Intellectual property (IP) plays an essential role in both the research and teaching functions of universities and PRIs. This includes IP created by universities/PRIs and also third-party IP that they use in their work.
Whether it be basic (“blue-sky”) or applied research, through their R&D activities, universities and PRIs produce results in the form of inventions, scholarly publications, databases, new plant varieties, confidential information, computer programs, etc. Many of these are protectable by IP, yet many are also no more than proofs of concept or laboratory-scale prototypes which require further R&D before they can be commercialized. By granting universities and PRIs the rights to their own IP derived from publicly-financed research, and allowing them to commercialize their results, governments around the world are trying to accelerate the transformation of inventions into industrial processes and products, and to strengthen collaborative ties between universities and industry.
In addition, a university’s or PRI’s teaching activities will also generate IP, such as print publications, theses, software, films, sound recordings, computer presentations and multimedia works. These are generally protected by copyright. The Internet and modern technologies have fostered greater access to scholarly materials, but also prompted greater conflicts over their ownership and use. So universities and PRIs need suitable IP policies to deal with the ownership and management of teaching materials, access to scholarly information and use of third-party materials.
Universities and PRIs serve the public interest by disseminating knowledge through both research and teaching. Traditionally, many have done this by building close links with local industry and businesses as well as publishing the results of their research. But the era of globalization and the Internet has opened up new possibilities. While open access publication may be appropriate for some research outputs, others should be kept confidential temporarily so that they can be patented and developed commercially. To manage their IP and disseminate their knowledge effectively, universities and PRIs need to understand how to use the IP system.
Identifying and creating IP, and bringing research results to the next stage of development, have become institutional objectives for many universities and PRIs. In this context, an institutional IP policy is a prerequisite for successful collaboration between academia and commercialization partners.
An institutional IP policy is a formal document which typically deals with:
Without a formal policy regulating the ownership and use of IP rights, the different stakeholders in a university/PRI (researchers, technicians, students, visiting researchers, etc.) and commercialization partners (industrial sponsors, consultants, non-profit organizations, SMEs, governments) will have no guidance on how to make decisions concerning IP.
If you are writing an IP policy, consult our database of IP policies, manuals, and model agreements.
Academic knowledge and innovative technologies are transferred and used for scientific, technical, socio-economic and commercial purposes through a variety of channels, including:
Spurring the flow of ideas and inventions from university/PRI laboratories to the marketplace aims to benefit society through new products, processes, jobs and ideas.
In order to maximize the socio-economic impact of publicly-funded research results, universities and PRIs need to ensure that they are disseminated effectively. That means considering all types of diffusion and transfer mechanisms (e.g. open access publication, licensing, spin-offs, start-ups and collaboration in R&D) and all possible commercialization partners (such as spin-offs, existing companies, investors, SMEs, other non-profit organizations, innovation support agencies, even governments), and selecting the most appropriate ones.
While many academics generate impressive research results, their discoveries often require further research and development to fully mature. This can be expensive, time-consuming and risky and it is clearly not the university/PRI’s role to manufacture and commercialize the results of its research.
In recent decades, numerous academic institutions and commercial partners have been taking steps to bridge the gap between academia and practice. Companies and other commercial partners have started adopting open innovation approaches to R&D, combining in-house and external resources. Meanwhile, universities and PRIs have begun to play a more active role in the transfer of their knowledge and their interactions with industry and other partners, in order to take full advantage of their research results.
However, bridging the gap between research and practice hinges on several factors.
Sometimes, knowledge is best disseminated through its publication and release into the public domain. But in many cases the most effective way of realizing the social benefits of research-based knowledge is to protect it under IP laws and sell or transfer it to a company capable of transforming inventions into new products.
When managed strategically, transfer of research results can lead to benefits for society at large as well as the industry sector and institutions concerned.
Transfer of academic research is expected to improve the quality of life generally through:
Collaboration with universities and PRIs can strengthen industry by:
For universities and PRIs, the ultimate benefits of knowledge/technology transfer are usually not financial. While licensing revenue is occasionally generated, the principal benefits are indirect and should be considered in the longer term. They include, among others:
For more information, consult our publication "Technology Transfer, Intellectual Property and Effective University-Industry Partnerships".
