Policy Directory

STUDENT ASSIGNMENT OF INTELLECTUAL PROPERTY (IP) GUIDELINES

Date first approved:

23 June 2006

Date of effect:

23 June 2006

Date last amended:

(refer to Version Control Table) 22 August 2017

Date of Next Review:

Currently under review

First Approved by:

University Council

Custodian title & e-mail address:

Deputy Vice-Chancellor (Research and Innovation)

Judy_Raper@uow.edu.au

Author:

Senior Manager, Innovation and Commercial Research

Responsible Division & Unit:

Innovation and Commercial Research,

Research and Innovation Division (RaID)

Supporting documents, procedures & forms of this policy:

Intellectual Property (IP) Commercialisation Revenue Guidelines

Intellectual Property (IP) Commercialisation Revenue Policy

Intellectual Property (IP) Policy

Student Assignment of Intellectual Property (IP) Guidelines

Relevant Legislation &

External Documents:

Convention Establishing the World Intellectual Property Organisation, July 1976

Copyright Act 1968 (Commonwealth)

Designs Act, 2003 (Commonwealth)

National Principles of Intellectual Property Management

Patents Act 1990 (Commonwealth)

University of Wollongong Act 1989

Audience:

Public

Submit your feedback on this policy document using the Policy Feedback Facility.

Contents

1 Purpose of Policy

  • 1. These guidelines explain the background and purpose of the provisions in UOW’s Student Assignment of Intellectual Property (IP) Policy.
  • 2. One of UOW’s core roles is to provide research opportunities for Students. UOW undertakes this role by accepting and encouraging Students to participate in research projects undertaken at UOW. Students should read UOW’s Intellectual Property (IP) Policy for UOW’s position on Student IP ownership.

2 Definitions

  • 1. References to the singular include the plural and references to the plural include the singular

Word/Term

Definition (with examples if required)

Commercialise or Commercialisation

The process or activity of introducing novel products, process, or services into the market. An economic or societal gain is expected from the commercialisation of UOW generated IP. The activity will require a substantial investment of time and resources.

Commercialisation Expectation

Where UOW has an expectation that it will manage Commercialisation of the IP.

Creators

Persons who produce, invent, design, enhance, generate, discover, make, originate or otherwise bring into existence IP.

Intellectual Property (IP)

Any original product of the creator’s mind or intellect, commonly developed through research or creative efforts (e.g. inventions; literary and artistic works; designs; and symbols, names and images used in commerce) as defined by Article 2 of the Convention Establishing the World Intellectual Property Organisation, July 1967.

Student

    A person registered for a course at the University of Wollongong.

Visiting Student

A student who undertakes part of their research or training at UOW but who is not registered at UOW.

UOW

The University of Wollongong.

