, or made by staff in the course of their employment by the University whether those rights are capable of registration or not, the most common forms arising from academic research being patents, know-how, confidential information, and copyright in the form of designs, software, and associated documentation."
What I would draw your attention to is that this policy doesn't just cover ideas that you can patent or copyright. There are special laws governing patents, copyright, and trademarks, but other things created by employees of the University are also covered. For example "know-how" and "confidential information". If you have notebooks, data, databases, jottings, sketches, diagrams, drawings, paintings, movies, photographs, programs, web sites, web pages, artifacts, bibliographies, or reagents you have developed, then these can all be considered as having some intellectual property rights. If you are in the habit of working from home, maybe even using your own computer or facilities, the University still might be in a position to claim ownership of such intellectual property generated in what you regard as your own time.
Thus I think it is clear that the University's IPR policy impacts on nearly everyone employed in the University and so everyone should take notice and be aware of the possible implications.
If you are unfamiliar with the concepts of intellectual property rights it is probably worth considering the analogy with more familiar property rights. Imagine you owned a house on a piece of land, and a neighbour wants to buy or to rent a strip of your land from you. The things to consider are things such as:-
These same issues come up in considering intellectual property rights.
There are particular considerations for the University of Cambridge. Under UK law it is usually considered that much of the IPR specifically generated during employment belongs to the employer, unless custom and practice is held to set a precedent which is different to this arrangement. Certainly custom and practice within the University of Cambridge has been different. Also there is the question of the relationship of staff of the University with their employer, the University. Many members of staff hold specific posts, such as Teaching Officers, and they are thus Officers of the University whose duties are governed by specific Statutues and Ordinances in law. Members of Regent House are also members of the governing body of the University and thus to some extent are participating in administration of their own employment. Also the contractual terms of the employment might need to be considered. Is the employee contracted and paid to invent on behalf of the University, and if not what happens to IPR resulting from outside of their contractual obligations? Certainly the University is not operating as a commercial organisation, and therefor it should not be imposing commercial obligations on its staff.
Some useful general links to IPR legislation and advice are given below.
Cambridge University established its first formal IPR policy in 1987 in response to a change in the situation regarding a previous monopoly on commercial exploitation of Research Council funded work, held by the National Research and Development Corporation, which later became known as British Technology Group (now BTG plc).
A copy of this policy as previously circulated by the University's Wolfson Industrial Liaison Office and reproduced from the Cambridge University Reporter is available here.
This policy specifically related to IPR arising from Research Council funded work and requested that
"the person concerned agrees to consult the Wolfson Cambridge Industrial Unit on the possibility of exploitation of any invention before disclosing it, and, if requested, to assign his or her rights in such intellectual property to the University or its nominee in return for an equitable share of the proceeds of exploitation."
What I would immediately draw your attention to is that this policy did not claim full ownership by the University of Research Council funded IPR, it asked the inventor to
"assign his or her rights in such intellectual property to the University or its nominee".
In general what happened under this policy, was that when commercially important IPR arising from Research Council funding was identified, the individual inventors and the University entered into an exchange of legal contracts and all rights were assigned to a company "Lynxvale Ltd" owned by the University.
"The Board do not propose to make any change in the present policy of the University that it should not itself hold patents. Members of the University may, however, arrange through the Wolfson Unit for patents or copyright to be assigned to the University's company, Lynxvale Ltd."
This policy continued for about 13 years, and although it was designed primarily for Research Council funded IPR, it was also used as a basis for IPR arising from other funding sources where academics chose to bring their results to the Wolfson Unit.
The new administrative section called the Research Services Division (RSD) was created on 1st March 2000, under the management of Dr David Secher, and the Wolfson Industrial Liaison Office (WILO) became part of the RSD. The roles previously played by WILO are now mainly carried out by members of the Technology Transfer Office within the RSD
In the University Reporter of Wednesday 31st January 2001 a change in policy was recommended to extend the IPR policy to cover all externally funded research.
I would draw your attention to two key paragraphs within the 2001 document.
" 3. The 1987 policy was implemented to address the Research Councils' requirements that the University assume the rights and responsibilities relating to the exploitation of inventions arising from research funded by the Research Councils. The new policy reinforces those requirements of the Research Councils and also clarifies the ownership of intellectual property generated in the course of research funded by other external sources, including, but not limited to, charities, industry, the European Union, and UK Government Departments.
4. Under the new procedure for assignments of rights between inventors, the University, and its nominee company, Cambridge University Technical Services Limited, the arrangements for rewarding inventors remain the same, except that the threshold amounts for net income have been revised and will be updated when necessary to take into account inflation and other variable factors."
This policy document clearly still acknowledges rights of inventors and a need for exchange of these formal rights by contract because it clearly mentions the assignment of these rights.
