Version 1.0 - August 2023
1.1. Context and Mission
1.1.1. The mission of Science Card Investment Group (“SCIG”) is to combine the best banking experience with the ability to fund the scientific research that matters to its customers.
1.1.2. SCIG understands that innovation advances society both economically and technologically and wishes to be a catalyst for such advancement by providing funding to Research Projects in the areas of healthcare, climate change and computer science.
1.2. Purpose of the IP Policy
1.2.1. The intention of the IP Policy is to provide guidance around the process by which partners will identify IP with commercial potential and the successful commercialisation of that IP for the mutual benefit of all stakeholders, including the University, its employees and SCIG.
1.2.2. The IP Policy seeks to ensure that the appropriate legal protections are sought with regards to IP resulting from SCIG funded Research Projects and that any such IP is effectively managed and commercialised, while simultaneously not unnecessarily impeding academic traditions, the sovereignty of any institution that SCIG engages with, and any such institution’s mission with respect to serving public interest.
1.3. Overall Principles
1.3.1. IP arising from SCIG funded research will be responsibly commercialised in such a way as to maximise its development and use for economic and societal benefit.
1.3.2. SCIG wishes to recognise the contributions of the institutions, institution staff members and students who generate IP which delivers societal and economic impact.
Without prejudice to any applicable laws, the definitions set out below shall apply to this Policy:
Background IP
Any pre-existing IP created before the execution of any Research Project funding Agreement.
Commercialisation
Utilisation of the Technology or any and all parts of the IP incorporated therein, with the intention of generating value, such value may be in the form of a marketable product, process, service, commercial return or other benefit to society.
Commercialising Party
The party to a Research Project that is responsible for the maintenance, prosecution and commercialisation of the Technology or any IP incorporated therein.
Conflict of Interest
Any situation in which real or perceived interests of an Institution or individual member of staff, student or other stakeholder of the Institution which may run counter to the interests of SCIG or negatively affect their duties.
Creator
Any person to whom this Policy is applicable, who creates, conceives, reduces to practice, authors, or otherwise makes a substantial intellectual contribution to the creation of IP in the course of their engagement with the Research Project.
Gross IP Revenue
All revenue received by the Institution for the commercialisation of the Technology, the IP or any part thereof, before the deduction of IP Expenses.
Intellectual Property (IP)
Any intellectual property rights resulting from the Project, including but not limited to patents, trademarks, materials, know-how, copyright, trade secrets and database rights.
Intellectual Property Rights (IPRs)
The proprietary rights that may be granted with respect to an invention, mark, design, plant variety or other type of IP granted with respect to the Technology or IP resulting from the Research Project.
Invention
A novel or useful idea including but not limited to any such idea relating to processes, machines, manufacturing or compositions of matter, improvements to divides, systems, computer software, circuits, chemical compounds, biomedical materials and mixtures.
Institution
An academic or any other research focused organisation that SCIG may identify as a partner for any potential Research Projects, for the avoidance of doubt, any Technology Transfer Office will be interpreted to be defined as part of the Institution for the purposes of this Policy regardless of its ownership.
Institution IP
IP owned or co-owned by the Institution.
IP Expenses
All expenses incurred by the institution in the management and Commercialisation of the Technology and/or the IP.
IP Steering Committee (IPSC)
The body within SCIG, set up in accordance with Article 4, which is responsible for overseeing the drafting, implementation, monitoring and evolution of the Policy, and for providing strategic oversight of SCIG.
Net IP Revenue
Gross IP Revenue less IP Expenses.
Principal Investigator (PI)
The lead investigator of a Research Project.
Public Disclosure
The communication of information, relating to IP, to external parties. Including but not limited to, disclosure in written or oral form; communication by email; posting on a web blog, including social media; disclosure in a news report, press release or interview; publication in a journal, abstract, poster, or report; presentation at a conference; examination of a thesis; demonstration of an invention at a trade show; or the industrial application of an invention.
Public Domain
The freely accessible public realm in which works are not subject to the protection of IPRs, either because such rights have been forfeited or because the rights have expired, are thereby held by the public at large and available for all to use without permission from the owner or creator.
Research
Any creative work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge of man, culture and society and the use of such stock of knowledge to devise new applications. It comprises three basic activities: basic research, applied research and experimental development.
