INTELLECTUAL PROPERTY POLICY:  PROPOSED STATUTE

SUPPLEMENT (2) TO NO. 4362       THURSDAY, 11 MAY 1995

University Agenda

CONGREGATION       30 May       2 p.m.

Promulgation of Statute

Explanatory note to Statute

1.  In Michaelmas Term 1980 the University adopted the recommendations of the
Committee on Patents under the chairmanship of the Warden of All Souls, which
had been asked, in the light of a report of a working party of the Committee
of Vice-Chancellors and Principals on patents and the commercial exploitation
of research results, to consider university policy on patents and the
liability of members of staff for advice offered to outside bodies. The
Committee on Patents recommended that intellectual property rights should
belong to the employee, except in cases where the work from which they arose
had been supported in whole or in part by an external body on terms which
governed the treatment of intellectual property rights: such cases included
all research-council grants, fellowships, and studentships, all grants from
government departments, and almost all grants from commercial organisations,
but not necessarily grants from charitable foundations since some of these did
not include terms which governed the treatment of intellectual property.
Furthermore, it was decided that, when the terms of support governed the
treatment of intellectual property, the University should seek a fair share
for itself and its employees of any resulting profits, in the form either of a
royalty on the sales of any product concerned, or of a specified percentage of
the total net revenue arising from the invention or discovery.

2.  Arising out of this, it was agreed that any royalty income which accrued
to the University should be divided between the inventor(s), the University,
and the department as follows:

    (a) the first charge against such revenue should be the recovery of any
costs incurred by the University;

    (b) of the total share obtained for the University and the inventor(s)
together, after the recovery of costs as at (a) above, the inventor(s) should
receive the whole up to the point at which his, her, or their total aggregate
receipts equalled the stipend of a Schedule A professor (i.e. the stipend
applicable at the time when the aggregate receipts were calculated), one-half
of the total share from that point until his, her, or their receipts equalled
ten times the stipend of a Schedule A professor, and one-quarter of the total
share thereafter;

    (c) the university share, net of the recovery of costs and any payment to
a college or colleges, should be distributed in two equal parts between the
department(s) concerned and the University (i.e. General Fund Revenue) up to
the point at which the total sums paid to the department(s) reached twenty
times the stipend of a Schedule A professor, after which the distribution
should be dealt with ad hoc.

3.  Subsequently, in Trinity Term 1985, Council and the General Board decided
in principle to modify this policy to exercise rights of ownership of
copyright in computer software developed on university premises and/or with
the aid of university facilities. Further discussions on the implementation
and implications of that decision, particularly with regard to students, led
to the view that intellectual property policy needed once again to be
considered in full. The need for such a review was reinforced by the ending of
the monopoly held by the British Technology Group on the exploitation of
results arising out of research funded by the research councils and the
subsequent establishment at Oxford of Isis Innovation Limited to carry out
this exploitation on behalf of the University.

4.  In Trinity Term 1986 Council and the General Board therefore set up a new
committee to consider, inter alia, the University's future policy on all
aspects of intellectual property (including copyright in books and other
copyrightable material) which arose from work carried out with any use of
university facilities, i.e. both work carried out with the general assistance
of HEFCE or with other university funds, and work sponsored by external
organisations on terms which did not prescribe the treatment of any
intellectual property arising. The members of the committee were:

Dr P.M. North, Principal of Jesus (Chairman)
Mr J.C.H. Anelay, Morrell, Peel & Gamlen
Professor J.M. Brady, BP Professor of Information Engineering
Professor Sir Peter Hirsch, then Isaac Wolfson Professor of Metallurgy
Dr P.K. O'Brien, then Reader in Economic History
Professor E.M. Southern, Whitley Professor of Biochemistry
Mr C.F.H. Tapper, then All Souls Reader in Law.

As the issues within its remit were of university-wide importance, the
committee agreed that it must consult as widely as possible and accordingly
addressed a letter to all heads of houses, heads of departments, and chairmen
of faculty boards, and to the Committee of Heads of Science Departments.
Comments were similarly invited from individual members of the University
through a notice in the Gazette. Practices in other universities, both in the
UK and in the USA, were investigated.

5.  The committee reported to Council and the General Board in Michaelmas Term
1989. Its main conclusions, which were adopted by Council and the General
Board, were twofold:

    (a) First, it took the view that in principle intellectual property rights
should vest in the University, not in its employees or students as under the
existing policy. Most other universities asserted such rights; the important
requirement was to have a generous arrangement for sharing royalty income with
employees whose work had produced it. The passage of time since 1980, and
notably over ten years' experience of the Patents Act 1977, suggested that for
a university as an employer to assert its intellectual property rights would not
give rise to the difficulties which the earlier committee had feared.
Moreover, the existing policy had led to confusion because the rules varied
according to the source of funding. The committee therefore recommended that
the University should assert its rights in all intellectual property created by employees in
the course of their employment, and by others, including students, under
certain conditions.

