Intellectual Property Policy

Definitions

The following definitions shall have the following meanings in this Policy, unless the context otherwise requires or otherwise defined therein.

“Hibernia College” means Hibernia College, an educational institution located in The Merrion Centre, Merrion Road, Dublin 4.

“Hibernia College Assets” means any or all of the facilities, patents, know-how, (secret or otherwise), confidential information or other forms of IP (including but not limited to patent applications, registered designs including applications for registered designs, copyright in documentation and software and any other IP for which protection could or has been applied for) of Hibernia College.

“Hibernia College IP” means any and all Intellectual Property of Hibernia College.

“Background IP” means any IP (i) licensed or owned by any party to a research contract prior to the beginning of any programme of research; or (ii) generated or licensed independently of the programme by that party; and which is brought into or used as part of the programme and excluding (for the avoidance of doubt) any IP created by any party to a research contract during the performance of the programme of research.

“Commercialise” or “Commercialisation” means the use of Intellectual Property to create or develop a commercial activity, and the words “Commercialised” and “Commercialising” are to be construed accordingly. This may involve exclusive or non-exclusive licensing, or where permitted an assignment, of Intellectual Property and may lead to a new company formation, including for example, a spin-out company, and/or the development and/or introduction of new or improved products or services.

“Companies Act” means the Companies Act 2014 and every statutory modification and re-enactment thereof for the time being in force in Ireland.

“Confidential Information” and “Know How” Confidential information or know how is a broad term used to cover information not generally known or reasonably ascertainable, by which the owner can obtain an advantage over competitors. It may refer to a formula, practice, process, design, instrument, pattern, or compilation of information. More specifically, know-how typically includes unpatented technical information (including, without limitation, information relating to inventions, discoveries, concepts, methodologies, models, research, development and testing procedures, the results of experiments, tests and trials, manufacturing processes, techniques and specifications, quality control data, analyses, reports and submissions) that is not in the public domain.

“Copyright” Copyright is generally applied to original literary (including books and other writings), dramatic, musical or artistic works, sound and visual broadcasts, computer programmes, original databases or the typographical arrangement of published additions. Copyright gives exclusive rights to that original work with the right to prohibit or authorise others to copy, perform, adapt or make the original work available to the public through broadcasting or recordings. Copyright law does not cover ideas and information themselves, only the form or manner in which they are expressed.

“Design Rights” means registered or unregistered rights in the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or ornamentation.

“Domain Names” means an Internet or other URL address. There are various generic top level domains (“TLDs”), such as .com and .biz, as well as, ccTLDs (Country code), such as .ie.

“Foreground IP” or “Results” means IP which comes into existence in the course of performance of a programme of research.

“Invention Disclosure Form” or “IDF” means the invention disclosure form in the format used from time to time by Hibernia College.

“Intellectual Property” or “IP” means the tangible or intangible results of research, development, teaching, or other intellectual activity. Intellectual property allows creativity and innovation to be captured and owned in the same way as physical property can be owned. Intellectual property includes individually and collectively patents, trademarks, service marks, registered designs, drawings, utility models, design rights, business ideas, concepts, inventions, discoveries, breeders’ rights, copyright (including the copyright in software in any code), database rights, know-how, trade secrets and other confidential information, technology, business or trade names, goodwill and all other rights of a similar or corresponding nature in any part of the world, whether registered or not or capable of registration or not, and including all applications and the right to apply for any of the foregoing rights.

“IP Committee” the Intellectual Property Committee established by Hibernia College and convened from time to time.

“The Policy” or “Policy” means this Intellectual Property Policy and Procedures and any valid amendments to it.

“Originator” means the member or members of Personnel who is or are an originator, inventor or creator of or contributor to IP within the scope of this Policy.

“Other Forms of Intellectual Property” includes, but are not limited to, database right for certain types of database (under Copyright and Related Rights Act, 2000); protection for semi-conductor topographies; plant breeders’ rights in certain plant varieties; and protection against unfair competition under “passing off” law.

