Policy

Intellectual Property for Staff, Students and Visitors - Policy

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1.  Purpose and Objectives

This Policy regulates the ownership and protection of the University's Intellectual Property and provides specific directions to Staff, Students and Visitors on Intellectual Property related matters.  This Policy aims to provide incentives to Staff and Students to create valuable Intellectual Property and, where they do so, to reward their innovation in accordance with this Policy.

2.  Definitions, Terms, Acronyms

Affiliates - Conjoint, Adjunct, Emeritus and Honorary appointments made in accordance with the relevant University policies and procedures.

Background IP - any IP created or owned by the University or a University Commercialisation Company.

Commercialise - to exploit commercially and includes:

(a) in relation to an IP right;  the exercise of all the rights exclusively granted to the holder of such IP rights by the laws of the jurisdiction in which the IP right subsists, including where permitted the right to sub-license those rights;

(b) in relation to a product, kit, apparatus, substance, documentation or information resource (or any part of such materials): to make, distribute, market, sell, hire out, lease, supply, or otherwise dispose of it; and

(c) in relation to a method or process:  to use the method or process or to make, distribute, market, sell, hire out, lease, supply, or otherwise dispose of a product, kit or apparatus the use of which is proposed or intended to involve the exercise of the method or process; and

Commercialisation - similarly defined.

Contributor - a Staff member, Student or Visitor who:

(a) is a Creator; or

(b) is a person that contributed to the creation, development or invention of the relevant IP, as determined in accordance with the relevant Procedure.

Creator - a Staff member, Student or Visitor who:

(a) in the case of a patentable invention subject to the Patents Act 1990: is an Inventor;

(b) in the case of a copyright work or similar subject to the Copyright Act 1968: is an Author;

(c) in the case of a trade mark subject to the Trade Marks Act 1995: is a person who developed or first used the trade mark;

(d) in the case of designs registrable under the Designs Act 2003: is a Designer;

(e) in the case of Plant Breeders Rights, under the Plant Breeder's Rights Act 1994: is a Principal Breeder;

(f) in the case of circuit layouts, under the Circuit Layouts Act 1999: is a Designer; and

(g) in the case of trade secrets and know how:  is a creator of that body of knowledge.

Indigenous Cultural and Intellectual Property Rights - Indigenous Australians' rights to their heritage, consisting of intangible and tangible aspects of the whole body of cultural practices, resources and knowledge systems developed, nurtured and refined by Indigenous people and passed on by them as part of expressing their cultural identity.

Intellectual Property (IP) - all statutory and other proprietary rights (including rights to require information be kept confidential) in respect of inventions, copyright, trade marks, designs, patents, plant breeder's rights, circuit layouts, know-how, trade secrets and all other rights as defined by Article 2 of the Convention establishing the World Intellectual Property Organisation of July 1967, whether registered or unregistered, all rights to apply for the same and, for the avoidance of doubt, includes:

(a) Patents under the Patents Act 1990 (Cth);

(b) Copyright vesting by virtue of the Copyright Act 1968 (Cth) in literary works (including computer programs and data), dramatic works, musical works, artistic works, films, sound recordings, broadcasts, published editions and certain types of performances;

(c) Trade marks registered or registerable under the Trade Marks Act 1995 (Cth);

(d) Designs registered or registerable under the Designs Act 2003 (Cth);

(e) New plant varieties under the Plant Breeder's Rights Act 1994 (Cth);

(f) Circuit layouts (computer chips) under the Circuit Layouts Act 1989 (Cth); and

(g) Trade secrets and other confidential material under common law.

Net Proceeds of Commercialisation - with respect to IP, means the net proceeds actually received by the University from Commercialising that IP as further defined in the relevant Procedure.

Policy - PPL 4.10.13a Intellectual Property for Staff, Students and Visitors - Policy.

Policy Date - the last approval date as set out in this Policy.

Pre-Existing Intellectual Property - Intellectual Property that is developed and is owned by a Staff member, Student or Visitor prior to the date of their employment, enrolment or engagement at the University.

Procedure - any procedure approved by the Director, R&ID, as being a procedure made pursuant to or implementing this Policy, and including PPL 4.10.13b.