Research Project
A defined project that forms the basis of Research undertaken by the Institution and funded partially or wholly by SCIG, including projects undertaken by Students under the supervision of a Staff Member or visitor, as part of a research degree programme.
SCIG
Science Card Investment Group, its staff and affiliates.
Staff Member
Any person under a contract of employment with the Institution including academic, research, technical and administrative staff, whether full-time, part-time or on a temporary basis.
Student
Any student enrolled for an approved course of study at the Institution.
Technology
The results of the Project and any IP incorporated therein.
Technology Transfer Office (TTO)
The administrative office responsible for the day-to-day management of Institution IP and other IP related activities on behalf of the Institution.
Visitor
Any person who is neither a Staff Member nor a Student of the Institution who engages in work at the Institution, including visiting professors, adjunct and conjoint professors, teachers, researchers, scholars and volunteers.
3.1. IP
3.1.1. This Policy applies to all IP generated by the Institution, its Staff Members, Students and Visitors resulting from a Research Project.
3.2. Background IP
3.2.1. Upon commencement of the Identification Phase of a Research Project, the Institution, Staff Members, Technology Transfer Office, Students and Visitors must disclose to SCIG any existing IP which they are under obligation to exclude from the application of this Policy due to its creation under funding obligations or ownership elsewhere prior to their employment, enrolment or appointment at the Institution.
3.3. Applicability
3.3.1. This Policy applies to all Institutions, Staff Members, Students and Visitors who participate in a Research Project. The obligations of this Policy shall survive any termination of an Agreement relating to a Research Project.
3.4. Binding Effect of the Policy
3.4.1. This Policy constitutes a binding understanding between SCIG and the Institution and the Institution will uphold this Policy by ensuring that it is understood and adhered to by Staff Members, Students and Visitors engaged with the Research Project.
4.1. IP Steering Committee
4.1.1. SCIG has assembled an IP Steering Committee (IPSC) to oversee the implementation and evolution of this Policy and provide strategic guidance to its partners and stakeholders.
The IPSC is composed of the Head of Investment, the IP and Commercial Partnerships Manager and a panel of independent advisors knowledgeable in the field of intellectual property prosecution and commercialisation.
4.1.2. The IPSC is the ultimate decision making body in the determination of an IP management and Commercialisation strategy for SCIG.
4.2. Science Card Investment Group
4.2.1. SCIG shall allocate a key contact to the Institution upon Identification of a potential Research Project.
4.2.2. The SCIG key contact will be responsible for evaluating the commercial potential of a Research Project.
4.3. Technology Transfer Office (TTO)
4.3.1 The Institution shall engage with its Technology Transfer Office (or equivalent designated function within the Institution or affiliated organisation which acts as such) to commercialise the Technology and/or the IP in a form that will most effectively promote its development and use for commercial and societal benefit.
4.3.2. The responsibilities of the TTO shall include but are not limited to: outreach/awareness to PIs; relationship management between the TTO and the PI; IP Management; Technology marketing and IP contract negotiation; IP contract management; andIP costs and revenue distribution.
5.1. Institution ownership
5.1.1. Nothing in this Policy is intended to interfere with the Institution’s right to own all IP created by a Staff Member in the course of their employment or made using substantial use of the Institution’s resources.
5.1.2. IP resulting from a Research Project will be the property of the Institution notwithstanding any terms to the contrary in the relevant agreement governing the Research Project.
5.2. IP Created by Students
5.2.1. IP created by a Student in the course of a Research Project will be treated as though made by a Staff Member for the purposes of this Policy.
5.2.2. The Institution and the Student agree to grant SCIG a royalty-free licence to any thesis or dissertation submitted as a result of a Research Project, SCIG will not take any action that will prejudice the quality, integrity or award due to the Student with its use of such licence.
5.3. IP Created by Visitors
5.3.1. For the purposes of this Policy, IP created by Visitors in the course of their involvement in the Research Project will belong to the Institution. As such, the Institution is responsible for ensuring that any Visitor engaged with the Research Project assigns their rights, title and Interest to the Institution with respect to such IP.
5.4. Course Materials
5.4.1. The Institution will own the IP in course materials produced by Staff Members, Students and Visitors generated in the course of the Research Project.
