Governance

Policies and procedures

Policy No.
UP07/49
Function
Information Management
Authoring Organisational Unit
Legal Team - SPP Central Unit
Date Approved
07/10/1997 Revised 28/04/2014
Next Review Date
01/08/2017
Approving Body
Senate

The University of Western Australia

University Policy on: Intellectual Property

Purpose of the policy and summary of issues it addresses:

This policy repeals and replaces the University's Intellectual Property Regulations 1996 and associated Policy, Guidelines and General Rules. This policy provides directions to the University's staff and students on the management of the University's Intellectual Property and provides for the sharing of net revenues from Commercialisation with staff and students who contribute to commercial outcomes by the creation of Intellectual Property.

Operative Provisions

1. This policy is made by the Senate pursuant to the powers conferred by sections 13 and 14(1) of the University of Western Australia Act 1911 (Western Australia).

2. This policy repeals and replaces the University's Intellectual Property Regulations 1996 and the University's Policy on Intellectual Policy 1997 (UP07/49).

3. This policy takes effect following its adoption by the Senate and its publication in the University Calendar.

4. This policy covers University staff (whether academic or professional staff), students and contractors.

5. Except as otherwise specified herein, Intellectual Property is owned by the originator.

Definitions:

In this policy and any associated procedures,

Commercialise means to obtain commercial benefit from Intellectual Property including exercise of all rights owned by the University and 'Commercialisation' has a like meaning.

Computer Program means a computer program as defined by the Copyright Act 1968 (Commonwealth) as amended or replaced from time to time.

Intellectual Property means, without limitation, all rights in relation to any-

(a) circuit layout or eligible layout as defined by the Circuit Layouts Act 1989 (Commonwealth) as amended or replaced from time to time;

(b) confidential information which means information of any kind which, because of its confidential character, is capable of protection by contractual or equitable means, and includes information of a valuable commercial or technical character;

(c) copyright work which means any work or thing in which copyright may subsist including, without limitation, 'artistic work', 'literary work (including a Computer Program)', 'dramatic work', 'musical work', 'sound recording', 'cinematograph film', 'television broadcast', 'sound broadcast', 'published edition of work' or 'photograph', as those terms are defined by the Copyright Act 1968 (Commonwealth) as amended or replaced from time to time;

(d) design which means a design as defined by the Designs Act 2003 (Commonwealth) as amended or replaced from time to time;

(e) invention which means an invention (including both products and processes) which may be patentable under the Patents Act 1990 (Commonwealth) as amended or replaced from time to time;

(f) patent which means a patent within the meaning of the Patents Act 1990 (Commonwealth) as amended or replaced from time to time, and includes a standard patent, provisional patent application, patent application, or a petty patent;

(g) plant variety which means a plant variety which may qualify for a grant of rights under the Plant Breeders' Rights Act 1994 (Commonwealth) as amended or replaced from time to time;

(h) trade mark which means a trade mark as defined by the Trade Marks Act 1995 (Commonwealth) as amended or replaced from time to time, whether or not registered under that Act; and

(i) includes rights of a related nature.

Net Proceeds means Revenue less all external costs to the University directly attributable to the patenting and defence of patents, and other charges authorised by the Deputy Vice-Chancellor (Research).

Originator means any person who creates, whether or not in conjunction with another person, any Intellectual Property.

Revenue means the sum of any lump sum, royalty or other payments received as a result of the Commercialisation of the University's Intellectual Property.

Scholarly Works means copyright works created by a University Staff Member during the term of a contract of service with the University that are intended for academic credit in any medium but excludes Teaching Materials;

Student means, despite anything to the contrary in any other statute or regulation, a person who created Intellectual Property in the course of the person's studies or research at the University undertaken in pursuance of a qualification, subject or unit offered by the University, and who was not in that capacity employed by the University.

Teaching Materials means copyright works created in any medium (other than a Computer Program) by a University Staff Member under a contract of service to the University to instruct or assist in instruction in a University course, subject or unit.

University Staff Member means a person engaged pursuant to a contract of service to the University, including part-time staff and joint appointments.

Policy statement:

1 Ownership of Intellectual Property created by a University Staff Member

1.1 The University owns Intellectual Property created by a University Staff Member pursuant to a contract of service to the University excluding Teaching Materials and Scholarly Works.

1.2 Ownership of Intellectual Property in projects involving third parties will be determined by the third party agreement with those parties to the project.

1.3 The University may in relation to Intellectual Property it owns, at its election:

1.3.1 Commercialise the Intellectual Property;

1.3.2 Offer the Intellectual Property to the creator, gratis or on commercial terms;

1.3.3 Offer the Intellectual Property to others, gratis or on commercial terms; or

1.3.4 Release the Intellectual Property to the public domain with or without conditions.

2 Ownership of Intellectual Property created by a Student

2.1 Unless the Student has agreed in writing to assign Intellectual Property to others, the Student owns Intellectual Property created by that Student.

