University Agenda

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CONGREGATION 8 May

Degree by Special Resolution

The following special resolution will be deemed to be approved at noon on 8 May, unless by that time the Registrar has received notice in writing from two or more members of Congregation under the provisions of Tit. II, Sect. VI, cl. 6 (Statutes, 1997, p. 15) that they wish the resolution to be put to a meeting of Congregation.

Text of Special Resolution

That the Degree of Master of Arts be conferred upon the following:

JEAN-SEBASTIEN CAUX, All Souls College

ROY KEITH WESTBROOK, St Hugh's College

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CONGREGATION 23 May 2 p.m.

¶ Members of Congregation are reminded that written notice of any intention to vote against, or any proposed amendment to, the enacting parts of the statutes at item 1 below or to vote against the special resolution at item 3 below, signed in either case by at least two members of Congregation, must be given to the Registrar by noon on Monday, 15 May (see the Guide to Procedures in Congregation cited in the note at the end of `University Agenda').

For arrangements concerning the notification of opposition to the amendments to the proposed statute at item 2 below, or of any further proposed amendments to that statute, see the explanatory note.

1 Voting on Statutes promulgated on 2 May

[See Gazette 16 March.]

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2 Voting on amendments to proposed Statute revising the University's Intellectual Property Policy

Explanatory note

As announced in the Gazette dated 13 January (Gazette, p. 563), further proceedings on the proposed statute revising the University's Intellectual Property Policy, which was promulgated on 14 December (Gazette, pp. 396, 499), have been deferred pending consideration of possible additional changes. Council has now considered these.

Council remains fully satisfied that the proposed new legislation would achieve its intended objectives of resulting in equal treatment for all members of staff and students, while increasing the financial benefits potentially available to them through the exploitation of intellectual property made or created by them in the course of their employment or their studies respectively, but it has agreed to put forward amendments which would change the applicability of the new legislation from (1) all intellectual property devised, made, or created on or after 1 January 2000, and (2) all intellectual property devised, made, or created before 1 January 2000 and not the subject on that date of any legally binding agreement which governs or restricts its exploitation, to (simply) all intellectual property devised, made, or created on or after 1 October 2000. Any other intellectual property would thus be subject to the existing legislation.

Secondly, Council has agreed to put forward an amendment to the decree which will be made if the statute is approved, to require expressly that the University ensure that researchers do not become personally liable for product liability claims arising from the University's exploitation activities.

Thirdly, Council has agreed to put forward an amendment to that decree to remove the reference in the earlier draft to the inapplicability of the University's Intellectual Property Policy to property devised, made, or created by employees of colleges in the course of their employment by the colleges, unless they make use of university facilities. This provision was intended to have a solely clarificatory function but seems open to misinterpretation. The position is, and will remain, that if an employee of a college creates a work with the aid of university facilities otherwise than in the course of his or her employment by the college, then any net revenue will be distributed in accordance with the University's legislation. If, on the other hand, an employee of a college creates a work with the aid of university facilities in the course of his or her college employment, then any net revenue will be distributed in a manner to be agreed between the University and the college, and the researcher will not have any entitlement to a share under the University's legislation.

The explanatory note published in the Gazette dated 25 November 1999 (Gazette, p. 396) referred to the `extensive consultation' by Council's Technology Transfer Advisory Group which had preceded the final formulation of these proposals. Council considers that it might be helpful to state that the consultation process included the Committee of Heads of Science Departments, the Appointments Committee of the General Board, the Staff Committee, the Resources Committee, the General Board, and the General Purposes Committee of Council, as well as the various employees' trade unions and the Oxford University Student Union. Individual members of staff who were known to have interests or expertise in this area were also invited to comment. No objections were voiced to the proposals which resulted from this iterative process and which were subsequently approved by Council and then submitted to Congregation.