3 Participation of Students in Research

  • 1. Categories of Student Participation
    • 1.1 Two different categories of cases need to be considered in the context of Students participating in research and IP ownership:
        • 1.1.1 where the Student is undertaking research which:
          • a. is not subject to contractual obligations upon UOW, and/or
          • b. is not likely to lead to IP with commercial potential, and/or
          • c. is not reliant upon pre-existing IP owned or licensed by UOW where UOW would want to maintain ownership of any improvements made to the pre-existing IP, and/or
          • d. may have commercial potential but UOW has no Commercialisation Expectation (e.g. a creative work written or crafted solely by one Student as part of their course).
        • 1.1.2 where the Student is undertaking research that:
          • a. is subject to contractual obligations upon UOW, and/or
          • b. has a Commercialisation Expectation, and/or
          • c. is reliant upon pre-existing IP owned or licensed by UOW and UOW wishes to maintain ownership of any improvements to its pre-existing IP.
    • 1.2 The implications in these two cases are different.
  • 2. Category 1: there are no contractual obligations, nor Commercialisation Expectations, nor reliance upon pre-existing IP owned or licensed by UOW.
    • 2.1 In this case if a Student creates or contributes to creating IP either the Student will solely own the IP, or the IP will be owned jointly by the Student and UOW.
    • 2.2 Joint ownership may arise because:
        • 2.2.1 the Student is a member of a research team made up of both staff and Students; or
        • 2.2.2 the research undertaken by the Student is supervised by a member of staff, and inventive contributions, to some extent, are made by the supervisor (or other UOW staff); or
        • 2.2.3 the project that the Student is working on has been funded by UOW or has received funding obtained by UOW; or
        • 2.2.4 the Student has made significant use of UOW resources to develop the IP.
    • 2.3 The fragmentation of ownership of IP jointly in this way impedes the Commercialisation of the IP generated, for the reasons described below. However, since there are no contractual obligations in relation to that research, and there are no Commercialisation Expectations, the Student may participate in the research, without a Deed of Assignment being needed by UOW.
  • 3. Category 2: there are contractual obligations or Commercialisation Expectations or reliance upon pre-existing IP licensed or owned by UOW
    • 3.1 In this case, UOW:
        • 3.1.1 has contractual obligations in relation to the research; and/or
        • 3.1.2 has Commercialisation Expectations in relation to the research; and/or
        • 3.1.3 wants to maintain ownership of any improvements to pre-existing IP.
    • 3.2 Accordingly, there is a need to ensure that the relationship with the Student is such that the Commercialisation Expectation can be achieved, and that the contractual and commercial obligations can be discharged, and UOW is able to protect and own any improvements to its own IP.
    • 3.3 UOW may sign a contract that grants a licence to exploit the IP to a third party (eg. industry partner, client or other research institution). In that case, UOW will have contractual obligations to that third party. Those contractual obligations usually relate to:
        • 3.3.1 obligations of confidentiality by members of the research team; or
        • 3.3.2 the third party having access to the IP that is generated by the research team.
    • 3.4 Given those contractual obligations upon UOW, the participation of Students in the research needs to be carefully managed. It is essential, for the reason s described below, that the Deed of Assignment be signed and that the Student Package be provided to the Student.
    • 3.5 Alternatively, a Student may choose not to assign IP to UOW. If a Student makes this choice:
        • 3.5.1 the Student, in conjunction with the Student ’s supervisor, will attempt to develop an alternative research program that does not have a Commercialisation Expectation and is not subject to contractual obligations to third parties and is not reliant upon pre- existing IP owned or licensed by UOW (where UOW requires ownership of improvements to the pre-existing IP); and
        • 3.5.2 the Student must be excluded from the research that has a Commercialisation Expectation or which is subject to contractual obligations or is reliant upon pre-existing IP owned or licensed by UOW.
  • 4. Category 1 evolves into Category 2
    • 4.1 It may be that a project is initially identified as being in Category 1. However, the project may evolve into a Category 2 project.
    • 4.2 In this case, because the project commenced as a Category 1 project, no assignment of the IP by the Student took place at the outset. However, if the project evolves so that:
        • 4.2.1 contractual obligations are to be created, or
        • 4.2.2 Commercialisation Expectations arise, or
        • 4.2.3 the project does require access to pre-existing IP owned or licensed by UOW and UOW wishes to maintain ownership of any improvements to that IP,
        • then as soon as that is identified to be the case, the Student should be asked to assign their IP.
    • 4.3 It will be the responsibility of the Student’s supervisor to notify the relevant Faculty Commercialisation Manager (CM) that a change in circumstances is to occur or has occurred. The CM will then prepare and negotiate the relevant agreements with the Student and, where relevant, any third parties. In the case of contractual obligations being created, supervisors should inform the CM that it is intended that a Student will be working on the project. Supervisors should ensure that Students do not access third party IP (including confidential information) until/unless the CM has negotiated an IP Assignment Deed and/or Confidentiality Agreement with the Student and it has been signed by both UOW and the Student.
    • 4.4 A Student may choose not to assign their IP to UOW. However, where that choice is made, for the reasons described below:
        • 4.4.1 this may preclude contractual obligations being created, and this may prevent contract funding of the research, or
        • 4.4.2 this may preclude Commercialisation, and this also is not in the interests of the project, the Student, or UOW, or
        • 4.4.3 UOW may not be able to grant the Student access to pre-existing IP.