    (b) Secondly, the committee took the view that no distinction should be
made between different forms of intellectual property (for example, between
inventions of equipment, devices, and computer software), except that
ownership of copyright in books (unless specifically commissioned by the
University) should not be asserted. The committee justified this not so much by
reference to convention or practice elsewhere as by reference to its proposals
for dividing royalties on intellectual property between the University and
those who created that property. The committee considered that an aggregate
exemption of the first œ25K on any one item of intellectual property would be
fair, and that since few books produced royalties of more than œ5K per annum
(on average), and few produced significant royalties for more than five years,
the University should not assert its ownership of copyright in books unless they
had been specifically commissioned by the University.

6.  Since these decisions were first made, there has been extensive discussion
about the policy and its implementation with many groups in the University.
Various legal issues have been raised, some of which have taken considerable
time to pursue. Now, following consultation, including consultation with
representatives of the Oxford University Student Union and the Oxford
University Graduate Union, Council and the General Board have reaffirmed the
new policy outlined in brief in para. 5 (a) and (b) above. Both Council and
the General Board believe, in the light of all the discussions which have
taken place since 1989, that it is important for the policy itself to be
clearly stated in the University's legislation, and the following statute
provides accordingly.

7.  The policy will apply to students and to other researchers who are not
employees, who are admitted or who begin their research on or after 1 July
1995. Existing employees will remain subject to the particular arrangements
which govern their research, i.e. to the present policy as outlined in para. 1
of this note modified by any contractual provisions relating to the funding of
a particular project and by the legal arrangements governing their
collaborators. The following clause will be included in contracts of
employment accepted on or after 1 July 1995 except in the case of contracts issued to
staff who were appointed to an initial period of office under the previous
policy who are subsequently reappointed to the same post.

    `(a) Incorporated by reference into your contract of employment is the
Statement of Policy on Intellectual Property promulgated from time to time by
the University in its Statutes, Decrees, and Regulations. This clause follows
the current statement, but the statement contains additional terms and
procedures which are not reproduced in this letter: copies of the statement as
it exists from time to time will be found in the Statutes, Decrees, and
Regulations; copies may also be obtained from the Director of the Research
Services Office or from your Head of Department (or equivalent).

    (b) Subject to (c) below, and unless otherwise agreed in writing between
you and the University (represented until further notice by the Director of
the Research Services Office), the University asserts its ownership of the
following forms of intellectual property which you create in the course of
your employment:

        (1)  patentable and non-patentable inventions;

        (2)  university-commissioned works and works generated by the     
University's computers;

        (3)  computer software and firmware not within (2), but only if it     
may reasonably be considered to possess commercial potential;

        (4)  registered and unregistered designs and topographies.

    (c) The University will not assert any ownership of copyright
in books, articles, lectures, or other written work apart from that which is
commissioned by the University.

    (d) "Commissioned works" for the purpose of (b) (2) and (c) above are
works which the University has specifically called upon you to produce,
whether in return for special payment or not. However, save as may be
separately agreed between you and the University Press, works commissioned by
the University Press in the course of its publishing business shall not be
regarded as "works commissioned by the University".

    (e) You will sign any necessary documents in order to give effect to the
exercise by the University of its rights as specified in (b) above.'

8.  The procedures for implementing the policy set out in the statute are
currently under review: arrangements for the exploitation of intellectual
property are the subject of the Review Committee under the chairmanship of the
President of Wolfson. That committee expects to report to Council later this
term. In the light of the review committee's recommendations, Council intends
to make a decree (as specified in the final clause of the statute) which will
set out the procedures for the commercial exploitation of intellectual
property. Details of the existing arrangements whereby the University
encourages and facilitates the successful exploitation of intellectual
property are available from the Director of the Research Services Office.

9.  The existing Title X is composed of three separate clauses, without
appropriate section headings. The opportunity is taken to clarify the text by
deleting the statute and replacing it with exactly the same text, supplemented by
appropriate new section headings, to which is added the new policy on
intellectual property as the fourth section.

Text of Statute

WHEREAS it is expedient for the University in certain circumstances to assert 
its ownership of intellectual property created by its employees and students, 
and by others, in order to achieve the joint exploitation of such intellectual 
property with the inventors, and it is also expedient to take the opportunity 
of clarifying the divisions of the existing text within Title X of the Statutes,
THE UNIVERSITY ENACTS AS FOLLOWS.

