Completing an IP due dilligence form
The Commercialisation Office conducts a due diligence process prior to the transfer of ownership of College intellectual property (IP) to Imperial College Innovations Ltd (ICIL) in order to reduce the risk of non-compliance with a third party’s terms and conditions (e.g. a research funder) and identify any other encumbrances. Inventors are required to complete an IP Due Diligence Form to assist with the process, they are asked to list the following:
- All College researchers and external collaborators who made a contribution (this is a legal requirement for patentable IP);
- All salary and project funding used in the research that gave rise to the IP;
- Materials that were used to generate the IP and obtained from external sources;
- Clinical samples that were used to generate the IP, along with patient consent forms and ethical approval;
- Software that was used to generate the IP and obtained from external sources; and
- Any other contractual arrangement that may encumber the IP
The Commercialisation Office will then check the terms of the funding and any other agreements relating to the IP and will address any issues arising.
The IP Due Diligence Form also records how revenue will be shared among individuals in the event that commercialisation is successful, under the College’s discretionary Reward to Inventors Scheme
Completing an IP due dilligence form
Part A: Reference details
Patent IP Cases:
The purpose of Part A is to provide information to identify the invention and patent application to enable due diligence to be undertaken and to be able to describe the IP in the assignment.
Non-Patent IP Cases:
The purpose of Part A is to identify the type of IP and provide a description (alongside a copy of the IP) to enable due diligence to be undertaken on only that IP and to be able to describe the IP in the assignment.
Part B: Inventorship or IP Generation details
Part B, Section 1: Creative/Inventive period
Please insert the period during which the IP was conceived and developed as this will provide the dates against which the due diligence will be undertaken.
Part B, Section 2: External Contributions
In section (a) please confirm or otherwise if any individuals/inventors from an external institution contributed to the IP and if so, please list them in section (3).
In section (b) please confirm or otherwise if the generation of the IP was out-sourced to an external organisation and if so, please list them in this section and provide the requested information. Please list the research funding that paid the external organisation in Part C (2).
Part B, Section 3: IP Contribution/Inventive contribution
Patent IP Cases:
All the individuals who made an inventive contribution to the IP must be listed in this section, including non-Imperial inventors.
Under UK law, the inventors are 'the actual devisers of the invention'. This refers to those who had the original idea, specified and, in some cases, executed the subsequent research. This does not include skilled technical assistance, except where an associate followed a path of their own, maybe against instruction or conventional teaching, and subsequently produced data in support of the patent application. In the latter case, it would be difficult to exclude such data. Second, there is little legal room for choice in the matter of inventorship. Contributions must be justifiable and this does not include superiors in the organisation who have provided advice, encouragement, finance or facilitating role. Similar arguments apply to the co-authors on a scientific paper. You may wish to recognise contributions of technical assistants, provisions of reagents and departmental seniority in your published papers, but this does not constitute inventorship for the purposes of a patent.
Failing to have the correct inventors listed on a patent can be grounds for invalidation of the patent, therefore please ensure that all who have had an inventive contribution to the invention are listed. Someone who just carried out experiments under direction would not be considered an inventor.
Non-Patent IP Cases:
In contrast to the situation described above for inventions, an individual’s contribution to non-patent IP is any contribution made by an individual to the generation of that IP e.g. the generation of data for know-how or writing the software.
The % contribution/inventive contribution will provide the basis for the % revenue share to individuals/inventors that they are eligible to receive under the College’s discretionary Reward to Inventors Scheme. The % contribution/inventive contribution also provides the basis for the % revenue share with a co-owner if the IP was jointly created with researchers from an external institution. For joint IP the % contribution/inventive contribution of the whole IP should be stated in this section i.e. Imperial and external individual’s contribution/inventive contribution should add up to 100%, the %’s of the Imperial individuals will be adjusted pro rata for College revenue shared under the Reward to Inventors Scheme.
Part B, Section 4: Other Imperial researchers contributing to the invention (Patent Cases ONLY)
In this section the inventor(s) should acknowledge the people that contributed work to the invention (e.g. carried out experiments) but worked solely under direction of the inventor(s). For example, please list others such as PhD students, collaborators, lab technicians etc. who carried out work which has contributed to the invention and also describe what this contribution was.
This information is necessary should there be any query regarding inventorship/ownership of the invention.