4 Effect of student ownership of Intellectual Property

  • 1. Students are not employees
    • 1.1 The law is that an employer is the owner of the IP made by its employees. A Student is not an employee of UOW. This means that when a Student generates IP at UOW, or contributes to IP at UOW, that Student will either solely own that IP, or jointly own it with UOW. This will be the case, unless a Student assigns the IP to UOW. The effect of Student ownership of IP is assessed below.
  • 2. Effect upon Commercialisation
    • 2.1 To successfully commercialise research outcomes, UOW needs to have ownership of IP. This is also necessary to enable UOW to deal with potential licensees, venture capitalists, and joint venturers.
    • 2.2 For example, a Student might solely own a software program, and that software program may be a component of a device that UOW seeks to Commercialise. Because of the Student’s sole ownership of that software program, Commercialisation by UOW of that device is impeded.
    • 2.3 When an invention is made jointly by a Student and a member of UOW staff, ownership will be joint, as between the Student and UOW. For example:
        • 2.3.1 where there is a jointly owned patent, UOW cannot license or assign the patent without the prior written consent of the Student (section 16 of the Patents Act 1990 (Commonwealth));
        • 2.3.2 where there is jointly owned copyright, such as a computer program, the rights of the copyright owners must be exercised jointly, and this prevents UOW from proceeding to Commercialise; and
        • 2.3.3 where there is a patent application (which at this stage is only confidential information), equitable duties upon the Creators of that confidential information prevent UOW from proceeding to Commercialise.
    • 2.4 A Student with an ownership interest in IP could therefore:
        • 2.4.1 veto Commercialisation; or
        • 2.4.2 veto the terms of Commercialisation; or
        • 2.4.3 seek to participate in Commercialisation negotiations as an independent party.
    • 2.5 Thus, fragmentation of ownership of IP, and its impact upon the Commercialisation process hinders and impedes the Commercialisation process.
  • 3. Ownership proportions
    • 3.1 Where IP is jointly owned by Students and UOW, that ownership is usually in equal shares. There is no law which determines the fractional ownership of IP when IP is jointly owned. The Pa tent Commissioner has in many cases repeatedly declined, in the case of patents, to determine ownership proportions between joint owners. The Patent Commissioner has also repeatedly held that where a patent is jointly owned, it is owned by all the owners i n equal proportions, if they cannot otherwise agree. This can have inequitable consequences upon the owners.
    • 3.2 For example, suppose:
        • 3.2.1 there is a research team made up of 6 people;
        • 3.2.2 one is a Student (A) who makes a 5% inventive contribution;
        • 3.2.3 another is a Student (B) who makes a 10% inventive contribution; and
        • 3.2.4 the remaining four are staff who between them make an 85% inventive contribution.
    • 3.3 The result is the following comparative ownership proportions and inventive contributions:

      Owner

      Inventive Contribution

      Ownership Proportion

      A

      5%

      33.3%

      B

      10%

      33.3%

      UOW

      85%

      33.3%

    • 3.4 The result therefore is that while UOW made an 85% inventive contribution, it owns only one third of the IP. This result is inequitable upon UOW and hence UOW would seek to obtain the inventors’ agreement on more equitable ownership proportions.
  • 4. Working with industry and investors
    • 4.1 A Student solely owning a component of IP or there being joint ownership between UOW and a Student, also impedes UOW’s ability to enter into agreements with potential licensees, collaborators, and investors such as venture capitalists.
    • 4.2 A potential licensee or collaborator will not expend considerable financial resources unless there is a clear, unencumbered and unfragmented title to IP. A venture capitalist in particular, when considering making a venture capital investment in a start up company, will invariably undertake a very rigorous due diligence on IP ownership. Most well informed licensees will also undertake a due diligence on ownership of IP in the course of considering the licensing opportunity.
    • 4.3 If UOW does not solely own all IP, such as where it is partly owned by Students, this will result in due diligence raising defects in title. This causes delay in a proposed transaction and can create unnecessary confusion. Due diligence defects such as fragmented ownership may cause a potential licensee, collaborator, or investor to be disinclined to proceed. The prospect of a licensee or investor having to negotiate with a Student may also cause a potential licensee, collaborator, or investor to be disinclined to proceed.
  • 5. Exposure to legal liabilities
    • 5.1 A licence or assignment invariably contains warranties, or promises, that UOW owns the IP that is being licensed or assigned.
    • 5.2 Consider the case where the IP is in fact owned w holly by another person, or partly owned by UOW and partly by another person, this can expose UOW to have to pay damages. UOW in fact had no title, or did not have the whole of the title, and therefore had no capacity to license or assign at all. This could lead to a breach of those warranties or promises regarding IP ownership. UOW can therefore have an exposure to legal liabilities if it does not wholly own the IP that is the subject of contractual obligations.
  • 6. Conclusion
    • 6.1 To remove these barriers to Commercialisation it is better that UOW owns the whole of the IP generated at UOW where it has a Commercialisation Expectation, on an unencumbered and unfragmented basis. In order for UOW to achieve unfragmented ownership, Students will be asked to assign to UOW their interest in IP that they develop at UOW. This is achieved by a Deed of Assignment.