“Other Relevant Parties” means individuals other than Staff and Students such as visiting students, visiting researchers, other visitors, consultants and independent contractors on sponsored research projects and/or who are engaged in research or other IP related activities at or behalf of Hibernia College. To the extent a Hibernia College registered student participates in the performance of any sponsored research project, any Relevant Contract or otherwise works closely with any member of Staff in connection with the performance of a programme of research or where it would otherwise be in Hibernia College’s interests to own the IP resulting from research activities, the Hibernia College registered student will also be regarded as and fall within the definition of Other Relevant Parties for the purposes of, and subject to the terms of, this Policy. For the avoidance of doubt, Hibernia College cannot claim ownership of any IP arising from a Student’s independent research, thesis or dissertation. For the avoidance of doubt, Hibernia College does not claim ownership of any IP arising from any Student, including but not limited to any undergraduate Student’s, independent research, thesis or dissertation.

“Patent” A patent is intended to protect inventions for new and improved products and processes that have some technical innovation and are capable of industrial application.

“Personnel” means Staff, Students, and/or Other Relevant Parties.

“Personnel Member” means any member of Personnel.

“Relevant Contract” means the agreement between Hibernia College and the external agency, industry partner or other organisation in relation to the performance of a programme of research.

“Staff” refers at all times to Hibernia College part time, full time and adjunct faculty or staff having casual, indefinite duration, permanent, pro rata or temporary contracts (including, without limitation Hibernia College post-doctoral researchers) to include directors, consultants and those engaged by Hibernia College on the basis of a contract for service, and persons employed by Hibernia College on fixed purpose academic contracts, under dual appointments (where relevant) and/or who are based temporarily outside of Hibernia College.

“Students” means any and all registered students of Hibernia College and the expression “Student” means any one of them.

“Trade Mark” is a unique, recognisable sign, design, symbol or expression which identifies products or services of one undertaking from those of another. It is intended to protect a brand’s identity so as to distinguish from others and may comprise of a word, logo, slogan, colour, three-dimensional shape and even a sound or smell. The Trade Mark must be capable of being represented in words and/or pictures.

Introduction

Parties Referenced in this Policy

This Policy makes specific reference to a number of affected parties throughout, including “Staff,” “Students” and “Other Relevant Parties”. Each of these terms relate to a distinct category of individuals and/or groups, which have been specifically defined above and the term “Personnel” is used to broadly capture all of them, i.e., all Staff, Students and Other Relevant Parties. All readers of this Policy should ensure that they are familiar with these defined terms from the outset.

Purpose of this Policy

This Policy is intended to provide information, support and guidance regarding the commercial exploitation and ownership of Hibernia College IP and the use of Hibernia College facilities and resources. It sets out Hibernia College’s policy in relation to the protection and Commercialisation of IP to the extent arising from research undertaken by Personnel and details the benefits accruing to and duties owed by Personnel under this Policy. For clarity, Personnel means Staff as well as Students and Other Relevant Parties, each as defined.

Scope and Application of this Policy

This Policy (and any subsequent amendments made to this Policy) is the agreed Policy referenced in all Staff and Student regulations, including:

the Staff contract of employment or contract for service;
the adjunct faculty contract for service;
the Staff fixed purpose contract; and
any document engaging Other Relevant Parties.

This Policy also applies to Students, including those engaged on a sponsored programme of research or any other project with a collaborating company or another third party or where there is a Relevant Contract in place (including any specific public funding terms) relating to the research. Hibernia College does not, however, claim ownership of any IP arising from any Student’s independent research, thesis or dissertation.

For the avoidance of doubt, this Policy also extends to Other Relevant Parties. Other Relevant Parties at Hibernia College who have a prior existing and conflicting intellectual property agreement or arrangement with another employer or third party must enter into an agreement with Hibernia College (and their employer or relevant third party) to abide by the conditions of this Policy in the course of their activities in Hibernia College.

Monitoring of and Changes to this Policy

This Policy will be monitored by Hibernia College’s IP Committee on an ongoing basis. It is subject to review by Hibernia College at least once every 3 years. The IP Committee may also make such minor edits, amendments or other updates to this Policy as may be reasonably required from time to time.

All amendments to this Policy shall be posted on the Hibernia College website and/or Intranet and such amendments shall be fully valid and effective from the date of posting.

Related Hibernia College Forms

Forms identified in this Policy which are related to research and/or Hibernia College IP may be obtained by contacting Hibernia College’s IP Committee.