Various stakeholders contribute in one way or another to the generation and dissemination of innovations, inventions and research findings or teaching materials. Stakeholders each have their own interests and expectations, which are not always fully aligned. In order to obtain their commitment and endorsement, an IP policy should preferably be drafted together with the main stakeholders, including:
An institutional IP policy will usually include rules on several sets of issues. Some of these issues may be dealt with in separate policy documents.
In order to be patentable, an invention must, among other things, be novel. If a researcher or student publicly discloses information about his/her invention before filing a patent application, such disclosure could have the effect of barring the invention from being patented. This is because many countries adopt the so-called universal novelty requirement, which means that information that is published or otherwise made available to the public in any country of the world before the patent application is filed may destroy the novelty of the invention.
For example, the following disclosures of the key features of the invention prior to filing a patent application may prevent you from obtaining a patent:
For more details, see our Patents homepage.
However, many countries allow for a grace period – usually between 6 and 12 months – which provides a safeguard for applicants who have disclosed their inventions before filing a patent application. In such countries, if the inventor or his/her successor in title publicly discloses his/her invention but then files a patent application claiming that invention within the grace period, such public disclosure will not affect the determination of novelty of the claimed invention. There are different ways of disclosing an invention, as indicated above, and the types of disclosure covered by the grace period differ from one country to another: in some countries, only very limited types of disclosure can be safeguarded.
In general, non-confidential disclosure of an invention before filing of the relevant patent application should be avoided. If disclosing the invention before filing a patent application is unavoidable – for example, to a potential investor or a business partner – then any disclosure should be accompanied by a confidentiality or non-disclosure agreement. If an inventor wishes to publish her/his research results, it is advisable to delay the publication until patent applications are filed.
Universities and PRIs should ensure that all stakeholders concerned, whether employees, visiting researchers, outside collaborators or students, are aware of the confidentiality issues related to their activities, along with the opportunities arising from their own and the institution’s IP. An IP policy should provide clear rules for them regarding disclosure and confidentiality, as well as model non-disclosure agreements.
Universities and PRIs frequently work in collaboration with businesses, governments or other institutions in order to exploit their research. Collaboration may take many forms, such as collaborative research between different universities/PRIs, or between universities/PRIs and industry, contract research between universities/PRIs and industry, or the free exchange and dissemination of knowledge and materials among universities/PRIs. In such circumstances, they need to establish collaboration agreements that safeguard their rights to continue to use existing IP and to exploit the IP that arises from research.
Any IP-related issues need to be clarified in early stages of discussions with an industry sponsor or commercialization partner. This includes confidentiality issues, ownership of IP and conflicts of interest. Each party therefore needs to have a good understanding of the processes and policies that the institution has in place to manage collaborative research.
As a good practice, many universities and PRI make public their standard collaboration agreement templates, to provide a simple and transparent framework. Browse our database to see examples of a variety of agreements from different institutions.
University and PRI staff are expected to devote most of their time and intellectual energy to the education, research and other programs supporting the institution’s mission.
A conflict of commitment arises when an individual engages in an outside activity, either paid or unpaid, that may adversely affect their commitment to the university/PRI. Undertaking outside activities alongside responsibilities toward the university/PRI can lead to conflicts regarding allocation of time and energy, especially if such activities may result in new IP – as with, for example, consulting, government service, public service, or pro bono work.
A conflict of interest is a situation in which an individual’s financial, professional or other personal considerations may affect his or her professional judgment in exercising any university/PRI duty. Questionable circumstances that can arise relating to research and IP include, for example:
No one model policy can be applied across all institutions or countries, since there are important country-specific institutional differences as well as different levels of absorptive capacity (i.e. the capacity of local businesses to recognize the value of new external information, assimilate it and apply it to commercial ends). Furthermore, countries and institutions are still experimenting with a mix of different institutional IP policies and practices, trying to gather evidence on what works and what does not.
Nevertheless, WIPO’s Model Intellectual Property Policy for Universities and Research Institutions aims to assist senior university managers in developing their internal IP policy, and to provide a checklist of key features that need to be addressed. Furthermore, the many examples of policies in our Database can help you understand how other institutions deal with IP issues.
To ensure that knowledge transfer takes place effectively, universities and PRIs need to develop and apply a high-quality institutional IP policy. But that is not enough: successful transfer and diffusion of technology is driven by many other factors, several of which are not directly related to IP.
