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I'm EPSRC (Engineering and Physical Science Research Council, the biggest UK funding source in the sciences and engineering) funded. Several months into my PhD an industrial sponsor came along. In exchange for additional funds they wanted me and the other PhD students in our group to spend some time during the PhD at their sites and work on industrial problems. This is known as a CASE award. I'm not sure what the university signed, but I have not signed anything. It was a verbal agreement with my supervisor.

I'm now in my 3rd year and writing up. The industrial sponsor has decided to renew their agreement with the university and just issued me with a contract (it states the university and industrial sponsor have agreed upon additional clauses as of early 2015). The clauses/contract that I've been asked to sign states that I will give the industrial sponsor all my intellectual property (to which I currently own) generated over the course of the last 3 years. It also states that the industrial sponsors will review all publications and stop me publishing anything they think will give them a competitive edge (Note I'm not and have never used any of their data, resources or industrial knowledge/work/ideas etc. this is my own work) - I'm just about to publish the remainder of my PhD and then submit my thesis in the coming months. I was in good position to finish early and focus fully on moving to the industrial site for the remainder of my PhD and work on the projects the industrial sponsors wanted me to look at. Clearly for any projects done while there, the IP would belong to the industrial sponsors - however they want everything, including the stuff I did before they even got involved!

Additionally signing the contract means that they can make my thesis closed - i.e. future employers are not allowed to see it. This could damage my future prospects as I was also looking at work outside of academia and they will no doubt want to know what I've been up to. This was never part of any agreement and I would have never taken on a PhD with these terms. Academia is all about the publishing and the free flow of ideas - this all makes me a very cheap slave!

Legally, where do I stand? I understand that as an employee issued with new contract I would have to either sign or walk away, unless it goes against the heart of the contract. But I'm a student and I'm in the last few months of my PhD, if I walk I get no qualification.

I've been told that they can't make me sign it - but won't go into detail as to whether it will affect my PhD or not? Again I'm EPSRC funded the industrial sponsors have paid me extra around 10% of the EPSRC stipend in exchange for me spending several unpaid months at their site working on projects of their choice. I've been told by my supervisor that it's in my best interest to stop resisting and ultimately sign the contract. Can they do this three years in? Has anyone been through anything like this? Anyone have any advice?

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    Find an employment lawyer in your country, and pay them to review the contract and advise you. – Bill Barth Feb 24 '15 at 19:15
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    What is EPSRC? Anyway, we can't advise you on the law - you would need a lawyer for that. But it would seem to me that the company can decide under what conditions they want to provide funding. If you don't want to sign, I presume you could continue your PhD, but you'd have to adapt or change your project to be possible without the company's support, and you might also need a new funding source. – Nate Eldredge Feb 24 '15 at 19:22
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    " I'm not and have never used any of their data, resources or industrial knowledge/work/ideas etc" -- money is a resource. Did you or anyone else spend their money on your research? I'm not saying this entitles them to own your work, or to retroactively change the terms under which the funding was given, just that you need to be precise when you make statements like that. – Steve Jessop Feb 25 '15 at 1:53
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    Don't sign a retroactive contract unless you get a strong financial incentive. Your supervisor has nothing to benefit from this deal, so I suspect he just wants things to go smoothly. If you insist on not signing, I don't think he would try to stop you from graduating. It seems to me that they have very little leverage to make you sign. Also, I am sure there are ways to change your supervisor if you are in conflict. – Lubo Antonov Feb 25 '15 at 8:31
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    The EPSRC has some specific guielines and rules that seem to discourage retroactive contracts, according to a booklet I downloaded from epsrc.ac.uk/funding/howtoapply/basics/ip "Unless arrangements have been made in advance, our guideline is that IP resides with the generating University. ... A Collaboration Agreement must be signed by all relevant parties before the research project can commence. ... Each University has a Technology Transfer Office (TTO) ... seek advice from your TTO at the earliest possible stage. ... " – Qsigma Feb 25 '15 at 12:32
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Legally, you can't be made to sign a retrospective, retroactive contract.

Professionally, if your supervisor or the university person responsible for the CASE studentships decided to be obnoxious about it, they could make the completion of your PhD uncomfortable.

As long as you don't need the CASE money or the on-site experience, this looks like a useless deal for you; in your shoes, I'd be minded to talk to my supervisors, then the faculty graduate tutor. Explain without emotion that you didn't sign up for a CASE studentship; ask if they can give you a good reason why you should sign up, because from where you are, it's hard to see any value in it.

They won't want to stop you finishing. You're EPSRC-funded, and having EPSRC-funded students fail to finish causes a problem for the department when it seeks a renewal of the funding. So you do hold quite a lot of the cards, here.

Ultimately, it's going to be a negotiation. It would be very surprising, and rather irregular, if they did sign up with the sponsor having given the sponsor the belief that this contract will retroactively apply to all current PhD students: I've only seen the terms and conditions apply to those students who start their PhD as CASE students. My hunch is that it's more that someone is just trying to get something for nothing - a free rider.