2.2 A Student always owns copyright in a thesis.

2.3 A Student that participates in the creation of Teaching Materials in the course of study for the future use of the University does so under condition that the Student grants to the University an irrevocable, perpetual, non-exclusive, royalty-free licence to publish, reproduce and communicate those Teaching Materials for the purposes of teaching, learning and research.

3 Duties of Fidelity and Disclosure

3.1 A University Staff Member must protect the University's interests including not making a secret profit at the University's expense, not disclosing the University's confidential information or trade secrets so as to unreasonably destroy patentability or registrability of any Intellectual Property rights and not use the University's time for their own self-serving purposes.

3.2 The University requires originators of Intellectual Property including staff and students engaged in a project under a written funding agreement to inform the Deputy Vice-Chancellor (Research) or delegate, in writing of the creation of any impactful Intellectual Property, including any potentially patentable invention.

3.3 A University Staff Member or Student is not permitted to deal with or act in any way inconsistently with rights in Intellectual Property owned by the University.

3.4 In relation to the creation by a University Staff Member during the term of a contract of service with the University of Intellectual Property which is likely to be commercially significant, the University requires originators of Intellectual Property to inform the Deputy Vice-Chancellor (Research) or delegate, in writing of the creation of any commercially significant Intellectual Property including:

3.4.1 the owners of the Intellectual Property;

3.4.2 whether the owners wish the University to assist in the Commercialisation of the Intellectual Property and if so, upon what terms; and

3.4.3 how best to facilitate further research and development of the Intellectual Property.

3.5 The originator of Intellectual Property owned by the University will, if required by the Deputy Vice-Chancellor (Research) or delegate, execute any document or do anything reasonably required by the University in relation to Intellectual Property created in whole or in part by the originator to demonstrate or prove ownership to third parties or secure intellectual property protection, or assist the University to Commercialise the Intellectual Property.

3.6 Private work by a University Staff Member is subject to the University's policies and guidelines, including the Policy on Professional and Consultative Work (UP07/204).

4 Licence to Use Teaching Materials and Scholarly Works

4.1 A University Staff Member grants to the University an irrevocable, perpetual, non-exclusive, royalty-free licence to publish, reproduce and communicate Teaching Materials and Scholarly Works for the purposes of teaching, learning and research.

4.2 A University Staff Member is required to comply with the University's licence to Teaching Materials and Scholarly Works and to comply with directions regarding the storage, archiving and recording of same.

5 Moral rights

5.1 In the case of a copyright work owned by the University which the University publishes or communicates to the public:

5.1.1 without adaptation or other modification, the University will ensure that the authorship of the work is acknowledged; or

5.1.2 with adaptation or other modification, the University will consult with and obtain the agreement of the originator and the adaptor of the work on whether the authorship of the work is to be acknowledged and if so the form of the acknowledgment.

5.2 In the case of a copyright work owned by the University, where the University proposes to assign or license a copyright work, the University will consult with the originator of the work as to whether the University will ensure that a term of the assignment or licensing agreement requires the purchaser or licensee to acknowledge authorship of the work and if so, the form of the acknowledgment.

5.3 Where an originator wishes not to be acknowledged as the creator of Intellectual Property which has been modified or adapted, the University will take reasonable steps to respect that wish, and to ensure that others respect it.

5.4 Where the University uses Intellectual property created by an originator, it will take reasonable steps to consult with the originator before modifying or adapting that Intellectual Property.

5.5 Authors of copyright works waive their moral rights where such waiver is required to comply with the terms of an agreement, government tender or compulsion of law.

6 Participation in Centres and Institutes

6.1 Staff and Students employed by or invited to participate in the research activities of centres, institutes and similar research collaborations will be subject to the policies and contractual obligations of that research activity which may require as a condition of participation, confidentiality undertakings and assignment of Intellectual Property rights.

7 Other External Collaborations

7.1 Staff and Students invited to participate in teaching, work experience and other collaborations with external parties will be subject to the policies and contractual obligations of that collaboration which may require as a condition of participation, confidentiality undertakings and assignment of Intellectual Property rights.

8 Trade Marks and Business Names

8.1 The Office of Public Affairs manages the University's Trade Marks, Business Names and similar registered names and must be consulted before a University Staff Member seeks to register a trade mark or business name on behalf of the University or for a University-administered project.

8.2 Any trade mark or business name created or registered by a University Staff Member in the course of a contract of service with the University holds that trade mark or business name for and on behalf of the University.

9 Pre-existing Intellectual Property

9.1 Upon appointment to the University, a University Staff Member will advise the Deputy Vice-Chancellor (Research) in writing of the existence and history of any commercially significant pre-existing Intellectual Property, including any potentially patentable invention, which the University Staff Member intends to continue to develop during the term of a contract of service with the University.

