Intellectual Property Policy and Procedure

General Provisions

1. Overview – Principles

1.1   This policy aims to encourage an environment in which teaching, research and scholarship can flourish.

1.2   The University adheres to the principle that wherever possible knowledge and ideas should be widely disseminated, but equally is committed to maximising the benefits to Australia and the University from the commercialisation of the results of its research and innovation.  The University recognises its role in helping to create knowledge-based industries, and encourages the entrepreneurial endeavours of its staff and students.

1.3   The University is committed to good practice in the identification, protection, management and commercialisation of the intellectual property created by its staff and students, in accordance with the National Principles of Intellectual Property Management of Publicly Funded Research.

2. Definitions

For the purposes of this Policy:

commercial exploitation means either:

(a)   protection and/or development of intellectual property with the aim of obtaining a commercial benefit, or

(b)   dealing with intellectual property, through manufacture, sale, hire or other exploitation of products or processes or the provision of services, directly or through a third party, for commercial benefit,

as the context requires;

commercial exploitation costs means costs directly related to the commercial exploitation of intellectual property and determined by the Intellectual Property Officer as offsetting commercial exploitation revenues in the calculation of net revenues, including (but not limited to) costs in relation to: registration of intellectual property (eg. patent protection), licensing-in of third party intellectual property, legal counsel, specialised technical services, consultancies, travel and accommodation, production of prototypes, and taxes and other fees, duties and charges;

commercial exploitation revenues means income, other than research funding, directly related to the commercial exploitation of intellectual property including (but not limited to): signing fees, royalties, lump sum licence fees, milestone payments, minimum annual payments, reimbursements of patent expenses, dividends and proceeds from the sale of shares;

confidential information includes:

(a)   information about an invention, prior to the filing of a patent application,

(b)   the contents of a patent application, prior to the publication of the application,

(c)   information related to but not included in a patent application which is necessary for its commercial exploitation,

(d)   unpatentable inventions, discoveries, knowledge, methods, processes, techniques, chemical compositions, biological materials and other information with the potential for commercial exploitation, and

(e)   trade secrets;

intellectual property means:

(a)   any proprietary right which arises under, or is capable of being obtained under, the following statutes:

- Patents Act 1990 (Cth),

- Copyright Act 1968 (Cth),

- Trademarks Act 1995 (Cth),

- Designs Act 1906 (Cth),

- Circuit Layouts Act 1989 (Cth),

- Plant Breeder’s Rights Act 1994 (Cth),

and

(b)   the right to the protection under law of confidential information;

Intellectual Property Officer means:

(a)   in respect of intellectual property created for the purpose of research, the Deputy Vice-Chancellor (Research and Innovation), and

(b)   in respect of intellectual property created for the purpose of teaching or administration, the relevant Deputy Vice Chancellor or Pro-Vice Chancellor of the Division(s) in which the intellectual property is created.

moral rights mean the following personal rights, as dealt with in the Copyright Act:

(a)   right of attribution of authorship – an author’s right to be identified as the author of a work,

(b)   right not to have authorship falsely attributed – an author’s right to take action against false attribution, and

(c)   right of integrity of authorship of a work – an author’s right to object to derogatory treatment of his or her work that prejudicially affects his or her honour or reputation;

net revenues means the difference between the total of commercial exploitation revenues and the total of commercial exploitation costs;

originator means the author, creator or inventor of a work or subject matter in which intellectual property may or does subsist;

teaching materials means source or core teaching materials, such as texts, lecture notes, papers, overheads, PowerPoint presentations and the like.

3. Ownership of Intellectual Property – Staff

3.1   Subject to the remaining parts of section 3, the University asserts ownership of all intellectual property created by a staff member for the purposes of research, teaching and administration in the course of the staff member’s employment at the University.

3.2   The University does not assert ownership of copyright in any literary work written by a staff member for the purpose of scholarly research, such as: a journal article, conference proceeding, monograph or book.

