Policy Directory

IP INTELLECTUAL PROPERTY POLICY

Date approved:

23 June 2006

Date Policy will take effect:

23 June 2006

Date of Next Review:

January 2014

Approved by:

University Council

Custodian title & e-mail address:

Senior Manager, Commercial Research & Commercialisation

icr-enquiry@uow.eu.au

Author:

Dr Troy Coyle

Responsible Faculty/
Division & Unit:

Innovation & Commercial Research

Supporting documents, procedures & forms of this policy:

IP Intellectual Property Guidelines
IP Notification Form
(Attachment 1 of the Intellectual Property Guidelines)
IP Disclosure Form

Disclosure Review Guidelines

Proposal to IP Review Committee Form

IP Review Committee Guidelines

Open Access IP Guidelines

IP Commercialisation Revenue Policy

IP Commercialisation Revenue Guidelines

IP Commercialisation Plan Guidelines

IP Commercialisation Report Guidelines

IP Student Assignment of IP Policy

IP Student Assignment of IP Guidelines

References & Legislation:

Copyright Policy
Grievance Policy

Records Management Policy

Patents Act, 1990 (Commonwealth)

Copyright Act 1968 (Commonwealth)

Trade Marks Act, 1995 (Commonwealth)

Designs Act, 2003 (Commonwealth)

Plant Breeder’s Rights Act 1994 (Commonwealth)

Circuit Layouts Act 1989 (Commonwealth)

National Principles of Intellectual Property Management

AV-CC Ownership of Intellectual Property in Universities
Uniquest/UOW Transitional Agreement

Audience:

Public – accessible to anyone

Expiry Date of Policy:

Not applicable

    • Contents

1 Purpose of Policy 3

2 Definitions 3

3 Application & Scope 5

4 Ownership of Intellectual Property (Other than Teaching Material, Creative Material and Scholarly Material) 6

5 Ownership of Copyright in Teaching Material 6

6 Ownership of Copyright in Commissioned Works 6

7 Ownership of Administration or Course Material 6

8 Ownership of Creative Material and Copyright in Scholarly Material 6

9 Moral Rights 7

10 Assignment of Intellectual Property 7

11 Notification of Intellectual Property 7

12 Commercialisation of Intellectual Property 7

13 Sharing the Financial Benefits of Commercialisation 8

14 Dispute Resolution 8

15 Communication 9

16 Roles & Responsibilities 9

17 Version Control and Change History 9

    1 Purpose of Policy

    • This policy applies to all Staff Members and Students (undergraduate and postgraduate) of the University of Wollongong (UOW). It may also apply to other persons by agreement. This policy provides guidance on the approach taken by UOW in relation to Intellectual Property (IP), including its ownership, protection and exploitation. It is also intended that this policy will guide UOW’s interactions with research collaborators, such as funding bodies, other research institutions and industry partners.
    • This policy is consistent with the National Principles of Intellectual Property Management for Publicly Funded Research and has been guided by the Australian Vice-Chancellors’ Committee publication “AV-CC Ownership of Intellectual Property in Universities”. A set of explanatory Guidelines accompanies this policy.
    • This policy, along with the Commercialisation Revenue Policy, Student Assignment of Intellectual Property Policy and Fellow, Volunteer and Visiting Student Assignment of IP Policy, form UOW’s intellectual property framework.

    2 Definitions

    • 1. In this Policy, the following definitions are used. References to the singular include the plural and references to the plural include the singular.

Word/Term

Definition (with examples if required)

 

Administration or Course Material

Any material documentation, process or software in any format that has been developed for the purposes of UOW administration, performance evaluation, marketing, and legal services, including but not limited to:

          • policies, procedures, guidelines business plans, contracts, funding applications, reports, promotional brochures, business processes or (such as e-learning platforms),
          • subject outlines or course outlines relating to approved courses and subjects
          • course handouts and examination documents,
          • material, documentation, processes or software created by general staff in the course of their employment
          • but does not include Creative Material, Scholarly Material or Teaching Material.

