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Alice has worked for an quango/academic organisation “The Establishment”, which is part of a larger “Wider Establishment” for some years. She was recently made redundant on pretty good terms and ended her employment on friendly terms with “The Establishment”. There is a bit of work that is in the interests of both Alice and “The Establishment” to complete and publish in a peer reviewed journal. To this end it has been agreed that Alice will have to desk space and high performance computing (HPC) resources to complete and write up this work, while receiving no pay or other compensation, other than the prestige of being author of said paper. As part of this Alice is required to sign a document that contains the following terms:

It is important for “The Establishment” as part of “Wider Establishment” to take ownership of all inventions arising from research in its establishments, and Visiting Workers undertaking research in “The Establishment” are therefore required, as set out below, to agree to assign to the “The Establishment” as part of “Wider Establishment” any rights they may have in intellectual property, and material arising from their research in “The Establishment”.

If, during the course of your period of work in “The Establishment”, you believe that you may have developed commercially exploitable technology please inform your supervisor, the “The Establishment” Director or local Technology Transfer Office (as applicable).

Income to “The Establishment” as part of “Wider Establishment” from licensing of inventions is allocated between inventors, the “The Establishment” budget and central “The Establishment” funds in accordance with the terms of the “The Establishment” Awards to Inventors Scheme.

Alice wants to initiate work in a different field as part of a potential startup business as the next stage of her career, with the intention of producing valuable intellectual property. No “The Establishment” resources are used in this work. Skills gained during the years of employment are essential for this work. Alice has the following work pattern:

  • Month 1
    • Works 9-5 5 days a week in the office
    • Produces copyrighted work A, patent application X during evenings and weekends
  • Month 2
    • Spends a couple of days in the office setting of big jobs on the HPC which run for a month, at the end of the month spends a couple of days in the office processing results. Submits paper to peer review.
    • Produces copyrighted work B, patent application Y during other days
  • Month 3
    • Comes in for 1 hour to celebrate papers acceptance at the end of the month
    • Produces copyrighted work C, patent application Z during month

Which of these items of intellectual property could be claimed by “The Establishment”?

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I think this is the troubling paragraph:

If, during the course of your period of work in “The Establishment”, you believe that you may have developed commercially exploitable technology please inform your supervisor, the “The Establishment” Director or local Technology Transfer Office (as applicable).

Alice is aware of work that is commercially exploitable in the situation you describe above. No qualifications are given, in this statement, as to when the work is performed or on whose equipment. In my non-lawyer opinion the Establishment would own rights to all work and patent applications mentioned in the scenario above. In fact if all work was begun after month 3, the Establishment might be able to prove that Alice was aware of these projects prior to the celebration, and thus they own a stake in them.

So I would either change the agreement and have the results reviewed by Alice's own lawyer; or, forget the paper. It is a lot of work for something that will likely mean nothing to the profitability of these ventures.

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It would help if the duty to disclose was also conditioned on “inventions arising from research in its establishment”. The Establishment does want that because they want to be able to make their own assessment of what is and isn’t within that scope. Your startup work is in a different field so you would probably be ok since in no way does it “arise from your work” there.

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