Standing Resolutions of Council

Chapter 4 - General Resolutions Including Protocols

4.15 Intellectual Property Principles²

Introduction

1.1 The University of Melbourne seeks to foster a culture which supports knowledge creation, knowledge transfer and entrepreneurial endeavour.

1.2 As a major public institution, the University has a responsibility to manage intellectual property (or “IP” where so used in these Principles) created as a result of its various activities in a manner that furthers its mission and benefits the wider community. Proper management of intellectual property by the University helps attract research investment and research collaborators; encourages the use of innovative teaching and learning materials and technologies; promotes linkages with industry; helps attract, reward and retain outstanding staff and students; facilitates the increased transfer of knowledge to business and society across all sectors of the economy; and generates financial returns for the University and for the creators of intellectual property.

1.3 Through its knowledge transfer capabilities, the University is able both to extend knowledge, and to contribute directly to knowledge-based industries. As a result, proper management of intellectual property contributes directly to employment growth, the generation of national wealth and the provision of new products and processes for the benefit of the Australian community.

1.4 The University also has a responsibility for ensuring its staff, honorary appointees, visitors and students have a good understanding of their intellectual property rights and responsibilities, commercialisation of research and educational services, and knowledge transfer more generally.

1.5 These Principles are made pursuant to Statute 14.1 – Intellectual Property, and take account of the University’s obligations with respect to the University’s compliance with the National Principles of Intellectual Property Management for Publicly Funded Research.

1.6 These Principles guide the development, protection, management and commercialisation of intellectual property in which the University has rights. At the same time they provide specific guidance to University staff, honorary appointees, students and visitors on related matters. The Principles recognise the need for the University to take account of the interests of staff, students and the wider community when dealing with its intellectual property rights.

1.7 In these Principles, a reference to a “University company” means a company wholly owned by the University

Summary of Intellectual Property ownership principles

Taken together, the terms of Statute 14.1 and these Principles provide a detailed statement of arrangements relating to the ownership of IP and govern all matters relating to the ownership of intellectual property in the University. However, the key elements of IP ownership that apply within the University may be summarised as follows:

Ownership of intellectual property

all staff, honorary appointees, visitors, or student creators of IP have a duty to disclose inventions with potential commercial value or where required by third party agreements (Statute 14.1.7(2) and clause 14.1 of these Principles);

where intellectual property of potential commercial value is so disclosed the University will diligently consider whether to protect that intellectual property and keep the creator informed of the action which it is taking (clause 14.2 of these Principles);

in relation to staff, the University owns all intellectual property (other than scholarly works), including teaching materials created by staff, (subject to the rights of creators as set out in Statute 14.1 and these Principles) (Statute 14.1.2); in relation to students, honorary appointees and visitors the University owns all intellectual property (other than scholarly works) which is either teaching materials or the subject of third party agreements (subject to the rights of creators as set out in Statute 14.1 and these Principles) (Statute 14.1.3);

Scholarly works

scholarly works created by academic staff, honorary appointees or visitors are owned by them (Statute 14.1.2);

scholarly works created by students are owned by them (Statute 14.1.3);

the University has a non-exclusive licence to use scholarly works freely for teaching and research, subject to preservation of the rights of the author (Statute 14.1.4);

teaching materials are not scholarly works and are owned by the University (Statute 14.1.1(1)).

Objectives

3.1 Intellectual property and related rights are of little value unless they are protected, developed and exercised. These Principles have as their primary objective the establishment of flexible and effective mechanisms by which the University is able to identify, protect, manage, commercialise and otherwise exploit its rights to intellectual property. By successfully meeting this objective, the University and its staff and students will be in a stronger position to benefit from:

attraction of industry and government funding for research, teaching and learning, and knowledge transfer;

establishment of an international reputation for excellence in the generation and transfer of knowledge;

establishment of linkages with other universities, industry and government;

generation of financial returns from commercialisation;

growth of knowledge-based industries through research and its commercialisation; and

generation of national wealth, through new products, services and employment.

3.2 The University recognises that its staff and students are its most valuable resource. These Principles aim to provide incentives for staff and students to create valuable intellectual property, and where they do so, to reward their innovation.