5 Assignment of Intellectual Property by Students

  • 1. What is a Deed of Assignment
    • 1.1 A Deed of Assignment is a document by which IP is assigned, or transferred, from one person to another. A Deed of Assignment prevents the fragmentation of ownership of IP, and this in turn avoids the impediments to Commercialisation described above. The effect of a Deed of Assignment signed by a Student in favour of UOW is that UOW will own the whole of the IP in a project.
  • 2. Staff Deed of Assignment
    • 2.1 While a Deed of Assignment signed by an employee to an employer is a very straightforward document, this is not the case in relation to Students.
    • 2.2 A staff Deed of Assignment is straightforward because the Deed of Assignment does nothing other than record in writing what the law is anyway, namely that an employer owns the IP created by its employees in the course of their employment. A staff Deed of Assignment therefore does not transfer or convey title and ownership to IP, since as a matter of law, the employer already owns the IP. A staff Deed of Assignment only records what the legal effect of the employee/employer relationship is.
  • 3. Student Deed Assignment
    • 3.1 Unlike a staff Deed of Assignment, a Student Deed of Assignment does transfer or convey title and ownership in IP to UOW. It is a contract, as well as being a document of transfer of title in IP.
  • 4. The law of unconscionable transactions
    • 4.1 Because a Deed of Assignment signed by a Student actually transfers title in IP, the effect of the law in relation to unconscionable transactions needs to be considered. Section 51AB of the Trade Practices Act, 1974 (Commonwealth) provides, in part:
        • 4.1.1 A corporation shall not, in trade or commerce, in connection with the supply or possible supply of goods or services to a person, engage in conduct that is, in all the circumstances, unconscionable.
        • 4.1.2 Without in any way limiting the matters to which the Court may have regard for the purpose of determining whether a corporation has contravened subsection (1) the Court may have regard to the relative strengths of the bargaining positions of the corporation and the consumer.
    • 4.2 There are also common law principles in relation to duress and undue influence which operate in a similar way to the law of unconscionable transactions. If a court holds that there is an unconscionable transaction, the Court can declare the document void, meaning that the document has no legal effect.
  • 5. Can a Student Deed of Assignment be an unconscionable transaction?
    • 5.1 A Deed of Assignment signed by a Student may be an unconscionable transaction. This is because it divests a Student of ownership of something which may be valuable, without the Student being equitably compensated.
    • 5.2 The relative bargaining positions between the Student and UOW is such that the Student probably has a limited bargaining position. There is therefore a possibility that a Deed of Assignment that is signed by a Student, where it does not provide some form of compensation, would be declared void.