Scholarly Works - copyright works that are intended for academic publication (for example, any article, book, manuscript, manual, musical composition, diagram, photograph, creative writing, film or like publication) regardless of format (for example, printed, digital or electronic versions) created by Staff, Students or Visitors, but excludes Teaching Materials.

Staff - the officers, employees and Affiliates of the University, and includes academic, professional, technical and administrative officers and employees.

Student - any student (including under-graduate and post-graduate student) enrolled as a student in an approved course at the University, or in a course or program of study conducted by or on behalf of the University.

Teaching Materials - all materials produced by Staff or Students in the course of, or for use in, teaching at the University (for example, lecture notes and material, syllabi, handouts, study guides, course software and assessment materials) regardless of format (for example, printed, digital, electronic, multi-media presentations and web content), but excludes personal lecture notes by Staff that are not made available to Students or personal notes taken by Students to assist in study.  To the extent a work may be both Teaching Materials and a Scholarly Work, it will be treated in this Policy as Teaching Materials.

University - The University of Queensland.

University Commercialisation Company - a University owned or controlled company (as defined by the Corporations Act) formed by the University, or its wholly owned subsidiary UQ Holdings Pty Ltd, with obligations to protect, manage, exploit or Commercialise University assets, and any wholly owned subsidiary of any of the foregoing.

University Resources - resources of the University which includes, without limitation, premises, facilities, funds, services, equipment, paid leave, Staff time and support Staff.

Visitor - any person other than Staff or a Student who creates IP while taking part in any research project or scholarly activity using University Resources and in conjunction with a Staff member or Student.

3.  Policy Scope/Coverage

This Policy applies to all University Staff, Students and Visitors.

4.  Policy Statement

4.1  The University of Queensland under the University of Queensland Act 1998 (Qld) endeavours to foster a research culture in which technology transfer and entrepreneurial endeavour are valued and rewarded.  The University recognises the importance of protecting Intellectual Property in the creation of wealth and other benefits.

Intellectual Property is of little economic value unless it is identified, protected managed and commercialised, and enforced where necessary.  The University of Queensland Act 1998 (Qld) recognises that a function of the University is to exploit commercially (“Commercialise”), for the University’s benefit, research and knowledge.  This Policy, including the Procedures, establishes flexible mechanisms by which the University is able to identify, protect, manage and Commercialise its Intellectual Property.

Under this Policy, the University and its Staff and Students will be in a stronger position to benefit from:

(a) Attraction of industry and government research funding;

(b) Establishment of an international reputation for research excellence;

(c) Establishment of linkages with other universities, industry and government;

(d) Generation of financial returns from Commercialisation;

(e) Creation and growth of knowledge-based industries through research and its Commercialisation; and

(f) Generation of national wealth, through new products, processes, services and employment.

4.2  This Policy is incorporated by reference in the terms and conditions of the contract of employment of all Staff and letters of appointment of Affiliates, and is referred to in the Student Charter conditions of enrolment of Students.

4.3  All Procedures in existence at the Policy Date form part of this Policy and are expressly incorporated by reference.  A Procedure created after the Policy Date will form part of this Policy and is expressly incorporated by reference from the date the Procedure states it is to come into effect, and if no such date is specified in the Procedure, from the date of approval of the Procedure.

4.4  This Policy comes into effect on the Policy Date.  Any IP created prior to the Policy Date will be governed by the IP Policy in place at the time of creation.  Where improvements or enhancements are made to underlying IP and the underlying IP was created prior to the Policy Date, both the underlying IP and the improved or enhanced IP will be governed by the IP Policy in place at the time of the improvement or enhancement is made.

4.5  To the extent there is any inconsistency between an agreement between the University and a Staff member or a Student and this Policy, or between a Procedure and this Policy, then this Policy will prevail, unless the agreement or variation from this Policy has been explicitly approved as a variation in writing by the Vice-Chancellor or Deputy-Vice Chancellor (Research).

5.  Ownership of IP

5.1  Ownership by the University of Intellectual Property developed by Staff

Except as otherwise stated in this Policy, the University owns all IP created by Staff (other than Affiliates):

(a) created in or during the course of employment with the University; or

(b) using University Resources (subject to any approvals granted pursuant to the provisions of HUPP 1.50.2 (Outside Work and Business Interests for University Staff)).