Types of Intellectual Property Rights

4.1 Rights to intellectual property are a category of property rights recognised under the laws of Australia and can be defined as those rights arising from the output of the human intellect. Intellectual property rights arise in relation to certain types of subject matter and those rights can be sold, purchased and licensed. Types of intellectual property rights include, but are not limited to, patents, copyright, trademarks, design rights, circuit layouts, plant breeder’s rights and rights to confidential information (consisting of trade secrets, know-how or other proprietary information and background knowledge that attracts an obligation of confidentiality).

4.2 “IP” or “intellectual property” when so used in these Principles means all types of intellectual property.

4.3 In the context of University supported research and teaching, IP of most relevance generally relates to patents, copyright and know how. Of these, patents and copyright in teaching materials have the greatest potential for generating commercial income. University know-how is important in terms of attracting research funding, and will often constitute the basis of patents and other forms of IP protection.

Moral Rights

A sub-category of rights under the Copyright Act are moral rights, which protect the right of a creator of original copyright works to be recognised as the creator of those works (right of attribution), and the right to object to the derogatory treatment of those works (right of integrity). These rights are personal rather than proprietary in nature and as such cannot be sold, licensed or assigned. Furthermore, moral rights vest in the creator irrespective of employment status or the ownership of the copyright in the work. The Copyright Amendment (Moral Rights) Act 2000 (Cth) sets out these rights in detail.

Teaching Materials

Statute 14.1 specifies that teaching materials created or used for the primary purpose of teaching and education at the University are owned by the University. Statute 14.1.1 includes a detailed definition of “teaching material”. The rationale for this assertion of ownership is to ensure the University has access to teaching materials for its own proper use, including in situations where the creator of the teaching materials ceases to be a member of University staff. Determining whether a particular document or material has been created for the primary purpose of teaching and education at the University, or whether it has been created for another purpose and its use within the University is a secondary purpose, will often involve careful consideration of the circumstances of individual cases. It is important to note that the purpose of the assertion of ownership by the University of teaching materials is to safeguard the legitimate operations of the University and not impose unnecessary or unwarranted restrictions on academic staff creators. The processes that the University will follow in determining whether particular material constitutes teaching materials will take account of this purpose. To the extent any teaching materials are commercialised, the creator will share in the proceeds of commercialisation as provided in these Principles.

Ownership of Intellectual Property – Staff

7.1 Under Statute 14.1, “staff” means all employees of the University. “Academic staff” is defined in Statute 14.1 as “... a member of staff of the University who is employed in any capacity as either a research or teaching member of the staff, or both, irrespective of the date of commencement of employment and whether or not that member of staff is on any form of study leave”.

7.2 Under Statute 14.1, the University owns the rights to all intellectual property (other than moral rights) created by staff in the course of or incidental to their employment, except in the case of scholarly works. The rights to scholarly works are owned by the member or members of academic staff who created such works.

7.3 The University does not however claim ownership to any IP created by a member of academic staff during a period of paid outside work undertaken in accordance with the University’s paid outside work guidelines. The obligation rests with the academic staff member to demonstrate that the IP was created during a period of paid outside work and that any costs incurred by the University, including for the provision of services and facilities, have been fully recovered.

Ownership of Intellectual Property – Students

8.1 “Student” means a person enrolled or designated as a student of the University, typically relevant at the time he or she creates IP. Student IP will be governed in accordance with Statute 14.1 of the University, as supplemented by these Principles.

8.2 Except in the case of teaching materials and specified agreements as defined in Statute 14.1, the University has no rights to IP developed by students. However, students have an obligation to comply with the terms of the University’s invention disclosure policy where the relevant activity giving rise to the intellectual property comes within the terms of the policy. Statute 14.1 also deals only with the treatment of IP between the University and the student, but IP rights of a student undertaking research training at an affiliated institution (for example, a medical research institute) may well be affected by the IP policy of that institution, whether reflected in the affiliation statute with the University or in the student’s terms of engagement with the affiliated institution.

