The provisions of sections 39,40,41,42 and 43 of the Patents Act 1977 relating to the ownership of employees' inventions and the compensation of employees for certain inventions are acknowledged by the University of Westminster.

 

You agree that by virtue of the nature of your duties and the responsibilities arising from them you have a special obligation to further the interests of the University of Westminster.

 

Any matter or thing capable of being patented under the Patents Act 1977, made, developed or discovered by you, either alone or in concert, whilst in the performance of your normal duties or duties specifically assigned to you or arising out of anything done by you to which paragraph 12.2 applies, shall forthwith be disclosed to the University of Westminster and subject to the provision of the Patents Act shall belong to and be the absolute property of the University of Westminster.

 

You shall (and notwithstanding the termination of your employment) sign and execute all such documents and do all such acts as the University of Westminster require:-

 

to apply for and obtain in the sole name of the University of Westminster, (unless it otherwise directs) patent, registered design or other protection of any nature whatsoever in respect of the inventions in any country throughout the world and, when so obtained or vested, to renew and maintain the same;

 

to resist any objection or opposition to obtaining, and any petitions or applications for revocation of, any such patent, registered design or other protection;

 

to bring any proceedings for infringement of any such patent, registered design or other protection.

 

The University of Westminster hereby undertakes to indemnify you in respect of all costs, claims and damages, howsoever and wheresoever incurred, in connection with the discharge by you of any and all such requests under 11.1, 11.2 and 11.3.

 

The University of Westminster acknowledges section 7 and 42 of the Patents Act. In respect of any invention which belongs to the University of Westminster by virtue of section 39 of the Patents Act, it shall be for the University of Westminster in the first instance to decide whether to apply for patent or other protection.

 

In the event that the University of Westminster decides not to apply for patent or other legal protection you have the right to be notified of that decision as soon as is reasonably practicable thereafter.

 

If, following such a decision by the University of Westminster you wish to apply for Patent either yourself or with another you must first inform the University of Westminster of your intention to do so. Within a reasonable period of time following such notification the University of Westminster must tell you whether it would object to your proposed application. The sole ground for such objection is that the patenting of the invention will involve or result in the disclosure to third parties of trade secrets or other confidential information belonging to the University of Westminster and that such disclosure may damage the interests of the University of Westminster.

 

Where the University of Westminster objects under 11.7 you hereby undertake in consideration of the payment of compensation to be determined under 11.9 below, not to proceed to apply for patent of the invention concerned nor to assist any other person to do so.

 

The calculation of compensation referred to above shall have regard to those factors set out in section 41 of the Patents Act. In the event that the University of Westminster cannot agree the amount of compensation it shall be competent for either you or the University of Westminster to apply to the President of the Law Society to appoint an arbitrator under the terms of the Arbitration Act, whose decision shall be binding.