IP created in or during the course of employment with the University includes IP created:

(c) in furtherance of the University’s goals through employer-mandated directives;

(d) in Teaching Materials;

(e) while participating in any project or program supported by funding obtained or provided by or through the University;

(f) where the IP is a component of IP generated by a team of which the Staff member is a team member and other Staff are also team members; or

(g) where creation has resulted from the use of or incorporates Background IP. 

5.2  Ownership by the University of Intellectual Property developed by Affiliates

Except as otherwise stated in this Policy, the University owns all IP created by Affiliates:

(a) created in or during the course of the appointment with the University;

(b) using University Resources;

(c)  in furtherance of the University’s goals through University-mandated directives;

(d) in Teaching Materials;

(e) while participating in any project or program supported by funding obtained or provided by or through the University;

(f)  where the IP is a component of IP generated by a team of which the Affiliate is a team member and other team members are Staff; or

(g) where creation has resulted from the use of or incorporates Background IP.

5.3  Ownership of Intellectual Property developed by Visitors

A Visitor must disclose to the Manager of Innovation and Commercial Development (or equivalent) for the relevant University faculty, institute or business unit (or in the event that such a person does not exist, the Deputy Vice-Chancellor (Research)) all IP created by Visitors using University Resources including:

(a) in Teaching Materials;

(b) while participating in any project or program supported by funding obtained or provided by or through the University;

(c) where the IP is a component of IP generated by a team of which the Visitor is a team member and other team members are Staff; or

(d) where creation has resulted from the use of or incorporates Background IP.

Ownership and Commercialisation of such IP will be negotiated and agreed on a case-by-case basis.

5.4 Ownership by the University of Intellectual Property developed by Students

Except as otherwise stated in this Policy, the University does not assert ownership of IP created by Students.  However, the University owns IP created by Students (including that jointly developed with Staff) where the IP has been separately assigned to the University by deed or agreement with the Student, but, for the avoidance of doubt, the intention is not to assign copyright in the Student’s thesis or Scholarly Works unless explicitly agreed.

5.5  Ownership by the University of Intellectual Property developed by Students who are also Staff

Where a Staff member is also a Student, or a Student is also a Staff member, then clause 5.1 takes precedence over clause 5.4 where the subject matter of the Student’s study is similar to the subject matter of the work for which the person is employed.

5.6  Ownership of Pre-Existing Intellectual Property

The University does not assert ownership over Pre-Existing Intellectual Property.

To avoid disputes as to ownership, the relevant Staff member, Student or Visitor should advise the Deputy Vice-Chancellor (Research) in writing of the existence of Pre-Existing Intellectual Property that the person brings to the University as soon as practical after employment, enrolment or engagement.  If no such advice is received by the Deputy Vice-Chancellor (Research), then any IP used or disclosed during the period of employment, enrolment or engagement that otherwise would fall within clauses 5.1, 5.2 or 5.4 will be treated as University owned IP.

5.7  Ownership of Scholarly Works

The University does not assert ownership of any IP in any Scholarly Works generated by Staff, Students or Visitors, except where the work is specially commissioned by the University pursuant to another agreement, in which case that agreement may have specific IP provisions relating to that Scholarly Work that are inconsistent with and can prevail over this Policy.

The Creator of any Scholarly Work that would, but for clause 5.7 fall within one of clauses 5.1 to 5.4, grants to the University a perpetual, royalty free, unrestricted, non-exclusive licence to use such Scholarly Works generated by that Creator for the University’s teaching, educational and research purposes. This licence is subject to any overriding contractual obligations the Creator owes to third parties (for example, a publisher of a journal article), provided the Creator informs the University of such obligations.

5.8  Teaching Materials

As stated above, the University owns IP in Teaching Materials created by Staff.

The University grants to the Creator of the Teaching Materials a perpetual, personal, royalty free, non-exclusive, non-transferable licence to use such Teaching Materials generated by that Creator (but not Teaching Materials generated or contributed to by other Staff or Students) for teaching, educational and research purposes at other educational institutions.  The Creator may not use the Teaching Materials to directly compete with the University and may not sublicense the Teaching Materials to others to generate royalties or license fees.