Intellectal property and relevant definitions

Intellectual Property (IP)

IP is the tangible or intangible results of research, development, teaching, or other intellectual activity. It may be created by faculty, adjunct faculty and other Staff, by Students and by Other Relevant Parties such as contractors and consultants.

Types of IP may include patents, copyright (including:- teaching materials and learning content, etc.), trade marks, designs, domain names, software algorithms and code (as a special case of copyright), data, databases, confidential information and know-how and specialist types of IP protection.

IP allows creativity and innovation to be captured and owned in the same way that physical property can be owned. IP includes individually and collectively all technical innovations, inventions, improvements, and/or discoveries, information, writings and software, whether or not patentable or otherwise susceptible to IP protection, including technology and materials in their tangible form and includes IP generated from Hibernia College Assets.

Specific Definitions

Unless the context otherwise requires, all capitalised terms in this Policy have the meaning given to them in the Definitions section above.

Aims of the policy

Aims and Objectives

The objective of this Policy is to provide a consistent framework within which Hibernia College IP is developed and managed by and for the benefit of Hibernia College.

Governance and decision making

Intellectual Property Committee (the “IP Committee”)

The IP Committee shall be comprised of the following members:

                    I.         CHIEF EXECUTIVE OFFICER
                   II.         CHIEF FINANCE OFFICER
                  III.         ACADEMIC DEAN
                  IV.         DIRECTOR OF RESEARCH

The IP Committee may draw upon relevant external and legal expertise as required.

Hibernia College reserves the right to alter the composition of the IP Committee at any time.

The IP Committee members are required to treat as confidential information proposals submitted and the IP produced at Hibernia College and presented to the IP Committee.

The relevant Hibernia College Personnel may be required to put forward a proposal to the IP Committee regarding the IP on a project and may be requested to attend an IP Committee meeting, where appropriate.

Members of the IP Committee will be required to declare their interest in a proposal if such exists and to absent themselves from any discussion pertaining thereto. Where such an interest exists, Hibernia College may remove that person from the IP Committee and replace him/her.

The importance of appropriate outside professional assistance is acknowledged. The IP Committee will avail of these resources when appropriate.

Role of the IP Committee

The IP Committee is responsible for and decides on or approves the following:

processing of IP applications submitted using an Invention Disclosure Form (in the standard form designated by Hibernia College from time to time); and
assessing the commercial viability of IP and/or inventions and approving support to further develop/Commercialise the IP, as applicable.

Decision-Making Authority of the IP Committee

The IP Committee decides on the following matters for and on behalf of Hibernia College:

the commercial evaluation of new innovations and Hibernia College IP;
the protection and prosecution, including filing and management of patent applications and related IP protection for Hibernia College IP;
on consultation with the relevant Originators, how the Originators are identified and decided;
the exploitation route for Hibernia College IP, if applicable; and
the abandonment of a patent application and the process, if applicable.

Principal Investigators and Other Personnel

As the lead researcher on a programme of research, the principal investigator carries a particular responsibility for compliance with Hibernia College’s IP management system throughout the programme. This is also relevant for the purposes of good record keeping and the disclosure, introduction and/or use of Background IP in a particular programme of research or project, and in the context of recording the outcomes of such activities. To acknowledge this responsibility, the principal investigator will be required to give a Principal Investigator Undertaking (in the standard form designated by Hibernia College from time to time) prior to signature of the contract or collaborative research agreement for the performance of such research activities. All other members of Personnel involved in the performance of such research activities under the collaborative research agreement may be required to give a Researcher Undertaking (in the standard form designated by Hibernia College from time to time) confirming that they have read and understood the contract or collaborative research agreement governing the performance of the research.

Ownership of Hibernia College IP

General Provisions

As a general rule (subject to the exceptions or any other provisions to the contrary set out in this Policy), any IP rights in or to any material/works created by Personnel in the course of their employment or education by Hibernia College or in relation to work carried out for Hibernia College and/or through the use of Hibernia College Assets is the property of and vests solely and absolutely in Hibernia College or such companies or organisations as Hibernia College may nominate for such purposes. Such material/works include, but are not limited to any:

copyright (including rights in computer software, teaching materials and other learning content);
patents;
design rights;
trade mark rights;
brand rights;
database rights;
know how;
trade secrets;
confidential information rights in design;
semiconductor topography rights; and
other Intellectual Property rights or other property rights, (whether vested, contingent or future anywhere in the world).