6 Requirements for a Student Deed of Assignment

  • 1. Reducing the Risk of unconscionability
    • 1.1 However, a Deed of Assignment can be prepared for signing by a Student, in a way that reduces the risk of it being declared void. To reduce this risk, it is important that:
        • 1.1.1 the terms of the Deed of Assignment are commercial and equitable;
        • 1.2.1 the Student must be free to decline to sign a Student Deed of Assignment; and
        • 1.2.3 the Student obtains independent legal advice in relation to the Deed of Assignment.
  • 2. Equitable financial terms
    • 2.1 If a Deed of Assignment is not upon equitable terms it risks being declared void. The most important aspect of making a Deed of Assignment upon equitable terms, is that a Student be equitably compensated for the assignment of the IP. This is achieved by Students sharing in Commercialisation Revenues from the Commercialisation of IP, in the same way that UOW’s staff share in that Commercialisation revenue.
    • 2.2 All Australian universities have a commercialisation revenue sharing policy which, broadly, confers upon the creators of IP, who are usually staff, an expectation of receiving a share of Commercialisation Revenue from the successful Commercialisation of the IP that they generate. Some Cooperative Research Centres also have these policies. Research institutes generally have such policies, as does UOW.
    • 2.3 If Students are made beneficiaries of this policy, along with all other inventors, they are compensated for their assignment of their IP, and therefore those terms can be regarded as equitable terms.
  • 3. Other equitable terms
    • 3.1 Other equitable terms which must also be included in a Deed of Assignment are:
        • 3.1.1 obligations of confidentiality upon the Student;
        • 3.1.2 a Student’s ability to publish in a managed way;
        • 3.1.3 a Student’s ability to submit a thesis for examination, without this being impeded; and
        • 3.1.4 a Student retaining ownership of copyright in a thesis or publications.
  • 4. Copyright in a thesis and publication
    • 4.1 Although a Student assigns IP to UOW, a Deed of Assignment must provide for a Student to retain copyright in a thesis or publication. This is necessary, as publishers of academic papers may require an assignment or license to them of the copyright in the paper. A Student therefore needs to retain copyright to have the capacity to assign copyright to such a publisher.
    • 4.2 UOW may need to reproduce parts of a thesis or paper in, for example, a patent application. A Deed of Assignment can therefore provide for the Student to grant to UOW a copyright licence for this purpose.
    • 4.3 UOW’s Intellectual Property (IP) Policy details Student ownership of various forms of IP.
  • 5. Confidentiality
    • 5.1 While at UOW, Students will become aware of commercially valuable information. Employees are already subject to obligations of confidentiality as part of their general employment obligations.
    • 5.2 As Students are not employees, employment obligations of confidentiality do not apply. However, confidentiality must be maintained by Students to ensure that:
        • 5.2.1 legal liabilities are not imposed upon UOW if a Student makes a disclosure of commercially valuable information, and
        • 5.2.2 the patenting of new inventions is not prejudiced by confidential information prematurely entering the public domain.
    • 5.3 Accordingly, a Deed of Assignment must require a Student to keep confidential information secret and confidential.
  • 6. No impediment to examination of thesis
    • 6.1 However, if the obligation of confidentiality is unqualified, this could have an adverse effect upon a Student who needs to submit a thesis to fulfil requirements for a degree.
    • 6.2 Ordinarily the submission of a thesis, by allowing it to be read by examiners who are not subject to any obligation of confidentiality, and in due course, the deposit of a thesis in a university library, will put the thesis into the public domain. This could expose UOW to legal liabilities, as well as prejudice patenting.
    • 6.3 While UOW has as one of its objectives that its research outcomes be Commercialised and realise Commercial income, this is not at the expense of Students being unable to meet, or being impeded in meeting, requirements for the award of a degree, and not at the expense of delaying the submission of a thesis.
    • 6.4 If a thesis will not contain any Confidential Information, and not refer to any IP in which UOW has an interest, the thesis and degree requirements will not be affected by the Deed of Assignment. However, if a Student would like to include confidential information or IP in their thesis, the Student must obtain UOW’s permission to do so. The Deed of Assignment requires the Student to notify UOW at least four months before the likely date of submission of a thesis.
    • 6.5 There are a number of things that UOW can do to ensure that the thesis will be submitted in a timely way, with the thesis including the confidential information or IP that the Student seeks to include without impeding the Student’s degree requirements, and at the same time protecting UOW’s Commercialisation objective. These include:
        • 6.5.1 having thesis examiners sign confidentiality agreements prior to their examination of the thesis, which ensures that the thesis is examined, without its contents entering the public domain and adversely affecting subsequent patent applications and Commercialisation; and
        • 6.5.2 ensuring that a thesis will not be deposited into a publicly accessible section of the library or other publicly accessible area, until after its contents are protected by a patent.
    • 6.6 UOW is committed to ensuring that a Student is not prejudiced in fulfilling requirements for a degree because of confidentiality obligations.
  • 7. Publications by Students