5.9  Brands

Where the Policy states that the University owns IP, and a brand, trade mark, domain name or business name is used by Staff or Students in the promotion, naming or Commercialisation of that IP, then the University owns that brand, trade mark, domain name or business name.

5.10  Exceptions to University Ownership

Where the policy states that the University owns IP, this may only be varied or waived by an agreement or approval in writing by the Vice-Chancellor or Deputy Vice-Chancellor (Research).

6.  Assignments of IP

6.1  Assignment

To the extent not assigned to the University by another agreement or operation of law, each Staff member and Student assigns to the University the IP identified in section 5 as owned by the University.

6.2  Assistance

At the request of the University, Contributors will:

(a) execute, in a timely manner, all such confirmations of assignment and ownership, and other documentation necessary to give effect to the IP ownership and use provisions set out in this Policy; and

(b) provide other assistance as reasonably requested, such as providing evidence as to date of creation, assisting with IP protection procedures, and assistance with enforcement of IP.

6.3  Effect of this Policy on Existing Arrangements

Despite any contrary provision in this Policy, all existing legally binding contracts, deeds and agreements entered into by the University and/or a University Commercialisation Company prior to the Policy Date will remain in full force and effect.  Their terms will prevail to the extent that there is an inconsistency with this Policy.

6.4  Assignment of IP Ownership by the University

Without limitation to the University’s right as owner, the University may assign its rights, title and interests in IP owned by it to a University Commercialisation Company and to third parties in its sole discretion.

6.5 Copyright ownership statement

All published or distributed material in which the University owns the copyright must include the following copyright statement:

© Copyright The University of Queensland [year]

7.  Students

7.1  Conditions to apply to Students

Where a Student agrees to be involved in research activities as part of a project between the University (or a University Commercialisation Company) and an external sponsor or other third party, the Student may be required to agree to an assignment of the Student’s IP in relation to that project (including any associated data, results and findings associated with that IP) to the University prior to work commencing.

In such circumstances, the responsible Staff member (i.e., the research supervisor) must seek and the Student must formally assign, in advance, all IP rights the Student may have in any such IP to the University before the Student will be permitted to engage in such research.  The IP assignment agreement may also have provisions regarding non-disclosure and non-use of the IP.  The Student must have the opportunity to seek independent legal advice prior to agreeing to such assignment agreement.  However, some research projects may not be available to a Student who chooses not to sign such an IP assignment agreement and the Student may have to seek alternative scholarship and supervision options in such circumstances.

Any such assignment will not transfer copyright in the Student’s thesis or Scholarly Works authored by the Student and arising out of studies at the University.

7.2  Sharing of Proceeds

Where a Student assigns IP to the University, the Student will be treated as a Staff Member for the purposes of section 9 of this Policy and will receive the benefits as described in this Policy.

8.  Protection and Commercialisation of IP Owned by the University

8.1  Notification

Where a Staff member, Student or Visitor develops IP over which the University asserts ownership rights under this Policy, they must follow PPL 4.10.13b.

8.2  Protection

The University or University Commercialisation Company will decide, within 18 months from Notification, whether or not to proceed with the protection of IP owned by the University pursuant to this Policy, in accordance with the Procedure for Notification and Commercialisation of UQ IP.  The University or University Commercialisation Company is under no obligation to protect any IP.  The terms on which the University or University Commercialisation Company protects IP owned by the University pursuant to this Policy will be at the absolute discretion of the University or University Commercialisation Company.  The University or University Commercialisation Company will endeavour to make decisions regarding protection of such IP in consultation with the relevant Creators, faculty, institute and/or business unit.

8.3  Commercialisation

Subject to clause 8.6, the University Commercialisation Company will decide, within 18 months from Notification, whether or not to proceed with the Commercialisation of IP owned by the University pursuant to this Policy, in accordance with the Procedure for Notification and Commercialisation of UQ IP.  The University Commercialisation Company is under no obligation to Commercialise any IP owned by the University.  The terms on which a University Commercialisation Company Commercialises IP owned by the University pursuant to this Policy will be at the absolute discretion of the University Commercialisation Company.  The University Commercialisation Company will make decisions regarding Commercialisation of such IP in consultation, wherever practicable, with the relevant Creators, faculty, institute and/or business unit.

