Issue link: https://htpgraphics.uberflip.com/i/116729
Intellectual Property Section 2 Searches will not only identify any patents/applications held by your institution but also any patents which are held by third parties and therefore whether the company would be at risk of infringing third party rights. Ownership The company is a separate legal entity to you and your institution. It must either buy the IP it needs or, at the very least, obtain permission from the owner of the IP to use and exploit it. Generally, the owner of any IP is the person who created it, unless it has been sold previously. However, there is one important exception to this position. An employer generally automatically owns the IP created by its employees in the course of their employment, unless the contract of employment specifies an arrangement to the contrary. An employer in the UK will only hold rights in a patentable invention created by an employee if it was created in the normal course of the employee's duties or in the course of duties specifically assigned to the employee and, in both cases the invention might reasonably be expected to result from the employee carrying out such duties. Employees of academic institutions will usually include professors, readers, lecturers, technicians, research staff, project officers, experimental officers, support staff and administrators. Students will not normally be employees unless, in addition to being registered students, they also have a contract of employment with the academic institution. A number of research institutions have IP policies which specify contrary arrangements under which the institution, as an employer, waives its rights to ownership in certain circumstances. You should check with your IP commercialisation organisation, research administrator or Registrar to find out how you are affected in this regard. It is difficult to trace back ownership if a number of researchers/students have been involved in the development work. Always check IP policies and relevant specific agreements to find out whether your research institution holds the rights to the IP concerned. Consider any individuals who may have joined the research team from another research institution. Will any IP still be owned by that research institution? Consider any individuals who have left the research team to go elsewhere. Could they have taken any IP with them? Check the terms 11