Intellectual Property Procedure
|Date Approved||31 August 2007|
This document supports the implementation of the University’s Intellectual Property Policy and should be read in conjunction with that document.
The following procedures will be followed in applying the provisions of the Intellectual Property Policy.
2. Procedure for Registration of University IP
2.1. The University will maintain an Intellectual Property Register in the Office of the Deputy Vice-Chancellor (Research). A report on the register will be made annually to University Council.
2.2. The Intellectual Property Register will include the following information:
(i) a description of the University IP and its location;
(ii) the names of those responsible for the University IP;
(iii) any potential or current risks associated with the University IP;
(iv) where the University has a licence to use a third party’s IP: details of the licence, licensor, expiry date and payments;
(v) the anticipated costs and any anticipated revenue associated with the University IP; and
(vi) any other information concerning the University IP which the Deputy Vice-Chancellor (Research) indicates is required.
2.3. Where a staff member creates University IP that may be capable of commercialisation, the staff member will disclose the details of the University IP to the Deputy Vice-Chancellor (Research).
2.4. Where a student creates University IP which may be capable of commercialisation, the student will advise the supervisor who will disclose the details of the University IP to the Deputy Vice-Chancellor (Research).
2.5. Staff or students who create University IP will be required to uphold confidentiality in accordance with the provisions of the Intellectual Property Policy.
2.6. Once University IP is entered on the Intellectual Property Register, the procedure for commercialisation of University IP will apply.
3. Procedure for Commercialisation of University IP
3.1. When University IP is entered on the Intellectual Property Register, the Deputy Vice-Chancellor (Research), in consultation with the originator(s) and any other relevant University member(s) or external expert(s), will determine within eight weeks (the determination period), whether the University wishes to commercialise the University IP.
3.2. The Deputy Vice-Chancellor (Research) will make the determination on the basis of appropriate legal, financial and commercial advice, relevance of the intellectual property to the University’s purposes, and with reference to the University’s risk management framework.
3.3. Within the determination period, the Deputy Vice-Chancellor (Research) will ensure that the ownership of the University IP is verified and will take all necessary steps to determine and verify that ownership. The originator(s) will assist where required in the verification process.
3.4. During the determination period, the Deputy Vice-Chancellor (Research) and the originator(s) will do all things necessary to ensure that the University IP is treated as confidential, including by having any persons consulted during that period sign confidentiality agreements.
3.5. Where a decision is not made about the commercialisation of the University IP within the determination period, or where it is determined that the University does not wish to commercialise the University IP, the ownership of the University IP will be assigned in writing by the Deputy Vice-Chancellor (Research) to the originator(s).
3.6. If it is determined that the University wishes to commercialise the University IP, the Deputy Vice-Chancellor (Research) will seek within two weeks of the end of the determination period to engage The University of Newcastle Research Associates Limited (TUNRA) under an agreement with the University to commercialise the University IP.
3.7. If TUNRA declines to enter into an agreement with the University for the commercialisation of the University IP, the Deputy Vice-Chancellor (Research) will determine, in consultation with the originator(s), what course of action is then to be followed.
3.8. If it is determined that commercialisation will occur, the University will enter into an agreement with the originator(s) and owners of any other intellectual property involved in the commercialisation setting out, at a minimum:
(i) the ownership of the University IP and any other intellectual property;
(ii) the agreed share of any net returns (being net returns after deduction of all direct University costs in the creation, development and protection of the University IP) from the commercialisation; and
(iii) any other relevant matters.
3.9. The Deputy Vice-Chancellor (Research) may, on written application from the originator(s), waive or reduce all or some of the University direct costs referred to in Clause 3.8, but is not bound to do so.
3.10. In the event of returns from commercialisation, unless a separate agreement has been entered into between the University and the originator(s), the net returns will be apportioned by the University as follows:
First $50,000 of Net Returns
Portion of Net Returns between $50,000 and $100,000
Portion of Net Returns exceeding $100,000
3.11. Where the University receives a share of the returns from commercialisation under Clause 3.10 above, the Deputy Vice-Chancellor (Research) will determine whether that share is to be distributed and, if so, whether the distribution will be
(i) within the University;
(ii) to bodies external to the University; or
(iii) a combination of (i) and (ii) above.
4. Role of TUNRA
4.1. In accordance with the Intellectual Property Policy, TUNRA has the first right of refusal in relation to proposed commercialisation.
4.2. Prior to any disclosure of University IP to TUNRA, a staff member must inform, and obtain the consent of, the Deputy Vice-Chancellor (Research).
4.3. Where TUNRA enters into an agreement with the University under Clause 3.6 to commercialise University IP, the University will require TUNRA to manage the distribution of net returns, maintain records related to the accrual of net returns and advise the University and the originator(s) when a threshold amount is reached and the appropriate change in the proportion of net returns to be distributed pursuant to this procedure.
5. Procedure for Assignment of University IP
5.1. University IP may only be assigned with the written approval of the Deputy Vice-Chancellor (Research).
5.2. Where the University elects to assign University IP to the originator(s) under Clause 3.5, the Deputy Vice-Chancellor (Research) will provide the assignment in writing.