Commercialise or Commercialisation

To use, apply, publish, manufacture, assign, licence, sub-licence, franchise, exploit, market, or otherwise use or dispose of the IP for the purpose of generating financial or other commercial returns.

Commercialisation Expectation

Where UOW has an expectation that it will manage Commercialisation of the IP. UOW will not have an expectation to commercialise IP that is solely developed by a Student and is not subject to a contract with an external organisation and does not form part of a larger project where UOW does have a Commercialisation Expectation and does not involve pre-existing IP owned or licensed to UOW.

Commissioned Work

A work in which Copyright subsists that UOW specifically engages a Staff Member to create outside the scope of the employee’s duties and such an engagement is called a commissioned work.

Copyright

Copyright has the meaning ascribed to that term in the Copyright Act, 1968 as amended by the Copyright Amendment (Moral Rights) Act, 2000.

Creators

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

Creative Material

Includes paintings, sculptures, manuscripts, prose works (fiction and non-fiction), poetry, music, production, performances, oral work, Australian Indigenous beliefs or other creative works in whatever format, or combinations thereof but does not include Administration or Course Material, Scholarly Material or Teaching Material.

Education Purposes

For the purposes of teaching and does not mean for the purposes of Commercialisation.

Exceptional Use of UOW Resources

Resources of UOW which include laboratories, funds, services, equipment, computer laboratories, media equipment, consumables, chemicals, staff time and support staff in excess of those normally used or available to Students. A Student could expect to normally have access to a computer for word-processing purposes and access to UOW’s library.

IP

Intellectual property, which includes rights (including rights of registration or application for registration) relating to:

          • literary, artistic, musical and scientific works;
          • computer programs and algorithms;
          • multimedia subject matter;
          • performances of performing artists, phonograms and broadcasts;
          • inventions in all fields of human endeavour;
          • scientific discoveries;
          • industrial designs;
          • trade secrets and confidential information;
          • trademarks, service marks and commercial names and designations;
          • plant varieties;
          • patents; and
          • circuit layouts
          • but does not include any Moral Rights.

Moral Rights

Moral rights has the meaning ascribed to that term in the Copyright Act, 1968 as amended by the Copyright Amendment (Moral Rights) Act 2000 and recognises three types of moral rights:

an author’s right to be identified as the author of a work;

the right of an author to take action against false attribution; and

an author’s right to object to derogatory treatment of her or his work that prejudicially affects their honour or reputation.

Research Purposes

Use in research and does not include use for Commercialisation.

Scholarly Material

Includes any article, book, thesis, manual and any digital or electronic version of these that contains material written by Staff Members or Students based on their scholarship, learning or research, but does not include work that is a computer program, Administration or Course Material, Teaching Material or Creative Material.

Staff Member

All persons appointed to the academic or general staff of UOW, whether they hold full-time, part-time, casual or conjoint appointments.

Student

means a person:

(i) who has been accepted for admission to or enrolled in any course or program offered at, or in conjunction with, the University of Wollongong or the UOW College; or
(ii) whose body of work, completed while so enrolled (e.g. a research thesis), is still under examination.

Teaching Material

All works in which copyright subsists which are used by a Staff Member for teaching purposes and includes all information, documents, materials or digital items in any form created or used for the purposes of teaching and education at UOW that are used to supplement Administration or Course Material. This includes but is not limited to lecture notes that are made available to Students, computer-generated or overhead projector presentations (such as PowerPoint presentations), assignments, tutorial problems and solutions, photographs, images, sound recordings, video recordings, musical scores, and the related content made available in subject or course websites or learning platforms, but does not include Administration or Course Material, Creative Material or Scholarly Material.

UOW

The University of Wollongong.

