Assignment of IP the College has chosen not to commercialise
Process for College inventors to request assignment of intellectual property that is formally abandoned or rejected by the Industry Partnerships and Commercialisation (IPC) team
The College has established a process whereby inventor(s) may request the assignment of Intellectual Property (IP) that has either been formally abandoned by the IPC Team (i.e. IP that has been assigned to Imperial College Innovations Ltd (ICIL) and they wish to conclude their efforts to commercialise) or formally rejected by the IPC Team (i.e. IP that has not been assigned to ICIL).
Should the IPC Team abandon or reject IP, they will formally notify the inventor(s) by email. Upon receipt of a notification email, the inventor(s) can request to be assigned that IP by informing the IPC Executive or the Director of the IPC Team.
All such requests will be subject to the outcomes of College’s due diligence process, for example, any co-owners or funders of that IP will also be notified of IPC Team’s decision, if they do not wish to be assigned the IP to try and commercialise it, then it can be offered to the inventor(s).
Before being assigned the IP, the inventor(s) will be required to provide their reasons for wishing to take assignment of the IP. They may also be required to demonstrate their reasonable ability to commercialise the IP. There will be two legal instruments governing the IP transfer to the inventor(s), an Assignment Agreement and a Revenue Sharing Agreement with ICIL to share any revenue generated from their commercialisation of the assigned IP.
The inventors taking assignment of the IP are not eligible to receive a share of the revenue stream College may receive from the commercialisation of that IP, under College’s Reward to Inventors Scheme. Any inventors of the IP, who do not take assignment of that IP, are eligible to benefit under College’s Reward to Inventors Scheme from a share of IP commercialisation income, commensurate with their inventive contribution.
Upon being assigned the IP, the inventor(s) will be solely responsible for commercialising the IP and for meeting patent application deadlines and any associated costs.
Please note, being assigned IP in a personal capacity and activities relating to that IP are subject to College’s Conflict of Interest policy and Register of External Interests and Annual Declaration policy and require prior approval and annual declaration as described therein.