8.3 Students working on team-based projects, on collaborative projects with their supervisors or on ongoing programs in large research centres, such as cooperative research centres, also need to be cognisant of the IP rights and responsibilities of all those involved. In many cases, considerable intellectual input from others (e.g. the supervisor) has already been contributed in developing a grant application or contract proposal before a research project commences. Although the University has no employment-based right to ownership of the work of a student, it does not necessarily follow that a student is the owner of all work relating to a research project when there has also been contribution from others to the project. In such cases, the rights associated with joint contribution need to be respected, and staff and students should ensure that intellectual property matters are discussed, defined, agreed and documented, subject to the terms of Statute 14.1 and these Principles.

8.4 Where students have created intellectual property whilst engaged in an activity which is the subject of a specified agreement (as defined in Statute 14.1), or where the activity giving rise to the intellectual property otherwise comes within the terms of the University’s invention disclosure policy, those students are entitled to be treated in the same way as academic staff for the purpose of sharing in commercial benefits, including financial returns, from the commercialisation of the IP. In determining financial returns, the University will take the following into account:

the requirement that student creators be treated equitably and fairly in relation to sharing the benefits of commercialisation of IP;

the degree of intellectual input from University staff (including supervisors) and third parties;

the nature and extent of any University or third party IP accessed or used by the student; and

the nature and extent of any use a student makes of University facilities.

Where the relevant parties are unable to agree on the determination of the financial returns to be made to students, the matter may be referred to the Vice-Chancellor or nominee for advice and mediation. In the absence of agreement, the Vice-Chancellor will determine the matter. The Vice-Chancellor must ensure that the interests of student creators are properly and fairly taken into account. To enable this to occur, the Vice-Chancellor may refer the matter to an external party for advice and subsequently rely on that advice.

Ownership of Intellectual Property – Honorary Appointees

9.1 An honorary appointee is defined in Statute 14.1 as “any person other than a member of academic staff, who holds an honorary or other academic appointment at the University, irrespective of the date of commencement of that appointment, and who has access to University facilities for teaching, research or other scholarly activity.”

9.2 Except in the case of teaching materials and specified agreements as defined in Statute 14.1, the University has no rights to IP developed by honorary appointees. However, honorary appointees have an obligation to comply with the terms of the University’s invention disclosure policy where the relevant activity giving rise to the intellectual property comes within the terms of the policy.

9.3 The arrangements set out in clauses 8.3 and 8.4 of these Principles in relation to students apply equally in relation to honorary appointees.

Ownership of Intellectual Property - Visitors

10.1 “Visitor” means any person located at the University other than a staff member, honorary appointee or student of the University who takes part in any research project or scholarly activity which is conducted by any staff member, honorary appointee or student of the University, or who visits any part of the University in which research or scholarship, or any related activity, is conducted at the time that person creates IP.

10.2 Except in the case of teaching materials and specified agreements as defined in Statute 14.1, the University has no rights to IP developed by visitors. However, visitors have an obligation to comply with the terms of the University’s invention disclosure policy where the relevant activity giving rise to the IP comes within the terms of the policy.

10.3 The commercialisation of any IP created by a visitor and sharing of any net commercialisation benefits will be negotiated on a case-by-case basis, including with the visitor’s employer. The University will recognise the publication rights of visitors subject to the terms of any relevant agreement between the visitor and a third party or with the University.

10.4 The matters set out in these Principles in respect of visitors will be included as terms and conditions in any correspondence from the University appointing a person as a visitor.

Exercise of Power of Attorney

11.1 (a) To enable the University to meet its contractual obligations to third parties under specified agreements (as defined in Statute 14.1), or to protect rights to IP generally, the Vice-Chancellor may sign any document required to be signed by a creator as the attorney for such creator .

(b) Where the Vice-Chancellor exercises the power of attorney, it will be exercised on terms no less favourable to the grantor than could have reasonably been obtained under any other agreement pursuant to which rights to IP would have been assigned or otherwise dealt with in like circumstances.

(c) Where the terms of any previous IP statute are still applicable, it is University policy that deeds of assignment must be obtained before a student commences work under a specified agreement. The same policy applies to honorary appointees and visitors, and in any other situation in which the University does not own the intellectual property covered by the terms of the specified agreement. In some circumstances, it will not have been possible to obtain a deed of assignment prior to the work commencing. Moreover, if the developed IP is to be commercialised there are a number of occasions during the patenting process where all creators are required to sign other documentation to facilitate patent applications and registrations. There may be other occasions where such creators are required to sign further documentation. Where necessary, the exercise of the power of attorney also applies in these situations.