    3 Application & Scope

    • 1. UOW’s vision is “to advance our international reputation as an outstanding research and teaching University distinguished by excellence, leadership and innovation in the quality of our research, in Student learning and achievement, and in engagement with our communities.”
    • 2. In accordance with UOW’s vision, IP developed by UOW researchers should benefit:
        • the wider community, in terms of technology transfer and engagement;
        • UOW itself, in terms of its own reputation (distinguishing UOW through innovation and excellence in research outcomes);
        • individual researchers, including Students, in terms of career advancement and achievement; and
        • all three of the above, through potential financial returns from Commercialisation of IP.
    • 3. Since UOW provides an environment that:
          • a. encourages researchers to develop innovative ideas, and
          • b. supports Commercialisation of these ideas,
    • UOW wishes to share in the benefits arising from Commercialisation of IP developed by UOW researchers.
    • UOW’s share in any financial gains from research Commercialisation will be re-invested in future generations of UOW researchers. This policy is intended to provide a personal incentive and reward for UOW researchers who have developed IP with commercial value. This policy also addresses IP that may have reputational or other value, rather than commercial value.

    4 Ownership of Intellectual Property (Other than Teaching Material, Creative Material and Scholarly Material)

    • 1. The law is that an employer owns the IP created by an employee in their course of employment. Therefore, in the absence of any agreement to the contrary signed by an authorised delegate of UOW, UOW will own any IP created by Staff Members in their course of employment at UOW (other than Teaching Material, Creative Material and Scholarly Material, which are dealt with separately in this policy).
    • 2. UOW will ask Students to assign their IP to UOW, in the circumstances outlined in UOW’s Student Assignment of Intellectual Property Policy.
    • 3. Creators will have the right to use the IP for Research Purposes.

    5 Ownership of Copyright in Teaching Material

    • 1. In the absence of any agreement to the contrary signed by the Creator and an authorised delegate of UOW, the Creator will own the Copyright subsisting in their Teaching Material.
    • 2. Each Staff Member, by virtue of their employment and this Policy, grants to UOW, for use and dissemination in the delivery of UOW courses and degrees, a non-exclusive, royalty-free, perpetual licence to use Teaching Materials that are:
        • brought with the Staff Member upon employment commencing at UOW and used in the course of their employment at UOW; or
        • developed during the course of the Staff Member’s employment at UOW.
    • 3. In its use of Teaching Material, UOW will consider the reputation of the Creators. UOW will use its best endeavours to consult the creators on updates, the appropriateness of continued use of material, and attribution of material so used in UOW course and subject delivery.
    • 4. Each Staff Member retains Copyright in the Teaching Material. Staff Members may freely grant licenses to others subject to the non exclusive license to UOW.
    • 5. Each Staff Member may also, if the Staff Member so chooses, assign Copyright. Any such assignment will operate subject to the non exclusive license to UOW.

    6 Ownership of Copyright in Commissioned Works

    • 1. Where UOW engages a Staff Member to create a Commissioned Work:
        • to the extent to which the Commissioned Work reproduced Teaching Material, section 5 (Ownership of Copyright in Teaching Material) applies;
        • to the extent to which Commissioned Work reproduced Creative Material or Scholarly Material, section 8 (Ownership of Creative Material and Copyright in Scholarly Material) applies; and
        • to the extent to which the Commissioned Work contains new work, the Copyright in the new work vests in UOW.

    7 Ownership of Administration or Course Material

    • 1. UOW will own any Administration of Course Material developed by Staff Members during their course of employment at UOW.

    8 Ownership of Creative Material and Copyright in Scholarly Material

    • 1. In the absence of any agreement to the contrary signed by the Staff Member or Student and an authorised delegate of UOW, Staff Members and Students will retain ownership of Creative Material and the Copyright in Scholarly Material that they create in their course of employment or enrolment at UOW.

    9 Moral Rights

    • 1. UOW recognises the Moral Rights of the Creators of IP in accordance with the Copyright Act, 1968 (Commonwealth). UOW will use its reasonable efforts to assist authors in asserting their Moral Rights, which are personal rather than proprietary in nature and as such cannot be sold, licensed or assigned.

