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Intellectual Property Policy

Guidelines
Who should consult the policy?
Research is expensive.
What happens if I do make a discovery?
How will the University help?
Can I go it alone?
How do I register an interest in selling an idea or invention?
What is in it for me?
Some exceptions
What happens if it goes wrong?
Where can I get further information or advice?

Part 1: Introduction and Objectives
Part 2: Ownership of Intellectual Property Principles
Part 3: Exploitation of Intellectual Property Procedures in Case of Inventions
Part 4: Moral Rights
Part 5: Disputes
University IP Policy - Appendix 1 - Postgraduate Licence


This Policy is currently under review. If amended the revised Policy will be placed in the electronic version of this Directory on the Research web site <Publications>.

Guidelines

Who should consult the policy?

If you discover or invent something which you think has commercial potential while you are employed by the University, the Intellectual Property Policy is of relevance to you. The policy ensures that you are assisted in the difficult and expensive process of protecting the idea and of finding a suitable commercial partner to undertake the venture. It also ensures that you and the University share any financial returns from the project.

Research is expensive.

Most research is funded by government money. Governments are seeking some return on the investment and need to justify the funding levels by identifying the benefits which might flow from the research. At the same time the University is being asked to seek other sources of funding to increase the diversity and value of its sources of funds. Both the Government and the University invest heavily in the academic staff and in the students. It is therefore important for staff and students to advise the University of any discoveries which may have commercial viability.

What happens if I do make a discovery?

The policy provides (Clause 3.1) that if you are a researcher and you think you have a discovery or invention capable of commercial exploitation (other than certain scholarly, artistic and musical works- see Clauses 2.3 and 2.5), you should report its existence to your Dean and to the Deputy Vice-Chancellor (Research).

If you are a student in this situation, you should follow the procedures outlined in any assignment or licensing agreement that you have entered into with the University.

If the University decides to become involved in the commercial exploitation, it will advise the researcher within eight weeks from the time the initial contact was completed (see below) and the University will then offer assistance in deciding upon the appropriate action. This may include patenting, licensing or other forms of assistance (see Clause 3.5).

If you make your discovery public before reporting its existence, you may forsake a commercial return. Publication in the public domain will enable everyone to share the idea.

What is required to complete the report of the existence of a discovery or invention you consider capable of commercial exploitation?

The Deputy Vice-Chancellor (Research) will require information in sufficient detail to enable a determination to be made about whether the University wishes to become involved in the commercial exploitation of the discovery or invention.

If the Deputy Vice-Chancellor (Research) requires further information in order to make a determination, it shall be promptly requested from the researcher.

Until sufficient information is made available, the Ainitial contact@ in Clause 3.3 will not be complete. Once this is available, the University then has eight weeks in which to decide whether it wishes to be involved in the commercial exploitation.

The office of the Deputy Vice-Chancellor (Research) would be pleased to assist in identifying what will be required.

How will the University help?

Once you notify the University of the discovery or invention and if the University decides to become involved in the commercial exploitation, it can provide advice and assistance on the most viable method of realising the potential of the idea: by providing funds and or expertise to enable the filing of a patent application; by taking the risk out of the venture for the individual and accepting corporate responsibility for making the most of the idea.

Can I go it alone?

If you decide to exploit your invention without giving the University the option to do so, you will be in breach of University Policy and may be subject to disciplinary action. If, however, you advise the University of the discovery and the University advises you that it does not choose to develop it, then you are free to take whatever steps you determine to exploit its potential.

How do I register an interest in selling an idea or invention?

Contact the Deputy Vice-Chancellor (Research) to discuss the invention and your plans for it. All discussions with the DVC(R) will be confidential. He will advise you of the steps he intends to take to evaluate the proposal and, within eight weeks of your completing the reporting of the discovery or invention, will tell you whether or not the University wishes to be involved in the venture.

If the University does get involved with the commercial exploitation of your idea, you will be consulted about each step. It will also expect you to participate fully in the process.