The texts of the proposed statute and degree incorporating the above amendments are set out below after the amendments. It is open to any two or more members of Congregation to notify the Registrar in writing not later than noon on Monday, 15 May of their intention to oppose the proposed amendments to the statute, or of any further amendments which they propose. While further proceedings on the associated decree cannot take place until after the statute (if and as amended) has been approved by Congregation, it would be helpful if any member of Congregation who intends at that stage to oppose the amended decree, or to propose further amendments to the decree, would let the Registrar know by the same time, in order that the whole question of the proposed revisions to the University's Intellectual Property Policy can be debated at the meeting of Congregation on 23 May. If such notice (or a request from at least twelve members of Congregation for an adjournment) has not been received by noon on 15 May in respect of either the statute or the decree, Mr Vice-Chancellor will, under the statutory procedure, declare the amendments to the statute to have been adopted, and the amended statute will be submitted to Congregation on 6 June for approval.

Text of amendments to Statute

1 In Tit. X, Sect. IV, as amended by clause 1 of Statute (2) promulgated in Congregation on 14 December 1999 (Gazette, p. 397), delete cl. 4 and substitute: `4. The provisions of this section shall take effect on 1 October 2000, and shall apply to all intellectual property devised, made, or created on or after 1 October 2000.'

2 In Tit. XV, Sect. VI, as amended by clause 2 of Statute (2) promulgated in Congregation on 14 December 1999 (Gazette, p. 398), delete cl. 5 and substitute: `5. The provisions of this section shall take effect on 1 October 2000, and shall apply to all intellectual property devised, made, or created on or after 1 October 2000.'

3 In clause 3 of statute (2) promulgated in Congregation on 14 December 1999 (ibid.), delete `1 January' and substitute `1 October'.

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Amendments to Decree to be made by Council if the Statute is approved

1 In Ch. VIII, Sect. XI, cl. 5, as amended by clause 1 of the proposed decree annexed to statute (2) promulgated in Congregation on 14 December 1999 (Gazette, p. 398), after `further development.' insert `The University shall ensure that researchers do not become personally liable for product liability claims arising from the University's exploitation activities.'

2 Ibid. (Gazette, p. 399), delete cl. 11, concerning intellectual property devised, made, or created by employees of colleges in the course of their employment by the colleges, unless they make use of university facilities.

3 In clause 2 of the proposed decree annexed to Statute (2) promulgated in Congregation on 14 December 1999 (ibid.), delete `1 January' and substitute `1 October'.

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Texts of the proposed Statute and Decree incorporating the above amendments

[Changed or inserted wording is indicated by underlining; the deletion is indicated by square brackets.]

PROPOSED STATUTE

1 In Tit. X (Statutes, 1997, p. 78), delete Sect. IV, and substitute:

`Section IV. Of Intellectual Property

1. Subject to clause 2 below and to the provisions of the Patents Act 1977, and unless otherwise agreed in writing between the person concerned and the University, the University claims ownership of the following forms of intellectual property; in the case of (c), (d), (e), and (f) (and (g) as it relates to (c)–(f)) the claims are to intellectual property devised, made, or created by staff in the course of their employment by the University, and by persons engaged by the University under contracts for services:

(a) works generated by computer hardware or software owned or operated by the University;

(b) films, videos, multimedia works, typographical arrangements, and other works created with the aid of university facilities;

(c) patentable and non-patentable inventions;

(d) registered and unregistered designs, plant varieties, and topographies;

(e) university-commissioned works not within (a), (b), (c), or (d);

(f) databases, computer software, firmware, courseware, and related material not within (a), (b), (c), (d), or (e), but only if they may reasonably be considered to possess commercial potential; and

(g) know-how and information associated with the above.

2. Notwithstanding clause 1 above, the University will not assert any claim to the ownership of copyright in:

(a) artistic works, books, articles, plays, lyrics, scores, or lectures, apart from those specifically commissioned by the University;

(b) audio or visual aids to the giving of lectures; or

(c) computer-related works other than those specified in clause 1 above.