"assignments of rights between inventors, the University, and its nominee company, Cambridge University Technical Services Limited"
With regard to this policy the original University company Lynxvale Ltd, is replaced by a new trust company called Cambridge University Technical Services Ltd (CUTS Ltd)
The statement of policy was as follows
It should be noted that the University is here claiming ownership in a way that allows it to establish alternative arrangements with other external funding bodies such as companies or charities that may wish to establish their own joint or sole ownership of any IPR generated from the research." 1. IPR generated by Externally Funded Research, except where the University has agreed otherwise, will be owned by the University;
2. The University will not claim ownership of copyright in normal academic forms of publication such as books, articles, lectures, or other similar works generated in the course of Externally Funded Research unless those works have been specifically commissioned by a sponsor;"
"except where the University has agreed otherwise, will be owned by the University;"
In practice many such organizations had already been exercising such ownership rights as a result of the funding arrangements. However it was not always clear that such ownership was immediately 100% of the property rights. This was because the investigators on the funded work may have made use of facilities not covered by external funding, and also University staff on internal funding may have participated in the projects. Thus some proportion of joint ownership rights was often acknowledged and the inventors and the University exchanged, or assigned, their rights by legal contracts.
"under the new procedure for assignments of rights between inventors, the University, and its nominee company, Cambridge University Technical Services Limited"
The 2001 policy on IPR, covering all IPR resulting from all external funding was approved by grace 6 of 21st March 2001, and will take effect from 1st October 2002
A new Report on Intellectual Property Rights was published in the Cambridge University Reporter on 24th July 2002.
This report makes a play on being just a small step forward but in fact it has some very radical implications for many staff of the University.
" 1. In this Report the Council and General Board recommend that the University extends its existing policy and asserts ownership of all intellectual property generated by its employees in the normal course of their duties, from 1 January 2003, as described in the Annex."
This now really does try to extend the University ownership up to 100% and thus by definition the ownership of all employees goes down to 0%. Within law the removal of all ownership has some interesting consequences as I will go into below, retention of even a small percentage of joint ownership would negate these consequences.
Under this new policy it is stated that
" 1. Subject to Clause 2 below, and the provisions of the Patents Act 1977, except where the University has agreed otherwise, IPR arising from intellectual property devised, created, or made on after 1 January 2003 will be owned by the University;
2. The University will not claim ownership of copyright in normal academic forms of publication including books, articles, and lectures, or other similar works generated by staff, unless those works have been commissioned by a sponsor or by the University; "
What I would like to draw your attention to is that if you search through this new Report you will not find any mention of the need of an inventor to "assign their rights", as given in both the 1987 and the 2001 policies, and as I have highlighted above. This is because the University now claims to own 100% of the IPR, so by definition the inventor now has 0% of the property rights, and thus there is no need to ask the inventor to assign anything. What this means is that there would be no legal requirement for the University to get the inventors signature on a document associated with sale or transfer of the invention. The University (in practice the RSD of course), could do almost anything they wished with the invention, they could sell it, or license it, to whoever they wished, for whatever sum they decided, and without reference to the opinions of the inventor.
Not very much is left for the inventor. If you look at what the University plans to exclude from ownership it is defined as follows.
" 2. The University will not claim ownership of copyright in normal academic forms of publication including books, articles, and lectures, or other similar works generated by staff, unless those works have been commissioned by a sponsor or by the University:"
So once you enter into normal academic forms of publication the University will allow you to have the copyright of those works. This is not really a very generous offer, as most academics assign the copyright over to a publisher (although some would suggest this is unnecessary and ill advised), and thus give up this right. If the University asserted this ownership it would have a lot of hassle in terms of signing copyright forms for very many publications, most of which have little commercial value to the University.
However what I would point out to you is that although you may keep copyright in the published works, this does not mean that you own the data, the notebooks, and the know-how, on which the published works were based. These would remain the property of the University. Thus for example if you wished to move to another University it would be within the rights of Cambridge University to prevent you from taking with you, your notebooks and data. You would in theory need to obtain the permission of the University to transfer this property elsewhere.
Another point I would highlight is what would fall outside of "normal academic forms of publication"? Would for example a popular science book, based loosely on one's academic research, (e.g. Stephen Hawking's "A Brief History of Time") fall outside this category of "normal" ? If it does then by definition and extrapolation of the contract, the University might be able to claim legal ownership over such works. Clearly the University is only likely to do so where reasonable sums of money might be involved, and also where they felt that they could weather any adverse publicity. But I ask, should we allow such legal ambiguities of ownership to exist in the first place?
Also what are the legal implications of the following phrase?
"unless those works have been commissioned by a sponsor or by the University:"
I think I can see how any external sponsor would commission IPR. There would need to be some formal documents and contracts in place. Perhaps a grant application signed by the applicant. But how does the University commission its own employees to produce IPR? Is it simply necessary for a Faculty Board, or Head of Department, to ask you to give a lecture, or to prepare a handout, or a web page? Do any accompanying handouts, notes, web pages you produce alongside and on a voluntary suddenly revert to the ownership of the University? What if you were later to prepare a text book based upon your lectures, or a web site? What if you were to move to another academic institution? What legal rights would you retain in these works?
Under the 1987 and the 2001 policies above these rights were very clear. You retained many rights in IPR except where they had been derived through a specific external research grant or contract. At the point where you entered into these contracts there was usually some "small print" defining the scope of ownership. Often the IPR resulted in a question of joint ownership, and so the easiest thing to do was to enter into an exchange of rights by assigning the ownership into a single entity, e.g. Lynxvale Ltd, or CUTS Ltd. Thus at the end there is the convenience of ownership by a single owner, but there is also a definite legal paper trail of documents defining the exchange of rights by all the original owners. Under the proposed 2003 policy that necessity will cease and so the University employees will no longer have any specific documents defining their rights over a particular item or items of IPR. The only signature required in most cases would be the signature on the original contract of employment. Which states as in contracts since 1998.