(d) In all cases, and particularly with the signing of a deed of assignment, this power will be exercised only after all reasonable efforts have failed to obtain the signature of the creator to the relevant document.

11.2 Where the power of attorney is exercised in the case of a student, the following steps will be taken:

(a) Before the exercise of the power of attorney, written notification will be given to the student at the address held in the Student Administration database. A copy will be sent to the student’s supervisor and to the relevant (University) Head of Department. If the student has a University address a copy will also be sent to that address. That notification will, where practicable, allow 21 days from the date of the notification for the student to contact the University to arrange the relevant signatures. If no contact is made within the 21 day period, a further notification will, where practicable, be sent allowing a further 10 day period in which to make contact with the University. The second notification will advise that at the end of the 10 day period the Vice-Chancellor may exercise the power of attorney without further notice.

(b) After exercise of the power of attorney, the Vice-Chancellor will advise in writing the student, the Deputy Vice-Chancellor (Research), the Dean of the School of Graduate Studies (or other Dean as appropriate) and the Vice-Principal and Academic Registrar of the exercise of the power and provide to each of them copies of the documents signed. A suitable notation will be made on any relevant student file.

11.3 Where the power of attorney is exercised in the case of any other creator, not being a student, the following steps will be taken:

(a) Before the exercise of the power of attorney, written notification will be given to the creator at the residential address noted in the relevant personnel file and, if still employed by, or under an appointment from, the University, to the University location where the creator normally works. A copy will be sent to the relevant (University) Head of Department. That notification will, where practicable, allow 21 days from the date of the notification for the creator to contact the Vice-Chancellor to arrange the relevant signatures. If no contact is made within the 21 day period, a further notification will, where practicable, be sent allowing a further 10 day period in which to make contact with the Vice-Chancellor. The second notification will advise the creator that at the end of the 10 day period the Vice-Chancellor may exercise the power of attorney without further notice.

(b) After exercise of the power of attorney, the Vice-Chancellor will advise in writing the creator, the Deputy Vice-Chancellor (Research) and the Vice-Principal (Human Resources) of the exercise of the power and provide to each of them copies of the documents signed. A suitable notation will be made on any relevant personnel file.

Reward for Creators

12.1 The University’s view is that academic staff, honorary appointees, students and visitors who create valuable IP should be eligible for reward, regardless of whether that IP resides in research or teaching materials.

The primary intention of the University in establishing a regime whereby such creators are rewarded is that –

the University is to be compensated for the support it has given to the creators in the development, protection and commercialisation of the IP; and

the creator’s faculty receives a share of the funds in acknowledgement of the role it has played in the development of the successful IP;

all creators who are academic staff, students, honorary appointees or visitors share equitably in the returns in accordance with the contribution they have made to the IP. (see also clause 8.4 in relation to students and clause 9.3 in relation to honorary appointees.)

In the absence of any other agreement reached between the relevant parties on a case by case basis where exceptional circumstances can be shown to warrant an alternative distribution, the University will ensure that the Net Proceeds of Commercialisation are distributed as follows:

to University Central 20%

to the Faculty 40%

to the Creators 40%

“Net Proceeds of Commercialisation” means the total of net proceeds received by the University from the commercialisation of the IP following deduction of any expenses incurred by or on behalf of the University in respect of the development, protection and commercialisation of the IP. Examples of such expenses include, but are not limited to, patent attorney fees and other IP registration costs, external legal fees incurred in the commercialisation of the IP, and insurance relating to the maintenance and enforcement of IP rights.

“Net Proceeds of Commercialisation” does not include:

research and development or consulting funds derived by the University;

returns from direct investment by the University or a controlled entity which is not in consideration for the transfer of the rights to the relevant intellectual property to the commercialising company; or

any income derived from the delivery of the University’s fee-paying courses, including courses delivered collaboratively with third party educational institutions in Australia or internationally.

It is a matter for the relevant faculty to determine what, if any, proportion of the Net Proceeds of Commercialisation paid to that faculty is in turn allocated to any department within that faculty. It is expected that, in so determining, the faculty will have regard to any contribution made by a department towards the development of IP.