3. "Commissioned works" for the purpose of clauses 1 and 2 above are works which the University has specifically employed or requested the person concerned to produce, whether in return for special payment or not. However, save as separately agreed between the University Press and the person concerned, works commissioned by the University Press in the course of its publishing business shall not be regarded as "works commissioned by the University".

4. The provisions of this section shall take effect on 1 October 2000, and shall apply to all intellectual property devised, made, or created on or after 1 October 2000.

5. The policy set out above shall be administered in accordance with procedures which shall be determined from time to time by Council by decree.'

2 In Tit. XV (p. 116, as renumbered by Statute (2) approved by Congregation on 29 June 1999, Gazette, Vol. 129, pp. 1433, 1482), delete Sect. VI and substitute:

`Section VI. Of Intellectual Property generated by Students

1. Subject to clause 2 below and to the provisions of the Patents Act 1977, and unless otherwise agreed in writing between the student concerned and the University, the University claims ownership of the following forms of intellectual property; in the case of (c), (d), (e), and (f) (and (g) as it relates to (c)–(f)) the claims are to intellectual property devised, made, or created by students in the course of or incidentally to their studies:

(a) works generated by computer hardware or software owned or operated by the University;

(b) films, videos, multimedia works, typographical arrangements, and other works created with the aid of university facilities;

(c) patentable and non-patentable inventions;

(d) registered and unregistered designs, plant varieties, and topographies;

(e) university-commissioned works not within (a), (b), (c), or (d);

(f) databases, computer software, firmware, courseware, and related material not within (a), (b), (c), (d), or (e), but only if they may reasonably be considered to possess commercial potential; and

(g) know-how and information associated with the above.

2. Notwithstanding clause 1 above, the University will not assert any claim to the ownership of copyright in:

(a) artistic works, books, articles, plays, lyrics, scores, or lectures, apart from those specifically commissioned by the University;

(b) audio or visual aids to the giving of lectures; or

(c) computer-related works other than those specified in clause 1 above.

3. For the purpose of clauses 1 and 2 above:

(a) a "student" is a person reading and registered for a degree, diploma, or certificate of the University;

(b) "commissioned works" are works which the University has specifically requested the student concerned to produce, whether in return for special payment or not. However, save as may be separately agreed between the University Press and the student concerned, works commissioned by the University Press in the course of its publishing business shall not be regarded as "works commissioned by the University".

4. Students shall sign any documents necessary in order to give effect to the claim made by the University in clause 1 above; and shall waive any rights in respect of the subject-matter of the claim which may be conferred on them by Chapter IV of Part 1 of the Copyright, Designs and Patents Act 1988.

5. The provisions of this section shall take effect on 1 October 2000, and shall apply to all intellectual property devised, made, or created on or after 1 October 2000.

6. The policy set out above shall be administered in accordance with procedures which shall be determined from time to time by Council by decree.'

3 This statute shall be effective from 1 October 2000.

PROPOSED DECREE

1 In Ch. VIII (Statutes, 1997, p. 556), delete Sect. XI and substitute:

`Section XI. Procedures for the Administration of the University's Intellectual Property Policy

1. Where any person who is subject to the provisions of Tit. X, Sect. IV or of Tit. XV, Sect. VI (a "researcher") creates intellectual property [1] which is capable of commercial exploitation, he or she shall report its existence to the Head of Department (or equivalent) and to the Director of the Research Services Office, providing the Director with all necessary information concerning the provenance of the intellectual property and the circumstances in which it was created. The next step shall depend upon the source of funding:

(a) whenever the conditions of research council grants require the assignment of intellectual property to the research council or its nominee, or to industrial collaborators, and whenever there is a similar requirement in an agreement for research sponsored by some other party, the research council, industrial collaborator, or sponsor shall be given the responsibility for exploitation;

(b) Isis Innovation Limited ("Isis") shall be 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 Isis. A researcher who wishes to exploit the intellectual property [2] by some other means may apply to Council for permission to do so. 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 other means of sharing profits which may accrue.

