I am an academic at a UK university and have been asked to do some consultancy work for a company who wants to own all the IP for that work. I would only do this work on the weekends. Would my university have some claim over this IP? My university's written rules only say that the ownership of all inventions will be determined by Section 39 of the Patents Act 1977. This, on the face of it, seems to suggest they wouldn't have any rights over the IP.
I am reluctant to ask my university until I am clear what the right answer is as their initial reaction to all enquiries is just to say no.
Section 39 Patents Act 1977
(1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes if—
(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or
(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking.
(2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.
(3) Where by virtue of this section an invention belongs, as between him and his employer, to an employee, nothing done—
(a) by or on behalf of the employee or any person claiming under him for the purposes of pursuing an application for a patent, or
(b) by any person for the purpose of performing or working the invention,
shall be taken to infringe any copyright or design right to which, as between him and his employer, his employer is entitled in any model or document relating to the invention.