12.2 Commercialisation arrangements executed prior to the date of these Principles will remain in accordance with the arrangements and policies in force at that time.

12.3 Notwithstanding anything else in clause 12, the University recognises that persons who may not be creators, or may not be entitled to be named as creators in any application for IP protection, may nevertheless make valuable contributions to the creation or exploitation of IP, including all employees whether or not members of academic staff. Recognition of such contributions and the allocation and distribution of the Net Proceeds of Commercialisation to all contributors (including creators) shall be based on the written agreement of all the creators. Where the relevant parties are unable to agree on the ownership of rights to IP and returns to contributors, these issues may be referred to the Vice-Chancellor or nominee for advice and mediation. In the absence of agreement, the decision of the Vice-Chancellor will be final.

12.4 Distributions of Net Proceeds of Commercialisation will be made to contributors regardless of whether they remain employed or engaged by, or enrolled within, the University. The University will withhold payment when it believes the law requires it to do so or it is otherwise contractually obliged to do so under the terms of a specified agreement.

12.5 Where IP developed from team based research (being a parallel or sequential series of research activities that generate collective IP) is commercialised, the Net Proceeds of Commercialisation may be shared in accordance with the methodology set out in the Schedule or as otherwise recommended by the Deputy Vice-Chancellor (Innovation and Development) and approved by the Vice-Chancellor. Nothing in this clause 12.5 limits the power of the Vice-Chancellor under clause 12.3.

Identifying Intellectual Property

13.1 The protection, management and commercial exploitation of IP, the rights to which are owned by the University, depend on the early identification and protection of that IP. Thus, it is essential that research projects are carefully monitored and their outcomes reviewed by staff and University officers with specific IP expertise. Staff, honorary appointees, visitors and students (whether in the case of specified agreements or otherwise) should review their research activities regularly, keep detailed project and research records, and fully disclose in a timely fashion and in accordance with approved University procedures the creation of new IP with potential commercial value to the University or any University company. Any disclosure of research related IP must be reported and at all times comply with applicable University policies.

13.2 A similar level of diligence to that described in clause 13.1 should also be applied by those involved in other scholarly endeavours and the development of teaching and learning materials, especially educational courseware and multimedia products. In these situations, it is equally important to keep careful records of IP developed, IP accessed from other parties and creative contributions. In some cases, IP developed may be of a kind that requires formal registration action to be taken by the University in order to obtain the legal rights of ownership. Accordingly, disclosure of all teaching and learning related IP must at all times comply with applicable University policies.

Protecting Intellectual Property

14.1 Staff, honorary appointees, visitors and students have a continuing obligation to report the creation of IP with potential commercial value to the University or any University owned company, in accordance with the terms of the mandatory invention disclosure policy as approved by Council from time to time. That disclosure must include all particulars, data, results, findings and commercial interactions associated with the IP to enable informed decision making by the University or the University company. Any new particulars, data, results, findings and commercial interactions associated with the IP disclosed in the original report must also be disclosed to the University or University company as they occur.

14.2 After a disclosure has been made, subject to full details having been provided as part of the disclosure as required under clauses 13 and 14.1, the University or the University company will diligently consider the disclosure with the object of reaching a decision, in cooperation with the creator, within three months, or as otherwise provided in clause 14.4 in relation to patentable intellectual property.

14.3 Where it is not practicable to reach a decision within three months, the University will advise the creator of the reasons why it has been unable to reach a decision and, after consultation with the creator, may specify a further period of not more than three months within which it expects to reach a decision. Any further period of extension beyond the six months so provided for is only available through agreement between the University or the University company and the creator.

14.4 Notwithstanding the other provisions of clause 14, where the relevant IP is of a patentable nature, subject to full details having been provided as part of the disclosure, as required under clauses 13 and 14.1, the University or the University company will have 30 days in which to decide whether it wishes to file an application for the grant of a provisional patent, in which case the University or the University company, as the case may be:

is responsible for all related costs and, with such cooperation as may be required from the creators, must file the relevant provisional patent application as soon as possible; and

must no later than 60 days before the expiration of the relevant provisional patent advise the creator whether it has decided to pursue full patent protection, in which case it must proceed with the lodgement of the full patent application as soon as possible, and with such cooperation from the creators as may be required.