8.4  Dealings by Staff or Students

No Staff member or Student may act on behalf of the University, or act in their own name, to assign, license, protect, enforce, Commercialise or otherwise deal with IP which is owned by the University, or over which the University asserts rights under this Policy, unless specifically permitted in writing by the University to do so.

8.5  University Commercialisation Company

The University normally Commercialises IP owned by the University by assigning or licensing such IP to one or more of the University’s Commercialisation Companies.  Pursuant to agreements with the University, a University Commercialisation Company may take steps and make decisions that are required to be made by the University pursuant to this Policy.

8.6  Other Steps

The University may Commercialise IP owned by the University other than through a University Commercialisation Company.  Where this occurs, the steps taken and decisions relating to such IP will be subject to any relevant agreements entered into by the University, and such agreements must be authorised by the Deputy Vice-Chancellor Research or nominated delegate.

9.  Disbursement of Net Proceeds From Commercialisation

9.1  Distribution

Any Net Proceeds of Commercialisation received by the University pursuant to this Policy will be disbursed as follows:

(a) 1/3 to the Contributors determined in accordance with the relevant Procedures;

(b) 1/3 to the University, which will be retained by a University Commercialisation Company where the Commercialisation of the IP occurs through that University Commercialisation Company; and

(c) 1/3 to the relevant faculty or institute of the University.

This right applies regardless of whether the Contributor is still associated with the University.  Any such Net Proceeds of Commercialisation will be paid to the Contributor’s estate if the Contributor is deceased.

10.  Vice-Chancellor as Attorney

10.1  A Contributor will, as required by the University, complete all documentation or any other action that the University or University Commercialisation Company deems necessary for the protection and Commercialisation of IP owned by the University.  If a Contributor fails to complete any documentation or any other action that the University or University Commercialisation Company deems necessary for the protection or Commercialisation of IP owned by the University, the Vice-Chancellor has the right to execute all such documents and do all such acts as their attorney. The Vice-Chancellor may exercise such power of attorney even if the University benefits from this power.  This Power of Attorney does not extend to instances where failure to complete documentation is a result of conflicts as to ownership of the IP, or where there is a dispute between the Contributors and the University or University Commercialisation Company. In these instances, section 6 of PPL 4.10.13b will apply.

11.  Moral Rights

11.1  The University recognises the moral rights of the Creators of certain works in accordance with the Copyright Act 1968 (Cth).  These include the right of fair attribution, and the need for work not to be altered or used in such a way that it harms the reputation of the Creator.  Where a Creator agrees to be involved in research activities as part of a project between the University (or a University Commercialisation Company) and an external sponsor or other third party, the Creator may be required to provide a written consent in respect of the Creator’s moral rights in relation to certain works that may be created during the project prior to work commencing.

12.  Indigenous Cultural and Intellectual Property Rights

12.1 The heritage of Indigenous people is a living one and includes items that may be created in the future, based on that heritage. The University recognises and will protect Indigenous Cultural and Intellectual Property Rights as required by Australian law.

13.  Disputes

13.1  All disputes arising under or as a result of this Policy, including disputes relating to:

(a) IP ownership;

(b) Identification of Contributors;

(c) Sharing of Net Commercialisation Income amongst Contributors;

(d) IP Commercialisation;

(e) Net Proceeds of Commercialisation; or

(f) Disbursement of Net Proceeds of Commercialisation;

must be dealt with in accordance with section 6 of PPL 4.10.13b.

14.  Conflict of Interest

14.1  A conflict of interest exists where the financial interest of, or the involvement that a Staff member, Student or Visitor may have with another party, conflicts with the duties and obligations owed by them to the University.

HUPP 1.50.1 (Code of Conduct), HUPP 1.50.4 (Personal Relationships in the Workplace Policies) and PPL 4.20.02 (Responsible Conduct of Research) outline the University’s obligations in this regard.  Full and prompt disclosure of any potential conflicts of interest must be made to the Head of the relevant Organisational Unit to protect the University and allow for an objective evaluation of the benefits and/or risks of prospective commercial involvement with any third party.

15.  Implementation

15.1  Roles and Responsibilities

The Deputy Vice-Chancellor (Research) is responsible for the development and implementation of this Policy.