" 10. Employees' contracts are subject to the Statutes and Ordinances of the University, and those issued since November 1998 state that an employee is 'required to observe the University's policy on Intellectual Property Rights as may be decided by the Regent House from time to time'."
So if you have been employed since that date, or if you have been promoted and have signed a new contract, and you did not strike out this clause before signing. Then the University has a stronger hold over your IPR. Your main way to control your rights is to influence the changes to Statutes and Ordinances as decided by Regent House. If you are a member of Regent House, then you can of course attempt to call a ballot on graces or to propose amendments to graces.
Anyone looking at the recent cluster of documents published by the University should notice an interesting phrase which appears at key points. This phrase is "from time to time". This phrase appeared in contracts of employment in November 1998.
" 10. Employees' contracts are subject to the Statutes and Ordinances of the University, and those issued since November 1998 state that an employee is 'required to observe the University's policy on Intellectual Property Rights as may be decided by the Regent House from time to time'."
It is now clear from this statement that the University had in mind, reforms of the policy governing IPR from at least this date and that these policy changes are also bound up with the reform in University Governance and the introduction of a more bureaucratic style of administration, particularly through the Research Services Division, which, has been pointed out above, was created in March of 2000, and which swallowed up the Wolfson Industrial Liaison Office.
The change in IPR policy was made in January 2001 and rather interestingly it ends with the following phrase
"3. Where revenue is generated by the exploitation of IPR arising from Externally Funded Research, any net benefit received by the University, after deduction of agreed costs, will be shared between the inventor, his or her Department and the University on the following terms, which shall be revised from time to time."
The magic words "from time to time" appear once again. Looking at the new proposal for 2003 this same phrase is still present.
"3. Where revenue is generated by the exploitation of IPR, any net benefit received by the University, after deduction of agreed costs, will be shared between the inventor, his or her Faculty or Department, and the University on the following terms, which shall be revised from time to time."
Why is there a need to emphasis the possibility that this policy is subject to change? Is it that the University is trying to "soften the blow" of a need for regular and recurring amendments by giving us this warning? This type of phrase is not common in Statutes and Ordinances. It is generally known that these regulations may be changed by due process, so why tell us this obvious fact by using a "from time to time" phrase?
Perhaps there is a more complex, even devious, legal interpretation of this clause? In the 2002 Report there is an admission that the Research Policy Committee took legal advice as to whether they could make any changes in policy retrospectively active.
" 10. Employees' contracts are subject to the Statutes and Ordinances of the University, and those issued since November 1998 state that an employee is 'required to observe the University's policy on Intellectual Property Rights as may be decided by the Regent House from time to time'. The question was therefore whether such a change in policy might have an adverse effect on individual contracts of employment. Counsel's opinion was that 'The University can change its current practice by introducing a new policy. This policy should be incorporated into the University's Statutes and Ordinances.' He further stated that 'There are, however, potential problems in the University attempting to change policy in order to assert rights in relation to past copyright and inventions. An attempt to do so may well amount to a breach of the implied term of trust and confidence between employer and employee.' "
However what will be the situation post 2003 if the new policy is approved by the Regent House? As I have already pointed out once the University have taken full ownership of IPR they no longer need to enter into a separate agreement or contract with the inventors for each individual piece of IPR. As possible compensation for the loss of ownership in a particular invention they are offering a share of any income received under what appear to some to be very favourable terms.
In an Email exchange with colleagues on a Departmental mailing list, two senior members of the University argued that the new policy was reasonable and generous. But I wonder if they have taken account of the full implications of the loss of any ownership rights and also that "from time to time" phrase? At present the sharing is 1/3 between all the inventors, 1/3 to the Department and 1/3 to the University, but beware of
"which shall be revised from time to time."
My reading of this is that the University could revise this distribution of income at any future time and it would instantly have effect on any income arising from IPR generated after 2003, because the inventor would have known that there was a possibility of variation due to the existance of that magic phrase "from time to time" within the contract of employment and the published IPR policy.
Thus members of Regent House might believe that they are endorsing a simple and generous position of 1/3, 1/3, 1/3, but they should realize this may not remain as the long term position. It is interesting to speculate who, or by what mechanism, the sharing of the commercial income could be changed? Would a simple notice of the Council be sufficient? After all if the policy is accepted as worded within the Report, then Regent House will have approved of the the concept of revision "from time to time" without explicitely saying by what mechanism the revision should occur!
At present under the old policy inventors have their share of income protected because at the time of assigning their rights over to the University they also usually enter into a revenue sharing agreement. This legal contract lays out the terms of revenue sharing such that the University is bound by law to respect the terms of the agreement or contract. As pointed out above, once the University has 100% ownership there is no legal imperative to negotiate the terms of the agreement covering revenue sharing.