3.3   The University does not assert ownership of copyright in any artistic, musical, dramatic or other creative work created or composed by a staff member, except where such a work has been commissioned by the University.

3.4   The University does not assert ownership of copyright in teaching materials written by a staff member.  However, by entering employment with the University staff members grant to the University a perpetual, royalty-free, non-exclusive licence to use and adapt their teaching materials.  This licence includes the right to sub-license and to commercially exploit.  The University reserves the right to reach an agreement with a staff member in relation to copyright in teaching materials which varies the terms of this sub-section.

3.5   The University must respect the moral rights of authors of teaching materials unless it obtains their consent otherwise.

3.6   The University grants to the originator(s) of research intellectual property a royalty-free, non-exclusive licence to use the intellectual property for the purposes of further research.  Such a licence may only be revoked or limited where this is required for the commercial exploitation of the intellectual property [see also section 11].

4. Ownership and Assignment of Intellectual Property – Students

4.1   The University makes no claim to automatic ownership of intellectual property created by students in the course of their studies at the University.

4.2   A student cannot be required to assign his or her intellectual property to the University unless he or she is permitted to make an informed decision, freely and with consent.

4.3   If a student wishes to participate in any activity which:

(a)   is governed by an agreement with a third party which affects the intellectual property or moral rights of participants, or

(b)   involves staff or other students and has led to the creation, or is likely in the future to lead to the creation, of intellectual property that is capable of commercial exploitation,

then, before the student is permitted to participate in the activity:

4.3.1   the College Dean must give approval to the student’s participation, and advise the Intellectual Property Officer accordingly;

4.3.2   the University may, as a condition of the student being allowed to participate in the activity, require the student to:

(a)   assign the student’s intellectual property to the University, except for copyright in the student’s thesis or in scholarly publications authored by the student;

(b)   agree to restrictions on the use of his or her intellectual property and the production of publications that include or are based on his or her intellectual property, including:

(i)   keeping research results confidential,

(ii)   the examination of the student’s thesis in confidence,

(iii)   the subsequent restricted storage of the student’s thesis for a period not to exceed eighteen months except in exceptional circumstances,

(iv)   consent to the infringement of the student’s moral rights.

4.4   The University, through the student’s supervisor(s), has a responsibility to ensure that the student is notified about the requirements of participating in the activity, including all those matters covered in section 4.3.  The University strongly recommends that students seek independent legal advice prior to entering into any deed of assignment of intellectual property.  The University will cover the costs of one such advice.

The student has the responsibility to inform the University of any impediments to the student’s fulfilling the requirements under section 4.3, including any claims to the student’s intellectual property by his or her employer or scholarship provider.

4.5   If the student declines to comply with its requirements under section 4.3, the University has the right to refuse to permit the student to participate in the activity.  If it does so, the University will give the student all reasonable assistance in identifying an alternative activity.

4.6   In the event that a student is participating in a research project that involves staff or other students and that has led to the serendipitous creation of intellectual property that is capable of commercial exploitation, and the requirements of section 4.3.2 have not been met, the University may require that the requirements of section 4.3.2 be met.

4.7   Where a student solely creates and owns intellectual property which he or she believes to be capable of commercial exploitation, the student may ask the Intellectual Property Officer for the University’s involvement in its commercial exploitation.  The University will require the student to assign ownership of the intellectual property to the University as a precondition of the University so becoming involved, and the terms of section 11 will otherwise apply.

4.8   The University recognises that when a student assigns his or her intellectual property to the University it has an obligation to ensure that the student receives a share in any commercial benefits in accordance with section 12, and in the process be treated no less favourably than originators who are employed by the University.

5. Ownership of Intellectual Property – Visitors

5.1   As a condition of a visitor’s having access to the research facilities, equipment or intellectual property of the University, the visitor:

(a)   may be required to sign a confidentiality agreement with the University,

(b)   must disclose any intellectual property with commercial potential that the visitor creates while at the University.

The commercialisation of any such intellectual property will be negotiated on a case-by-case basis with the visitor and, where appropriate, the visitor’s institution.