 

 

Procedures

Intellectual Property for Staff, Students and Visitors - Procedures

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1.  Purpose and Objectives

These Procedures are made in accordance with PPL 4.10.13a and are compliant with the University’s obligations under the National Principles of Intellectual Property Management for Publicly Funded Research.

Commercialisation is a process used for the translation of research for broad community benefit.  This often involves the formation of formal relationships with commercial entities.  Positive outcomes for the University, Staff and Students include industry engagement, funded research programs, consultancies, and commercial returns which the University shares with staff and students.  Commercialisation is a complex and often lengthy process and requires commitment and diligence.  There are a variety of pathways to commercialisation and numerous steps are involved in the process.  The University has established commercial companies with experts in the field to undertake the Commercialisation process, manage the commercial risks, and generate the commercial outcomes for the University and those staff and students involved.

2.  Definitions, Terms, Acronyms

Affiliates - Conjoint, Adjunct, Emeritus and Honorary appointments made in accordance with the relevant University policies and procedures.

Commercialise - to exploit commercially and includes:

(a) in relation to an IP right: the exercise of all the rights exclusively granted to the holder of such IP rights by the laws of the jurisdiction in which the IP right subsists, including where permitted the right to sub-license those rights;

(b) in relation to a product, kit, apparatus, substance, documentation or information resource (or any part of such materials): to make, distribute, market, sell, hire out, lease, supply, or otherwise dispose of it; and

(c)  in relation to a method or process: to use the method or process or to make, distribute, market, sell, hire out, lease, supply, or otherwise dispose of a product, kit or apparatus the use of which is proposed or intended to involve the exercise of the method or process; and

Commercialisation - similarly defined.

Contributor - a Staff member, Student or Visitor who:

(a) is a Creator; or

(b) is a person that contributed to the creation, development or invention of the relevant IP, as determined in accordance with the relevant Procedure.

Creator - a Staff member, Student or Visitor who:

(a) in the case of a patentable invention subject to the Patents Act 1990:  is an Inventor;

(b) in the case of a copyright work or similar subject to the Copyright Act 1968:  is an Author;

(c) in the case of a trade mark subject to the Trade Marks Act 1995: is a person who developed or first used the trade mark.

(d) in the case of designs registrable under the Designs Act 2003:  is a Designer;

(e) in the case of Plant Breeders Rights, under the Plant Breeder's Rights Act 1994:  is a Principal Breeder;

(f) in the case of circuit layouts, under the Circuits Layouts Act 1999, is a Designer; and

(g) in the case of trade secrets and know how:  is a creator of that body of knowledge.

Intellectual Property (IP) - all statutory and other proprietary rights (including rights to require information be kept confidential) in respect of inventions, copyright, trade marks, designs, patents, plant breeder's rights, circuit layouts, know-how, trade secrets and all other rights as defined by Article 2 of the Convention establishing the World Intellectual Property Organisation of July 1967, whether registered or unregistered, all rights to apply for the same and, for the avoidance of doubt, includes:

(a) Patents under the Patents Act 1990 (Cth);

(b) Copyright vesting by virtue of the Copyright Act 1968 (Cth) in literary works (including computer programs and data), dramatic works, musical works, artistic works, films, sound recordings, broadcasts, published editions and certain types of performances;

(c) Trade marks registered or registerable under the Trade Marks Act 1995 (Cth);

(d) Designs registered or registerable under the Designs Act 2003 (Cth);

(e) New plant varieties under the Plant Breeder's Rights Act 1994 (Cth);

(f) Circuit layouts (computer chips) under the Circuit Layouts Act 1989 (Cth); and

(g) Trade secrets and other confidential material under common law.

IP Notification - a completed form describing the IP created and providing other information which will assist in the review of the IP for protection and commercialisation purposes.  The IP Notification form is available at PPL 4.10.13d.

Net Proceeds of Commercialisation - with respect to particular IP, means the cash revenues actually received by the University (or a University Commercialisation Company) from Commercialising that IP (including royalties, licence fees, milestone payments, dividends and proceeds from the sale of shares and any other items specified as revenue in any relevant Procedure) but NOT including R&D funds, consulting fees or returns to the University from a University Commercialisation Company, LESS any expenses and costs relating to the protection, registering, management, marketing, commercialising or enforcing of that IP (such as for example legal fees, patent attorney fees, financial and technical advice, insurance, marketing and travel, creation of prototypes, taxes, bank fees and transaction fees and any other items specified as expenses in any relevant Procedure).  Encumbered revenues are not considered received until the encumbrance is lifted. In the case of licences or assignments where income received is concurrently invested in the company for shares as part of the transaction, such income is excluded from the Net Proceeds of Commercialisation.