In certain circumstances, such as where there is a sole inventor, College will contact the contributors listed to seek confirmation that they agree with the description of their contribution to the IP.
Part B, Section 4/5: Imperial Revenue Share (optional)
College shares IP commercialisation revenue it receives from Innovations (College revenue) with the individuals and their Departments according to the Reward to Inventors Scheme. The College revenue is shared between the individuals according to their IP contribution/inventive contribution (i.e. % revenue share equates to % IP contribution/inventive contribution specified in the table in Part B, Section 3). If the individuals wish to share their personal share of revenue with others at Imperial, they must specify who they wish to share their personal revenue with and the % they wish that individual to receive.
Please note, for jointly owned IP the revenue share will be calculate pro-rata according to the % contributions of the College individuals.
Part C: IP Generator’s/Inventor’s Employment and Funding Details
The purpose of Part C of the form is to record all information which may be relevant to assessing the legal title to the IP and any potential third party claims to such IP. The information provided will assist College and Innovations in assessing ownership and any obligations to third parties in respect of the IP. If in doubt, please disclose all information believed to be material to the creation of the IP.
Each College generator/inventor must complete and sign Part C of the IP Due Diligence Form (please duplicate Part C where there is more than one).
Part C, Section 1: Details of HR Status during the creative/inventive period
The table in section 1 should be completed with your details only. If during the creative/inventive period (as detailed in Part B Section (1)) your employment status changed or you were a student or you were not employed by College please specify on a new line.
Part C, Section 2: Details of Research Funding
It is important to provide details of all funding source(s) for the work which gave rise to the IP, including that which funded any out-scoured work, so that College can determine if there are any third party claims to the IP or restrictions on the IP.
Part C, Section 3: Acquired Materials
In this section please confirm or otherwise if any materials provided by a third party have been used in experiments leading to the invention. If any such material were used please list them in section (b). If they were provided under a MTA please provide a copy of the MTA for review, as the terms of any such MTA may affect the ownership and/or freedom to commercialise the IP. If they were not provided under a MTA, please state they were donated.
Part C, Section 4: Clinical samples
In this section please confirm or otherwise if any clinical samples were used during the research which gave rise to the IP and provide the corresponding consent form and ethics approval.
Part C, Section 5: Software
Please confirm or otherwise if any third party code and/or computing platforms were used to develop the IP. If any third party code and/or computing platforms were used, please provide the information requested in the table in section (b).This is important as such third party code and/or computing platforms may mean that College does not completely own the IP or that the licences under which this third party IP was provided, present an encumbrance that requires to be addressed prior to the IP being commercialised.
Part C, Section 6: Institute of Biomedical Engineering (IBME)
In this section please confirm or otherwise if IBME facilities located in the specified Bessemer laboratory space were used in the research from which the IP has arisen.
Although the use of the IBME facilities in the generation of the IP does trigger a revenue share with an external organisation, the inventor’s share of IP commercialisation revenue is protected. Therefore, disclosing the use of IBME in the generation of IP does not impact on the share of revenue an inventor may receive under College’s Reward to Inventors scheme.
Part C, Section 7: Contact details
The inventor’s full name and address are required for the formal assignment of the technology to Innovations which is required to complete patent formalities. Furthermore, the nationality of the inventor(s) is required for filing an international (PCT) patent application.
Your address will also be used by College Finance to inform you of any IP commercialisation revenue attributable to you should you leave College (College employees will be paid through payroll). Please keep College HR informed of any change of address particularly if you leave the College. College Finance will hold an individual’s IP commercialisation revenue for 6 years if they cannot be traced at which point the revenue will be distributed to their Faculty. College Finance will attempt to contact you by your personal email address in the event that you cannot be traced and you are due a share of IP commercialisation revenue.
Part C, Section 8: Future research programs
The commercialisation of College generated IP does not prevent future College research programmes to be undertaken based on that IP. This section asks you to confirm or otherwise if this IP has or will be introduced as background IP in a funding application or collaboration with an external organisation so that College is aware of future uses of this IP and what other organisations, if any, have the right to use this IP.
Part C, Section 9: Comments
Please provide any further comments which may assist College and Innovations in determining ownership of the IP for example any research contracts, service agreements, collaborations or any other agreements that have not been covered elsewhere.
Once the form has been completed please print and sign this form, and post it to the address below:
PALM team, Commercialisation Office
Imperial College London
52 Princes Gate