14.5 During any period when the University or the University company is considering the disclosure in order to decide whether to protect the IP, staff, honorary appointees, students and visitors who have access to, or information relating to the IP must take all reasonable steps to protect that IP by avoiding public disclosure, including disclosure through publication or presentation at academic conferences. Nothing in this clause shall be taken to preclude the right of creators to publish and present the outcomes of research, other than research which is the subject of the invention disclosure policy during the period allowed for the University to decide to pursue IP protection or commercialisation, except where specifically agreed between the University and the creator.

14.6 Student, honorary appointee and visitor creators are obliged to comply with the invention disclosure policy notwithstanding that the IP which is the subject of the disclosure is owned by them and not the University. Where such a disclosure is made, the University will decide whether to pursue commercialisation or protect the IP in accordance with clause 14 of these Guidelines in cooperation with the creator. Where the University so decides to pursue commercialisation or protect the IP, it shall do so on terms mutually acceptable to both parties, including in relation to any necessary assignment of ownership of IP.

Commercialising Intellectual Property

15.1 Commercialisation is a complex and often lengthy process and requires commitment and diligence from those involved. There are a variety of pathways to commercialisation and numerous steps involved in the process, which will be unique in almost every case. Creators are expected to use their best endeavours to assist in the commercialisation of IP.

15.2 The University will seek at all times to

deal expeditiously and competently with IP protection and commercialisation opportunities so as to maximise the potential benefits for all interested parties, and

keep creators informed of progress in pursuing commercialisation opportunities.

15.3 Where the decision is made to proceed with the protection or commercialisation of IP, creators (including students) will have the opportunity to participate in processes associated with the protection and commercial exploitation of IP that they have helped to create.

15.4 Where one of the following criteria is met:

a decision is made not to proceed with the protection or commercialisation of IP including, in relation to patentable IP for which a provisional patent has been procured, a decision made not to proceed with full patent protection;

a decision is made subsequently to cease the commercialisation of IP;

in the view of the Vice Chancellor or nominee, the interests of the University may be better served by the creator leading the commercialisation process; or

the University or the University company has not been able to decide on patent protection or commercialisation in a timely manner, and the creator has on reasonable grounds been unwilling to grant the University or the University company an extension of time,

the University must, unless the Vice-Chancellor has determined that to do so would not be in the interests of all creators, give the creators themselves the opportunity to seek funding and commercial participants. This may involve the assignment of IP rights to the creator or designated third parties. Unless otherwise agreed, this will not affect the University’s right to seek full recuperation of its costs, a share of proceeds from any such commercialisation, its ownership of the IP rights, or its rights to a perpetual royalty free non-exclusive licence for teaching and research for non-commercial purposes where it has assigned the IP rights to the creator or designated third parties.

15.5 The University may at its discretion assign University owned IP to a third party where it is of the view that such assignment is in the best interests of commercialising the IP and is not otherwise inconsistent with Statute 14.1 and these Principles. The University will consult with the creator before effecting any such assignment, and, unless it is doing so at the request of the creator, will seek to ensure that any such assignment takes account of the interests of the creators.

15.6 As reflected in section 14.1.6(2) of Statute 14.1, where it is in the interests of the University or the creators to do so, the University may acquire intellectual property by assignment from third parties, including creators, on such terms as it thinks fit or as otherwise provided in any specified agreement to which the University is a party.

Dispute Resolution

The Deputy Vice-Chancellor (Innovation and Development) is the University officer responsible for the administration of the Intellectual Property Statute and Principles. Any complaints about the operation of the Statute and Principles are to be referred in the first instance to the Deputy Vice-Chancellor (Innovation and Development) for resolution. If other than as specifically provided for elsewhere in these Principles, a dispute arises that is unable to be resolved in this manner, a grievance may be notified and, where notified, will be handled according to the procedures set out in the relevant University policy in relation to handling of complaints and grievances.

Conflict of Interest

A conflict of interest exists where the financial interest of, or the involvement that, a staff member, honorary appointee, student or visitor may have with another party, conflicts or may conflict with the duties and obligations owed by them to the University. The University’s Code of Conductfor Research (Regulation 17.1.R8) outlines the University’s relevant obligations. Full and prompt disclosure of any potential conflicts of interest to the Vice-Chancellor, or the University company as applicable, is required to protect the University and to allow for an objective evaluation of the benefits of prospective commercial involvement with a third party.