Pre-Existing Intellectual Property - Intellectual Property that is developed and is owned by a Staff member, Student or Visitor prior to the date of their employment, enrolment or engagement at the University.

Staff - the officers, employees and Affiliates of the University, and includes academic, professional, technical and administrative officers and employees.

Student - any student (including under-graduate and post-graduate student) enrolled as a student in an approved course at the University, or in a course or program of study conducted by or on behalf of the University.

University - The University of Queensland or a delegated authority such as an IP Committee of the Sustainable Minerals Institute (SMI).

University Commercialisation Company -

(a) UniQuest Pty Ltd and UATC Pty Ltd;

(b) IMBcom Pty Ltd and IMBcom Asset Trust Management Company Ltd; and

(c) JKTech Pty Ltd.

University Commercialiser - specialist organisations established and owned by the University, with specific responsibilities:

(a) SMI – the IP Committee of the SMI is responsible for decisions and actions related to IP Protection only, and JKTech Pty Ltd is responsible for Commercialisation and IP Protection;

(b) IMB (Institute for Molecular Bioscience) – IMBcom Pty Ltd is responsible for IP Protection and Commercialisation; and

(c) Rest of the University – UniQuest Pty Limited is responsible for IP Protection and Commercialisation.

UQ IP - any Intellectual Property which is owned by the University (whether solely or jointly with other parties).

University Resources - resources of the University which includes, without limitation, premises, facilities, funds, services, equipment, paid leave, Staff time and support Staff.

Visitor - any person other than Staff or a Student who creates IP while taking part in any research project or scholarly activity using University Resources and in conjunction with a Staff member or Student.

3.  Procedures Scope/Coverage

These Procedures relate to the obligation of Staff, Students and Visitors in relation to the disclosure of certain IP to the University, and Commercialisation of that IP by the University.

4.  Procedures Statement

4.1 University Commercialisation Companies. The University normally Commercialises IP owned by the University by licensing to one of the University’s Commercialisation Companies.  Pursuant to agreements with the University, a University Commercialisation Company may take steps and make decisions that are required to be made by the University pursuant to PPL 4.10.13a and this Procedure.

5.  Notification

5.1 Completion of a IP Notification Form

(a) Where a Staff member or Student develops or creates IP (either alone or in conjunction with others) that is UQ IP, the Staff member or Student must complete and return a confidential notification form (“IP Notification”) to a University Commercialisation Company as soon as possible after its creation. (For SMI Staff and Students, this notification form should be returned to the IP Committee of SMI).

(b) If more than one Staff member or Student developed or created the UQ IP, one Staff member or Student can complete the IP Notification.

(c) Where requested by a University Commercialisation Company, a Staff member or Student must provide full, complete and accurate information as is reasonably required to enable the University Commercialisation Company to fairly assess the ownership, commercial potential and protection that might be applicable to the IP Notification.

(d) Any new particulars, data, results, findings, updates and commercial interactions associated with the IP Notification which has been notified must also be disclosed as soon as possible after creation.

5.2 Non-Disclosure for IP Protection

(a) The University acknowledges the interests of Staff and Students in publishing their research and seeks to facilitate the publication of that research, whilst respecting the rights of parties with whom the University has contractual obligations.  In addition, the University seeks to foster the translation of research for broad community benefit, a process that may be facilitated through the protection of UQ IP.

(b) The University acknowledges that best practice outcomes in Commercialisation are achieved if the University Commercialisation Company is consulted prior to disclosure of UQ IP. 

(c) Staff and Students must not disclose UQ IP to third parties (including editors of publications and journals) unless they have advised the University Commercialisation Company in writing with reasonable notice to enable assessment.

(d) If the University or a University Commercialisation Company has contractual obligations which restricts the publication and/or use of UQ IP, the Staff member or Student must abide by those restrictions.