For more information, see Developing Frameworks to Facilitate University-Industry Technology Transfer. A Checklist of Possible Actions and Commercialization of IP and Technology Transfer by Universities, Research Organizations, Business, Industry, SMEs and Individuals (pp. 37-48).
University and Public Research Institution (PRI) employees, students, visiting researchers and outside collaborators all create IP in the performance of their research or teaching duties. This IP may take the form of confidential technical information protected by trade secrets, patentable inventions, designs, software programs, original written works, diagrams, lectures and presentations and it can be the output of many other types of creative endeavors. Find out more about the role of IP in universities and public research institutions.
Who owns the rights to these works and results? The answer is not always easy or clear; it may vary from one country to another, from one institution to another, and within a given institution depending on:
In order to determine the ownership of particular research outcomes and teaching materials, one needs to look at (1) the applicable national IP law, (2) the IP policies of the university/PRI and (3) the individual contractual agreements among the university/PRI, creators and sponsors.
In the first instance, the issue of ownership is defined in the applicable national IP law. Countries take different approaches in legislating on this matter: there may be relevant provisions in patent/copyright laws, employment laws, laws on employees’ inventions (which contain chapters relating to inventions made by university/PRI staff) and/or laws dealing with university IP and technology transfer.
While there are important differences among national laws and also among the IP policies of different universities/PRIs, in many countries IP rights vest in the creator/inventor except:
For more information about IP laws in different countries, visit the WIPO Lex database, and for an overview of some possible issues relating to IP ownership, see the WIPO Magazine article “IP Ownership: Avoiding Disputes ”.
Countries have adopted different approaches to whether the employee (researcher, professor, etc.), the employer (university/PRI), the state or the sponsoring agency will be considered the owner of innovations, inventions and other research results developed within universities or PRIs using public funds.
There are two typical approaches.
University professors and researchers have full rights to the IP they created. This allows them, and not the institution, to decide whether or not to patent and how to further develop their discoveries, even if the underlying research was supported by public funds. Usually the university has some form of license to use the IP. In some cases, if the institution provides substantial support to the inventor for technology transfer, the benefits may be shared with the institution. Examples of professor’s privilege countries include Italy and Sweden.
The IP rights or results of publicly-funded research are owned by the institution where the researcher works and not by the researcher (although there are often exceptions, for example, for inventions made by researchers in their own time using their own equipment, or for inventions developed within the framework of a collaborative or sponsored research agreement). The institution is usually given responsibility for the protection and further development of the inventions. In recent years there has been a clear trend toward institutional ownership. Countries that currently apply this principle include Brazil, China, Denmark, Germany, Japan, Kenya, Norway, Singapore, Spain, Thailand, the United Kingdom and the United States of America, among others. There are two primary systems of institutional ownership:
Pre-emption rights: The first owner is the employee/researcher, but the institution is entitled to claim the invention, most usually within a specified period of time. This is the system, for example, in Austria and the Czech Republic. In most of these pre-emption rights systems, the institution must pay some form of remuneration to the employee inventor as compensation for transferring the right to patent the invention to the institution. Examples: Hungary and Lithuania.
Automatic ownership: The institution is automatically the first owner of the IP rights. This approach is usually subject to certain conditions and rights of inventors, for example, the right to remuneration and moral rights to the inventions. Examples: Denmark, Finland, Germany and the United States of America.
Regardless of the legislation in which the issue is included, there are good reasons to have a nation-wide policy that clarifies issues of ownership of IP rights in publicly funded research. This provides clear and predictable rules of the game for all stakeholders and also facilitates joint research between different institutions. In addition, some countries, for example Poland and South Africa, have legislation in place that makes it obligatory for publicly funded research institutions to have an IP policy.
There will be circumstances in which national laws impose limitations on how individual universities and PRIs can deal with IP rights. Subject to those limitations, each institution may regulate the principles of ownership of IP rights through its internal IP policy, employment contracts and other contractual arrangements.
In many cases, the key issue will be the appropriate distribution of rights among the creator/inventor, other participants in IP creation and the university/PRI. No single model IP policy exists for this; each university/PRI has the autonomy to develop its own approach, generally seeking to take into account the interests of all stakeholders.
As explained in the Ownership issues section, rules on IP ownership will depend on national law and individual institutions’ policies, among other things. But it is common for universities to apply different rules for IP in research results and IP in teaching materials.