    10 Assignment of Intellectual Property

    • 1. Staff Members will execute, in a timely manner, all assignments of IP necessary to give effect to the ownership provisions set out above.
    • 2. UOW supervisors electing to supervise a Student on a project that is likely to have Commercialisation Expectations or is subject to a contract with an external organisation, must ensure that their Manager of Innovation and Commercialisation (MIC) has negotiated a Student Deed of Assignment and/or Confidentiality Agreement with the Student before the Student commences work on the project. If the Student chooses not to sign a Student Deed of Assignment and/or Confidentiality Agreement for that project, the project will not be available to that Student and the Student will then be free to choose another project without prejudice.
    • 3. Student assignment of IP is dealt with separately in the Student Assignment of Intellectual Property Policy.

    11 Notification of Intellectual Property

    • 1. To enable UOW to comply with the National Principles of Intellectual Property Management for Publicly Funded Research and to also successfully Commercialise IP, Staff Members and Students should avoid premature disclosure of research results and should notify UOW of new IP development. Staff Members and Students should complete an IP Notification Form to advise UOW that IP with potential commercial value has been developed (Attachment 1 to the Intellectual Property Guidelines). The IP Notification Form should be submitted to the relevant Faculty MIC as soon as IP with potential commercial value is developed.
    • 2. Sometimes, it may be important to protect IP that will not have commercial value. In such cases, the Creator should notify the relevant Faculty MIC of the new IP before completing an IP Notification Form and their MIC will advise if it is necessary or not to complete an IP Notification Form.

    12 Commercialisation of Intellectual Property

    • 1. After receiving the IP Notification Form, UOW will determine whether it wishes to protect and/or commercially exploit the IP. While this takes place, Creators must take all reasonable steps to protect that IP by avoiding public disclosure, such as publication or presentation (including submission of journal or conference abstracts).
    • 2. UOW will consider the Creator’s interests in publishing Scholarly Works as well as the wider obligation of disseminating research findings, while also ensuring that IP with commercial value is protected.
    • 3. The Creators will have the opportunity to participate in the IP protection and Commercialisation process. Participation may include:
        • early disclosure of new technologies to UOW;
        • not making any external disclosures and delaying publication or presentation until a patent is filed;
        • assisting UOW commercialisation staff and patent attorneys to draft and lodge patents;
        • undertaking further research and development to provide the information necessary to complete final patent filing;
        • disclosing collaborative links with other IP holders and identifying potential restrictions to their research activities that may result from Commercialisation deals (e.g. arising from licenses to companies that are competitors to existing collaborators);
        • advising on their overall research strategy and any impacts that Commercialisation may have on this;
        • assisting UOW commercialisation staff to understand the technical aspects of the discovery;
        • assisting UOW commercialisation staff to present the technology to potential investors or licensees;
        • agreeing to undertake further research, if funded, to support the licensee’s or spin-out company’s activities; and
        • disclosing any other issues that may be of concern or interest in regards to Commercialisation.
    • 4. Within three months of receiving an IP Notification Form, UOW will advise the Creators whether: a) it has decided to Commercialise the IP; b) it has decided not to Commercialise the IP; or c) needs further time to evaluate the commercial prospects and undertake further due diligence (regular updates on progress regarding a decision will then be made via the relevant Faculty MIC). In situations where complex commercial or technical assessment and due diligence is required, UOW may take up to eighteen months to make a decision on whether or not to Commercialise . 
    • 5. UOW will consider any external issues, such as proposed publication deadlines and the progress of competing researchers, when determining how and when IP should be protected.
    • 6. Where UOW decides not to proceed with the protection or Commercialisation of IP, or if a decision is made to cease commercialising at a later stage, UOW will allow the Creators the opportunity to seek funding and commercial partners, provided that the Creators have fully disclosed the IP and cooperated with UOW during UOW’s evaluation of the IP. This will not, however, affect UOW’s right to seek a share, which will be determined on a case-by-case basis by the Commercialisation Revenue Committee (described in UOW’s Commercialisation Revenue Policy), of nett commercialisation revenue from any such Commercialisation by the Creators.
    • 7. Where UOW decides not to proceed with a patent application, it will use its reasonable efforts to provide early notice of this decision to the Creators so that they may have the opportunity to continue patent protection at their own costs. Wherever possible, UOW will provide three months notice of its intention not to continue with a patent and during this period will continue to pay ongoing patent application costs in patent jurisdictions already entered. However, this is limited to ongoing payments and does not extend to initial national phase entry costs for each patent jurisdiction or initial filing costs for a complete specification.
    • 8. Obligations for Staff Members to sign forms, execute agreements, assist in patent processes and keep information confidential will extend beyond their period of employment.