5.4.2. The Institution will grant to the creator of such course materials a royalty-free, non-exclusive licence to use the course materials for non-commercial research and teaching purposes.
5.5. Scholarly Works
5.5.1. SCIG recognises and endorses the rights of Creators to publish scholarly works, provided that such scholarly works are submitted to the TTO and SCIG prior to submission for publication.
5.5.2. SCIG reserves the right to request a delay of no more than six (6) months for the purpose of protecting any IP.
5.5.3. Scholarly works submitted for publication resulting from the Research Project will include SCIG as a sponsor to the project as prescribed in the relevant agreement governing the Research Project.
5.5.4. Creators shall grant to SCIG a non-exclusive royalty free licence to use scholarly works resulting from the Research Project for administrative and promotional purposes.
5.6. Moral Rights
5.6.1. SCIG will not require the Institution, Staff Members, Students or Visitors to waive their moral rights as a condition of acceptance for funding.
5.6.2. vWith respect to scholarly works, SCIG understands and endorses that the copyright and moral rights of such works belong to the author.
5.7. Public Domain
5.7.1. SCIG must be notified in writing of any intended release of IP into the Public Domain. Acceptable grounds for such release include because it is deemed to be in the public interest; if the IP has low commercial potential and low prospects of fostering development of new products or services; or if deemed necessary by the Institution. SCIG reserves the right to deny any such request at its sole discretion.
5.8. Publication, Non-Disclosure and Trade Secrets
5.8.1. SCIG encourages and supports the right of Creators to decide if to publish the results of their research in accordance with Article 5.5.
5.8.2. Institutions will ensure that Creators are aware that premature Public Disclosure may result in the loss of IPRs and therefore must submit proposed publications to SCIG and the TTO prior to submission for publication in order to allow for the protection of such rights as set out in 5.5.2.
5.8.3. The TTO and SCIG may designate certain confidential information a Trade Secret and the property of the Institution. In such an event, the Creator(s) will be obligated to maintain secrecy of the Trade Secret as directed by the TTO.
6.1. Responsibility to Disclose IP
6.1.1. Creators shall keep appropriate records of their Research in accordance with the terms defined in the specific agreement governing the Research Project.
6.1.2. Where a creator identifies potential IP resulting from the Research Project, they shall discuss such potential IP promptly to the TTO and SCIG by means of an IP disclosure form or similar.
6.1.3. Creators will provide full, complete and accurate information within such disclosure to allow the TTO and SCIG to sufficiently assess the technical features and functions of any IP.
6.2. Creatorship and Ownership
6.2.1. Creators shall sign any and all necessary appropriate legal documents provided by the TTO and attest to creatorship. Should there be a dispute amongst collaborating Creators that cannot be resolved in consultation with the TTO, it shall be assumed that there was an equal, undivided contribution.
6.2.2. Once creatorship has been determined, the Creator(s) shall formally assign any right, title and interest that they have in the IP to the Institution or the TTO as appropriate.
6.3. IP Protection and Commercialisation
6.3.1. TTO and SCIG will analyse the information disclosed in any IP disclosure received from the Creators within 45 days of formal receipt. The analysis will include: whether or not the subject matter is protectable as IP; an assessment of economic viability or marketability; and determination of any rights of external parties such as joint funders or owners of Background IP which may be incorporated.
6.3.2. SCIG and the TTO will determine as soon as reasonably practicable, whether to protect and/or commercialise the IP. TTO will notify the Creator of any decision relating to the protection and/or commercialisation of any IP as soon as reasonably practicable.
6.4. TTO Elects not to Protect/Commercialise the IP
6.4.1. In the event that the TTO decides not to pursue IP protection and/or Commercialisation, it will provide SCIG with the opportunity to evaluate the Technology and decide whether to pursue IP protection and/or Commercialisation independently.
6.4.2. In the event that SCIG decides to proceed with IP Protection and/or Commercialisation under 6.4.1. the TTO and the Institution will assign its right title and interest in Technology to SCIG.
6.4.3. SCIG shall receive written notification that the TTO has decided not to pursue IP protection and/or Commercialisation of the Technology in a timely manner that allows SCIG to take any and all formal steps to ensure the protection of the IP.