Many universities/PRIs claim ownership of any IP that is generated by academic staff in the course of their employment, and also when IP is created using substantial institutional resources. Nevertheless, in such cases universities/PRIs may grant a variety of rights to their employees, most commonly as follows:
Disputes often arise when an employee does some work at home or after hours, or produces work outside of the scope of his or her ordinary employment. It is good practice to have employees sign a written agreement that clearly addresses the duties of employment and the issue of ownership of rights in such cases.
Every member of the university community has rights and responsibilities with respect to copyright and other IP in teaching materials.
Countries have adopted different approaches to regulate IP ownership in such materials.
One approach among the vast array of approaches, for example, is to grant the employee copyright in the teaching materials he/she creates, even within the scope of an employment relationship. In such cases, the employee will be generally required to grant the institution a royalty-free, non-exclusive license to use the materials for teaching purposes. The employee remains, however, sole owner of the copyright and has the freedom to further license his/her works to third parties.
Another model is to take the opposite road, by making the institution the sole owner of copyright in teaching materials created by its employees in the scope of their duties. The employee is then usually granted a royalty-free, non-exclusive license for personal use of the work, including teaching purposes, even after the end of his/her employment in the institution, provided that such use will be of a non-commercial character. In this case, the right to exploit and license the work belongs to the institution, but the creator may be given a share in the commercialization revenues generated by successful exploitation of the IP.
Universities can facilitate the dissemination of copyrighted materials by developing an adequate policy that, complying with national law, balances the protection of rights of their authors, publishers and other rightowners and the use of those materials for legitimate educational and research purposes.
Special rules are regularly established with respect to, among others:
Browse our database to see examples of copyright policies from different institutions.
Most universities recognize as a general principle that students who are not employees of the university own the IP rights in the works they produce purely based on knowledge received from lectures and teaching. However, there may be some circumstances where ownership has to be shared or assigned to the university or a third party. Typically, these include:
While it is important to address these issues in the university IP policy, the university would usually need to have an express agreement from the student before he or she embarks on the research. This is because students are not automatically bound by the policies of the university. Supervisors must also ensure that students are aware of the consequences if IP associated with a project is disclosed prematurely.
For more info, consult our Database, selecting the “students” as your focus.
Visiting researchers may bring existing IP to use at the host institution and may also create IP during their time at the host institution.
The position of the visiting researcher depends on whether the host institution has a specific agreement with the funding agency or sponsor. Such agreement will usually set out the circumstances under which the host institution may seek ownership of IP that visiting researchers create. However, the host institution will also usually still need to have a written agreement from the visiting researcher to be bound by those terms. The situation may be more complex where the visiting researcher is either self-funded or funded by an agency or sponsor with which the host institution has no agreement. In either case, IP issues must be clarified with the visiting researcher in writing before research starts.
The terms of the collaboration agreement or the funding arrangements will specify who will own the IP created and who may benefit from access to the IP, e.g. by way of a license. Generally, as in the case of South Africa, where industry pays full cost for the R&D, the industry owns the IP.
Some universities/PRIs include provisions in their IP policies to address collaborative or sponsored research. In general, rights arising out of a particular collaboration will be determined by the contractual arrangements between the parties.
Contractual provisions governing collaboration should be clear about:
Decisions on ownership of IP and distribution of rights will depend on the mission of the university/PRI, the legal and political framework, the areas of research concerned, the constraints on funding, the types of material in which IP rights exist and the purposes for which they have been created. Decisions may also be affected by the social/cultural environment surrounding the university/PRI. Consequently, there is no good or best approach that is suitable for all.
The most important guidelines for universities/PRIs are to ensure that any decision on ownership of IP:
Universities and PRIs need to remember that it is one thing to adopt an institutional IP policy that regulates ownership of IP and provides a rule on fair distribution of rights. It is entirely another to obtain and exploit IP rights for successful dissemination and transfer of technology. These objectives can only be achieved if employees and other creators/inventors:
Universities and PRIs are large producers and users of copyright material. An institution’s IP policy should therefore clarify its position regarding:
Governments can encourage universities and PRIs to develop research results and transfer them to market by granting institutions title to IP. But that is not enough. To ensure that researchers become inventors, the researchers must have incentives too. Both institutions and individual researchers should be incentivized to disclose, protect and exploit their inventions. Incentives can include “sticks” such as legal or administrative requirements for researchers to disclose inventions to the university or PRI that employs them, but also “carrots” such as royalty-sharing agreements or equity participation in academic start-ups. Recognition of patent activity in the evaluation and recruitment of faculty can also provide incentives for young researchers.