    • 7.1 UOW encourages Students to publish as this enhances their academic standing and that of UOW. There is never a case of a Student not being permitted to publish because of IP protection or Commercialisation issues. Rather, UOW may change the timing of publication, and the contents of a publication, to ensure that the publication objective is achieved as well as the Commercialisation objective, without either hindering the other.
    • 7.2 UOW may lodge patent applications to protect something that may be included in a publication or UOW may obtain advice from a patent attorney in relation to the contents of a publication.
  • 8. Students Obtaining Independent Legal Advice
    • 8.1 Due to the nature of a Deed of Assignment provided by a Student, it is vital that the Student has the benefit of independent legal advice. In the absence of that independent legal advice, a Deed of Assignment, if signed by a Student, may be defective, and could be declared void. If that occurs, this could have adverse consequences upon UOW.
    • 8.2 UOW may for example license IP that a Student developed on the basis that it has clear title to that IP. If a Deed of Assignment provided by a Student is subsequently set aside as void by a Court, UOW no longer has that clear title, and will be in breach of its express or implied warranties that it gave to a client or industry partner that it did have title. This will expose UOW to legal liabilities. A Deed of Assignment signed by a Student who has not been advised by an independent legal adviser therefore exposes UOW to risks and legal liabilities, and is therefore not ideal.
  • 9. Certificate by Independent Legal Adviser
    • 9.1 The independent legal adviser engaged by a Student must sign a certificate of having given independent legal advice, and this certificate must form part of the Deed of Assignment.
  • 10. Where should Students seek Independent Legal Advice
    • 10.1 UOW cannot direct Students to any particular legal adviser. This might affect the legal adviser’s independence, or the perception of the legal adviser’s independence, with the possible consequence, again, that the Deed of Assignment is set aside and declared void. The Student must choose their own legal adviser.
    • 10.2 Acknowledging the burden of legal fees, which some Students may not be able to afford, UOW needs to consider contributing to a Student’s legal expenses for obtaining this independent advice. The benefit to UOW is that there is independent legal advice, and a certificate signed by an independent legal adviser, and as a result, the greater confidence that the Deed of Assignment will be unlikely to be set aside as void.
    • 10.3 UOW may consider contributing up to $250.00 towards legal fees. Students will be provided a Request for Reimbursement in the Student Package that UOW will provide them when they are being asked to assign their IP to UOW. If legal fees exceed this amount, the University will still only pay up to $250.00. However, the Deputy Vice-Chancellor (Research and Innovation) has a discretion about the amount of legal fees that UOW may be prepared to contribute, and may agree that a larger amount be contributed towards legal fees, in exceptional circumstances.
  • 11. Is independent legal advice necessary where there is income sharing?
    • 11.1 Consider the following example:
        • 11.1.1 a Student makes a 20% contribution to an invention;
        • 11.1.2 UOW staff make the remaining 80% contribution;
        • 11.1.3 if the assignment by the Student is set aside and declared void, that Student will be an equal joint owner who is entitled to 50% of commercialisation revenues;
        • 11.1.4 if the Student does assign, the Student will be entitled to a share of commercialisation income in accordance with UOW’s policies. This might be an entitlement to share in the Creator’s one half of revenues;
        • 11.1.5 if the assignment by the Student is valid, the Student is entitled to 20% of this one half– approximately 10%; and
        • 11.1.6 if the assignment by the Student is void, the Student is entitled to 50%.
    • 11.2 Clearly, in this scenario, it would be inequitable upon UOW, and inequitable upon UOW’s staff, for the Student to receive a disproportionately high share of revenue and in such a case UO W would be unlikely to take on the responsibility of Commercialisation. Such a scenario makes it essential that there is confidence that the Deed of Assignment is unlikely to be set aside. Independent legal advice is the critical element that provides that confidence.
  • 12. Student free to choose not to Assign
    • 12.1 For the reasons described in these Guidelines, UOW must adopt a policy that requires, in instances that Students that seek to participate in Category 2 projects, that:
        • 12.1.1 the Student must be asked to assign their IP to UOW;
        • 12.1.2 prior to assignment, the Student must be advised by an independent legal adviser; and
        • 12.1.3 the independent legal adviser must sign a Certificate by Independent Legal Adviser.
    • 12.2 UOW cannot require that the Student assign their IP but if these requirements are not met, UOW regrets that:
        • 12.2.1 the potential for it to be exposed to unacceptable legal liabilities, and
        • 12.2.2 the adverse impact upon UOW’s commercialisation objectives
        • makes it necessary for UOW to decline to accept the Student as a participant in a Category 2 project.
    • 12.3 A Student may choose not to assign IP to UOW. If a Student makes this choice the Student, in conjunction with the Student’s supervisor, will attempt to develop an alternative research program that does not have a Commercialisation Expectation, is not subject to a research contract, and is not reliant upon pre-existing IP owned or licensed by UOW (where UOW would want to retain ownership of any improvements to that pre-existing IP).