If the University decides not to be involved, you may request the University to assign the Intellectual Property (IP) rights to you. It will do so promptly with the proviso that it will receive a mutually agreed percentage of any future income. You will then be free to exploit the idea with due regard to the interests of any third parties who may have an interest.

What is in it for me?

The University will meet the costs associated with registering patents, negotiating with third parties and developing licensing agreements. The University will utilise such expertise as is necessary to facilitate the process which will be managed by the DVC(R) or his or her nominee. Net income (ie income after expenses have been met) derived from the project will be distributed between the Researcher (50%), the Faculty (25%) and the Department or Faculty (where there are no Departments) (25%). Modes of payment will be determined by the DVC(R). If payments are made directly to you, they will be subject to PAYE tax.

Some exceptions

These arrangements do not apply to researchers who have been contracted by the University to create or invent a product, nor if you have a contractual arrangement with a third party which is funding the research and where the contract specifies ownership and exploitation rights of the Intellectual Property. All research contracts are signed on behalf of the University by the DVC(R), who will assess the contract to ensure that there is no breach of University Policy and that the arrangements with respect to IP are fair and reasonable.

The University claims ownership of IP generated by non-academic staff in the course of their employment.

The University makes no claim to the IP of undergraduate students.

Postgraduate students may be asked to grant a non-exclusive licence. If a postgraduate student does this, he or she will enjoy the same rights, privileges and assistance as the researchers referred to above.

What happens if it goes wrong?

Disputes are destructive and debilitating, but in the best regulated world people disagree. The Intellectual Property Policy recognises this and makes provision for it by identifying a dispute resolution process. The process is aimed at mediating a dispute as quickly and fairly as possible and at deriving a satisfactory outcome without recourse to the legal process.

Where can I get further information or advice?

The Deputy Vice-Chancellor (Research) or the Research Branch can provide advice on the operation of the Intellectual Property Policy.

If you are a member of staff or a postgraduate student, you should seek advice before entering into any contractual arrangement concerning your research.

UNIVERSITY INTELLECTUAL PROPERTY POLICY

PART 1: INTRODUCTION AND OBJECTIVES

The University of Newcastle Intellectual Property Policy seeks to establish a sound framework for the encouragement of invention, creative work and technology transfer. The policy sets out how the University proposes to manage intellectual property rights and issues so as to best meet its policy objectives. Those objectives are: The University reserves the right to modify or add to this policy at any time provided that any such change will only apply to works, inventions and other subject-matter in which intellectual property rights subsist that come into being after the effective date of the change. The Deputy Vice-Chancellor (Research), after consultation with the Vice-Chancellor, may vary or depart from the terms of this policy in order to achieve its objectives in special cases or unforeseen circumstances.

PART 2: OWNERSHIP OF INTELLECTUAL PROPERTY PRINCIPLES

2.1
For the purpose of this policy:
"Intellectual Property" means and includes:


(a)
circuit layouts protected under the Circuits Layout Act 1989;


(b)
copyright protected under the Copyright Act 1968 in literary works (including computer programs), dramatic works, musical works, artistic works, sound recordings, cinematograph films, television and sound broadcasts and published editions as defined in the Copyright Act;


(c)
designs registered or registrable under the Designs Act 1906;


(d)
patents registered or registrable under the Patents Act 1990;


(e)
plant varieties registered or registrable under the Plant Breeder's Rights Act 1994;


(f)
trade marks registered or registrable under the Trade Marks Act 1995 and trade marks or names protected at common law or under the Trade Practices Act;


