Intellectual Property Procedure

Intent

This Procedure outlines the management of commercialisation pathways and Intellectual Property (IP) protection for James Cook University (JCU; the University).

This Procedure addresses Higher Education Standards Framework (HESF) Standards 4.1: Research, 4and 7.2: Information for Prospective and Current Students.

Scope

This Procedure applies to all University Staff Members, Students (including Higher Degree by Research (HDR) candidates and pathway students) and Honorary Appointments.

Definitions

Except where otherwise defined in this procedure, definitions for terms used in this procedure are located in the Intellectual Property Policy.

Procedure

1. Roles and Responsibilities

University Council: has the reserved power for the establishment, acquisition or disposal of a Controlled or a non-Controlled Entity. Council is also the authority that approves equity and revision of equity holdings in JCU shareholdings in start-ups managed through the North Queensland Commercialisation Company Pty Ltd (NQCC).

Deputy Vice Chancellor, Research (DVC R): is responsible for the management of IP protection, Commercialisation and sharing of benefits of the Commercialisation of IP by the University

Deputy Vice Chancellor Academy (DVC A): advises the DVC R on any potential Commercialisation, assignment and/or licensing of non-research IP, including teaching materials.

Intellectual Property Advisory Group (IPAG): will be chaired by the DVC R and will provide advice and recommendations on commercialisation pathways, IP protections and the associated conflicts of interest.

Originator/s of IP: must disclose potentially valuable IP to the University, including any Background IP, and any updates on already disclosed IP, including any amendments to the data, results and findings, and commercial interactions associated with the IP. Originator/s must retain records, materials and data to evidence the outcomes of any activity and these must be reproducible and defendable. Originator/s must engage with the University or the Commercialisation Advisor in the disclosure, protection and Commercialisation procedures. Originator/s cannot act on behalf of themselves or enable others to act on their behalf or the University in dealing with University-owned IP and do not have the authority to deal with or make any commitments relating to such IP.

2. Disclosure of New Intellectual Property

The successful protection and Commercialisation of IP is dependent on its early identification. Where an Originator has developed, created, authored, contributed to or otherwise brought into existence IP, which the Originator believes to be capable of commercial exploitation, the existence of the IP must be disclosed to the University in a timely manner. The disclosure must:

• be made using the New IP Disclosure Form.
• include all particulars of the IP (including any Background IP incorporated into the IP) that is of relevance to its commercial potential, and any subsequent further developments of the IP should likewise be disclosed.
• name all Originator/s, including external parties where IP has been created in collaboration with those external to the University.

Any enquiries in relation to the disclosure of new IP must be referred to the DVC R, Research Division, Research and Innovation Services and other relevant parties, including the Commercialisation Advisor and legal advisors.

3. Disclosure of Background Intellectual Property

Staff, Students and Honorary Appointees must disclose any Background IP or confidential information they wish to use in any activity prior to the commencement of that activity, as outlined below.

3.1 Agreement – Licence or Assignment of Background Intellectual Property to the University

Activities which use Background IP must not commence until the appropriate written agreement/s, as determined by the University, are in place.

3.1.1 Background IP Owned by University Staff, Student and Honorary Appointees: Where Background IP is owned by a Staff Member, Student or Honorary Appointee, a written agreement between the individual/s and the University must be in place prior to commencement of the activity to licence or assign the IP to the University. Whether a licence or assignment is required will depend on the nature of the activity, including the presence of any funders or collaborators.

3.1.2 Background IP Owned by a Third-Party: Where the Background IP is owned by a third-party, the Staff Member, Student or Honorary Appointee must provide documentation that evidences the right to use the IP prior to the commencement of the activity.

3.1.3 Confidential Information: An agreement that covers Background IP must also grant the right to the University and any third-parties to use or disclose confidential information that Staff Members, Students and Honorary Appointments have the right to use or disclose.

3.2 Disclosure – Background Intellectual Property Commercialisation

Where IP may be considered capable of commercial exploitation, the Originator/s must enter into discussions with the Commercialisation Advisor regarding the disclosure of Background IP, and must complete a Background Intellectual Property (IP) Disclosure Form. The disclosure must include the full description of the Background IP, any restrictions on the use of the Background IP and information on any other persons or organisations with any legal interest in the Background IP.

4. Publication, Protection and Commercialisation

The premature disclosure (such as a publication) of IP that has the potential to be Commercialised may jeopardise or seriously limit the ability to obtain any future protection of the IP (for example,  patents, design rights, etc.) and the commercial value of the IP.

4.1 Where an Originator/s wish to share or discuss potentially sensitive information about IP with entities or persons external to the University, the University may assist by providing a Non-Disclosure Agreement (NDA).

