Intellectual property code

That the University’s collective decision-making on IP should create positive impact and be for the public benefit.

That the creator(s) responsible for the IP will be the primary influence on the negotiations necessary to

1. Fund the research
2. Agree ownership of the invention or arising IP
3. Agree how that invention should be used for the public benefit.

That University professional services will enable researchers and other creators of IP to efficiently engage directly with outside bodies on the understanding that they adhere to University policies and provide the University with visibility of their activities to ensure that Principle 1 is respected.

The University owns all IP created by its employees unless it is created in a private capacity that is inconsequential to the employee’s role.

A student owns all IP they create, unless it is created as a result of being an employee of the University. As they participate in University research programmes and contribute to inventions or other creative aspects of the outcomes, they are joint inventors or creators of any resulting IP.

The University may ask a student to enter into a binding agreement under which the student agrees to assign to the University any commercially valuable IP that they generate, so that the University can commercialise the complete package of IP arising from the research programme. In return, the University will treat the student as an employee for the purposes of the University’s revenue sharing policy for staff inventors. The revenue sharing policy is described elsewhere in this Code.

IP created from research which is paid for by an industry partner may be owned by the partner.

It is permissible for University of Surrey employees/students to found a start-up without the University becoming a partner. These companies differ from spin-outs and are known as “staff start-ups”. However, it is important that any aspiring entrepreneurs work with the Technology Transfer Office from the outset even if they would prefer the University of Surrey not to become a partner in their company. Staff start-ups must establish a formal contractual relationship with the University in order to be permitted to use any University facilities or to access any University-owned IP. Founders of staff start-ups must also complete a Declaration of Interest Form.

Employees/students of the University of Surrey who own shares in a spin-out or staff start-up must complete a Declaration of Interest Form, as stipulated by the University’s guidance on Ethical Conduct. 

The University will help those employees manage their dual interests in an ethical way.

The University must formally approve all University spin-outs and staff start-ups. Aspiring company founders must consult with their Heads of School and Associate Dean of Research and Innovation and seek approval from the Executive Dean of their faculty (where the spin-out comprises multidisciplinary expertise, approvals may be required from more than one faculty), and the Director of Research, Innovation and Impact before formal approval by the Pro-Vice Chancellor Research and Innovation is sought.

The Technology Transfer Office will help founders through this process.

The Technology Transfer Office negotiates the percentage ownership that the University will agree with the founders of a spin-out company. 

All parties should agree spin-out deals on market terms, avoiding unnecessary negotiations. Equity splits identified via TenU’s University Spin-out Investment Terms (USIT) Guide will be used as a starting point with exact terms varying depending on the wider commercial deal. 

The minimum University ownership is 7%; the maximum is 25%.

The University may financially benefit from the sale of its shares in a spin-out. The department which created the spin-out will receive a share of the income received in the form of a contribution to the Department’s innovation fund. Either 50% of the proceeds of the sale of shares will be allocated to the Department, or the amount needed to fill the Department’s innovation fund to its maximum allocation, whichever is the smaller amount. The remaining income is retained centrally within the University and used at the discretion of the senior management team (the Executive Board).

The Technology Transfer Office evaluates all inventions submitted to us and decides whether or not patenting is a realistic option. Please see our Inventor Guide for information on the process we follow. If we decide not to proceed with a patent application, then in some circumstances the creator(s) (including the inventors and contributors) may request that ownership of the invention is assigned to them.

The Technology Transfer Office will not unreasonably deny such a request, but we may reasonably require that the patenting decision is delayed subject to the researcher producing more data or more evidence for us to examine.

Obtaining a granted patent costs a minimum of £12,000, with costs increasing with the number of countries in which protection is sought. There are also ongoing costs involved in maintaining the patent. The University of Surrey will continue to pay for an invention to be patented only if we believe we can recoup our patenting costs at a later stage via commercialisation activities. If we believe there is a slim chance of a patent being granted, or if circumstances change, then we will stop the patenting process. In this situation, if requested by the creator(s), we will freely assign the IP associated with the patent to the creator(s).

Under some circumstances the University may wish to sell, or assign, a patent to a 3rd party. This may be because the 3rd party has previously negotiated a right to purchase the patent (perhaps as part of a research contract) or because the University no longer wishes to maintain the patent costs. In this situation, the University will make best efforts to contact the creators(s) associated with the patent and advise them of the actions about to be taken before they are taken. If the creator(s) object to the proposal to assign the patent to a 3rd party, then the creator(s) may appeal. The appeal process is described elsewhere in this code.

Visitors from other academic institutions or industry partners who work on site at the University of Surrey are not employees of the University and therefore many aspects of this code do not apply to them. However, any contract or agreement signed between the University and a visitor must include reference to this Code.

The visitor must be presented with a copy of this code and this specific paragraph should be brought to their attention. If the visitor contributes to an invention, or creates new IP, by collaborating with employees/students of the University or using University of Surrey facilities, then they are obliged to declare this invention to the Technology Transfer Office, or be named as a co-creator of the IP on an Invention Disclosure Form. The Technology Transfer Office will work with the visitor and, if appropriate, their employer to determine if the University of Surrey has a reasonable claim of ownership over the IP they created.

Employees/students of the University of Surrey, who work within other organisations, as either visitors or on secondment, are likely to be asked to sign legal agreements or abide by the policies issued by the host organisation. These agreements are likely to contain clauses that explain how the host organisation would prefer to manage any new arising IP created. For this reason, please check with the Technology Transfer Office before finalising any such agreements so that we can advise you on whether the rights of the University, and your rights as the creator of IP, may be negatively affected.

The University understands that part of the benefit for industry partners of collaborating is their wish to access background (pre-existing) or foreground (new, arising) IP created by researchers at the University. Commercial companies very often want exclusive access, or ownership of University-owned IP so that they can create a competitive advantage for themselves in their market. This desire to create an advantage for a single company sometimes runs counter to the University’s charitable mission to benefit society as widely as possible.

o help researchers navigate this complex environment, the University has developed a number of pre-defined initial positions with regards to IP and commercial partners.

Warning! If you choose not to adopt one the University’s initial positions with regards to managing IP in industry collaborations, and choose to embark on a ‘bespoke negotiation’, then you risk significantly lengthening the time required to produce legal contracts and possible delays to the start of your collaboration.

"Author(s)" shall mean academic staff, research associates, technicians, or any other members of staff of the University who are employed under a contract of employment (whether fixed term or permanent); Visiting staff who develop, adapt or otherwise contribute to copyright materials as part of their engagement with the University; students on paid placement with the University; contractors employed (directly or indirectly) specifically to develop or adapt materials.

A.3      The University hereby agrees and acknowledges that all performers’ rights in any video or other recording of the Author(s)’s own lectures or presentations or similar works are owned by the Author(s). The Author(s) grant to the University and its authorised users an irrevocable royalty-free non-exclusive licence to use such material for administrative, educational, teaching and research purposes.

A.4      Nothing in this agreement shall constitute a waiver by the Author(s) of any moral right under the Copyright, Designs and Patents Act 1988, and nothing therein shall constitute an exclusive recording contract within the meaning of Part II of that Act or consent by the Author(s) to the exploitation of any qualifying performance for the purposes of that Part.