7 Determination Whether Student is in Category 1 or 2

  • 1. Whether particular research projects are a Category 1 or Category 2 project should easily be recognised. If UOW has a Commercialisation Expectation or wants to protect its own pre-existing IP or there is a contract that affects the Student project with regard to IP or Confidentiality, it is a Category 2 project, and a Deed of Assignment needs to be obtained. Examples of a contract that may affect a Student project include a research agreement, a scholarship funding agreement, a licence, a collaborative agreement, a funding agreement, or agreements for a start up company or new venture. The determination on any occasion whether a project is a Category 1 project or a Category 2 project, will be made by the relevant CM in consultation with the Student and the Student’s Supervisor(s).

8 Outline of Deed of Assignment

  • 1. Clause 1 of the Deed defines a number of terms employed in the Deed.
  • 2. Clause 2 states that the Student will participate in the project.
  • 3. Clause 3 of the Deed records UOW’s commercialisation objective. Clause 3 of the Deed also states that the Student must inform UOW when the Student becomes aware of any IP that is developed.
  • 4. Clause 4 of the Deed provides that the Student transfers to UOW any IP that the Student generates in the course of the project at UOW. This is with the exception of copyright in a Publication or Thesis authored solely by the Student, the ownership of which the Student retains. However, the Student agrees to allow UOW to reproduce such a Thesis or Publication for the purpose of assisting UOW in patent applications. Clause 4 of the Deed also records that the Student agrees to sign any other document that may be required in the future to record UOW’s ownership of any IP.
  • 5. Clause 5 states that UOW will apply its policies relating to the sharing of commercialisation revenue from IP, as operating from time to time, in favour of those persons who are inventors in relation to the IP who are members of staff and/or Students at the time of invention.
  • 6. Clause 6 requires the Student to maintain confidentiality about the Confidential Information and the IP.
  • 7. Clause 7 describes the duration of the Student’s obligation of confidentiality.
  • 8. Clause 8 deals with a Thesis, and effectively guarantees that there will be no impediment, due to commercialisation processes, to the examination of a Student’s thesis.
  • 9. Clause 9 records that UOW is committed to ensuring that Students can publish, including, when appropriate, by filing a patent application.
  • 10. Clause 10 records certain warranties, or promises, that the Student makes to UOW, to the effect that the Student has not signed any other document of the type described in the clause.
  • 11. Clause 11 records that the applicable law governing the deed is New South Wales.
  • 12. The Deed also contains the Certificate by Independent Legal Adviser that must be completed and signed.
  • 13. The Deed also contains a Goods and Services Tax Statement by Supplier. Where a taxable supply is made the supplier must remit goods and services tax to the Australian Taxation Office. An assignment of IP is a taxable supply, and ordinarily, goods and services tax must be remitted to the Australian Taxation Office by the supplier, namely the assignor, of the IP, which in this case is the Student. However, a Student does not carry on an “enterprise”, that is, does not carry on business, and accordingly, is not required to remit goods and services tax to the Australian Taxation Office.
    • By providing a Statement by Supplier, the Student confirms that the Student does not carry on an enterprise, that is, does not carry on a business. The Student providing the Statement by Supplier to UOW is necessary so that there is no obligation upon UOW to deduct and pay withholding tax upon any share of commercialisation revenues that UOW pays to the Student. If UOW had to pay this withholding tax of 48.5%, this would have to be deducted from monies otherwise payable to the Student by UOW.

9 Roles & Responsibilities

  • 1. It is the responsibility of the CMs, Innovation and Commercialisation and the Graduate Research School to ensure that the principles in this policy are abided when asking a Student to assign their IP to UOW.
  • 2. It is the responsibility of students to ensure they obtain independent legal advice before assigning their IP to UOW.

10 Version Control and Change History

Version Control

Date Effective

Approved By

Amendment

1

23 June 2006

University Council

New Policy

2

6 May 2009

Vice-Principal (Administration)

Migrated to UOW Policy Template as per Policy Directory Refresh

3

9 March 2010

Vice-Principal (Administration)

Future review date identified in accordance with Standard on UOW Policy

4

18 August 2010

N/A

Policy Custodian position title and email address changed to reflect new role

5

16 January 2012

Deputy Vice-Chancellor (Research)

Updated to reflect name change from Commercial Research Unit to Innovation and Commercial Research

6

22 August 2017

Deputy Vice-Chancellor (Research & Innovation)

Updated to reflect UOW Policy Template, UOW definitions, Division titles and supporting documents with links.

Schedule – Student Assignment of IP Package

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