This applies to any IP developed by Personnel which they cause to come into existence:

during the working hours of Hibernia College or outside those hours if related to and within the scope of the individual’s job responsibilities, even if he or she is not specifically requested to create it;
when using Hibernia College’s equipment, supplies, facilities or Hibernia College Assets;
during an individual’s use of their personal time or own facilities if the basic nature of the work created is related to the individual’s job;
using Hibernia College’s confidential information, trade secrets, know how or any Hibernia College IP; or
in relation to any work performed for Hibernia College (including pursuant to any third party funded programmes).

Hibernia College makes no claim of ownership in respect of any IP arising from any Student’s independent research, thesis or dissertation.

Scope

This Policy is applicable to IP that is owned by Hibernia College, for (without limitation) any of the reasons outlined below:

It is developed by Personnel in the course of their normal or specifically assigned duties either when IP could reasonably be expected to result from the carrying out of those duties and/or, at the time the IP was developed, there was a special obligation on the relevant Personnel to further the interest of Hibernia College.
Under copyright legislation, Hibernia College is the first owner of any copyright in the work created by Staff in the course of their employment unless precluded by a prior agreement between Hibernia College and a third party (or as covered by clause 6 of this Policy).
The IP arises out of funded or non-funded research where such research has, in the opinion of Hibernia College, made use of the equipment, facilities, Hibernia College Assets and/or other resources of Hibernia College (except where ownership of such IP was provided for in a prior agreement between Hibernia College and third parties).
If a Student performs sponsored research, a work placement or an internship, Hibernia College should have ownership of the IP arising from the research performed by such Student.
If it is a condition of the admission or appointment of Other Relevant Parties to perform research that Hibernia College should have ownership of the IP arising from the research performed by such Other Relevant Parties.

As mentioned above, this Policy extends to Other Relevant Parties. Such Other Relevant Parties may be required to enter into an appropriate agreement with Hibernia College to regulate their relationship with Hibernia College.

Execution of Documents and Reasonable Assistance

At Hibernia College’s reasonable cost, Personnel agree to execute any and all documentation and provide all reasonable assistance to Hibernia College to secure, protect, perfect or enforce any and all of Hibernia College’s rights, title and interests in and to Hibernia College IP and to otherwise comply with its obligations under this Policy and/or any Relevant Contract.

The Originator and other Personnel concerned shall give such assistance to Hibernia College and to the licensees/assignees of Hibernia College IP (as applicable) as is reasonably necessary to enable the licensee (or assignee) to properly use and Commercialise the Hibernia College IP, in accordance with the terms and conditions agreed in the collaborative research agreement or other Relevant Contract.

External works

Staff are permitted to engage in external work for third parties subject to compliance with their Hibernia College employment contract and External Work Form (in the standard form designated by Hibernia College from time to time) requirements and subject to written approval by their Head of Department at Hibernia College.

Assignment of intellectual property rights to Hibernia College

Early Formal Assignment of Rights by Personnel

For the avoidance of doubt, the provisions of this paragraph 8 apply to all the faculties, departments, institutes, centres and Personnel conducting research or other intellectual activity using Hibernia College Assets and Hibernia College’s supplies, facilities, confidential information, trade secrets or existing Hibernia College IP.

As a condition of:

employment or engagement by Hibernia College as Staff;
admission by Hibernia College as a Student; or
engagement by Hibernia College of Other Relevant Parties;

each Staff member, Student and any Other Relevant Parties (as the case may be) shall comply with this Policy and shall agree to assign to Hibernia College or its nominee any and all IP in and to inventions or other IP discovered and produced or otherwise developed by them within the scope of this Policy.