The 1/3, 1/3, 1/3 sharing looks reasonably generous until you take into account the possible exceptions. If already dealt with the "from time to time" clause, but what are the legal implications of the following
"3. Where revenue is generated by the exploitation of IPR, any net benefit received by the University, after deduction of agreed costs,"
In general the University has first of all assigned rights to its designated companies, Lynxvale Ltd, and, Cambridge University Technical Services Ltd. These are companies with liability limited in law, and which covenant across their annual "net profits" to the University as a charitable donation. However what if these companies start to accrue additional costs and liabilities? What if a major lawsuit is taken out against the company over one particular piece of IPR? It seems to me that there is the potential to lose some or all income from all of the IPR, which has been assigned to the company, if there are substantial legal costs associated with liability over even a single piece of IPR. A situation of the University putting all of its eggs in the same basket.
Then there is the "after deduction of agreed costs" clause. Under the previous policy, and when assignment documents were executed, the University and the inventor usually also entered into a revenue sharing agreement. At this point the inventor and the University are in a position to negotiate over the terms of that agreement and the "agreed costs" can indeed be agreed by both parties. However if the University take 100% ownership rights, there will not be a need for the inventor to put their signature to an assignment document and so there is not the same possibility to bargain over the "agreed costs". So under the new policy who will agree the costs and how much will they be? 1/3 of no "net benefit" is nothing to the inventor!
There are further implications for loss of ownership over IPR. Property rights, are, as the name suggests, something which can be negotiated, bought, sold, licensed, and importantly which can be bequeathed on death to a persons estate and heirs, or if desired, given to charitable causes. Presently, and mainly because inventors within the University often have some ownership of IPR, these privileges of ownership exist. If a member of the University were to die, yet leave behind IPR, then this would belong to the persons estate, and could be inherited by the person's dependents.
If the 2003 policy is adopted then this would cease to be true. A persons ownership of IPR would be 0% (except of course for any "normal academic forms of publication"). Thus there would be nothing of any possible substantial value for the estate to inherit. As far as I can see under the proposed policy the University would be under no legal obligation to continue to pay income from IPR to the estate of a deceased member of staff of the University.
Also it is not clear to what extent the University would feel obliged to honour any commitment to make payments to a member of staff who had left the employment of the University prior to the exploitation of IPR. At present there is a legal imperative for the University to track down all named inventors of IPR because they need their signatures on deeds of assignment in order to prove ownership over the property the University wishes to negotiate. However once the University claims ownership of 100% of the property rights, it no longer needs to provide the assignment deeds, it does not need the signature of the inventor, so it doesn't matter if the inventor is not contacted or traced.
At present the University finds it difficult to enter into formal agreements over all future IPR because it doesn't know if it own them 100% or not. If it is not sure it owns all the IPR, then it can't fully commit this IPR, without the agreement of the individual inventors. This has obvious advantages for the inventor because you cannot be committed to work for a commercial goal without your consent. At present if you accept external funding then this is usually tied to a research contract or grant. The academic is fully aware of the terms of the research contract or grant and thus aware that the research they are doing might be tied up by agreements with a research council, charity or other sponsor. Presumably in accepting the research grant or contract they are happy with the arrangements and the sponsor.
However, under the proposed rules, the University would not need to seek consent of an inventor, to sell or license the IPR emerging from the inventors work. Indeed the University could commit the future IPR coming out of an inventors work to almost any person or organisation they wished, and on almost any financial terms.
What might be attractive to the University would be to roll up all the future IPR emerging from a particular field of study, Department, or Faculty and to commit it in a single financial agreement. Thus for example all of the output from the computer laboratory could in theory then be committed to a single major computing company, or all of the output from biological sciences could then be committed to a major pharmaceutical company. Obviously such a deal might bring in large amounts of money to the University, to for example, fund a new Faculty building. But what if individual members of the faculty objected to the organisation concerned in the agreement? Their only recourse under the proposed policy would be to leave the University.
During the Email exchange on the Departmental mail list, Prof Minson stated the following.
" There is no suggestion in the report that the University wishes to control IPR or its exploitation and in practice it will be unable to do so. If an academic chooses not to patent an invention, then he or she merely publishes it. Exploiting IP without the cooperation of the inventor is very difficult and it would be daft to attempt it."
Whilst I can see that in many cases it would be difficult without the co-operation of the inventor, particular for some complex forms of IPR, it is clearly not impossible. There is a high turnover of staff in the University and once the University owns all the IPR it is going to have to deal on a regular basis with inventors who leave the University to work elsewhere, or retire, or who die. Prof. Minson makes the point that the academic could always publish first and hence negate the possibility of the University registering a patent. This firstly makes the assumption that the IPR is patentable or secret "know-how", but as outlined above, the proposed policy goes way beyond these concepts. Secondly Prof Minson assumes that the academic would have a legal right to publish or give their ideas away for free without permission of the University.
Whilst I agree that an academic has a moral right to publish, my interpretation of the University's legal position on freedom of the academic to decide on prior public disclosure is different to Prof Minson's. At about the same time as the change in the IPR statement within University contracts, another clause appeared to do with confidentiality. This clause states.
"Confidentiality: Subject to your rights of freedom of speech under the Education (No 2) Act 1986, Section 43 and any subsequent legislation, you must not directly, except in the proper course of your duties, either during or after a period of this appointment, disclose to any third party or use for your own purposes or benefit or the purposes of any third party, any confidential information about the business of the University unless that information is public knowledge or you are required by law to disclose it. "
Obviously under the proposed policy all IPR will be the "business of the University", because they will own it all. The academic will have no property rights over most of their IPR, except for "copyright in normal academic forms of publication", so if the academic publishes or gives the IPR away freely without the permission of the University they may legally be in breach of terms of their contract of employment.