6.4.4. A Deed of Assignment will be executed by the parties pursuant to 6.4.2. without delay.
The assignment may be subject to terms and conditions which provide compensation to the Institution, the TTO and the Creator(s) for their contribution to the Technology where commercial returns exceed SCIG’s investment.
6.5. SCIG Elects not to Protect/Commercialise the IP
6.5.1. Upon receipt of notification from the TTO under 6.4.3. and in the event that SCIG also decides not to pursue IP protection and/or Commercialisation, the TTO will provide the Creator(s) with the opportunity to evaluate the Technology and decide whether to pursue IP protection and/or Commercialisation independently.
6.5.2. In the event that the Creators decide to proceed with IP Protection and/or Commercialisation under 6.4.1. the TTO, the Institution will assign its right title and interest in Technology to the Creator(s) as applicable.
6.5.3. The Creators shall receive written notification from each that the TTO and SCIG have decided not to pursue IP protection and/or Commercialisation of the Technology in a timely manner that allows the Creator(s) to take any and all formal steps to ensure the protection of the IP.
6.5.4. A Deed of Assignment will be executed by the parties pursuant to 6.4.2. without delay.
6.5.5. The assignment may be subject to terms and conditions which provide compensation to the Institution, the TTO and the Creator(s) for their contribution to the Technology where commercial returns exceed the Institution, TTO and SCIG investment.
7.1. Determination of Commercialisation Strategy
7.1.1. SCIG and the TTO, with input from the Creators where applicable, will decide the most appropriate commercialisation strategy in alignment with SCIG’s Commercialisation Protocol, within three (3) to six (6) months of a decision to commercialise the Technology and IP under 6.3.2.
7.1.2. The Institute and the Creators of IP which has been selected for IP protection and commercialisation by the TTO and SCIG will provide all reasonable support in the assessment, protection (including preventing premature disclosure and execution of any documents including assignments and deeds attesting to inventorship), and Commercialisation of the Technology and IP.
7.1.3. Models of Commercialisation may include:
A. Licensing, either exclusively or non-exclusively, and variations thereof;
B. Assignment;
C. Formation of a Commercialisation entity to which the IP is licensed or assigned in terms of this Policy
D. Joint ventures;
E. Royalty free access on humanitarian or other grounds; or
F. Various combinations of the above
The model of Commercialisation will be in line with SCIG’s Commercialisation Protocol.
7.1.4. Regardless of the chosen model of Commercialisation, the transaction will be governed by the terms of an agreement which:
A. Protects the interests of SCIG, the Institution, its Staff Members, Students and Visitors;
B. Retains rights for the Institution to use the IP for educational and research purposes;
C. Assures that the IP will be developed and brought to the marketplace as useful goods and services
D. Prohibits the “shelving” of the IP for the purpose of developing and commercialising a competing product or service; and
E. Prohibits the use of the IP for any illegal or unethical manner.
8.1. Sharing of Revenues
8.1.1. SCIG expects TTOs to have a robust incentive structure that returns a portion of Net IP Revenue to the Institution which in turn rewards its Staff Members, Visitors and Students for their inventive contribution to IP generated in the course of their engagement.
8.1.2. In consideration of the contribution of SCIG funding towards the Research Project, SCIG will be due a share of Net IP Revenue generated from the Commercialisation of the Technology and/or IP.
8.1.3. Calculation of Gross IP Revenue, IP Expenses, and Net IP Revenue shall be in accordance with the following:
8.1.3.1. Gross IP Revenue - Gross IP Revenue (as defined in Article 2) includes but is not limited to outright sale of IP, option payments received, licence fees received, evaluation fees received, upfront and milestone payments received, royalty payments received, share of profits received, dividends received, commissions, income through disposal of equity, and the direct sale of goods and services.
8.1.3.2. IP Expenses - IP Expenses (as defined in Article 2) includes but is not limited to those expenses that related to (i) the Commercialising Party’s expenses incurred by payment to external parties for securing, maintaining and enforcing IP protection, such as patenting and litigation expenses; (ii) costs incurred by the Commercialising Party in the licensing/assignment of IP, including marketing costs, contract negotiation and drafting costs.
8.1.3.3. Calculation of Net IP Revenue - the Commercialising Party is expected to maintain accurate and transparent documentation of IP Expenses incurred for a particular IP and shall be entitled to cover all IP Expenses it has incurred as set out in 8.1.3.2. The Net IP Revenue is calculated as the Gross IP Revenue less IP Expenses.