5.3. An originator(s) who wishes to have assigned to them University IP in the form of copyright in course materials or computer works will apply in writing to the Pro Vice-Chancellor of the Faculty or Head of Division, who after consultation with the Head of School or other senior staff, will advise the Deputy Vice-Chancellor (Research). The written application will include an assurance that the intellectual property is the original work of the staff member or student, or if produced jointly, will identify other person(s) involved and their agreement to the request for assignment.
5.4. The Deputy Vice-Chancellor (Research) will determine whether to grant the assignment and what conditions, if any, will apply.
5.5. Where University IP is assigned to a staff member or student, the University reserves the right to require a royalty-free, world-wide licence to the University for use for its purposes and reserves the right to include the licence conditions in any assignment of University IP.
6. Procedure for Bringing Intellectual Property to the University
A staff member or student who brings intellectual property to the University may, on commencement of or at any time during employment or enrolment be required by the Deputy Vice-Chancellor (Research) to provide documentation that includes:
(i) a description of that intellectual property;
(ii) all documents relating to the ownership of that intellectual property, including any contract, agreement, licensing agreement or another institution’s intellectual property policy; and
(iii) written warranties that the use of that intellectual property does not infringe the rights of any third parties.
7. Procedure for Dealing with a Copyright Work when a Staff Member Ceases University Employment
7.1. Where the University owns a copyright work created by a staff member who is about to leave the employment of the University, the staff member will do all things necessary to ensure that the University’s intellectual property in the copyright work is protected, including by ensuring that the copyright work:
(i) remains with the University; and
(ii) is not used by the staff member after leaving the employ of the University, except with the written consent of the University.
7.2. The staff member who is leaving the employment of the University may request a licence of the intellectual property in the copyright work. The University reserves the right to grant a licence on conditions or to not grant a licence if University purposes would be adversely affected.
8. Procedure for Student Participation in University Projects
8.1. Where a student participates in a University project:
(a) the student will be subject to the provisions of the Intellectual Property Policy as if the student is a staff member; and
(b) the University will:
i. enter into an agreement with the student setting out an appropriate entitlement of the student to any net returns of commercialisation;
ii. ensure that the academic progress of the student is not hindered by the provisions of the Intellectual Property Policy;
iii. ensure that the examination of the thesis is not affected by the provisions of the Intellectual Property Policy without the express consent of the student; and
iv. ensure that the student is advised to seek independent legal advice before entering into any agreement concerning intellectual property created by the student in the course of their studies.
8.2. In accordance with Clause 8.1(b)(i), an agreement between the University and a student will address at a minimum: the terms on which access to University IP will be given; intellectual property ownership; confidentiality requirements; terms governing any potential commercialisation; and any requirements concerning intellectual property at the end of the student’s enrolment.
9. Advising Staff Members and Students of Their Rights and Obligations and Protection the Rights of Students
9.1. The University will take all reasonable steps to ensure that the provisions of the Intellectual Property Policy and Procedure are made known to staff members and students, including through:
(i) induction and training programs, educational seminars, enrolment handbooks and other published material for staff members and students and through the University’s web site;
(ii) specific inclusion in supervisor training programs; and
(iii) information sessions for students at the time of application for candidature and enrolment.
9.2. In any dealings involving students and their intellectual property rights, the University will assist students to protect their intellectual property rights by:
(i) ensuring that students are advised to seek independent legal advice before entering into any agreement concerning or assignment of intellectual property rights;
(ii) publishing on the University web site the contact details for a staff member in each Faculty or Division from whom students may seek advice about the operation of the Intellectual Property Policy and Procedure; and
(iii) ensuring that students are informed about their rights and obligations in relation to the Intellectual Property Policy and Procedure and that the information is updated during the course of the enrolment where there are any changes to the Intellectual Property Policy and Procedure.
10. Protection of University IP
10.1. A staff member or student who becomes aware of any unauthorised use of University IP will promptly inform the Deputy Vice-Chancellor (Research).
10.2. A staff member or student who uses University IP contrary to this policy or without proper authorisation may, if the Deputy Vice-Chancellor (Research) determines, be subject to a referral for action under the relevant Workplace Agreement or Student Misconduct Rule.
11. Dispute Resolution
11.1. If there is any dispute on whether intellectual property was created within the course of a staff member’s duties, the staff member will consult the Deputy Vice-Chancellor (Research), who will investigate the matter, either personally or through a delegate of suitable seniority with no prior involvement in the dispute. The Deputy Vice-Chancellor (Research) will provide a determination which will be binding.
11.2. A staff member, student or other person having a dispute with the University arising out of the operation of this policy, other than one covered by Clause 11.1 should consult the University’s Complaints Resolution Policy to determine how the dispute may be resolved.
11.3. The University’s Complaints Manager may be consulted for assistance in relation to any complaint or dispute arising from the operation of this policy.
12. Related Documents
National Principles of Intellectual Property Management for Publicly Funded Research
|Date Approved||31 August 2007|
|Date for Review||31 August 2010|
|Policy Owner||Deputy Vice-Chancellor (Research)|
|Policy Contact||Director, Research Services|
23 August 2011 - Administrative amendments due to implementation of Student Misconduct Rule which replaced Student Discipline Rules effective 25 July 2011.
12 May 2011 - links to new Conflicts of Interest Policy updated
Approved Council 31/8/07.