Indeed under the policy it is expected that academics will seek permission of the RSD before public disclosure because in the proposed policy it says,
"The policy will only apply to inventions made by employees in the normal course of their duties. Inventors will be expected to disclose all such inventions using the existing procedures within the Research Services Division. "
and also within the Report,
"Assistance with the implementation of the new policy may be obtained from the Research Services Division."
Again I would remind you of the fact that the proposed IPR policy is not just restricted to patentable inventions
" 'IPR' means all rights arising from intellectual property devised, created, or made by staff in the course of their employment by the University whether those rights are capable of registration or not, the most common forms arising from academic research being patents, know-how, confidential information, and copyright in the form of designs, software, and associated documentation. "
If you visit the Research Services Division web site you will find a series of documents on how to disclose your IPR to the Technology Transfer Office (TTO)
The information on the RSD web site within the document "Invention disclosure form: notes for inventors" states
"Be careful to avoid any non-confidential disclosure of your invention to other people or organisations - such disclosures can damage or destroy the possibility of obtaining patent rights. The Technology Transfer Office (TTO) can advise on this. For the same reasons, we recommend that you do not transmit these documents to us by Email."
Clearly the University is instructing its members to keep the information confidential both in the contract of employment and in the IPR Policy as well as in documents available on the RSD web pages. So how long will it be before disciplinary action is taken against a member of staff for breach of contract over an unauthorized disclosure of the University owned IPR? For example, it has already been suggested that some members of th RSD are unhappy with software, (computer programs), being given away for free, or under the GNU public license, when it might be possible to sell the same software for commercial gain to a single computer company, rather than allowing it to be freely distributed and used.
So just how free are academics going to be, to publish or to license, their ideas in a non-restricted or open access form if the proposed policy is approved by Regent House? Is this just a small step onwards as some would have you believe, or is this policy change a dramatic reduction in academic freedom?
At the very least, and particularly if implemented in full detail, the new policy will often result in restrictions, and in delays, to academic publishing and lecturing. Some, perhaps many, will ignore the legal implications of the IPR policy and will continue to publish and lecture without ever consulting the RSD. Of course the consequences of that are that it may later transpire that the academic is accused of losing rights to valuable IPR. A very good example of this was the level of criticism of the Nobel prize winning scientist César Milstein "for failing to patent the idea of monoclonal antibodies". César in his defence was able to claim that no clear structure for exploitation of academic IPR existed in 1975, and that he did approach the MRC and the NRDC, who showed little appreciation of the possible future benefits. This is detailed on another web page of mine.
It is interesting to reflect at this point on the fact that both Dr David Secher, now Director of the University Research Services Division, and myself, were associates of César Milstein in the late 70s, and early 80's, and witnessed at first hand the debates about academic responsibilities over commercialization of intellectual property rights. Whilst he is now responsible for helping to introduce, and implement a very bureaucratic administrative control over Cambridge University's academic IPR, I find myself convinced of a need to defend academic intellectual property rights in order to maximize the benefit to the public. César gave his ideas, and his help, quite freely to other academics, and as a consequence the applications of the monoclonal antibody technology rapidly spread throughout the world, with many improvements in antibody based diagnostics, and more recently antibody based therapeutics following. In contrast the IPR around phage display was heavily protected by patents, and only exclusive licenses granted, such that free development of this technology has in my opinion been hindered by litigation threats, battles in the courts, or fears of substantial royalty payments. A valid question to ask is which really provides the greatest benefit to society at large, free access to such IPR, or restricted access with payment of high royalty rates? I have mixed feelings about the benefits of patents in the area of human medicine.
If the academic is to obey and follow the proposed policy rules, then before making a new disclosure of their data, e.g. if they are about to go off to a conference, or deliver a seminar, or are preparing to send a paper off for publication, it should be reviewed by the RSD. If the RSD think that further protection of the IPR, e.g. through filing of a patent, is necessary then they can ask for a delay in disclosure until the necessary filing of a patent can take place.
On their web site the RSD details their "Service Standards".
and for example they quote that the TTO will
"
- Prepare standard out-going Materials Transfer Agreements (MTAs) within five working days of provision of all necessary information.
- Comment on non-standard/third party MTAs within five working days of provision of all necessary information.
- Prepare Standard Confidential Disclosure Agreements (CDAs) within five working days of provision of all necessary information.
- Comment on non-standard/third party CDAs within five working days of provision of all necessary information.
- Prepare a standard consultancy contract within five working days of provision of all necessary information.
- Respond to TTO.enquiries (email) by the end of the following working day.
- Acknowledge receipt of new Invention Disclosures, Consultancy Requests and CDA requests and MTA requests within one working day. "
This last item in the list is very interesting because as I pointed out above the TTO invention disclosure form asks you to
"Be careful to avoid any non-confidential disclosure of your invention to other people or organisations - such disclosures can damage or destroy the possibility of obtaining patent rights. The Technology Transfer Office (TTO) can advise on this. For the same reasons, we recommend that you do not transmit these documents to us by Email."