Delete Tit. X (Statutes, 1993, p. 73, as amended by Statute (2) approved by
Congregation on 22 February 1994, Statute (2) approved by Congregation on 31
May 1994, and the Statute approved by Congregation on 21 February 1995,
Gazette, Vol. 124, pp. 787, 814, 1161, 1190; Vol. 125, pp. 764, 786) and
substitute:

                                `TITLE X

OF  THE  CONDITIONS  OF  SERVICE  OF PERSONS EMPLOYED BY THE UNIVERSITY

Section I. Of general conditions

The numbers of persons employed by the University, their conditions of
service, and their method of appointment shall be determined, subject to the
provisions of the statutes, from time to time by Council, in consultation,
where appropriate, with the General Board, provided always that:

    (a) the three main categories of academic staff shall be professors,
readers, and lecturers;

    (b) the holders of all professorships enumerated in Schedules A and B
annexed to Ch. VII, Sect. ii, <Sub-sect.> 5, shall be paid the same salary (from which
shall be deducted the canonical salary in the case of professorships to which
a canonry at Christ Church is annexed), provided that this shall not prevent
the payment of additional emoluments, which may be pensionable, (i) in the
form of such allowances in respect of administrative responsibilities as may
be prescribed by decree, or (ii) in the form of awards in recognition of
academic distinction or contribution to academic work of the University in
accordance with arrangements to be determined from time to time by Council;

    (c) the university salaries of non-medical lecturers shall, under
arrangements to be approved by Council, be determined by the General Board,
which in discharging this function shall have regard to, but shall not be
bound by, scales related to age;

    (d) arrangements shall be made by Council under which all professors,
readers, lecturers, and holders of other posts approved for this purpose by
Council shall be entitled to apply for one term of leave for every six terms
of service;

    (e) every holder of a full-time professorship or readership, or of any
other post approved for this purpose by decree, and every holder of a full-
time lecturership who has been appointed to that lecturership until retirement
age, shall be entitled to hold a fellowship in a college or other society,
provided that the offer of a fellowship to any person who is entitled under
this statute, or to any person who would become so entitled on reappointment
to the retirement age, shall satisfy any obligation of the University in
respect of that person's entitlement to hold a fellowship;

    (f) every full-time professorship shall be allocated from time to time by
Council to a college or other society, and the successive holders of that
professorship shall be fellows of that college or other society; the college
or society of allocation shall have the right to have two representatives on
the board of election for the professorship;

    (g) all persons employed by the University shall be subject either to the
Federated Superannuation System for Universities, or to the Universities
Superannuation Scheme, or (if they are not eligible to become members of
either scheme) to a Pension Scheme managed by the University, and shall be
entitled to the benefits of any scheme for the supplementation of
superannuation benefits that may be applicable to universities generally,
provided that:

        (i)  Council shall determine in any cases of doubt, but having     
regard to the practice of universities generally, and the rules of the     
Universities Superannuation Scheme, to which scheme a person shall     
belong;

        (ii)  Council shall exempt from the need to be subject to a scheme     
any person who is excluded from membership of the appropriate scheme      by
virtue of age or who is already in receipt of pension from one of the     
schemes or who submits a written request for exemption; and Council may     
exclude from membership of a scheme any person on account of the     
short-term or part-time nature of his or her employment or if he or she     
is subject to an alternative scheme approved by Council;

    (h) every employee of the University who is subject to the jurisdiction of
the Visitatorial Board under the provisions of Tit. VIII, Sect. i, other than
the holder of a professorship to which a canonry is annexed who is exempt from
membership of the appropriate pension scheme referred to in proviso (g) above,
shall retire not later than the 30 September immediately preceding his or her
66th birthday, and every employee of the University who is not subject to that
jurisdiction shall retire not later than the 31 July immediately preceding his
or her 66th birthday, provided always that:

        (i)  any person may elect to retire on, or at any time after, his or   
  her 60th birthday;

        (ii)  Council may make arrangements to provide for the continued     
employment in special cases of a person who wishes to remain in the     
employment of the University and whose services for the University it     
desires to retain, provided always that no person shall continue in the     
regular employment of the University after, if subject to the jurisdiction     
of the Visitatorial Board, the 30 September or, if not so subject, the 31     
July immediately preceding his or her 71st birthday;