Terms of Employment/Enrolment

Subject to any agreement to the contrary specifically approved by the Vice-Chancellor in writing, these Principles shall form part of the terms of employment of University staff and the terms of appointment as honorary appointees, and in the case of students, part of the terms of their enrolment as students of the University. The University will use its best endeavours to ensure that University staff, honorary employees, visitors and students are made aware of the application of the Statute and these Principles at the time of commencement of employment, appointment or enrolment, as the case may be.

Operative Date

Section 14.1.7(5) of Statute 14.1 specifies that IP created before the date on which the revised statute becomes operative is to be governed by the terms of the statute in operation at the time the IP was created. The obligation rests with creators to be able to show when the IP was created. Where creators are unable to establish that the IP was created before the operative date of the statute, the IP is to be governed by the terms of the current Statute 14.1.

Variations to Principles

These Principles are issued as a Standing Resolution of Council and may only be waived or modified with the agreement of Council.

SCHEDULE

Distribution to creators of royalties received from commercialisation of Intellectual Property resulting from Team Research

Many major research programs generate potentially commercialisable IP results from team research over a number of years. Frequently a suite of patents is involved based upon the work of several creators. The collective outcomes are what is licensed to external parties. It may be difficult to place a net worth on specific patents, and hence on the contributions of creators and other team members, within a suite of interdependent patents and know-how generated through team research.

This schedule is designed to provide a reference point for determining the approach to be taken for distributing royalties among creators in such circumstances.. Particular circumstances will vary according to the research program and the team composition. The program leader is responsible for the presentation of any alternative proposal to the Deputy Vice-Chancellor (Innovation and Development) for recommendation to the Vice-Chancellor.

All members of a team-based program eligible to receive a creator royalty entitlement be classified into one of four categories

Program Leader/Director
Typically the Chief Investigator(s) of the program with principal responsibility for management of the research team and accountability for outcomes.

Project Leader
Typically senior researcher(s) supervising a group on a specific project or projects within the overall program.

Research Worker
Typically post-doctoral and early career researcher(s) as members of a group with responsibility for experimentation within a broadly defined project framework.

Research Students and Research Assistants
Typically undertaking research under the direct supervision of a more senior researcher.
All team members accrue Royalty Entitlement Credits on an annual basis in accord with their level of responsibility linked to their classification A to D as defined in Clause 1 above.
The accumulation of Royalty Entitlement Credits (RECS) per annum by individual researchers be in accord with the following scale.

Researcher A 4 RECS

Researcher B 3 RECS

Researcher C 2 RECS

Researcher D 1 RECS
Each year any person associated with the research program may be awarded a bonus of RECS for an exceptional contribution to the generation of or management of potentially commercialisable IP. The maximum bonus in any year to a researcher in any category would be 4 RECS for that program.
The decision to award a bonus would be made jointly by the Dean of the Faculty and the Head of Department or Centre on the advice of the Program Leader(s) provided the Dean or Head did not have a conflict of interest. In situations where a conflict of interest exists, the Deputy Vice-Chancellor (Innovation and Development) or nominee will be involved in the determination of any bonuses .
For each year that the University receives licence and royalty fees from the team-based research which generated the income, the proportion available for distribution to team members will be pro-rated in accord with the percentage of RECS accrued to each individual.
Researchers would retain their entitlements for the duration of licence and royalty fees. For an ongoing research program researchers who have left the program would have their pro-rated contribution diminished over time as the total number of RECS increased .
In the event of a dispute arising regarding RECS allocations a researcher may request the Deputy Vice-Chan cellor (Innovation and Development) to determine the matter. Should the Deputy Vice-Chancellor (Innovation and Development) be unable to act then another Deputy Vice-Chancellor will be nominated by the Vice-Chancellor to resolve the matter .

2 The drafting of these principles has been informed by reference to similar documents at other research-intensive universities, including the University of Queensland ‘Intellectual Property Policy for Staff, Students and Visitors’.

University Secretary's Department Standing Resolutions of Council

Chapter 4 - General Resolutions Including Protocols