What is consulting?
Consulting is the provision of personal advice or assistance by the consultant to an organisation outside the University over and above the consultant's mainstream academic and research duties. Consulting activity is governed by the University’s Consulting Policy, which is detailed here.
All consulting activities should be governed by an appropriate contractual agreement, specifying the terms and conditions. While consulting activity may be outside the consultant’s mainstream activities, the terms and conditions under which it is delivered deserve careful consideration to avoid adverse long term consequences. Areas requiring particular attention include:
1. DEFINITION OF THE AREA OF WORK
The description of the work covered by the agreement always needs to be defined precisely, restricting the 'field' of work to be undertaken as narrowly as possible. Given that a Client is likely to request ownership of the results of consultancy work, it is important that there should be no overlap between the description of the consultant's duties within the agreement and the individual's University activities (or, indeed, with other consultancies held by the individual).
2. INTELLECTUAL PROPERTY
It is always essential to have a clear understanding of who will own the results generated during a consulting project and to ensure that substantial and valuable background research activity and knowledge is not transferred inadvertently. In line with other commercial consultancy contracts, OUC’s consulting contracts pass ownership of arising IP created during the course of the contract to the client. However, this does not include background IP, improvements to said background IP, or any IP produced outside of the terms of the consultancy. Intellectual Property Rights (IPR) are specific legal rights that protect intellectual property, and include patents, copyright, database rights, design rights and trade marks.
3. CONFIDENTIAL INFORMATION & PUBLICATION
Confidential information (including “know-how”) can be very valuable and its use should be controlled through confidentiality and non-disclosure provisions in contracts. In consulting contracts it is generally reasonable for the client to assume that the consultant will not publish information acquired during the course of the consultancy, either about the work itself or the client’s business interests.
4. LIMITATION OF LIABILITY/GOVERNING LAW
Isis Innovation Ltd (and through it, Oxford University) cannot typically accept liabilities arising from OUC’s consulting activities beyond the value of a particular contract. Under exceptional circumstances special insurance arrangements may be negotiable with the University. Isis provides OUC’s consultants with Professional Indemnity and public liability insurance cover where contracts are governed by English law.
Consulting activity may produce new intellectual property (IP) and it is useful to keep a notebook detailing the work done specifically under the consulting agreement so that it is clear what belongs to the client and what does not. Under US Patent law, an inventor must provide evidence of the following in order to prove a date of invention: date of conception of the invention; reduction to practice of the invention; diligence in achieving reduction to practice. The evidence, which an inventor requires, may be in a variety of forms but is frequently contained in a laboratory notebook. In order to provide irrefutable evidence of inventorship the following procedures are required in keeping a notebook: permanent binding (not loose-leaf or spiral bound); numbered pages; good paper quality; permanent ink (not pencil); legible and factually complete entries; each page to be signed off and dated by the author and witnessed as soon as possible. (The witness should be someone who understands the area of research but who is not directly involved and cannot be considered to be under the control of the author.) Do not leave any gaps, pages undated, unsigned or unwitnessed. Isis and its patent attorneys are able to advise on these issues.