So presumably it is necessary for the academic to send the completed form in the post, by messenger service, or by hand. Followed by the delays in processing the form. As an example of this procedure in action, I recently completed an invention disclosure form on the 9th of August 2002 and put it into the University mail for delivery to the TTO. I received the following reply by email on the 28th August 2002 (19 days later!) {I've disguised the details of third party individuals using the asterisks}.
" Date: Wed, 28 Aug 2002 09:22:17 +0100
From: TTO Enquiries <tto.enquiries@rsd.cam.ac.uk>
Subject: Your Invention
To: ******************, mrc7@cam.ac.uk
Dear Dr. ********* and Dr. Clark,
Many thanks for your Invention Disclosure regarding X, which we received today.
I have added the details you have provided to our computer system and compiled a new case file. I have also made a request to our Research Collaboration Office to provide us with details of your funding. This should take no more than three days. Your case will then be allocated to one of our Technology Transfer Executives and I would expect them to contact you about your invention in about seven days from now.
If in the meantime you have any questions, or if we can be of further help at this stage, please don't hesitate to contact me at tto.enquiries@rsd.cam.ac.uk
Kind regards,
*************
Case Administrator,
Technology Transfer Office
Tel: 01223 (3)33543
Fax: 01223 (3)32988"
{Please note that I have been asked by a member of the TTO to point out that details of my invention had already been forwarded on to a patent agent and a meeting arranged, before I had sent in the invention disclosure form. Thus the delay in processing the form had not in this case proven detrimental to the patent process. However I would maintain that it serves as a useful illustration of the official procedure particularly since it turns out that the delays were not due to the TTO acting in awareness of a parallel process already underway.}
It turns out that most of the 19 days delay was accounted for by the letter sitting unopened in a TTO officers inbox whilst they were away from Cambridge.
"As you know I was at ***** from 12-26 August, and your form unfortunately sat in my in tray and was not opened by the person looking after my post as the envelope was marked as confidential."
This in itself seems interesting that the TTO did not have proper procedures for dealing with possibly urgent correspondence marked "Confidential", when in fact the University Policy indicates that most of the paperwork handled by the RSD should be classified as "confidential"!
The University recently published its Information Data Security Policy: Notice, in the July Reporter
This mentions that
"The University, its staff, and students will need to comply with all applicable laws including the Data Protection Act (1998), the Regulation of Investigatory Powers Act (2000), the Human Rights Act (1998), the Copyright Designs and Patents Act (1988), the Computer Misuse Act (1990), and the Lawful Business Practice Regulations."
So clearly the policy is intended to cover patent issues within the University. A patent disclosure form is obviously not suitable to be classified as levels 0 or levels 1, under this Notice.
Level 0: Unclassified or public information
Level 1: Cambridge Only
My interpretation under the policy is that an invention disclosure form probably is not rated at the highest level 3, but instead conforms to level 2.
Level 2: Confidential information
This covers certain meeting minutes, general personal information, financial information, or other information designated as confidential but that may be dealt with by any staff with delegated responsibility from the recipient (i.e. it is not, in a strict sense, information 'for your eyes only').
(i) documents should be marked 'Confidential'; hard copy (paper) documents must enclosed in sealed envelopes also marked 'Confidential'
(ii) envelopes should only be opened by the designated recipient(s) or staff with appropriate delegated authority (e.g. confidential secretary or designated staff during absence)
So was I wrong to assume that the TTO would have in place procedures for dealing with confidential papers during a staff members absence?
Also the standard email reply I received asked me to wait another seven days before finding out what the next stage of the process was, and thus to hear how long it might be before I could go ahead and make details of the work public! {In fact as pointed out above this "standard reply" was not of serious consequence in my particular case because parallel procedures were already in hand.} However using this as a general example of the procedure it doesn't take much imagination to see that if every public disclosure in the University has to be approved by the RSD first, then the system will involve immense delays and will most probably prove unworkable!
It used to be the case that, commonly, academics freely gave of their advice and ideas, particularly in discussions at public forums, conferences and seminars. Perhaps during a drink in the bar, after a conference session, two academics from different institutions might come up with a plan for a simple collaborative experiment. This experiment might involve them exchanging reagents, and perhaps they have different sponsors for their projects. Their two institutions might thus potentially claim separate ownership over work done.
According to the policy rules, they may be in breach of them, if they do not disclose this collaboration and the exchange of the reagents to the RSD first. Depending upon the nature of the collaboration, the RSD might want to set in place a formal research collaboration agreement, and/or, a materials transfer agreement (MTA). As can be seen above, the TTO within the RSD promise on their web site to "Prepare standard out-going Materials Transfer Agreements (MTAs) within five working days of provision of all necessary information" and to "Comment on non-standard/third party MTAs within five working days of provision of all necessary information."
Details of the Materials Transfer Agreements can be found at
Which states that
"The TTO manages and negotiates agreements governing the transfer of research materials between the University, other research institutions and commercial organisations, whilst ensuring that the research interests of the University and its researchers are protected. The TTO is authorised to sign such agreements on behalf of the University. "
and on the facts page it says.
"What is a Materials Transfer Agreement?