5.2   It is the responsibility of the relevant College Dean to ensure that a visitor is made aware of these obligations.

6. Dispute Resolution

6.1   If a dispute arises as to the operation of this policy or any matter on which the operation of this policy relies, the matter will first be referred to the Intellectual Property Officer.

6.2   If the matter cannot be resolved by the Intellectual Property Officer, or if the staff member or student involved in the dispute notifies the Intellectual Property Officer that he or she is not satisfied with the resolution of the Intellectual Property Officer, the Intellectual Property Officer must refer the matter to an Intellectual Property Appeals Committee, established by the Vice-Chancellor in accordance with section 6.3.

6.3   The Intellectual Property Appeals Committee comprises:

(a)   a nominee of the University Council (Chair),

(b)   a nominee of the Academic Board,

(c)   a nominee of the Vice Chancellor, and

(d)   a nominee of the staff member or student.

At hearings before the Committee, a staff member may be accompanied by a representative of his or her union, and a student may be accompanied by a representative of the Student Association.  The Committee may obtain independent legal advice on any matter brought before it.

6.4   The Intellectual Property Appeals Committee is empowered to either:

(a)   make a binding decision on the parties, or

(b)   refer the matter to either mediation or arbitration.

6.5   In selecting a mediator or arbitrator, the Intellectual Property Appeals Committee must, as far as is reasonably practicable, choose a person who is acceptable to all parties.

6.6   This section 6 does not apply to disputes:

(a)   normally dealt with pursuant to the University’s Enterprise Agreement; or

(b)   involving agreements with third parties.

7. Agreements with Third Parties

7.1   Notwithstanding the other provisions of this Policy, the University may enter into an agreement with another party that governs the ownership and/or commercial exploitation of intellectual property created by staff and/or students in the course of their participation in an activity.  The agreement may also require that information resulting from the activity be kept confidential, even where no other form of intellectual property is created.

7.2   In negotiating such an agreement the University must, as far as practicable:

(a)   consult with the staff and students in question;

(b)   seek to obtain terms which are consistent with the principles set out in this Policy; and

(c)   seek to preserve the moral rights of authors.

7.3   Where an agreement requires participants to assign intellectual property, to keep information confidential, or to provide consent to infringement of their moral rights the University must, ensure that the terms of the agreement are brought to the attention of participants and as necessary agreed to by them.  As far as practicable this should occur before they take part in the activity.

8. Conflicts of Interest

8.1   The University’s policy with respect to conflicts of interest is set out in its Code for the Responsible Conduct of Research (and also in the Code of Conduct).

8.2   The commercial exploitation of intellectual property raises the possibility of two particular areas of potential conflict:

(a)   where an originator has a financial interest in a potential licensee of intellectual property; and

(b)   where an originator has a directorship or takes equity in a spin-off company which is granted a right to commercialise intellectual property.

Where such a situation exists and the University continues to develop the intellectual property with the originator’s participation and under contract to the licensee or spin-off company, the Intellectual Property Officer may require reporting obligations or other measures to ensure that the conflict of interest does not compromise the intellectual property or the University’s interests.

8.3   Staff members have an obligation to disclose all relevant conflicts of interest to the Intellectual Property Officer.

9. Information and Education

9.1   The University must take all reasonable steps to ensure that this policy is communicated and explained to staff and students.

9.2   The University will conduct an ongoing intellectual property education programme with the following objectives:

(a)   to alert staff and students of their rights, responsibilities and opportunities in relation to intellectual property;

(b)   to alert staff and students to any changes to relevant policy; and

(c)   to generate a better understanding of intellectual property issues in general.

10. Status of Policy

10.1   This Policy forms part of the terms of employment of University staff.

10.2   This Policy may only be waived or modified in any way with the written approval of the Vice-Chancellor.

Commercialisation of Research IP – Specific Provisions

Sections 11 – 12 apply only to intellectual property that is created in the course of research.