2. 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. 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. 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 Isis or the University, whichever party or parties is or are held by the expert to be the owner of the intellectual property.

3. 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. 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 (a) of clause 3, Isis 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. Where the University decides to seek exploitation, the researcher shall provide reasonable assistance in the exploitation process by (for example) promptly assigning his or her rights to Isis and/or to a third party specified by the University, providing information promptly upon request, attending meetings with potential licensees, and advising on further development. The University shall ensure that researchers do not become personally liable for product liability claims arising from the University's exploitation activities.

6. Where exploitation is through the medium of a company formed for the purpose, royalty or sales fee income received by Isis or the University from the company shall be treated in accordance with clause 7. The respective shareholdings in the company of the researchers and the University (or Isis) 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 clause 7.

7. In this clause the expression "net revenue" means gross revenue less professional fees and expenses and other costs incurred in protecting the intellectual property and negotiating the arrangements for exploitation.

(a) 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 Isis or 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). A university milestone payment shall be taken for this purpose to be 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; as against 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), where the net revenue shall be distributed in accordance with the following paragraphs of this clause.

(b) Where responsibility for the exploitation of intellectual property is given to a research council, industrial collaborator, or sponsor under paragraph (a) of clause 1, any net revenue received by the University shall be distributed as follows: [3]

Total net revenue   Researcher(s)  General Revenue      Departments
                                       Account

Up to £50K           90%*              10%           0%

Band from £50K and
up to £500K          45%               30%           25%

Over £500K           22.5%             40%           37.5%

(c) Where responsibility for the exploitation of intellectual property is given to Isis, any net revenue received by Isis shall be distributed as follows:


Total net revenue Researcher(s)   General Revenue    Depts   Isis
                                    Account

Up to £72K         63%*              7%             0%        30%
Band from £72K
and up to £720K    31.5%             21%            17.5%     30%

Over £720K         15.75%            28%            26.25%    30%

(d) Where responsibility for the exploitation of intellectual property is given to the University, then, unless some other arrangement is approved by Council under clause 1 (c), any net revenue received by the University shall be distributed as stated in paragraph (c) of this clause, save that the 30 per cent share payable to Isis shall be passed instead to the General Revenue Account.

(e) The percentages asterisked above are 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 bands in question. These percentages shall be adjusted to match this intention, as and when the rates of National Insurance Contribution vary.

8. (a) The University shall account to researchers for their entitlements under clause 7 on a monthly basis.

(b) A researcher's entitlement under clause 7 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.

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 the Research Services Office); 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 Isis) 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). [11. The University's intellectual property policy shall not be concerned with intellectual property devised, made, or created by employees of colleges in the course of their employment by the colleges, unless they make use of university facilities. If an employee of a college creates a work with the aid of university facilities otherwise than in the course of his or her employment by the college, then any net revenue shall be distributed in accordance with clause 7 above. If an employee of a college creates a work with the aid of university facilities in the course of his or her college employment, then any net revenue shall be distributed in a manner to be agreed between the University and the college, and the researcher shall not have any entitlement to a share by virtue of this decree.]' [4]

2 This decree shall be effective from 1 October 2000.


Footnotes

[1] In these procedures the term "intellectual property" refers to the items detailed in Tit. X, Sect. IV, cl. 1 and Tit. XV, Sect. VI, cl. 1
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[2] Members of the University who wish to seek permission from Council are asked to contact the Director of the Research Services Office in the first instance.
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[3] For an explanation of the asterisks see cl. 7 (e).
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[4] Clause to be deleted.
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3 Voting on Special Resolution authorising expenditure from the Higher Studies Fund

That the Curators of the University Chest be authorised to expend from the part of the Higher Studies Fund earmarked for Social Studies the sum of approximately £21K per annum for ten years, to provide the balance of funding required for the Professorship of European Community Law.

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