4.2 Where there are University contractual obligations which restrict publication or use of IP, the Originator/s must always abide by those restrictions regardless of whether the IP is the subject of a New IP Disclosure.

4.3 Where IP is of potential commercial interest, Originator/s must not disclose IP to:

• third-parties;
• the public domain;
• social media;
• by submission for publication.

4.4 The University acknowledges the interest of an Originator/s in publishing the outcomes of research and will seek to assist academic publication whilst protecting the potential value of any New IP Disclosure.

5. Evaluation of Intellectual Property

5.1 Once the University has been notified of a new disclosure of IP through the New IP Disclosure Form, the Commercialisation Advisor will consult with the Originator/s of the IP on the possible pathways to Commercialisation of the IP, including initial discussions on publication, protections that may be required and further work required to develop the IP for Commercialisation.

5.2 The Commercialisation Advisor will undertake due diligence on the IP during the preliminary evaluation, which may include investigation of prior art, third-party encumbrances, Background IP and the potential market and competitors. In order for the Commercialisation Advisor to complete the required due diligence, Originator/s must collaborate with Commercialisation Advisor and provide all the required information and documentation concerning the New IP disclosed.

5.3 Within 30 business days of the receipt of the New IP Disclosure Form, the Commercialisation Advisor will forward their advice to the IPAG of the likely commercial value of the IP, the readiness of the IP for Commercialisation and the possible Commercialisation pathways. If further time is required for advice to be provided to the IPAG, an extended timeframe will be discussed and agreed by all parties.

5.4 Notice of Determination

The IPAG will meet within 30 business days to consider the advice of the Commercialisation Advisor. The DVC R will make a determination to pursue one of the following options:

i. Commercialise: The University will develop, together with the Originator/s, a Commercialisation Plan that will include consideration of protection of the IP, licencing, equity or other vehicles or strategies for exploitation of IP, as well as engagement with potential partners and/or investors (see 5.5 and 5.6); or

ii. Further Development: The University reserves the right to Commercialise following further development of the IP with a development plan and review period of 6 months to progress toward a commercial opportunity (see 5.4), or

iii. No interest: The University has no interest in leading the Commercialisation and the IP will be transferred to the Originator/s (see 5.5); or

iv. Public Good: The IP has little or no commercial value and the IP may be made available for public good at no or on a cost-recovery basis (see 5.6)

After 18 months of the decision of the DVC R (Options i, ii and iv), or in response to material change of circumstance, and in discussion with Originator/s and IPAG, the DVC R may re-evaluate the commercial potential of the disclosed IP and may move to an alternative outcome, including the initiation of the Commercialisation pathway, or the suspension or cessation of IP protection or Commercialisation.

5.5 Patent Protection

5.5.1 Where IP has been evaluated as representing a potential commercial opportunity, and Commercialisation Advisor and IPAG have advised on the appropriateness of IP protection strategies, the DVC R will determine whether to proceed with IP protection.

5.5.2 The Originator/s who are the named inventors on the patent will be required to sign a confirmatory Deed of Assignment (necessary to provide a clear chain or title) of the patent application to the University and complete any other required documentation in support of the filing of the patent.

5.5.3 If patent protection is approved, it is essential that Originator/s who are named inventors on the patent remain involved in the prosecution of the patent as their technical know-how is needed to ensure that any patent examiners’ queries can effectively be addressed. The University will usually only file and continue to prosecute patents where the Originator/s are committed to the patenting, development and Commercialisation processes.

5.5.4 The costs of IP protection can be significant. Support for a patent at and beyond provisional filing will be conditional on a number of issues including (but not limited to) technical validation, market validation, commercial interest, research support for the Commercialisation process and return on investment.

5.5.5 The decision to proceed beyond provisional filing will be made by the DVC R, with advice from the Commercialisation Advisor and IPAG. In most cases, where a decision has been taken to support IP protection, fees for provisional filing of a patent will be supported by the Research Division.

5.6 Commercialisation Plan

5.6.1 Where a potential commercial opportunity is identified, the Originator/s will enter discussions with the Commercialisation Advisor to identify and engage with potential partners and investors to progress the commercial potential of the IP. In consultation with the Originator/s, the Commercialisation Advisor will develop a Commercialisation Plan for submission to the IPAG and decision by DVC R.