A materials transfer agreement is a contract that governs the transfer of one or more materials from the owner (or authorised licensee) to a third party for internal research purposes only. Materials may include cultures, cell lines, plasmids, nucleotides, proteins, bacteria, transgenic animals, pharmaceuticals and other chemicals. MTA's can also be applicable for the transfer of materials in engineering/physical science applications.
Why do we need MTA's?
The sharing of reagents and materials is widespread throughout the scientific community and is vital for the progress of research. However, most commercial organisations, and an increasing number of academic institutions, will only release materials if there is an MTA in place between the provider and the recipient. For the provider, this agreement provides a number of comforts including restricting the use of the material to non-commercial research, and reducing legal liability for the recipient's use of the material. In addition, the terms of the MTA can help the provider to gain access to the results of the research, both for information purposes and for commercial exploitation."
I think it is a telling point where they say that, "an increasing number of academic institutions, will only release materials if there is an MTA in place between the provider and the recipient". But this is precisely because of the current obsession with University administrative sections trying to enforce rules of ownership of IPR and to take full ownership of the IPR. This process has become a serious brake on new innovation and often prevents academics from disclosing or discussing their most up to date ideas at conferences or symposia. It also seriously hinders or prevents many collaborations from taking place.
It also states on the page
"Who should sign MTA's?
MTA's are legally binding contracts and as such it is vital that an authorised signatory of the University executes the agreement properly. As departments are not legal entities, they or their staff should not sign or be parties to the agreement."
This statement I think goes beyond the current legal position as far as I can see. At present University employees may indeed be the owners of their own IPR and as such I cannot see why they are unable to execute an MTA with their own signature, provided that they are sure that the MTA only covers material over which they have some legal ownership. Of course if the University do get 100% ownership of all IPR, then the above statement may indeed be true.
A very serious question to ask is, does society in general benefit if there are delays in academic research, and projects are prevented from going ahead, simply because the University is trying to take ownership of all IPR? Yes ownership of the IPR might bring in some money to the University, but it also might mean that a product costs more for the public to buy because additional royalties now have to be paid to the University. So the public paid for the research in the first place, and now they are being asked to pay again to receive the benefit of the product! Also because the University has taken ownership it needs to put more resources into managing that ownership. In fact managing the total IPR might soak up more financial resources than it brings in to the University!
Might it not be better for the public to allow most academic research to be freely given away without restriction of license fees, royalties and agreements? After all if companies make profits from sale of products based on academic research, the companies will pay tax, and the Exchequer can then give some of that tax back to support Universities, in block grants and research contracts, as has always been the case before.
Is it a sensible model to make Universities try to behave like commercial companies? Should Cambridge University start to behave like Camsignia Plc? Is that what the government or the public wants? Companies usually already carry out their own research and development, and with their own resources. Academic research in Universities has different goals and aspirations, doesn't it? Isn't academic freedom a cornerstone of the ideal of a University? Aren't intellectual ideas part of that academic freedom? For sure if we allow academics to keep control of some of their IPR then that may be abused, some academics might claim more of their moral share of any financial income. Many others. like myself, are happy to share income with the University even where there is no legal obligation. Isn't this a price it might be worth paying in order to maintain the more important rights of academic freedom in general?
A Discussion of the IPR proposals took place at the University Senate on, Tuesday 15th October 2002. There were so many people who wished to speak that Discussion was continued on the following week on Tuesday 22nd October. Full details of all of the statements are recorded in the University Reporter No 5901, Published Wednesday 30th October 2002.
Thirty five people spoke at the Discussion, and all but a few were critical of the proposals in their current form. Of those that spoke in favour most were representatives of the committees that had drafted the proposals, or who had approved the proposals for publication. Of the majority who were critical, very many different points were raised in addition to those listed on this web page. Criticisms of the scheme were made from the perspective of many different faculties as well as from those involved in technology transfer with industry. Crucially several who were qualified lawyers also made relevant criticisms of the ambigous legal drafting.
The Council published their reply to the Discussion in the Reporter No 5907 of Wednesday 11th December 2002. Rather amusingly in their reply they pretend that the Discussion was not as unfavourable as it was in reality!
To quote
"The Council have received the remarks made at the Discussion of this Report on 15 and 22 October 2002 (Reporter, p. 226). They have noted both the comments in support of the recommendations and those setting out the concerns raised by several of the speakers and have referred all the remarks to the General Board and their Research Policy Committee for consideration."
I recommend that where the Council notice claims "concerns raised by several" you should really read instead "concerns raised by the overwhelming majority"!
The council action has been to refer the matter back to a group appointed by the Research Policy Committee under the chair of Professor W.R. Cornish and this group is charged with responding back to the RPC and the General Board by the End of the Easter Term 2003.
The Reporter dated 19th March 2003 Number 5919 contains on page 722 a Notice from the Council and the General Board requesting submissions to working party on intellectual property rights.
The key part of the notice reads
The Research Policy Committee has set up a group, to be chaired by Professor W. R. Cornish, on the ownership of intellectual property rights. The Working Group, whose members are Professor R. H. Friend, Professor I. M. Leslie and Professor A. C. Minson, are publishing a consultative document requesting comments from Faculties and Departments, Councils of the Schools, and individual members of the Regent House. The text of the consultative paper is reproduced below. Responses should be in writing and should be sent by Monday, 19 May 2003, to Ms C. C. Hewetson, Secretary, Working Group on Intellectual Property Rights (IPRWG), 22 Trumpington Street, Cambridge, CB2 1QA.