When required by the specific circumstances of a project and on the request of the IP Committee, a member of Personnel will:

sign an Intellectual Property Assignment Agreement;
execute such documents of assignment, confirmatory assignment or other documentation required to assign or transfer IP and waive any moral rights to ensure, protect, perfect and enforce Hibernia College’s rights, title and interest in Hibernia College IP;
do anything that may reasonably be required to assist any assignee of any patent application or other IP to obtain, protect and maintain its rights, title and interest; and
use all reasonable endeavours to do or procure to be done all such further acts and things and to execute or procure the execution of all such other documents as may be reasonably required from time to time for the purpose of giving each party thereto the full benefit of the provisions of this Policy.

Administration of the IP policy

At Hibernia College, the party responsible for supporting the development and potential Commercialisation of Hibernia College IP is the IP Committee. All Hibernia College IP created by Personnel must be disclosed to the IP Committee in a timely manner and in accordance with the procedures laid down in this Policy.

The IP Committee will ensure that appropriate IP education and training is made available to Staff and Students (and as required Other Relevant Personnel) of Hibernia College.

Disclosure to and evalaution by Hibernia College

Disclosure Requirements

It is a condition of:

employment or engagement by Hibernia College as Staff;
admission by Hibernia College as a Student; or
engagement by Hibernia College of Other Relevant Parties;

that the results of all research or projects should be fully, promptly and completely disclosed to Hibernia College.

The IP should be kept confidential for a minimum of 6 months or longer if requested by the IP Committee until a timely evaluation of the case assessment (including, without limitation, patentability) has taken place.

No publication (written, oral of other public statement) should be made prior to disclosure.

Confidentiality agreements and/or non-disclosure agreements should be used where appropriate.

Submission of Invention Disclosure Form

Regarding any discovery or invention made that might be useful, patentable or otherwise protectable, this Policy requires that Personnel complete an Invention Disclosure Form (in the standard form designated by Hibernia College from time to time).
This form should be promptly submitted (and in any event no later than within 30 days of the discovery or invention or other IP in question) to the IP Committee.

Evaluation of IP and Decision Making

Any IP reported in an Invention Disclosure Form shall be submitted to the IP Committee for assessment under the guidelines of this Policy and for recommendations to Hibernia College regarding the patentability and/or potential Commercialisation.
The IP Committee may recommend that other suitably qualified advisors or external consultants be engaged to advise on the assessment of the IP.
To the extent the IP may have commercial potential, the IP Committee may, at its discretion, use the following criteria to assess and decide on the potential marketability, exploitation and/or Commercialisation (without limitation):
- Assessment that the IP does not cater for a once-off need and that it has a potential long-term benefit.
- Technical and commercial feasibility.
- Proof of concept (business plan, access to finance etc.).
- Demonstrates a competitive advantage based on differentiated or innovative product or service.
- Development stage of the subject matter.
- Commercial focus and profit motive.
- Study of comparable existing subject matter and Commercialisation practices.
- Proximity to market.
- Market valuations.
- Barriers to entry into markets.
- Estimated projected sales based on market research.
- Third party assistance.
- Estimated cost of patent process.
Whilst the criteria listed above are not exhaustive, it provides guidance to persons submitting an application as well as to those determining the commercial value. As it is a complex decision, the IP Committee may refer to other expertise (internal or external) where necessary, and further criteria may be applied.

Submission of a Patent Application or an Application for Other Protection:

Hibernia College shall have the right, but not the obligation, either directly or through an outside agent, to seek patent or other protection of the IP and to undertake efforts to introduce the invention into public use.
Where a decision is made by the IP Committee to proceed with an application for protection of IP, the process below shall be carried out in a timely manner.
Where a decision is made by the IP Committee to proceed with a patent application, the Originator of the IP is required to cooperate in every reasonable way, to execute all necessary documents and to assist the IP Committee in processing the patent application. The application must remain confidential until such time as this initial filing process is complete and the patent application has been published and any disclosure outside Hibernia College during this period may only be made under confidentiality agreements agreed in advance by the IP Committee.
The cost of the submission of the application shall be paid by Hibernia College. The Originator may be required to assist Hibernia College and/or its advisors with the preparation of a claim for appropriate support for IP protection.
The Originator of the IP and Hibernia College shall take all reasonable precautions to protect the integrity and confidentiality of the IP in question. The Originator of the IP should be aware that publication prior to the filing of a patent application will destroy patentability.
Hibernia College may decide at any stage to withdraw from the process of exploiting a particular piece of IP. This may arise where:
- concern exists regarding the technical or commercial feasibility of a particular piece of IP,
- costs of exploiting the IP are excessive, or
- external sponsorship of the process is no longer available.
No patent application, assignment, licensing or other agreement may be entered into or will be considered valid with respect to Hibernia College IP except when properly and lawfully executed by Hibernia College.