5.6.2 Progress of the Commercialisation Plan will be reviewed by the Commercialisation Advisor and the IPAG at 6 months and at 9 months after a provisional patent has been filed. If there is no Commercial progress including supporting data, then the DVC R may decide to suspend or cease supporting the Commercialisation or protection of any IP (including the support of a provisional patent application to Patent Cooperation Treaty (PCT)) where in their reasonable opinion the outcomes and benefits to be gained are insufficient to justify further investment. The Originator/s will be kept informed of any developments in the Commercialisation of the IP in timely manner. In the event that the Commercialisation is suspended or ceased, and after discussions between the Commercialisation Advisor and the Originator/s and advice to IPAG, the DVC R may make an alternative determination under clause 5.4 of this procedure.

5.7 Further Development of Commercialisation Opportunities

If no immediate commercial opportunity is identified but it is recognised that further research may lead to an opportunity, the University may recommend that the Commercialisation Advisor provides on-going advice of the development of the IP. This ongoing advice will be time limited on a case-by-case basis at the discretion of the DVC R.

After further development of the IP and after discussions between the Commercialisation Advisor and the Originator/s and advice from IPAG, the DVCR may make an alternative determination under Section 5.4 of this Procedure.

5.8 Assignment of IP to Originator/s where the University does not wish to lead Commercialisation

In the event that the University does not wish to lead Commercialisation and/or development of specific IP and the Originator/s have complied with the Intellectual Property Policy and this procedure, the University may choose to assign the specific IP disclosed to the Originator/s.

Conditions of assignment must include, but are not limited to, that the Originator/s:

i. are free to protect and Commercialise the IP at their discretion;

ii. must agree to meet all costs and risks associated with the Commercialisation of the IP personally. That is, costs cannot be sourced from University resources or funding;

iii. take on liability for all on-going costs associated with IP protection;

iv. negotiated payment of royalty to the University from income received by the Originator/s from the Commercialisation of the IP once the revenue reaches a defined threshold (see clause6);

v. provide appropriate indemnities for the University with respect to the Commercialisation by the Originator/s;

vi. report regularly to the University in relation to progress made with the Commercialisation of the IP and the revenue entitlements of the University;

vii. grant the University a license to use the IP for education, academic and research purposes; and

viii. grant the University the right for the IP to be assigned back to the University if the Originator/s no longer wish to proceed with the Commercialisation pathway.

5.9 Public Good

In discussion with the Originator/s, if the IP assessed as having little or no commercial value, the University may not proceed with the Commercialisation of the IP and may consider alternative options for the IP, such as dissemination and uptake of the IP to relevant agencies or parties on a free to license or cost-recovery basis or to agree to publish the outcomes.

5.10 Assistance provided by Originator/s

The Originator/s of the IP that is being considered for Commercialisation or is being Commercialised must provide the University with reasonable assistance in the assessment and Commercialisation of IP as requested by the University. Reasonable assistance may include (but is not limited to) prompt provision of information, assessments/opinions, no public disclosure of IP, attendance at meetings, presentations and execution of documents as required.

Delays in providing assistance in the assessment of Commercialisation of IP may prejudice the progress of protection of the IP.

5.11 Commercialisation Plan review

The Originator/s may request a review of the University Commercialisation Plan 18 months after the Plan has been agreed. Variations will be considered by the IPAG and determined by the DVC R. The DVC R may trigger a review of the University Commercialisation Plan at any time.

6. Commercialisation of IP: Start-Ups

6.1 Start-Ups

6.1.1 Originator/s Led Start-Ups

i. Under limited circumstances, where the IP is know-how based or IP with low potential for IP protection, the University may consider an Originator-led start-up as the Commercialisation pathway. All Originator/s of the IP must be in agreement with this pathway to commercialisation. Where appropriate, if the New IP has been created in collaboration with parties external to the University and where these parties have been named on the New IP Disclosure Form, these parties must also agree with the pathway to commercialisation.

ii. If the Originator/s have complied with the Intellectual Property Policy and this Procedure, the University may consider on agreed terms, to licence the IP to a company established by the Originator/s.

iii. The University will provide the contracting for the licence agreement for the IP.

iv. The Originator/s will be responsible for seeking investment into the start-up company or the sale of any products by the start-up company.

v. All costs and expenses related to the start-up company will be borne by the start-up company, including IP protection costs, legal fees, administration costs, and these costs and expenses cannot be funded by University-held grants, University operating funds or other University resources.

vi. The terms under which the University may licence IP to the start-up company will be negotiated on a case-by-case basis and subject to any third-party encumbrances and, where required, University Council approval, and will include, but are not limited to:

7. Disbursement of Net Revenue from Commercialisation

The University carries the risk on costs it incurs in the support and Commercialisation of IP developed by Originator/s. Originator/s are financially rewarded through a share of any Net Revenue that the University derives from Commercialisation income.