        (iii)  any person who at 1 July 1985 held an appointment (whether     
or not of the University) with entitlement to hold office at least until his   
  or her 67th birthday (or any person then holding an appointment to     
which he or she was appointed on the basis that if subsequently     
reappointed he or she would be entitled to hold office at least until that     
age), and who continuously thereafter shall have held an appointment or     
appointments with such entitlement, shall not be required, if subject to
the jurisdiction of the Visitatorial Board, to retire before the 30
September immediately preceding his or her 68th birthday; and for the
purposes of this proviso, (a) in determining whether such appointments
have been held continuously, any interval between a successful
application for, and the taking up of, an appointment shall be
disregarded; and (b) appointments accepted by, but not taken up until
after, 1 July 1985 shall be deemed to be held at that date;

    (i) any employee of the University who is not subject to the jurisdiction
of the Visitatorial Board under the provisions of Tit. VIII, Sect. i, shall,
in the event of dismissal, in a case in which the dismissal arises from
disciplinary action, have a right of appeal to a panel consisting of two
members of the Staff Committee appointed by the Chairman of the Staff
Committee (or his or her deputy) and one member of Council, not being a member
of the Staff Committee, appointed by the Vice-Chancellor. Pending the outcome
of any appeal, the employee will be regarded as suspended without pay. On the
hearing of an appeal, the panel may confirm or revoke the dismissal or may
make such order as it may think just, and the Curators of the University Chest
shall pay the appellant the sum, if any, ordered by the panel to be paid to
him or her.

Section II. Of authority in relation to employment

1.  No official of the University or any other person employed by the
University or working in or in connection with any department of or under the
control of the University shall have authority to offer any person employment
as a member of the University's academic-related or non-academic staff, or to
sign letters of appointment for such academic-related and non- academic staff,
or to dismiss such non-academic staff, except with the express consent of
Council and provided that

    (a) any offer of employment shall be on the appropriate terms and
conditions of employment for the category of staff concerned; and

    (b) any dismissal shall have complied with the appropriate procedures for
the dismissal of non-academic staff.

No consent given by Council under the provisions of this clause shall be
operative until a copy of the resolution of Council, certified by the
Registrar, shall have been delivered to such official or such other person
concerned.

2.  Council may delegate its powers hereunder to the Staff Committee, or to
the chairman or to an officer or officers of that committee, as it may deem
appropriate and on such conditions as it may lay down and a consent signed by
the chairman of the Staff Committee or by a designated officer shall have the
same effect as a certified resolution of Council.

Section III. Of authority to make representations on behalf of the University
in certain matters

1.  No official of the University or any other person employed by the
University or working in or in connection with any department of or under the
control of the University shall in connection with any invention, discovery,
or patent, or (except under the authority of the Delegates of the Press, in
matters falling within their jurisdiction) process, or manufacture have
authority to make any representations on behalf of the University or to enter
into any contract on behalf of the University or to be concerned in any
transaction whatsoever in connection therewith on behalf of the University
except with the express consent of Council. No consent given by Council under
the provisions of this clause shall be operative until a copy of the
resolution of Council, certified by the Registrar, shall have been delivered
to such official or such other person concerned.

2.  Council may delegate its powers hereunder to such committee or officer as
it may deem appropriate and on such conditions as it may lay down and a
consent signed by the chairman of the designated committee or by the
designated officer shall have the same effect as a certified resolution of
Council.

Section IV. Of intellectual property

1.  Subject to the provisions of clause 2 below and unless otherwise agreed in
writing, the University shall assert its ownership of the following forms of
intellectual property created by employees in the course of their employment
by the University, by students in cases in which intellectual property is
developed with the aid of university facilities, whether on university
premises or elsewhere, and by persons engaged by the University under
contracts for services who work on research projects:

    (a) patentable and non-patentable inventions;

    (b) university-commissioned works and works generated by the University's
computers;

    (c) other computer software and firmware and related material if it may
reasonably be considered to possess commercial potential;

    (d) registered and unregistered designs and topographies.


2.  (a) Notwithstanding the provisions of clause 1 above, the University shall
not assert any rights in the ownership of copyright in books, articles,
lectures, or other written work, other than those specifically commissioned by
the University, or in computer-related work other than that specified in
clause 1 above.

    (b) For the purposes of (a) above, works commissioned by the University
Press in the course of its publishing business shall not be regarded as works
specifically commissioned by the University, save as may be separately agreed
between the University Press and the author concerned.

    (c) The provisions of this section shall apply to any students admitted on
or after 1 July 1995, and to the holder of any contract of employment or contract
for services which was accepted on or after the same date by the person concerned,
provided that they shall not apply to any person who, having been appointed to a post for
a limited term before that date and being eligible for reappointment to the
same post, is so reappointed on or after that date.

3.  The policy set out in clauses 1 and 2 above shall be administered in
accordance with procedures which shall be determined from time to time by
Council by decree.'