11. Identification, Protection and Commercialisation

11.1   The University manages the commercialisation of its research intellectual property through Research Services.

The Guidelines on Confidentiality in Commercial Projects are relevant to this section.

11.2   The successful protection and commercialisation of intellectual property is dependent on its early identification.  Where a member of staff creates intellectual property which he or she believes to be capable of commercial exploitation, the staff member must disclose its existence to the University through the Manager Innovation and Commercialisation.  The disclosure should include all particulars of the intellectual property that are of relevance to its commercial potential, and any subsequent further developments of the intellectual property should likewise be disclosed.

11.3   In the event that the staff member, or a previous employer of the staff member, or any third party, owns pre-existing intellectual property which the staff member believes to be essential to the commercialisation of the new intellectual property, then the staff member must also disclose this matter.

11.4   Once the University has been notified of intellectual property which may be capable of commercial exploitation, the Intellectual Property Officer must decide as to whether the University will proceed with the commercial exploitation.  The decision must be made in a timely fashion appropriate to the stage of development of the intellectual property.  This decision will typically require an assessment of potential markets, protection options for the intellectual property (patentability or trade secrecy) and technical robustness, and in determining its advice to the Intellectual Property Officer Research Services is required to consult with the originator and any other relevant parties.

11.5   During the period of assessment, the originator of the intellectual property and those staff and students who otherwise have knowledge of the intellectual property must take all reasonable steps to protect the intellectual property by avoiding public disclosure.

11.6   In the event that the Intellectual Property Officer decides that confidentiality of certain information is required for the protection or commercial exploitation of the intellectual property then all staff involved with the protection or commercial exploitation must ensure that the information is kept confidential.  Such a requirement will not normally persist after the submission of a patent application containing such information.

11.7   The Intellectual Property Officer may only decide on the use of trade secrecy as an ongoing protection measure (that is, other than in the context of patenting) with the agreement of the originator.

11.8   Originators are expected to participate in the protection and commercialisation of intellectual property by: assisting with the drafting of patent applications, undertaking in a timely fashion further research that enables submission of patent applications, providing technological advice, assisting with the production of a business plan, and undertaking any other relevant tasks at the request of the Manager Innovation and Commercialisation.

11.9   In the event that:

(a)   the Intellectual Property Officer fails to make a decision in accordance with section 11.4, or

(b)   the Intellectual Property Officer decides that the University will not become, or will cease to be, involved in commercial exploitation, or

(c)   the Intellectual Property Officer decides that the University will become involved in commercial exploitation, and the University then fails to take reasonable steps to do so, or to continue to do so,

the University will, at the originator’s request, assign the intellectual property to the originator, subject to mutually agreed terms.  The University will retain the right to seek a share of net commercial revenues, appropriate to its contribution to the development and protection of the intellectual property.

12. Distribution of Returns from Commercialisation

12.1   Staff members and students who are the originators of intellectual property over which the University asserts or obtains ownership under this policy are entitled to a share of any benefits that the University derives from its commercial exploitation.

12.2   Where the University receives net revenues from the commercial exploitation of intellectual property they must be distributed in the following proportions, unless otherwise agreed to by the University and the originator:

12.3   Where there is more than one originator of commercially exploited intellectual property, they must determine how their share of the net revenues is to be divided among them and inform the Intellectual Property Officer of their decision.  Until a decision is reached, any money owed to the originators must be retained by the University.

12.4   Where one or more of the originators is a student, the decision must be submitted to the Intellectual Property Officer for approval.

12.5   In the event that a staff member or student has made a significant contribution to the development of intellectual property that falls short of the status of an originator, for example where the contributor is not an inventor for the purposes of applying for a patent or an author of computer software, the Intellectual Property Officer may agree, on a case-by-case basis, to the contributor receiving part or all of the originator share of the benefits of commercial exploitation, as determined in accordance with this section.

Administration

NOTE: Printed copies of this policy are uncontrolled, and currency can only be assured at the time of printing.

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