Industrial and intellectual property in academic works at the UPC (bachelor’s, master’s and doctoral theses)

As detailed on this website, rights related to industrial and intellectual property with respect to academic works produced by UPC students may only be exercised in accordance with the provisions of relevant regulations and legislation in force.

  1. Introduction
  2. Who owns the industrial property rights in an invention derived from an academic work?
  3. Who owns the intellectual property rights (copyright) in an academic work?
  4. Who owns industrial and intellectual property rights in works produced within the framework of projects involving other entities?
  5. What rights are transferred when a work is deposited in UPCommons or the TDX repository?
  6. What CC licenses can be granted to the deposited academic works?
  7. Can a work that has been deposited in UPCommons or the TDX repository be published?
  8. What is a predatory publisher?
  9. How can I consult works that are not accessible via UPCommons?

1. Introduction

Below, we explain in detail a series of points concerning ownership of intellectual and industrial property rights in academic works produced by UPC students. It is very important to bear these points in mind before disseminating or exploiting such works in any way.

  • Industrial property comprises a series of exclusive rights that protect both the innovative activity required to develop new products, processes or designs, and commercial activity, by exclusively identifying products and services offered on the market. [Multimedia Patent and Trademark Guide]

2. Who owns the industrial property rights in an invention derived from an academic work?

2.1. General information

The Application Criteria for IP-UPC Regulations provide as follows:

  • New industrial inventions that depend on inventive activity and are susceptible of industrial application may be protected by a patent or utility model certificate.
  • It is important to bear in mind that one of the requirements for an invention to be patentable is that it does not form part of the state of the art. Therefore, it is necessary to ensure a certain exclusivity with respect to knowledge of the invention, which is secured by means of legal mechanisms based on the principle of confidentiality, such as the protection of industrial secrets.
  • Results derived from research include both inventions and general knowledge developed within the framework of research, development and innovation (RDI) project.

Inventions” and other “research results” fall within the remit of the UPC’s Innovation Management Service as they involve teaching and research staff, research groups and basic units. Such results can be protected by industrial property rights or confidentiality agreements.

2.2. Academic works supervised or coordinated by UPC professors

The Regulations on Industrial and Intellectual Property Rights at the UPC – Decision 137/2008 (hereinafter IP-UPC Regulations) include the following provisions:

With respect to inventions developed by students supervised or coordinated by UPC professors, “the UPC shall be the owner of any inventions developed exclusively by students if they are developed within the framework of an academic activity that has been supervised and/or coordinated by a UPC professor”. [Art. 2.2]

  • "The UPC shall respect, in all cases, the rights of inventors to be recognised as such in accordance with the provisions of prevailing legislation on industrial property". [Art. 2.4]
  • "If the UPC has no interest in owning an invention it shall communicate this fact to the inventors, so that they can request that the UPC waive its rights with regard to the invention and initiate procedures to protect their own. Even if the UPC waives these rights, it reserves a non-exclusive, non-transferable right to use the invention for research at no cost. It shall also have the right to receive part of the financial benefits that the inventors may receive from the commercial use of the invention in the future. Moreover, if the UPC decides not to apply for or maintain the ownership or international extension of an industrial property right, it shall transfer this right to the inventors, who shall become the owners in accordance with the conditions agreed by the parties". [Art. 2.6]
  • “If the research results have been obtained in the framework of research projects governed by agreements or contracts with other public and/or private entities, the parties involved shall in each case determine the ownership of the industrial and intellectual property rights of the research results and the distribution of the exploitation rights stemming from them.” [Art. 4]

Academic works supervised or coordinated by a UPC professor (from which an invention may be derived) include all theses submitted for a degree, including bachelor’s and master’s theses and dissertations, and comprehensive examinations.

In relation to the above-mentioned Article 2.2, it is the tutor or supervisor responsible for coordinating a final academic work who must notify the UPC’s Patents and Licences Office that the University may have an interest in the ownership of a particular industrial property right deriving from the work (invention).