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    +1 For excellent specificity in the consequences w.r.t. CASE and EPSRC. – jakebeal Feb 24 '15 at 20:39
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    why not just ignore it? avoiding is a really important tactic in deals like this. – user18072 Feb 25 '15 at 2:00
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    I agree that they are trying to get something for nothing. Companies do this sort of thing all the time in the hopes that you either won't fully read the contract or will be afraid to contest it. Often they will even have unenforcable clauses just to scare people out of suing. – KSmarts Feb 25 '15 at 18:07
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Unfortunately, we won't be able to provide you with legal information. (And you shouldn't trust random strangers on the internet that claim they can.) That said, it does sound extremely strange for a company to embargo your work done before they ever showed up.

I would recommend that you approach your university's legal department. Ask them to specify explicitly what consequences signing or not signing the agreement proposed by the company will have on you and your obtaining a Ph.D. Ask them to answer in writing. This consultation should be free to you.

If you don't like the answer you get there, you can get an outside lawyer. This will be more expensive. And it may be hard to find someone who understands the specific situation, employment-and-academia-wise.

However, the first thing this lawyer can do is review the information you were so careful to obtain in writing from your university. Your university's legal department knows this. Therefore they have an incentive not to cheat you, and you should be able to trust their information at least to a degree.

  • I've never liked the opinion of university legal departments. I'd skip paragraph 2 and go straight to an outside opinion. +1, by the way. :-) – Peter K. Feb 24 '15 at 20:43
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    You suggest asking your university's legal department to answer in writing what consequences not signing will have for your ability to obtain a PhD. I don't think you're going to get anything useful out of that. Seriously, what kind of answer are you expecting them to give? Think from their perspective. (And remember that the university's legal department works for and represents the university, not you personally, so they might just say "Sorry, I can't help you.") – D.W. Feb 25 '15 at 1:12
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    I disagree with the comment that it will be difficult to find a lawyer who understands the situation, namely the interplay between contract law, academic research and intellectual property. This sort of thing comes up frequently in a patent lawyer's office. – Nicholas Feb 25 '15 at 7:57
  • +1 for the WANALF warning. (We (...) Firm) – Mindwin Feb 25 '15 at 19:35
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    +1 for don't assume the university/legal will act in your interests rather than their own – JamesRyan Feb 26 '15 at 12:39
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The other answers cover most of the issues, but I'll share one strategy I used in exactly this situation (I was supervising a PhD studentship with a CASE award, and the sponsoring organization did exactly the same thing). First of all, as said, the university should be able to help. In fact, they like the CASE award prestige and funding, but the university will likely take the line that in fact they own the work anyway, not you. (Hence the "IP resides with the generating University".) So in fact, they could sign over the work directly. In practice, all institutions prefer to get everyone agreeing because, also in practice, commercialization is totally doomed without everyone accepting a uniform line, at least to some extent.

So we took this strategy: accept the basic assignment, but add a rider so that if the organization did not explicitly elect to commercialize the work within two (say) years of completion, that it would revert to the student and university jointly. The reality is: they likely won't be able to commercially use the work without employing you and/or the university, so personally I wouldn't really worry about them working on without you. Far more worrying is the possibility it'd be shelved due to inaction, and this is the outcome to guard against. Essentially, you're assigning them an option to commercialize, but they actually have to do it.

The type of intellectual property also matters. They can't patent anything without recognizing you as an inventor. If it's software, there are some lovely approaches I used with open source licenses where the ownership is assigned but (being open source) a right-to-use is set. Then, even if the ownership changes, the right to use remains. This is broadly what happened with MySQL, and it allows

Finally, making the thesis public can probably be easily added to the contract. UK employment law gets very twitchy about actions that make it hard for people to seek work -- again, this is more lawyer issue, but given the work has been open up to this stage, there doesn't seem much point in closing it off now, and I expect they'd get that.

Don't be afraid to negotiate contract clauses. Company lawyers just start asserting everything, but quickly (well, more commonly slowly) adjust to a more realistic position. After all, they've usually just copied another contract and minimally edited it to suit.

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    Your third paragraph seems to stop in the middle of a sentence. – David Richerby Feb 26 '15 at 16:44
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Clearly for any projects done while there, the IP would belong to the industrial sponsors

Clearly not.

Assuming no employment (explicit nor implied) was in place, works created by you [a student] belong to you. See here.

You can bargain by threatening with 'cease and desist' order for them using your IP.

The blanket character of the contract could mean the strong commercial value has been found in some students work, and they try to secure it WITHOUT pointing to it.