9.2 The University Staff Member will further advise the Deputy Vice-Chancellor (Research) in writing of any confidentiality agreements or similar intellectual property obligations which will continue to be observed by the University Staff Member during his or her employment under a contract of service with the University.

10 Use of University personnel, facilities, equipment, insignias, trade marks and names

10.1 Where a specific contribution of funds, resources, facilities or apparatus administered by the University, excluding a scholarship, which is designated for the purpose of creating Intellectual Property is made available to staff, students, visitors or others, then agreement will be reached with the recipient of those resources as to the ownership of any resulting Intellectual Property and that agreement will be in writing.

10.2 Visitors, including honorary and emeritus appointments, are bound by this policy as if a University Staff Member during the period of any visit or appointment by the University.

10.3 Staff members of affiliates and project participants who develop Intellectual Property under external funding agreements administered by the University are bound by this policy as if a University Staff member during the period of occupancy of University premises or term of the funding agreement as the case may be.

11 Management of Intellectual Property

11.1 The Deputy Vice-Chancellor (Research) may do all or any of the following on behalf of the University:

11.1.1 Consult with the originator and the relevant executive deans of faculties and make such enquiries as considered appropriate concerning how best to Commercialise or provide for other management of any Intellectual Property;

11.1.2 Apply for protection or registration of, or take any other steps necessary or desirable for securing, maintaining and protecting in Australia or elsewhere throughout the world any Intellectual Property owned by or licensed to the University;

11.1.3 Take steps to Commercialise any Intellectual Property owned by or licensed to the University upon such terms and conditions as the Deputy Vice-Chancellor (Research) considers appropriate;

11.1.4 Grant to the originator an assignment or a licence of Intellectual Property owned by or licensed to the University on such terms and conditions as the Deputy Vice-Chancellor (Research) considers appropriate;

11.1.5 Determine issues of authorship, creation and invention of Intellectual Property as required;

11.1.6 Determine the Net Proceeds of the Commercialisation of any Intellectual Property owned by or licensed to the University and apportionment of same having regard to:

11.1.6.1 the costs incurred by the University, the originator and any other person in providing facilities, apparatus, services and resources for the creation, registration, protection and Commercialisation of the Intellectual Property;

11.1.6.2 the extent to which the University, the originator and any other person has contributed (whether by intellectual input, provision of finance, time, pre-existing Intellectual Property, know-how, research facilities and data) to the creation, registration, protection and commercialisation of the intellectual property;

11.1.6.3 the University's policies on earnings from outside work;

11.1.6.4 any submissions by the originator or any other person who claims an entitlement or interest in the Intellectual Property;

11.1.6.5 the desire of the University to encourage and reward the creation of Intellectual Property by persons within the University;

11.1.6.6 whether the Intellectual Property is subject to an external agreement or has become inseparably mixed with other Intellectual Property; and

11.1.6.7 any other matter the Deputy Vice-Chancellor (Research) reasonably considers to be appropriate.

11.2 Subject to any adjustment determined pursuant to clause 11.1.6, the Deputy Vice-Chancellor (Research) will apportion the Net Proceeds in accordance with the Schedule.

11.3 When there is a disagreement involving more than one Originator of Intellectual Property, the Deputy Vice-Chancellor (Research) will determine the University's proposed apportionment of Net Proceeds between the Originators.

11.4 A determination by the Deputy Vice-Chancellor (Research) is final.

11.5 The Schedule may be amended from time to time by the Vice Chancellor and such changes take effect on the publication of the amended Schedule in the University Calendar.

12 Disputes

12.1 If a dispute arises as to the operation of this policy, the Deputy Vice-Chancellor (Research) will appoint a mediator within 30 days to assist the parties in resolving their dispute.

12.2 If such a dispute cannot be resolved through the assistance of a mediator, the Deputy Vice-Chancellor (Research) shall appoint an arbitrator to decide the matters in dispute.

12.3 The arbitrator may adopt whatever procedure they see fit, provided each party is given a fair hearing.

12.4 In selecting an arbitrator, the Deputy Vice-Chancellor (Research) shall, as far as is reasonably practicable, choose a person who is acceptable to all parties within 30 days.

THE SCHEDULE

Net Proceeds of Commercialisation

Originator/s

University

Up to $100,000

85%

15%

Over $100,000

50%

50%

Related forms: (Link)

Invention Disclosure form:

http://www.uwa.edu.au/__data/assets/pdf_file/0008/79460/IP-disclosure-form.pdf

TRIM File No:

F20266

Contact position:

Director of Legal Services

Related Policies or legislation:

Repealed:

Intellectual Property Regulations 1996

Guidelines to Intellectual Property Regulations 1996

University's Policy on Intellectual Policy 1997 (UP07/49)

General Rules 1.3.1.24 to 1.3.1.30

Related:

Professional and Consultative Work (Policy UP07/204)

Lecture Capture (Policy No UP10/9)