  • This notification must be given before the thesis is publicly defended to ensure that its content is kept confidential by the author and anyone else involved (e.g. the examiners).
  • Maintaining confidentiality is essential to apply for a patent for any future invention. A patent ensures the enjoyment of industrial property rights related to an invention by the beneficiary who registers it, to whom a series of exclusive rights of use are granted for a specified period.

2.3. Academic works not supervised or coordinated by UPC professors

Article 2.3 of the IP-UPC Regulations provides as follows:

“If a professor’s participation is limited to requesting and assessing the invention, the student shall own it and the UPC shall reserve the right to use it in academic, teaching and research activities.”

One example of an academic work not supervised or coordinated by a UPC professor would be a course assignment in which the professor’s role is simply to set and assess the assignment without participating in or contributing to it in any way.

Article 2.3 provides that any invention deriving from such an assignment shall be owned by the student who is its author. Evidently, this principle will apply provided the work does not infringe the industrial property rights of any third party [see Section 4].
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2.4. Doctoral theses

The following provisions are set out in the UPC’s Academic Regulations for Doctoral Studies in the sections indicated:

  • “In particular cases, the academic committee of the doctoral programme may take measures to ensure that aspects of the thesis liable to be patented are not disclosed during the defence, as laid out in Section 10.3.” [Section 15.1]
  • “In exceptional circumstances—if, for example, companies have been involved in developing a thesis, confidentiality agreements have been entered into with companies or there is the possibility that the content of a thesis may lead to a patent—a doctoral candidate may request a specific procedure to ensure that the relevant information is not made public in the thesis defence or when the thesis is deposited in institutional repositories. The doctoral candidate must expressly request that the academic committee of the programme apply this procedure, before the deposit and in the manner stipulated by the committee.” [Section 10.3]

To give effect to this provision, when a doctoral candidate has entered into a confidentiality agreement with a company in relation to his or her thesis, or patents related to its content may be generated, he or she must submit documents certifying that this is the case to the academic committee of the corresponding doctoral programme, as detailed on the website of the UPC’s Doctoral School.

Ownership of industrial property rights arising from a doctoral thesis is therefore determined by two factors:

  • The existence of agreements or contracts entered into with third parties [see Section 4].
  • The possibility that a patent may be generated (as determined by the academic committee of the doctoral programme).

3. Who owns the intellectual property rights (copyright) in an academic work?

3.1. General information

Legislation and regulations in force provide as follows:

  • Works protected by intellectual property rights include any original literary, artistic or scientific creation, expressed in any manner or medium, tangible or intangible, now existing or hereafter developed. [Art. 10 of the Intellectual Property Act]
  • Such works include books, scientific papers, academic works (final, bachelor’s and master’s theses, and dissertations, etc.), as well as computer programs.

The two main types of copyright are moral rights and exploitation rights.

  • An author’s moral rights are a set of unwaivable and inalienable rights that include the right to be recognised as the author of his or her work and the right to prevent any modification thereof that might be detrimental to his or her legitimate interests.
  • Reproduction, distribution and public communication of works, and the making of derivative works, are forms of exploitation.
  • Right of reproduction: copying of the work (photocopying, scanning, etc.)
  • Right of distribution: distribution of physical copies of the work (loans, rentals, distribution of copies, etc.)
  • Right of public communication: dissemination of works without distribution of physical copies (publication on websites or intranets, film screenings or presentations, broadcasting of musical works, etc.)
  • Right to make derivative works: creation of derivative works (translations, children’s adaptations, etc.)
  • The author of a work is exclusively entitled to exercise these exploitation rights, which, unlike moral rights, may be transferred to third parties (on an exclusive or non-exclusive basis). Therefore, the work of another author may only be exploited if the consent of the author and/or holder of rights has been obtained, or if one of the exceptions set out in the Intellectual Property Act applies.
  • At the same time, it is important to bear in mind that a work may not be disseminated in any way if doing so breaches a duty of confidentiality or infringes industrial property rights [see Section 2].