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    I think that copyright and IP are not the same thing. – StrongBad Feb 25 '15 at 10:07
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    "IP" is an umbrella term without legal meaning, typically used to include copyrights, patents, trademarks, etc – RemcoGerlich Feb 25 '15 at 10:27
  • " works created by you [a student] belong to you. " it might be different in the UK but in the USA work created by a student belongs to the University. I've known cases where people quit school to avoid IP entanglements with their university for them to become an entrepreneur. – Chris Marisic Feb 25 '15 at 19:33
  • @ChrisMarisic I think there is some variation there, even in the U.S. For instance, in some cases, I seem to recall co-ownership of the IP between the university and the student. – reirab Feb 25 '15 at 22:25
  • @RemcoGerlich ...which doesn't mean it didn't had any meaning. The law governing copyright, patents, etc. somehow must be referred. – user259412 Feb 25 '15 at 22:34
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The problem here seems to stem from the blanket statements in the proposed contract.

The word here is : propose your terms i.e. negotiate.

I will give the industrial sponsor all my intellectual property (to which I currently own) generated over the course of the last 3 years

Instead of "all intellectual property" try to negotiate toward "intellectual property in domain x,y,z only." You know what you've done for them, if there's no overlap try to give away what you don't need, maybe that will be enough?

Industrial sponsors will review all publications and stop me publishing anything they think will give them a competitive edge

Try to add "each stopped publication will incur fixed penalty of £1e5, payable immediately."

This way you may not be able to show your work but you may prove it was worth for them to keep it for themselves.

2

I second all the IANAL advice -- so get a lawyer. You should be able to get someone to give you some general IP/employment advice for a few hundred pounds.

However, in addition, don't be afraid to push back on the contract and ask for terms to be modified. For example, you could propose changes such that you retain ownership but grant the sponsor a royalty free license to use. That wouldn't protect them from the loss of competitiveness they're worried about in the event your dissertation is seen, but they may be making more of a noise about that than they really want to. Alternatively you could offer to meet them halfway, saying that you will allow for your thesis to be closed only for a year, or to be closed for longer but with an exception for job interviews.

Behind contracts there are always people (OK, there are also lawyers...), and people are often willing to discuss. Remember that you currently have a huge upper hand -- you currently own the lot.

1

I also worked at a top research institution in my nation, and we routinely had Ph.D students sponsored by the industry.

Here's how it worked.

Case 1: Let's assume that the problem being worked on did NOT involve the company's prior IP or proprietary product. In this case, the IP belonged to the institution / researcher. Because the company funded part of the stipend and/or gave some funding, the company simply got an exclusive right to use the IP commercially.

Case 2: Let's assume that the problem being worked on involved incremental work using the company's prior IP in addition to funding. In this case, IP generated within the premises of the institution belonged solely to the institution. IP generated within the premises of the company (obviously using the company's resources such as equipment and money) belonged to the company.

So, the result was a joint IP shared between the institution and the company. Of course, the work done at the institution was "generic" and the work done at the company's place using the company's equipment was specific, targeted and a trade-secet.

Your case seems like case 1. I strongly advise you to Not sign that contract and keep your thesis open.

0

Talk to a patent lawyer. It is going to cost you some money, but this sort of thing -- namely employee inventions, inventions of students, contract terms with respect to IP -- comes up all the time in a patent lawyer's practice.

Approaching your university's IP arm may not be in your best interests. Try and get independent advice.

I am not a lawyer, but I am well aware of sections 39 (Right to employees’ inventions) and 42 (Enforceability of contracts relating to employees’ inventions) of the UK Patents Act 1977.

I do not believe that university students are considered employees for the purposes of s.39 and, as such, any invention belongs to the student. However, to what extent the agreements you entered into, either explicitly or by your actions,determine ownership of your IP will be determined, needs to be assessed by a competent lawyer.

Again, this is not legal advice. You get that from a lawyer, who you've engaged to advise and/or represent you.

0

The above discussion was all from a legal perspective, but there is a second, non-legal perspective that can be tried too: publicity. Here is one suggestion.

  1. Keep good documentation of all communication.

  2. Decline signing the last-minute changes, handing over 3 years prior research. (as already advised above). You might still graduate OK anyway.

  3. But if it looks like there will be a problem, go to the awarders of the EPSRC and CASE funding and explain what the company is trying to pull. Explain that it would look bad for EPSRC and CASE scholarships if companies can attach these hidden strings.

  4. If, (very worst-case scenario), if they don't let you graduate, let them know you wish they had been up front with you with the information from the beginning. In fact, you feel that other prospective students who will be in your shoes have a right to know about this institution, this company, and these professors up front, and you would feel the moral obligation to let those students know all the details of your personal experience on the web, facebook, twitter, etc. so that they will be fairly warned if the same people try to inflict the same thing on them. Of course you would not give any opinions or moral judgements on these named individuals and companies, just the facts of what occurred so that readers can come to their own conclusions. (But before it comes to this, you should get a lawyer to review everything.)

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