Useful links to the Notice and other relevant reference information has been put on th University administration website.
The Reporter dated 6th August 2003 Number 5933 contains on page 26 the Report of the RPC Working Group on Ownership of Intellectual Property Rights (IPRs). The Report lays out many points to be considered but does not propose a definite wording for a new grace. The Discussion of this Report was scheduled for 21st October 2003
A new Cambridge IPR policy came into force following the outcome of a ballot of Regent House and it is published in the University Reporter and can be read online at the following URL
The policy came into force on 12th December 2005. (There is a statement made by the Council in the ballot papers that where possible the provisions of this new policy would also be applied to any IPR arising since 2001 which was not already subject to agreements of that interim policy)
Any careful comparison of this policy with the 2001 policy or the 2002 proposals will show that there have been many changes to the policy. Many of these changes do address the criticisms I have raised in the above paragraphs. Thus the opposition to the original proposals has been successful in that it has encouraged many improvements. The major changes between the 2001 policy, the 2002 proposal, and the finally approved 2005 policy are that the final policy mainly concentrates on University ownership of registrable IPRs such as patents and trademarks. The crucial paragraphs in the context are paragraphs 6, 7 and 11 which set down that the University claims ownership of registrable IPR, the individual inventor may have ownership of other residual IPRs, and the owners of such IPRs have the right to assign or license them.
6. The University shall have the initial right to apply throughout the world for a patent for an invention, for another right in novel technology such as a utility model or petty patent, for a plant variety right or plant patent, and for a registered design for a product, any associated trade mark registration associated with another registerable right belonging to the University, or any other type of intellectual property that is dependent on registration, deposit, or grant at the time that these regulations are approved. The University or its delegated nominee, currently the University's wholly owned subsidiary, Cambridge University Technical Services Ltd (CUTS), will become the proprietor of any intellectual property right that is in consequence granted or registered. A University staff member who is the relevant creator shall be named as such in the application.
7. Other intellectual property rights, arising from the activities of University staff in the course of their employment by the University, which exist without the need for any formal application at the time these regulations are approved, belong to the University staff member who creates the results subject to any third party rights which he or she may have previously agreed. This applies in particular to copyright and moral rights in literary, dramatic, musical, and artistic works; copyright in software, notwithstanding that there may also be patentable results embodied in the software; copyright arising from authorship of a database; performers' rights; unregistered design rights; and rights over information (such as trade secrets and confidential know-how)..
11. The party initially entitled to an intellectual property right by virtue of Regulations 6-8, whether the University or a University staff member, may deal with the right by assignment, licence, waiver, or other dealing entered into before or after creation of the subject-matter of the right, so far as is permitted by law. The University may elect to assign its intellectual property rights in appropriate cases to a nominee company.
In addition even where the University claims ownership there are also new provisions for when an inventor may decide that they do not wish to exploit IPR such as patents through the University technology transfer organisation Cambridge Enterprise see paragraph 21.
21. The relevant creator of the subject matter, or creators acting jointly, may decide that they do not wish it to be exploited through Cambridge Enterprise and then may require the University to assign the rights referred to in Regulations 6 and 20. If not in contravention of any agreement governing ownership or exploitation of the subject-matter, this assignment may be to the creators for a fixed percentage of royalty income in the case where the creators decide to license or assign the rights to a third party; or under negotiated licence/equity terms when the creators are forming a company to exploit the rights. In the last-mentioned case, the guiding principle shall be that a fixed percentage of the rights attributed, on a fair and reasonable basis, to intellectual property, often referred to as inventors' rights, shall be assigned to the University. Any assignment by the University shall be conditional on the repayment of any funds expended by Cambridge Enterprise on protection of the subject-matter. If the creators cannot reach agreement, Cambridge Enterprise shall make a decision, against which any party may make application to the Technology Referee. The fixed percentages referred to in this regulation are set out in the Schedule attached to these regulations.
The determination of whether such an assignment is or is not in contrary to any agreement shall be made by the Research Services Division within 30 days of being supplied with all relevant information. Any determination may be the subject of a reference in accordance with Regulations 32-39.
At the end of the policy here is also a schedule that sets out the revenue sharing basis for IPR such as patents initially owned by the University. The percentages depend on whether the IPR is handled and exploited by Cambridge Enterprise in which case the sharing is the familiar 1/3, 1/3, 1/3, or if the inventors decide that they do not wish to use Cambridge Enterprise the ratio is 85% to the inventors and 7.5% each to the University and to the Department.
I would welcome feedback on the opinions on this web page. If you think the issues are important then there are a number of things you can do. First try to bring the issue to the attention of others, in your Department, Faculty, or College, who may not have noticed the Report published in the Reporter during the summer vacation. If you are involved in negotiating IPR issues with the University, then check the points I raise in this document against any contracts or agreements you are asked to sign. I recommend that you seek professional legal advice if you are in doubt. If you are a member of "Senate" then you can speak to the issue at "Discussion". If you are a member of the "Regent House" then you have an opportunity to help to call a ballot on any "Grace" or help to propose possible amendments to the "Statutes and Ordinances".
Please contact me as