Publication of research results

It is Hibernia College policy to encourage Staff and Students to place the results of their research in the public domain either through publication in learned journals or presentation at conferences or any other media. This is a vital factor for academic recognition. It is mandatory that such disclosure is not in violation of the terms of any Relevant Contract or other agreement that has been entered into by Hibernia College with a sponsor or other third party.

It must be recognised that premature publication or disclosure except on a confidential basis may make it impossible to obtain valid patent protection. Where possible the delay in publication to enable a patent application to be filed should be for such period as is reasonably determined by the IP Committee to protect the patentability of the IP.

In this Policy, publication refers broadly to any disclosure of the Intellectual Property, or any part of it, in any public format, including, but not limited to, journals, conference proceedings, conference abstracts, conference presentations, thesis, websites and posters. Even publications of limited scope (for example, describing an overall approach) and scale (presentation to a small group) can have a significant impact and potentially reduce the ability of Hibernia College to adequately protect such Intellectual Property.

Questions or concerns with regard to the potential impact of publication on Intellectual Property rights may be directed to the IP Committee.

Resolution of disputes

Any dispute between Hibernia College and an Originator of IP, which after making every reasonable effort cannot be resolved between them fairly by negotiation within sixty (60) days, shall be submitted for mediation by a mediator or other appropriate independent third party expert agreed by the parties or, in default of agreement, appointed by the Centre for Dispute Resolution in Dublin.

The cost of any such mediator or expert shall be borne equally by the parties.

Conflict of interest relating specifically to research and commercialisation activities

A conflict of interest arises when an individual holds a personal interest, whether direct or indirect, which in the opinion of a reasonably-informed and well-advised person is sufficient to call into question the independence, impartiality and objectivity the individual is obliged to exercise in the performance of his or her duties. Conflicts of interest may be financial or non-financial or both.

The existence of an actual, perceived or potential conflict of interest does not necessarily imply wrongdoing on anyone’s part. However, any private, personal or commercial interests which give rise to such a conflict of interest must be recognised, disclosed appropriately and either eliminated or properly managed.

conflicts of interest that may arise in connection with IP Commercialisation include, but are not limited to, the following:

An individual using their Hibernia College position to:
influence a contract or other favourable terms for a company in which they, or a relative or friend, had a financial interest.
obtain financial or non-financial benefits for themselves or for a relative or friend in return for providing advantage, or potential advantage.
use Hibernia College resources or confidential information for personal financial or non-financial benefit or benefit to a relative or friend.
Conducting business, employment or activity outside of Hibernia College which adversely affects the individual’s ability to perform their duties.
An individual compromising research objectivity or independently in return for financial or non-financial benefit for them or for a relative or friend.

Examples of these kinds of conflicts (this is not an exhaustive list):

A researcher having a financial interest in Hibernia College’s research, this being exacerbated if the value of the researcher’s interest may be affected by the outcome of the research.
An individual is an inventor of patents or creator of other IP whose value may be affected by the outcome of research in which they are involved.
An individual holds a position in an enterprise (e.g. as director) that may wish to restrict (or otherwise manage) adverse research findings for commercial reasons or not wish to publish the results of the research.
An individual taking part in the negotiation of a contract between Hibernia College and a company, where the individual or their family or a close personal friend has a financial or non-financial interest (e.g. a directorship) in that company.

Hibernia College requires full disclosure of potential areas of conflict and open discussion at the earliest possible opportunity. Hibernia College will endeavour to alert Personnel to recognise where conflicts of interest may occur in relation to its or their research and Commercialisation activities and to manage and resolve these conflicts.

The responsibility for avoiding conflicts of interest rests, in the first instance, with each Personnel Member. In the event that the IP Committee identifies a potential, actual or perceived conflict of interests related to IP Commercialisation, it shall make the individual Personnel Member concerned aware of the Conflict and advise them to follow the preferred process as determined by the IP Committee.