Intellectual Property explained
Intellectual Property (IP) is the generic term for a bundle of legal rights that inventors of technologies, ideas, or creative works can rely upon to protect property of the mind. Intellectual Property Rights (IPR) include registered rights like patents, trademarks, registered design rights and automatic rights like copyright, unregistered design rights, product get-up. Rights related to confidentiality of information (also known as know-how) also exist and while not a form of IP per se, it is often used interchangeably when commercialising an invention.
IP allows creativity and innovations to be treated as an asset in the same way that physical property can. The owner of IP can control and be rewarded for its use, and this encourages further innovation and creativity to the benefit of society.
The following are examples of the most common types of IP:
- Patents – a State monopoly for new and improved products or processes that are capable of industrial application;
- Know-How – commercially important knowledge/material that is not in the public domain; e.g. trade secrets.
- Copyright – new works of literary and artistic material, music, films, sound recordings, broadcasts, software and multimedia;
- Trade Marks – brand identifying marks and logos for companies, products and services;
- Design Rights – designs covering the appearance of a product based on the features of, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
Confidentiality is critical to IP Rights. To patent something, it must be kept out of the public domain until such time as a patent application has been filed. Know-how must always be kept out of the public domain.
Who owns what I create as a Queen's inventor?
Ownership of IP depends on the employment status of the inventors and their use of Queen's facilities. Considerations include:
- What is the source of the funds or resources used to produce the invention?
- What was the employment status of the inventors at the time the IP was created?
- What are the terms of any third party agreements relating to the creation of the IP?
As a general rule, Queen's owns inventions made by its employees while they are working under a grant or contract to Queen's or while using Queen's resources. The default position for certain cohorts is as follows:
- Queen's employed academics or researchers: Queen's will own any IP created in the course of your employment;
- Queen's employed fixed term contract lecturers or researchers: Queen's will own any IP created in the course of your employment for the term of your contract;
- Queen's postgraduate research students: If funded through a government sponsored grant Queen's will normally own IP created in the course of your research and will be asked to formally assign IP as a condition of their funding;
- Queen's postgraduate taught students: The student will normally own IP created in the course of their studies;
- Queen's undergraduate students: The student will own IP created in the course of their studies.
- External parties - collaborators / visiting academics: Ownership rights may vary depending on external employers’ rights, existing agreements and other factors - contact the Commercial Development team to establish the specific IP position.
If the Commercial Development team progress the commercialisation of your invention, it isusual for you to be asked to sign a confirmatory assignment, so that there is a clear and unambiguous chain of title for Queen's should it license the invention to a company or a new Queen's spin-out.
Who owns rights to discoveries made while I am consulting?
The ownership of inventions made while consulting for an external company depends on the terms of your consulting contract with the company. It is typical for a consultancy agreement to have an IP clause which assigns IP ownership from you as the consultant into the contracting company.
It is important to define clearly the scope of work within consulting contracts in order to minimise any issues with inventions from Queen's research. It is also important to identify anytypes of IP that you may use during your consulting. For example, if you have invented a technology which Queen's have patented, and you need to use that technology to carry out your consultancy, then the contracting company will need a licence to use that IP.
If you have questions, please contact the Consultancy team for advice (firstname.lastname@example.org).
Who owns rights to discoveries made while I am working for a spin-out I co-founded?
This is similar to consulting in that, in the absence of any agreement with the spin-out company, you, as the consultant or company director, will be the first owner of the new IP you have created. This can cause issues where the spin-out seeks to raise investment but does not have access to the necessary IP, either through a licence or an assignment.
In this case, if it is agreed that the company should own the outputs of your work then you should ensure a consultancy contract with the spin-out company is agreed. Keep in mind that if you are also working on Queen's related research in parallel to your work for the spin-out, there should be clarity on what is created using Queen's time, resources and funding, and what is created in the spin-out. If you have questions, please contact the Commercial Development team for advice.
Should I list visiting colleagues on an Invention Disclosure Form (IDF)?
Yes. All contributors to the ideas leading to an invention should be mentioned in your Innovation Disclosure Form, even if they are not Queen's employees. The Commercial Development team, along with legal advice, will determine the rights of such persons and institutions. Often, if co-inventors are employed by other companies or institutions then those entities will have an ownership stake in the resulting IP. It is good practice to discuss this type of collaborative work with your contact within the Commercial Development team at the beginning of the project. The R&E team will identify any partner institutions and agree a collaboration agreement which sets out how any resulting IP will be managed. It is often easier to do this before the IP is created, rather than after. Just because someone contributed to the project does not necessarily mean they are an inventor.
Can a student contribute to an invention?
Yes. Anyone involved in the work to create, develop and embody the invention may have a contribution in the resulting IP. An invention is often not simply the concept of a particularly technology, but can be both the concept and the practical embodiment of a technology. Often students make a significant contribution to the embodiment of an invention. Queen's, like most UK universities and companies, claims ownership of IP generated by their staff by virtue of their employment status and the Patents Acts. However, Queen's has no automatic claim to IP generated by undergraduate students, self-funded postgraduate research or postgraduate taught students. This generally does not affect the technology development as the student can subsequently assign ownership rights to Queen's and they will be treated as one of the inventing team and eligible for revenue distribution.