(g)
information which is confidential;


and means and includes such rights to the extent that they are added to or varied from time to time by legislation which amends or replaces, in whole or in part, any of the abovementioned Acts.
"Invention" means and includes any new and useful, or new and useful improvement of, a process, machine, product or other manufactured item or composition of matter whether or not it is patentable and whether or not it has been reduced to writing or any other form of expression and includes any related know-how and any documents, computer software or other medium in which any such invention is described or comprised.
"Researcher" means and includes all academic staff who are employees of the University, whether full-time or part-time, but does not include staff who are consultants or seconded to the University if they are not employees under contracts of service, and does not include students except if they are also employed as academic staff in which case it will include them in that capacity alone.
2.2
Except as otherwise agreed in writing or stated in this policy, the University will assert ownership of Intellectual Property created by researchers in the course of their employment and of Intellectual Property in materials created by non-academic staff in the course of their employment ("University Intellectual Property"). With respect to students, it lays no such claim for undergraduate students. Postgraduate students may be asked to grant a non-exclusive licence substantially in the form of that contained in Appendix 1 to the University in respect of certain Intellectual Property which may be generated by them in the course of their studies, prior to embarking on their course of study.
2.3
The University will not assert any right or claim to ownership of any Intellectual Property in scholarly books, articles, audiovisuals, lectures or other such scholarly work or subject-matter generated (whether in written or any other form) by researchers, other than that specifically commissioned by the University, and University authorises researchers to deal with such Intellectual Property as owners and agrees that upon request it will assign to the relevant researcher(s) any rights that it might have in that Intellectual Property. The University reserves the right to use such works or subject matter for the purposes of its teaching and research whether or not the relevant researcher(s) remain members of its academic staff.
2.4
The University will assert ownership of University commissioned lecture notes, courses, radio broadcasts, audiovisual material and the like which have been developed to further its teaching function pursuant to specific commissions in favour of one or more researchers.
2.5
The University will not assert any right or claim to ownership of the Intellectual Property in artistic works created by researchers in Fine Art or Design (unless the creation of such works has been specifically commissioned by the University). Similarly, the University will not assert any right or claim to ownership of the Intellectual Property in musical dramatic or other creative works written, created or composed by researchers, unless these works have been specifically commissioned by the University.
2.6
Despite any contrary provision in this policy, all contracts and arrangements existing at the time of the adoption of this policy which are between the University and governments, corporations and other external organisations, and which relate to the University Intellectual Property, shall remain in full force and effect. If University Intellectual Property arises out of or in connection with a project that is the subject of an agreement with a third person which provides for the ownership of such Intellectual Property and the University has agreed in writing to the provisions of that Agreement, then, despite any contrary provision in this policy, the provisions of that agreement will govern ownership of all rights in the intellectual property.

PART 3: EXPLOITATION OF INTELLECTUAL PROPERTY PROCEDURES IN CASE OF INVENTIONS

3.1
Where a researcher creates University Intellectual Property, other than that to which the University will not claim ownership as the result of the operation of Clauses 2.3 and 2.5, which Intellectual Property is, in his/her opinion capable of commercial exploitation, he/she will report its existence to his/her Dean, and to the Deputy Vice-Chancellor (Research). Students will follow procedures outlined in any applicable assignment or licensing agreement that they have entered into with the University.
3.2
Following consultation with the researcher and the Dean, the Deputy Vice-Chancellor (Research) shall determine whether the University wishes to become involved in the exploitation of any University Intellectual Property which is reported under Clause 3.1 or is otherwise brought to their notice.
3.3
The University shall decide within eight weeks of the initial contact by the researcher whether it wishes to be associated with the exploitation of the University Intellectual Property. If the University has not given notice within that period that it wishes to be involved in the exploitation of the relevant University Intellectual Property then it will be deemed to have decided not to be. If the University does not wish to be involved in the exploitation of any particular University Intellectual Property then:

(a)
the researcher shall be free to protect and exploit the Intellectual Property or otherwise at his/her discretion, subject to the interests of any third parties; and

