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.
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:
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.
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.
Unless the context otherwise requires, all capitalised terms in this Policy have the meaning given to them in the Definitions section above.
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.
Intellectual Property Committee (the “IP Committee”)
The IP Committee shall be comprised of the following members:
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:
Decision-Making Authority of the IP Committee
The IP Committee decides on the following matters for and on behalf of Hibernia College:
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.
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:
This applies to any IP developed by Personnel which they cause to come into existence:
Hibernia College makes no claim of ownership in respect of any IP arising from any Student’s independent research, thesis or dissertation.
This Policy is applicable to IP that is owned by Hibernia College, for (without limitation) any of the reasons outlined below:
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.
Ownership of IP arising from research projects or other work partly or wholly sponsored by an external agency, industry partner or other organisation shall be subject to the IP provisions that are stipulated in the Relevant Contract. Commercialisation activities shall recognise specific terms and conditions in appropriate funding contracts including any collaborative research agreements or other Relevant Contract.
Where the Relevant Contract requires new IP rights generated during the performance of the research or other work to be assigned to a private company, the entry level Hibernia College Background IP should be clearly defined and agreed so that it is not inadvertently assigned to the private company as part of the new or Foreground IP but is retained as Hibernia College IP.
In the event of any inconsistency between this Policy and the terms of any such Relevant Contract, the provisions of the said Relevant Contract shall prevail provided that the IP clauses in such Relevant Contract have been reviewed by the IP Committee (which will seek external advice if necessary) and such Relevant Contract has been approved and properly executed for and on behalf of Hibernia College.
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.
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:
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:
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.
It is a condition of:
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
Evaluation of IP and Decision Making
Submission of a Patent Application or an Application for Other Protection:
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.
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.
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:
Examples of these kinds of conflicts (this is not an exhaustive list):
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.