Intellectual property law governs rights over works, as opposed to inventions and other research results that can be protected by patents, confidentiality agreements or other industrial property rights [see Section 2].

3.2. Academic works supervised or coordinated by UPC professors

In the specific case of theses supervised or coordinated by UPC professors, intellectual property rights are owned by the author or co-authors of the work. The Application Criteria for IP-UPC Regulations provide as follows:

  • The purpose of academic works submitted at the end of a degree, such as dissertations and bachelor’s and master’s theses, among others, is assessment for the award of a degree. Therefore, such works must be produced in their entirety by the student concerned, even though they are assigned a tutor or supervisor. Accordingly, the student shall own all rights derived from such works. [Chapter IV, 2]
  • These rights may only be limited by the provisions of confidentiality agreements with companies, or when there is a possibility that patents related to the content of a work may be generated. Rights over results derived from research conducted within the framework of UPC projects supervised by the University’s teaching and research staff are owned by the UPC and, therefore, by the active participants in the said research. [Chapter IV, 2]

Therefore, the owners of intellectual property rights in academic works supervised or coordinated by UPC professors are the students who are the authors of these works. Accordingly, they are the ones entitled to reproduce, distribute or publicly communicate the works, make derivative works, and/or transfer exploitation rights to third parties.

However, any act of exploitation must meet the following requirements:

  • The work does not infringe the intellectual property rights of any third party.
  • There is no agreement or contract, entered into with a third party, whose terms preclude the act of exploitation. This requirement would not be met, for example, in the case of a bachelor’s thesis that is subject to confidentiality provisions required by a company where work on the thesis was done. Such provisions are detailed in the corresponding agreement [see Section 4].
  • The UPC is not interested in developing the invention derived from an academic work supervised or coordinated by a UPC professor. In this case, the tutor or supervisor of the thesis or project must notify the UPC’s Patents and Licences Office of this decision before the public defence of the thesis [see Section 2.2].
     

3.3. Academic works not supervised or coordinated by UPC professors

In the case of academic works not supervised or coordinated by UPC professors, the IP-UPC Regulations provide as follows:

  • “In the case of intellectual works developed exclusively by students in which the participation of UPC professors has been limited to requesting and assessing the work, all rights stemming from the work shall belong to the student.” [Art. 3.4]

Therefore, the students concerned are the sole authors and the exclusive owners of intellectual property rights in works that have not been supervised or coordinated by a UPC professor.

However, any act of exploitation must meet the following requirements:

  • The work does not infringe the intellectual property rights of any third party.
  • The work is not subject to confidentiality obligations and does not infringe the industrial property rights of any third party [see Section 4].

3.4. Doctoral theses

As laid down in Section 13.1 of Royal Decree 99/2011, of 28 January, on Official Doctoral Studies, a doctoral thesis must be a work that describes original research. It must be produced by the doctoral candidate and should train and prepare him or her to work independently in RDI (notwithstanding the fact that he or she is assigned a thesis supervisor).

Accordingly, the authorship of a doctoral thesis is understood to correspond entirely to the student who produced it.

With respect to the exclusive exploitation rights of doctoral students as authors of doctoral theses, articles 14.5 and 14.6 of Royal Decree 99/2011 provide as follows:

  • After a doctoral thesis has received a positive assessment, the university shall ensure that it is deposited in an institutional repository in electronic format. [Art. 14.5]
  • In exceptional circumstances, as determined by the academic committee for the programme—including, for example, the participation of companies in the programme or school, the existence of confidentiality agreements with companies, or the possibility of patents being generated based on the content of a thesis—universities shall follow procedures for the defence and archiving of theses that ensure that the relevant information is not disclosed. [Art. 14.6]

In addition, the UPC’s Academic Regulations for Doctoral Studies provide as follows:

  • “To enhance the visibility of theses and increase the citation impact of their authors, once a doctoral thesis has received a positive assessment it will be published in the UPC’s open-access repository for doctoral theses (UPCommons) and in the repository for Catalan universities (TDX). To this end, the author must sign a document containing a declaration of authorship and provisions related to the regulation of rights and any other authorisations required for the dissemination of the thesis. The administrative unit will provide these documents to the doctoral candidate when his or her thesis is deposited.” [Section 15.4]
  • “If the thesis contains any confidential material, or if the author has signed a contract or undertaking with a publication to which he or she is transferring his or her copyright, it will be published in the TDX repository when the thesis protection or copyright transfer process ends.” [Section 15.4]

Therefore, although the doctoral student/author is the exclusive owner of the exploitation rights of his or her thesis, the University reserves the non-exclusive right to publicly communicate the thesis by depositing it in the UPCommons and TDX institutional repositories.

Given that the author of the thesis remains the exclusive owner of all associated rights, only he or she may perform any other act of exploitation or transfer of rights—for example, by translating the thesis, publishing it for sale or granting a Creative Commons licence. [For more information on licences of this type, see our Open-Access Licences website.]

Notwithstanding the UPC’s (non-exclusive) right to publicly communicate theses, they shall not be disseminated in the following cases:

  • The work infringes the intellectual property rights of one or more third parties.
  • A patent application may be filed based on the content of the thesis.
  • Confidentiality agreements with third parties are in force (e.g. with companies or publishers) [see Section 4].

4. Who owns industrial and intellectual property rights in works produced within the framework of projects involving other entities?

The IP-UPC Regulations provide as follows:

“If the research results have been obtained in the framework of research projects governed by agreements or contracts with other public and/or private entities, the parties involved shall in each case determine the ownership of the industrial and intellectual property rights of the research results and the distribution of the exploitation rights stemming from them.” [Art. 4]

Therefore, any act of industrial or intellectual exploitation of a work—for example, its deposit in UPCommons shall only be carried out in accordance with the terms accepted in the agreement or contract entered into with the third party.

5. What rights are transferred when a work is deposited in UPCommons or the TDX repository?

As indicated in Section 3, although exploitation rights in a work (reproduction, distribution, public communication and making of derivative works) are originally vested in the author, he or she may transfer these rights to a third party on an exclusive or non-exclusive basis, provided there are no intellectual property issues that prevent this [see Section 2]:

  • Non-exclusive transfers permit the receiving party (assignee) to use the work in accordance with the terms of the assignment agreement and concurrently with other assignees and the assignor. The rights of assignees are non-transferable.
  • Exclusive assignment agreements give the receiving party (assignee) the right to exploit the work on an exclusive basis (i.e. to the exclusion of the owner and all others), and, unless otherwise agreed, the right to grant non-exclusive authorisations to third parties.

When a student who is the author of an academic work disseminates his or her work via UPCommons or the TDX repository, he or she is transferring his or her right to publicly communicate the work to the University on a non-exclusive basis.

This means the University is only authorised to publish the work in its own repositories. The student remains the exclusive owner of the rights and as such may perform any other act of exploitation, or enter into other agreements involving the transfer of rights. For example, only the author of a work can have it translated, publish it for sale or grant a Creative Commons licence. [For more information on licences of this type, see our Open-Access Licences website.]

6. What CC licenses can be granted to the deposited academic works?

In order to facilitate the use of the academic works deposited in UPCommons or TDX, students can grant "copyleft" type licensing, which will allow users to know the specific uses they can make of these works without having to ask permission to the corresponding authors.

One of the most used license model is the one promoted by the Creative Commons Foundation. The works that are offered under any of the six CC licenses detailed below can be reproduced, distributed and publicly communicated. The author can also authorize other more permissive uses such its modification and/or commercialization. In any case, users must always recognize the authorship and respect the conditions detailed in the license

Attribution - NonCommercial: Others can copy, distribute and transmit copies of the work, and create derivative works (translations, abstracts, infantile versions, ...), for non-commercial purposes only.

