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Regulations for the Administration of the University's Intellectual Property Policy


Council Regulations 7 of 2002

Made by Council on 5 June 2002.

Amended on 13 March 2003, 3 June 2004, 22 May 2008, 2 June 2011 and 8 July 2016 (Gazette, vol. 146, p. 658, 23 June 2016)

1. (1) Where any person who is subject to the provisions of Part B of Statute XVI (a 'researcher') creates intellectual property specified in section 6 of that statute which is capable of commercial exploitation, he or she shall report its existence to the Head of Department (or equivalent) and, in the case of intellectual property arising from research, to the Director of Research Services or, in the case of all other intellectual property, to the Director of Legal Services; and shall provide the relevant Director with all necessary information concerning the provenance of the intellectual property and the circumstances in which it was created.

(2) The next step shall depend upon the source of funding:

(a) the conditions of research council grants may require the assignment of intellectual property to the research council or its nominee, or to industrial collaborators; and there may be similar requirements in agreements with other parties for the sponsorship of research;

(b) Oxford University Innovation Limited shall be entitled to and responsible for the exploitation of research funded with research council grants the conditions of which do not include such a requirement;

(c)in all other cases, the University's preferred route to exploitation is through Oxford University Innovation Limited: a researcher who wishes to exploit the intellectual property by some other means may apply to Council for permission to do so by contacting the Director of Research Services in the first instance: Council shall consider in particular the question of whether the alternative means of exploitation are likely to result in a reasonable return to the University from royalties or equity, or from such other means of sharing profits as may accrue.

2. (1) In the event of a dispute between the researcher and the University concerning the ownership of the intellectual property, the matter shall be referred to an independent expert to be agreed between the researcher and the University.

(2) If agreement on the identity of the expert is not reached within thirty days, the expert shall be a barrister specialising in intellectual property law, who shall be nominated for the purpose by the then Chairman of the General Council of the Bar.

(3) The expert's fee shall be paid by the University, but shall constitute a first charge on any profits which may accrue, whether to the researcher or to Oxford University Innovation Limited or the University, whichever party or parties is or are held by the expert to be the owner of the intellectual property.

3. (1) Where the University decides to seek exploitation of intellectual property to which it lays claim, discussions between the interested parties shall be held to determine the appropriate action to be taken.

(2) This may include one or more of the following:

(a) control over disclosure;

(b) the filing of a patent application, with the researcher as named inventor;

(c) the identification of potential licensees;

(d) the formation of a company to exploit the technology.

4. Notwithstanding paragraph (2) (a) of regulation 3 above, Oxford University Innovation Limited and the University may consult appropriate experts in the field of the intellectual property in question, on a confidential basis, in order (for example) to assist with an assessment of innovation or commercial potential.

5. (1) Where the University decides to seek exploitation, the researcher shall provide reasonable assistance in the exploitation process by (for example) providing information promptly upon request, attending meetings with potential licensees, and advising on further development.

(2) The University shall ensure that researchers do not become personally liable for product liability claims arising from the University's exploitation activities.

6. (1) Where exploitation is through the medium of a company formed for the purpose, royalty or sales fee income received by Oxford University Innovation Limited or the University from the company shall be treated in accordance with regulation 7 below.

(2) The respective shareholdings in the company of the researchers and the University (or Oxford University Innovation Limited) shall be negotiated at the time of formation or capitalisation; and unless otherwise agreed, revenues generated by the shareholdings (both capital and income receipts) shall be retained by the shareholders, and shall not be subject to distribution under regulation 7 below.

(3) If the intellectual property transferred to the company benefited from a grant by a fund administered by the University or Oxford University Innovation Limited under an arrangement which recognised the grant by earmarking some of the University shareholding, revenues generated by those earmarked shares (both capital and income receipts) shall be re-invested in the fund. Other revenues generated by the University’s shareholdings (both capital and income receipts) shall be distributed as follows:-

 

%

Oxford University Innovation Limited

15

Department/Faculty

25

John Fell Fund

10

Capital Fund

50

7. (1) In this regulation the expression 'net revenue' means gross revenue less professional fees and expenses and other outgoings in managing and protecting the intellectual property (including 30% as a contribution towards the costs of Oxford University Innovation Limited); procuring any necessary clearances, rights and approvals; and making arrangements for exploitation).

(2) 'University milestone payment' means a payment which is referable to the progress of research or development by the University, but which is not covering or supporting the cost of such research or development: the expression does not include a payment for the right to use intellectual property, or a payment referable to the progress of research or development by a party other than the University (such as a licensee).

(3) Where there is a receipt by the University which is in the nature of a University milestone payment, no part of the net revenue shall be distributed to the researcher: the net revenue shall be distributed as to 40 per cent to the General Revenue Account and as to 60 per cent to the department(s).

(4) Other net revenue received by the University shall be distributed as follows, unless otherwise specified in arrangements for commissioned works:

Total net revenue

Researcher(s)

General
Revenue
Account

Department(s)

Up to £50K

86.2%*

13.8%*

0%

Band from £50K and
up to £500K

45%

30%

25%

Over £500K

22.5%

40%

37.5%

The percentage asterisked above in the General Revenue Account column is intended to put the University in funds to pay the employer's National Insurance Contribution(s), but otherwise to leave the General Revenue Account out of the allocation of the band in question: both asterisked percentages shall be adjusted to match this intention, as and when the rates of National Insurance Contribution vary.

(5) Where intellectual property benefits from a grant by a fund administered by the University or Oxford University Innovation Limited, the distribution of net revenue shall follow the table in paragraph (4) of this regulation, save that the shares payable to the General Revenue Account (or an appropriate proportion of those shares, where the grant by the fund represents only a part of the funding for the development of the intellectual property) shall be passed instead to the fund once the University has discharged its obligation to pay the employer's National Insurance Contribution(s).

(6) Whenever the intellectual property in question consists in courseware, or in commissioned works for incorporation in or conversion into courseware, the percentages in paragraph (4) above, in all but the lowest band, shall be adjusted so that the aggregate of the percentages allocated to the General Revenue Account and to departments shall be divided as to one-third to the General Revenue Account, one-third to departments, and one-third to the e-learning Development Fund.

8. (1) The University will make payment to researchers on a quarterly basis when they have an entitlement under regulation 7 above.

(2) A researcher's entitlement under regulation 7 above shall continue to be paid to him or her should he or she leave the University; and in the event of a researcher's death, the entitlement shall continue for the benefit of his or her estate.

(3) The University will use all reasonable endeavours to obtain and maintain contact details for researchers who have left the University, and for the estates of researchers who have died. If, despite such endeavours, contact is lost for six consecutive months, the University may send notice to the last known address that the researcher's entitlement may be re-allocated. If no contact details are received by the University within a month after such notice, the University shall allocate the researcher's share to the other researchers entitled to participate in the same revenue stream (pro rata to their respective entitlements) or, if there are no other researchers so entitled, to the General Revenue Account and Departments (pro rata to their respective entitlements).

9. Where more than one researcher contributes to the creation of the intellectual property, the distribution of their share of the income between themselves shall be a matter for them to determine (and to notify in writing to the Director of Research Services); save that where there is failure to agree, the distribution of income shall be prescribed by the Vice-Chancellor, taking into account each individual's contribution.

10. If the University decides not to seek to exploit intellectual property to which it lays claim, or if, after the University has initiated or sanctioned exploitation, the University decides (in consultation with Oxford University Innovation Limited) that the process of exploitation be abandoned, the University shall not unreasonably withhold or delay an assignment of the intellectual property to the researcher (at the researcher's expense).