7.1 Distribution of Net Revenue

Subject to clauses 7.2 and 7.3, where IP is commercialised by the University, the Net Revenue from the Commercialisation of IP by the University will be distributed:

• Originator/s – 50%
• Work Unit/s – 25%
• Research Division – 25%

Revenue sharing will continue regardless of whether the Originator/s are or continue to be associated with the University. Originator/s that cease to be associated with the University must provide any additional information required to enable payment by the University. If the University is unable to contact the Originator/s within 3 years after the initial notice of Net Revenue share is provided by the University to the Originator/s using the contact details last notified in writing by the Originator/s to the University, the University will have no further obligation to locate or pay the Originator/s their share of Net Revenue.

7.2 Sharing of Net Revenue – multiple Originators of IP

When there is more than one Originator of the IP, the Originators are responsible for determining how their share of the Net Revenue (as established in 7.1) is divided among them. Each Originator must agree to the proportional split in writing and confirm that to the best of their knowledge all Originators have been named. Until a decision is reached by the Originators and provided in writing, Net Revenue owing to the Originators will be retained by the University.

In some circumstances, the Originator/s may wish to recognise one or more colleagues who have made a significant contribution to the development of the IP as Contributors. Contributors may share in the distribution of Net Revenue of Commercialisation by receiving an agreed share of the Net Revenue paid by the University to Originator/s subject to the same arrangements as the Originator/s in 7.1 and 7.2.

7.3 Financial Conflict of Interest – Net Revenue Sharing (also refer Section 9)

If Originator/s receive a financial benefit from a position such as a directorship or equity in a start-up that has been granted an exclusive license of IP by the University, the Originator/s must forfeit any Net Revenue share from the University relating to the Commercialisation income for that IP. Under these circumstances, their share of Net Revenue will be split equally between the Work Unit/s and the Research Division.

8. Disputes

If an issue arises among Originator/s and other parties in regard to IP, the individuals must make all reasonable efforts to resolve the issue.

The issues in dispute may include, but are not limited to:

a. identification of Originator/s and Contributors; and

b. sharing of Net Revenue distributions amongst Originator/s and Contributors.

The following steps must be taken to resolve the dispute:

9. Conflicts of Interest

The Originator/s and Contributors must comply with the Conflict of Interest Policy, Research Code for the Responsible Conduct of Research and Disclosure of Interest and Management of Conflicts of Interest Procedure. In relation to commercial exploitation of IP there are two particular areas of potential conflict of interest:

• Where an Originator/s has financial interest in a potential licensee of IP; and
• Where an Originator/s has a directorship or takes equity in a start-up company which is granted a right to Commercialise University IP or granted an option.

Where these situations exist, restrictions are required to manage the conflict of interest.

9.1 Management of Conflicts of interest in Originator-led Start Ups

In addition to the requirements of the Conflict of Interest Procedure, a conflict of interest management plan must be developed in relation to the Commercialisation of IP in Originator led Start-Ups and approved by the DVC R. Where an Originator/s has a directorship or takes equity in a start-up company which is granted a licence to Commercialise IP by the University or has other arrangements in the start-up company, the management plan must include, but is not limited to:

i. Consideration of a change in employment conditions for Originator/s, such as the reduction of the percentage of Full-Time Equivalent (FTE) held at the University, up to and including exit from University employment in relation to any directorship or appointments in the start-up company;

ii. University resources may not be used for activities related to Originator-led start-up companies without formal agreements (for example, a licence to occupy). Adjusted fees may be negotiated in the IP development period subject to agreed conditions (6.1.1).

iii. No publicly funded research funding (or other grants or other public funds) will be permitted to be held in the specific research area of the IP licensed to the start-up company, subject to agreed exceptions in the IP development period.

iv. Students may not be involved in Originator-led start-up company projects after the IP Development Period.

v. No participation by Originators in decisions for other research related to areas of interest for the start-up company.

vi. No participation by Originators in procurement activities between the start-up company and the University.

10. Training and Education

Staff Members, Students and Honorary Appointees have an obligation to engage in training and education provided by the University in regard to their responsibilities under the Intellectual Property Policy and this procedure.

Related policy instruments

Intellectual Property Policy

Staff Code of Conduct

Student Code of Conduct

Research Code for the Responsible Conduct of Research

Disclosure of Interest and Management of Conflicts of Interest Procedure

Conflict of Interest Procedure

Copyright Policy

Schedules/Appendices

New Intellectual Property (IP) Disclosure Form

Background Intellectual Property (IP) Disclosure Form

Administration

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

Approval Details

Revision History