    13 Sharing the Financial Benefits of Commercialisation

    • 1. UOW wishes to encourage innovation by rewarding the Creators of IP with a share in the nett commercialisation revenue, as follows:
        • 50% to UOW; and
        • 50% to the Creators.
    • 2. Specific revenue sharing provisions are detailed in UOW’s Commercialisation Revenue Policy.

    14 Dispute Resolution

    • 1. If a dispute arises about how to interpret or apply this Policy, a grievance may be notified according to the procedures set out in UOW’s Grievance Resolution Procedures.
    • 2. Where a Staff Member or a Student is unable to reach agreement with UOW in regards to the Commercialisation (other than ownership and revenue sharing provisions which are dealt with in the Commercialisation Revenue Policy) or protection of IP, they may refer their grievance to the Deputy Vice-Chancellor (Research) or to an officer appointed by the Deputy Vice-Chancellor (Research) for that purpose. That officer will attempt to resolve the dispute by mediation within a period of three months. Either party may request that an external mediator, acceptable to both parties, be involved in the dispute resolution at this stage. In the event of a continuing grievance, the matter will be determined by an independent expert or independent panel of experts nominated by the Deputy Vice-Chancellor (Research) and Chaired by the Deputy Vice-Chancellor (Research) or their representative.
    • 3. All matters associated with the resolution of disputes for Staff Members and Students will be held confidential.

    15 Communication

    • 1. It is the responsibility of the Research and Innovation Division to develop and review the communication strategy for this policy.

    16 Roles & Responsibilities

    • 1. It is the responsibility of the MICs to ensure that the requirements of this policy are followed when assessing and commercialising IP.
    • 2. It is the responsibility of the Research and Innovation Division to use its reasonable efforts to assist authors in asserting their Moral Rights in any contracts with third parties.
    • 3. It is the responsibility of Staff Members and Students (where relevant) to avoid premature disclosure of research results and to notify their MIC of new IP development. It is also the responsibility of Staff Members and Students (where relevant) to cooperatively participate in signing any documents, forms, or agreements that are required to assist in patent or other IP protection processes and to keep information confidential for the period required in order to adequately protect the IP.

    17 Version Control and Change History

Version Control

Date Effective

Approved By

Amendment

1

June 2006

University Council

New Policy

2

August 2007

N/A

Minor modification to include Fellow, Visiting Student and Volunteer Assignment of IP Policy in IP Policy Framework; and to change Manager of Innovation and Commercial Development (MICD) to Manager of Innovation and Commercialisation (MIC).

3

6 May 2009

Vice-Principal (Administration)

Migrated to UOW Policy Template as per Policy Directory Refresh

4

9 March 2010

Vice-Principal (Administration)

Future review date identified in accordance with Standard on UOW Policy

5

18 August 2010

N/A

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

6

1 March 2011

N/A

Policy Custodian position title and email address changed

7

21 June 2011

Vice-Principal (Administration)

Updated to reflect change of name from Wollongong College Australia to UOW College

8

16 January 2012

Deputy Vice-Chancellor (Research)

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

9

27 January 2012

Vice-Principal (Administration)

Updated definitions of Administration or Course Material and related changes to the Definitions.

10

8 February 2013

Deputy Vice-Chancellor (Research)

Updated supporting documents and references to include new IP Commercialisation procedures and guidelines.

11

6 September 2016

Deputy Vice-Chancellor (Research & Innovation)

Updated policy Custodian and Division responsible to reflect structural change.

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