Contracts and agreements
Accepting Research Grants
The responsibility for accepting research grants and signing research agreements and contracts rests with the University, not the individual researcher. The Deputy Vice-Chancellor (Research & Innovation) (DVCR&I) has a delegation of authority to sign such documents on behalf of the University.
The DVCR&I requires that any proposed research contracts or agreements be referred to Research Services and reviewed by a Contracts Officer. This is to ensure that the interests of the University and the researchers are protected. The Contracts Officer will negotiate with the funding body for amendments to the agreement if necessary. Insurance, indemnity, overheads expenses, ownership of intellectual property rights and protection of the rights of researchers to publish their results are examples of the issues that sometimes require negotiation.
The Contracts Officer can also prepare a research agreement, based on the University's standard form of contract, which can be adapted to meet the needs of the particular project.
Alternatively, the Legal Office has developed a number of template agreements that can be used to engage third parties in an efficient, professional, consistent, and risk conscious way. UON staff can download the templates from the Legal Office webpage (http://www.newcastle.edu.au/current-staff/our-organisation/governance/legal/accordion-legal-office/legal-precedents/research). Using a UON template agreement as it stands ensures prompt approval enabling projects to commence. Please note that delegation of authority still applies.
Research Services should also be consulted about other research-related legal issues, including Intellectual Property Agreements, Material Transfer Agreements, and research student Scholarship Agreements.
Information on Intellectual Property
Intellectual property (IP) represents the property of your mind or intellect and it comes in various forms:
- Copyright: Original material in literary, artistic, dramatic or musical works, films, broadcasts, multimedia and computer programs;
- Patents: for new or improved products or processes;
- Trade marks : for words, symbols, pictures, sounds, smells or a combination of these, to distinguish the goods and services of one trader from those of another;
- Designs: for the shape or appearance of manufactured goods;
- Circuit layout rights: for the 3-dimensional configuration of electronic circuits in integrated circuit products or layout designs;
- Plant breeder's rights: for new plant varieties; and
- Confidentiality / trade secrets: including know-how and other confidential or proprietary information.
Copyright and circuit layout rights arise automatically when you produce the work. You do not need to do anything further to obtain legal protection for them. For other forms of IP protection, you need to seek some form of registration, such as registering a patent.
Copyright is the form of IP most commonly encountered in academic work. Copyright protects the original expression of ideas, not the ideas themselves. It is free and automatically safeguards original works of art, literature, music, films, broadcasts and computer programs from copying and certain other uses.
Material is protected from the time it is first written down, painted or drawn, filmed or taped. Material may also enjoy reciprocal protection under the laws of other countries who are signatories to the Universal Copyright Convention.
Copyright protection is provided under the Copyright Act 1968 and gives exclusive rights to license others in regard to copying the work, performing it in public, broadcasting it, publishing it and making an adaptation of the work. Rights vary according to the nature of the work. Those for artistic works, for instance, are different to those for literary and musical works.
Although making copies of copyright material can infringe exclusive rights, a certain amount of copying is permissible under the fair dealing provisions of the legislation.
A patent is a right granted for any device, substance, method or process, which is new, inventive and useful.
A patent is legally enforceable and gives the owner the exclusive right to commercially exploit the invention for the life of the patent. This is not automatic however, and you have to apply for a patent. All applications for patents are examined to ensure they meet the necessary legal requirements for granting a patent.
You cannot patent artistic creations, mathematical models, plans, schemes or other purely mental processes.
Early publicity can destroy the ability to patent - if you demonstrate, sell or discuss an invention in public before you file for patent protection, you cannot get a patent. You can talk to employees, business partners or advisors about your invention but only on a confidential basis. Written confidentiality agreements with these people are advisable.
An Australian standard patent lasts for 20 years. Patents can be registered overseas, for more widespread protection. Going to international level is an expensive process, and the University does not normally fund this level of protection itself, but would however, seek an industry partner to invest in the patent.
University Policy on Intellectual Property
In summary, the University claims ownership of IP created by its employees in the course of their employment. However the University will not assert any right or claim to ownership of any Intellectual Property in scholarly books and articles or in artistic, musical and creative works (unless they have been specifically commissioned for / by the University).
Where the University earns income from the exploitation of intellectual property developed by its employees, the developer(s) will be given a 50% share of the income, with the remaining 50% divided equally between central University administration and the developer's Faculty.
The University does not make any claim to ownership of IP generated by students, although postgraduate students may be asked to grant the University a license to use their IP.
In cases where the University has 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, postgraduate students involved in the project may be asked to assign their IP rights.
For Linkage Grants and other research involving outside funding bodies, it is often necessary to negotiate arrangements about IP. While the final agreement will usually be part of a written contract, prepared by the Research Division or the Legal Unit, it is important to raise IP issues early in the discussions and to be frank about expectations.
The University's basic position is that in most cases it will expect to own the IP generated by the project, but will give the industry partner first refusal for an exclusive license to exploit the IP in return for a license fee or royalty payment. Variations on this are possible, depending on the nature of the project, but where commercially useful results are possible, this should be the starting point for negotiation.
The University also seeks to protect the right of its employees and students to publish in scholarly journals, subject to reasonable protection of intellectual property.
Please view the University's Consultancy Policy for information related to the management of all University agreements other than standard contracts of employment of University employees administered by the Human Resources Management Branch and research grant funding agreements normally administered by the Research Division.
Please view the University's Overheads Charges on University Contracts Policy for information related to these charges.