8.1.3.4. Co-owned IP - Where the IP is co-owned by any combination of the Institution, the TTO, SCIG and an external party, the Gross IP Revenue received by the Commercialising Party will be shared in accordance with a pre-determined formula as per contractual agreement. Thereafter, the Gross IP Revenue received by the Commercialising Party and the Net IP Revenue will be determined, and revenues will be shared in accordance with 8.1.4.1 and 8.1.4.2.
8.1.3.5. The first one hundred thousand pounds (£100,000) of the aggregate Net IP Revenue shall be apportioned accordingly, for illustrative purposes:
● 92.5% to the TTO
● 7.5% to SCIG
Net IP Revenues after the first one hundred thousand pounds (£100,000) of the aggregate net revenue shall be apportioned:
● 87.5% to
● 12.5% to SCIG
8.1.3.6. In the event of a dispute or uncertainty regarding the share of Gross or Net IP Revenue arising from a specific IP, the issue will be dealt with in accordance with the agreement governing the Research Project.
8.1.3.7. Payments due under this Policy will be made on a periodic basis as set out in the agreement governing the Research Project.
8.1.3.8. The Commercialising Party is entitled to make applicable tax deductions from the Gross IP Revenues before the calculation of the Net IP Revenues.
8.1.4. The Commercialising Party will be expected to refrain from accepting non-monetary benefits for the Commercialisation of IP.
9.1. Recording and monitoring
9.1.1. The Commercialising Party is expected to maintain diligent records relating to the Technology and any pursuant IP in an appropriate form with sufficient detail and accuracy.
9.1.2. The Commercialising Party is expected to monitor deadlines for the payment obligations related to the maintenance or annuity fees of protected IP and shall make such payments in a reasonable time to avoid costs for delayed instruction.
9.1.3. The Commercialising Party is expected to make decisions and provide prosecution instructions with respect to the IP in a timely manner to avoid prejudicing the prosecution of the IP and avoid costs for delayed instructions.
9.2. Accounting
9.2.1. The Commercialising Party is expected to maintain diligent and accurate expense accounting records on the costs associated with developing, protecting and marketing the Technology and any associated IPRs for the purposes of calculating revenue sharing allocations.
10.1. SCIG recognises that the primary commitment of time and intellectual contributions of Staff Members and Visitors is to the education, research and academic programs of the Institution.
10.2. Upon undertaking a Research Project, Staff Members and Visitors are expected to act in the best interests of the Institution and SCIG and should avoid situations where interests external to those of SCIG and the Institution could negatively affect their work and the integrity of any Research Project.
10.3. It is the responsibility of the Institution to ensure that Staff Members and Visitors do not engage with external parties that would create a conflict with the provisions of any agreement governing a Research Project.
10.4. The Institution will notify SCIG of any potential and existing Conflicts of Interest at the earliest possible opportunity.
10.5. Conflicts of Interest will be dealt with under Article 11 of this Policy notwithstanding any action required by a regulating body or in accordance with applicable laws.
11.1. Violation
11.1.1. Breach of the provisions of this Policy shall be dealt with under the normal procedures of SCIG, and in accordance with the relevant provisions of laws and regulations in force.
11.2. Dispute Resolution
11.2.1. Any disputes or questions of interpretation arising under this Policy must in the first instance be referred to the IPSC for consideration and mediation.
11.2.2. If the matter cannot be resolved by the IPSC within ninety (90) days, then the dispute or question of interpretation must be referred to an independent expert mutually appointed by the IPSC and the party that brought such dispute.
11.2.3. The final decision of the independent expert will be binding on parties to the dispute.
12.1. Revisions
12.1.1. This Policy may be amended at any time by a decision of the IP Steering Committee.
12.1.2. All IP disclosed on or after the effective date of such an amendment shall be governed by the Policy as amended.
12.1.3. All IP disclosed prior to the effective date of the amendment shall be governed by the Policy prior to such an amended, provided that the provisions of the Policy (as amended) shall apply to all IP licensed or otherwise Commercialised on or after the effective date of any such amendment regardless of when IP is disclosed.
* Revenue share proportions laid out in 8.1.3.5 are for illustrative purposes only, and actual revenue share proportions may vary.