Ownership of Intellectual Property
What is “intellectual property”?
Intellectual property is inventions and/or material that may be protected under the patent, trademark and/or copyright laws, and sometimes by contract.
What is UCC’s policy on ownership of inventions?
As a general rule UCC owns inventions made by its employees while acting within the scope of their employment or using UCC resources. UCC’s Intellectual Property policy also describes the applicable rules for copyrightable works. In some cases, the terms of a Sponsored Research Agreement or Materials Transfer Agreement (MTA) may impact ownership. When in doubt it is best to call the UCC Innovation office for advice.
The policy is stated on UCC Intellectual Property Policy, available here.
Who owns rights to discoveries made while I am consulting?
The ownership of inventions made while consulting for an outside company depends on the terms of the consulting contract. The norm is that the consulting company will own the IP created, although it is expected that consultancy relies on the expertise of the individual rather than on new research work being done that might create intellectual property rights. It is important to clearly define the scope of work within consulting contracts to minimize any issues with ownership of inventions created from UCC research. For UCC consultancy agreements, UCC Consulting (the Managed Consultancy Service run by UCC Innovation) will work with you to address this.
Who owns rights to discoveries made while on sabbatical?
Generally, if you are on a sabbatical paid by UCC, then UCC still retains rights to any discoveries connected to your scope of employment. Contact UCC Innovation or Research Support Services before your sabbatical to ensure that ownership considerations are documented.
Should I list visiting scientists or scientists at other institutions on my invention disclosure?
All contributors to the ideas leading to a discovery should be mentioned in your disclosure even if they are not UCC employees. UCC Innovation along with patent lawyers and if required legal counsel will determine the rights of such persons and institutions. It is prudent to discuss with UCC Innovation all working relationships (preferably before they begin) to understand the implications for any subsequent inventions.
Can a student contribute to an invention?
Yes, many students work on inventions at UCC under a wide variety of circumstances. UCC promotes student entrepreneurism and students can be named as Inventors under UCC Intellectual Property Policy. Typically, a student will own his or her rights to an invention unless the invention was created by a student in a capacity such as a UCC employee and/or the student in question has used more than incidental UCC resources. UCC’s Intellectual Property Policy provides more details.