Attribution - NonCommercial - ShareAlike: Others can copy, distribute and transmit copies of the work, and create derivative works, if the derivative work is subject to the same CC licence or with a license equivalent to the one that regulates the original work, for non-commercial purposes only.

Attribution - NonCommercial - NoDerivatives: Others can copy, distribute and transmit copies of the work only, not works derived from it, for non-commercial purposes only.

Attribution: Others can comercially use the work and the possible derivative works, the generation and distribution of which is also allowed without any restriction.

Attribution - ShareAlike: Others can comercially use the work and the possible derivative works, the generation and distribution of which is subject to the same CC licence or with a license equivalent to the one that regulates the original work.

Attribution - NoDerivatives: Other can comercially use the work, but not create derivative works.

You can find more information about free access licenses on our website "Free access licenses (Creative Commons and GNU)"].

7. Can a work that has been deposited in UPCommons or the TDX repository be published?

If an author wishes to publish a work that has already been deposited in a repository, problems may arise only if the party to whom rights are transferred (i.e. the publisher) is unwilling to accept the previous dissemination of the original work (preprint). However, it is important to bear in mind the following points:

  • Many publishers and academic journals accept the deposit of preprints in institutional repositories.
  • In any case, the publication of a work in the University’s institutional repository makes it more accessible and internationally visible. This is demonstrated by the fact that many companies and researchers seek to contact students after their work has been added to the repository. For example, some publishers have shown an interest in publishing book versions of works after viewing them in the repository.
  • The main function of scientific and technical texts is to inform and transmit knowledge accurately, directly and objectively. Identification of the original sources and documents consulted is essential to give works credibility and ensure the requisite academic and scientific rigour.
  • This is why publishers who bring out an academic work (or a book based on such a work) usually make reference to its origin right at the outset (on the cover or first pages) or in other parts of the work (preface, introduction, etc.). For example:

If the publication of a work goes ahead, the copyright transfer agreement or the publisher’s publication rules should specify whether the transfer of rights is exclusive, what rights the author is transferring and the duration and geographic scope of the agreement.

If the transfer agreement or publication rules do not specify these details, the transfer of rights shall be limited to five years and shall apply in the country in which the transfer is made, and the forms of exploitation shall be those which are essential for the performance of the agreement.
 

8. What is a predatory publisher?

Authors should take steps to ensure that a publisher is trustworthy before accepting an offer to publish, and seek legal advice before signing any kind of publishing contract.

There are some publishers, described as “predatory”, which engage in practices that are highly dubious from an ethical perspective and in terms of scientific rigour:

  • Publishers of this kind contact an author (usually by email) and offer to publish his or her work free of charge, but publication is based on a print-on-demand system that simply involves printing copies of the academic works, without any kind of review, analysis or other editing work being done by the publisher.
  • Purchasers think they are buying a published book. In fact, what they get is merely a copy of an academic work with a cover added. Moreover, in many cases, the same work can be found in an open-access repository or on a university website.
  • The work enters the publishing circuit, and the author will not receive any payment unless a minimum number of printed copies are ordered. In short, the publisher does no work and takes no financial risk.
  • Publications of this kind do not provide the recognition or prestige authors seek; in fact, they have just the opposite effect.
  • If an author transfers the exploitation rights of his or her work to a predatory publisher on an exclusive basis, he or she will not be able to publish the work through other, prestigious publishers (who would provide services of editorial and scientific value).

You can use the following links to access more information on the kind of practices predatory publishers engage in:

9. How can I consult works that are not accessible via UPCommons?

Law 10/2001, of 13 July, on Archives and Documents provides that public documents produced by administrative bodies must be conserved and made accessible, provided steps are taken to ensure that legally protected data is not made public. Therefore:

  • Works that cannot be consulted online via the repository may be consulted in the depository library or at a school archive (if the library does not hold a copy of the work in its collection).
  • Works whose content may affect the confidentiality or industrial property rights of third parties will not be made available for public consultation.

You will find detailed information on terms of access to deposited works (both open- and restricted-access) in the following section of our website.