(b)
if the researcher so requests, the relevant University Intellectual Property Rights will be promptly assigned to the researcher, in return for the University receiving a mutually agreed percentage of future income, in order to enable the researcher to take such action as he/she sees fit.
3.4
In any case where the University is the owner of any Intellectual Property in an Invention and wishes to participate in the commercial exploitation of that Invention, then any researcher involved in the Invention, whether as inventor, an owner or otherwise, agrees that the University will be deemed to have an irrevocable authority to act on his or her account and to execute such documents as the University deems necessary for the purposes of the commercial exploitation of that Invention consistent with the objectives of this policy.
3.5
Where the University decides to be involved in the commercial exploitation of the University Intellectual Property in any Invention it will consult with the researcher(s) involved in the creation of the Invention before determining, as it sees fit, the appropriate action to be taken. This may include, without limitation, one or more of the following:

(i)
the filing of Patent application in the name of the University with the researcher as named inventor;

(ii)
the identification of potential licensees;

(iii)
the assignment of the rights to a third party such as the Australian Technology Group;

(iv)
requesting the assistance and advice of TUNRA on patenting, funding and other aspects of the commercialisation of Intellectual Property in which TUNRA has specialist expertise;

(v)
the formation of a limited liability company to exploit the technology;

and shall address any need for confidentiality by the University and/or the researcher(s). In determining the appropriate course of action for the commercial exploitation of an Invention, the Deputy Vice-Chancellor (Research) or his/her nominee may consult, on a confidential basis, with appropriate experts and advisers.
3.6
Where the University decides to be involved in the exploitation of University Intellectual Property in any Invention the researcher(s) shall provide all reasonable assistance in the exploitation process by, for example, providing information promptly upon request, attending meetings with potential licensees and advising on further development.
3.7
Net income received by the University as a result of the exploitation of University Intellectual Property in any Invention shall be distributed as follows:
Researcher/
Research Account
Faculty
University
50%
25%
25%

The Deputy Vice-Chancellor (Research) will determine modes of payment for the above: any direct payments to researchers will be subject to PAYE tax. Only those researchers involved in the creation of University Intellectual Property in an Invention and who comply with their obligations under this policy will be entitled to any distribution of University income pursuant to this Clause. Net income means sale, royalty, licensing and other income received from the commercial exploitation of University Intellectual Property in any Invention less legal and other fees and expenses in establishing and protecting the Intellectual Property and in negotiating and concluding any licensing or other agreements relating to the Intellectual Property. Where more than one researcher is involved the distribution of their share of the income between themselves will be a matter for them to determine save that where there is failure to agree then income shall be distributed in proportions to be determined by the Deputy Vice-Chancellor (Research).
3.8
The revenue sharing arrangements in Clause 3.7 above shall not be available to researchers who are specifically contractually obliged to create and develop University Intellectual Property or Inventions so far as that Intellectual Property or those Inventions are concerned. Any payments to researchers in this category, other than payments governed by their engagement contracts, shall be the subject of ad hoc determination by the Deputy Vice-Chancellor (Research) and the appropriate Dean or Head of Department at the time of receipt of income.
3.9
Where the University authorises costs being incurred in protecting and exploiting University Intellectual Property in any Invention these shall be borne by the Research Branch.
3.10
The sole authorised signatories on behalf of the University on matters relating to Intellectual Property shall be the Vice-Chancellor or the Deputy Vice-Chancellor (Research). Agreements executed under seal should be subject to the University's usual procedures.

PART 4: MORAL RIGHTS

The University recognises, in Part 1, the desirability of creating a better understanding of legal protections of rights in creative efforts. It is important to note that, at present, moral rights in works are not embodied in Australian legislation.
Universities, though, have long-standing codes of good academic practice which include moral rights in works. Fair attribution of authorship and the recognition that a work should not be altered so as to harm the reputation of the author, are part of established academic culture.
Where the work of another, or part of it is used, the use shall be appropriately acknowledged.
If the work of another is altered, mutilated or distorted in any way, it shall not be altered in such a way as to harm the academic or personal reputation of the author.
What may cause that harm shall be assessed according to what is reasonable in the circumstances. The determination of what constitutes reasonableness "in the circumstances" involves both common sense and an acknowledgment of the, written or unwritten, codes of practice existing in our academic culture.