Openness and commercialization may seem like diametrically opposed concepts, but in fact they coexist naturally in today’s knowledge economy.
With the development of the Internet, the “open science” movement has emerged, encouraging the free publication of research results in order to spark innovation. Often, open access publication will be an appropriate way of disseminating scholarship and research results for public benefit.
But commercialization continues to play an invaluable role too. Many research results require substantial further work and investment to generate useful inventions. The temporary “monopoly” granted by IP protection encourages industry (e.g. the pharmaceutical industry) to partner with researchers and market their inventions by ensuring that businesses have a chance to recoup their investment. Through being developed and marketed, these inventions become actual products that can be used by the public and so improve society.
The patent documents for an invention are published 18 months after the first patent application is filed in relation to that invention (the priority date). This means that it is possible to file for patent protection while also publishing research results in a peer-reviewed publication. In other words, patenting and publication can co-exist: having reserved the IP rights by filing a patent application, a researcher may still publish his/her research results.
National IP policies express the intent of a country to use the IP system in a defined manner to achieve a stated goal. National IP strategies are measures taken by a government to realize its policy objectives. Many IP-related policies and strategies promote research and innovation and encourage the transfer and dissemination of technology. Find out more about national IP strategies.
An institutional IP policy must comply with all relevant national policies and strategies, be they on IP, trade, public health, indigenous knowledge , innovation or development.
The collection, use and subsequent transfer of biological materials, including genetic resources (GRs) and associated traditional knowledge (TK) is often a critical part of universities’ activities in many disciplines, for example the life sciences, agronomy, anthropology, pharmacology, taxonomy, marine sciences and biology. In both developed and developing countries there is growing attention to biocultural sensitivities, food security-related issues and various requirements on access to germplasm, including the access and benefit-sharing (ABS) requirements under the UN Convention on Biological Diversity and its complementary instruments.
Universities’ can play a crucial role as “intermediaries” in the transfer of information, knowledge and intermediate research products, including biological materials (e.g. advanced breeding lines, isolated microorganisms, etc.), to the private sector and other research partners. That being so, there is a great need to raise awareness of, and promote respect for, applicable legal requirements, including customary laws, regarding the use of GRs and associated TK. This need is accentuated when R&D occurs in the context of transnational research projects or larger consortia, where researcher partners in other jurisdictions could also access research materials and results, and could take important decisions regarding the protection of the resulting IP. It is therefore important to consult national IP laws in respect of disclosure of TK or GRs, benefit-sharing arrangements and consent from TK/GR owners.
Universities should undertake sound due diligence in relation to the initial collection, use and possible transfer of GRs and associated TK. This should enable and support – or at least not preempt – the possibility of providing defensive as well as positive protection of GRs and associated TK, in accordance with the applicable national legislation of the provider country. Due diligence will also help universities ensure future investment in the development of their IP assets throughout a chain that goes from fundamental or basic research up to the possible delivery of new and useful technologies.
Countries are negotiating possible new legal instruments on the interface between IP, GRs and TK. These negotiations, being conducted within the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), might also eventually have a bearing on how universities collect, use, conduct research on and manage IP rights in relation to TK and GRs.
An IP policy is usually part of the broader regulatory framework of an institution. As such, it must be coherent and compliant with the other acts or policies put in place, especially those related closely to the scope of the IP policy. This is the case notably for policies regulating:
Very often, such institutional policies are cross-referenced.
WIPO is a specialized agency of the United Nations dealing with IP issues. As part of our mission, we provide free access to unique knowledge banks of IP information. Through our website and publications you can learn about IP law and policy generally as well as accessing material specifically aimed at universities and PRIs.
You can get an overview of our activities to support the development of institutional IP policies on our IP Policies for Universities and Research Institutions homepage.
The IP policy is usually part of the broader regulatory framework of an institution. As such, it must be coherent and compliant with the other acts or policies put in place, especially those related closely to its scope. This is the case notably for policies regulating:
Very often, such institutional policies are cross-referenced.
Disclaimer: The questions and answers provided on this page serve a purely informative purpose and are not a legal point of reference. They do not necessarily represent the official position of WIPO or its member states.