PART 5: DISPUTES

The University wishes to resolve disputes arising with respect to matters covered by its Intellectual Property Policy quickly but fairly and, wherever possible, to do so without resort to litigation or other public dispute resolution procedures. The intent is to reduce the strains that such disputes and their resolution place on the parties so as to affect the work and relationship of those involved as little as possible.
5.1
If any dispute arises between a researcher and the University with respect to the application of this policy then the researcher and the Dean of the researcher's Faculty will make themselves available to meet as soon as possible in an effort to resolve the matters in dispute. If no agreement is reached at the meeting or it is not held within seven days of either party giving notice of the dispute and requesting a meeting, the matters in dispute can be referred by either party to the Deputy Vice-Chancellor (Research) who, acting as a mediator and not an arbitrator, may adopt such procedure as he or she thinks fit, including reference to an alternative mediator, to promptly reach a decision on the issue in dispute which decision shall be final and bind all parties.
5.2
If any dispute arises between the University and a researcher or student as to ownership of Intellectual Property or their respective legal rights or obligations with respect to such Intellectual Property, then the University will attempt to agree with the other party/parties to first endeavour to settle the dispute by mediation and, if the dispute is not resolved within a reasonable time by mediation, that the dispute should be submitted to expedited arbitration administered by, and in accordance with the Arbitration Rules of, the Australian Commercial Disputes Centre ("ACDC"). Failing agreement as to the arbitrator ACDC would be given power to appoint a person who was not the same person as the mediator. Any mediation or arbitration should be held in conference in Newcastle.

It is often helpful to outside organisations if the University generates the contract papers for their consideration. It saves legal costs and it is more likely to lead to a contract that is suited to the research purpose. However if the funding body has its own contract, the Research Office will review this and advise on its acceptance.

University IP Policy - Appendix 1

POSTGRADUATE LICENCE

The following is subject to the terms of any agreement that a student may be required to observe where funding is provided by a third party.
[Student] hereby grants to the University a non-exclusive, royalty-free, irrevocable and perpetual licence:
  1. to use for teaching and research purposes; and
  2. subject to the payment of the royalty or fee referred to below, to commercially exploit whether by licence or otherwise;
any Intellectual Property (as defined by the University Intellectual Property Policy) the Student creates or invents or otherwise acquires rights to in the course of his/her post-graduate study and research with the University.
If the Student creates or invents or otherwise acquires Intellectual Property in the course of his/her post-graduate study and research with the University which is in his/her opinion, capable of commercial exploitation then he/she will report its existence to his/her Dean and to the Deputy Vice-Chancellor (Research).
If the University wishes to commercially exploit the Intellectual Property then it will notify the Student and the Student will be recompensed on the same basis as University academic staff would be under the University Intellectual Property Policy, as amended from time to time, if they had an entitlement to remuneration for the same Intellectual Property under the provisions of that policy.
The licence shall not extend to any Intellectual Property the Student may own or acquire rights to in respect of:
  1. books, articles, theses, dissertations and other written works created in the course of the Student's study or research and not reasonably considered to possess commercial potential other than where those specific programs and related materials were created at the express request of the University;
  2. computer programs (in any code) and related materials which have been created in the course of the Student's study or research and not reasonably considered to possess commercial potential other than where those specific programs and related materials were created at the express request of the University;
  3. artistic works created in the course of the Student's research or study other than where those specific works have been created upon the express request of the University;
  4. musical or dramatic works other than those specific works which have been created at the express request of the University or which are published, performed, broadcast, funded or otherwise supported by University resources.

The Student acknowledges that the University reserves the right, prior to the Student participating in any research project in which University Staff are also involved or in which University equipment, facilities or resources will be used, or as a condition of the Student's continued participation in any such project, to require the Student to assign any Intellectual Property arising or subsisting in or in respect of any Invention, work or other material that the Student may in future author, invent or create in the course of working on that project as a condition of the Student's participation or continued participation in it.