5.3 Pre-Existing IP

(a) Pursuant to clause 5.6 of PPL 4.10.13a, each Staff member, Student or Visitor should advise the Deputy Vice-Chancellor (Research) in writing of the existence of Pre-Existing Intellectual Property that the person brings to the University as soon as practical after employment, enrolment or engagement.  This advice should be made within 30 days of commencement of employment, engagement or enrolment on a Notification of Pre-Existing IP Form.

(b) If the University believes that any IP notified on the Notification of Pre-Existing IP Form is owned by the University, the University should notify the relevant Staff member or Student within a reasonable period of time.

6.  Disputes

6.1 Mediation

Where a person has a dispute as set out in section 13 of PPL 4.10.13a, they may refer their grievance to the Pro Vice-Chancellor (Research & International) or to an Officer appointed by the Pro Vice-Chancellor (Research & International) for that purpose. That Officer will attempt to resolve the dispute by mediation within a period of one month.

6.2 If Mediation is Not Successful

Where a person has a dispute as set out in section 13 of PPL 4.10.13a that is not resolved by way of mediation, that person may notify the dispute as a grievance according to the procedures set out in HUPP 5.70.8 (Staff Grievance Resolution) or in the case of students, HUPP 3.40.10 (Student Grievance Resolution). Under the University's Staff Grievance Resolution Policy, the University Officer will be the Deputy Vice Chancellor (Research) and the Senior Executive will be the Vice Chancellor or the Vice Chancellor’s nominee. Under the University’s Student Charter, the designated person is the Deputy Vice Chancellor (Research) and the Vice Chancellor (or the Vice Chancellor’s nominee) will act in place of the Deputy Vice Chancellor (Academic) and have final responsibility for determining the grievance.

7. Commercialisation

7.1 The University Commercialiser will consult with the Creators of UQ IP in relation to protection and/or Commercialisation of the IP listed on the IP Notification.

7.2 After receiving an IP Notification, the relevant University Commercialiser will decide within 18 months of the IP Notification whether or not to protect the IP disclosed in the IP Notification, and how and where to do so.

7.3 The relevant University Commercialiser will also decide within 18 months of the IP Notification whether or not to Commercialise the IP disclosed in the IP Notification, and how and where to do so.

7.4 The University Commercialiser will advise the Creators of its decision if it decides to proceed with protection and/or Commercialisation of UQ IP.  If so, the University Commercialiser may require the Creators to formally confirm assignment of the IP to the University and/or ownership of the IP by the University. 

7.5 The Creators of UQ IP being protected or Commercialised or being considered for protection or Commercialisation must provide all reasonable assistance to the University and the University Commercialiser, including the prompt delivery of information, opinions and assessments, attending meetings, giving presentations and executing appropriate documents, as required by the University Commercialiser.

7.6 The University Commercialiser may at its absolute discretion decide to suspend or cease supporting the protection and/or Commercialisation of any IP in any market or jurisdiction.

7.7 A decision made to not proceed with or delay a patent application or other applicable form of IP protection and/or any Commercialisation activities does not exclude an ongoing interest by a University Commercialiser in later protecting and/or Commercialising such UQ IP.   

7.8 The University Commercialiser may protect and/or Commercialise the UQ IP in the future, even if an initial or later decision was not to protect or Commercialise such UQ IP.

7.9 The University Commercialiser will, from time to time, keep the Creators informed of the commercialisation of UQ IP to which they contributed to the extent reasonably practicable and necessary to support the commercialisation.

8. Contributors

8.1 In some circumstances, the IP Creators may wish to recognise one or more colleagues who have made a significant contribution to the development of the IP as Contributors, so they can share in the distribution of Net Commercial Returns. This will be facilitated and recorded by the University Commercialiser, and will require the agreement of all Creators and a Supervisor of the Creators who was not involved in the project from which the IP was created.

9. Student IP

9.1 The University Commercialiser may at its absolute discretion agree with a Student to protect and/or commercialise IP in respect of which the Student is a Creator.  If the University Commercialiser agrees to do so, the Student will be required to assign their IP to the University and will be afforded the same rights as Staff under PPL 4.10.13a , unless otherwise agreed in writing by the Student and the University.

10. Open Source Software

10.1 Subject to clause 10.2, a Staff member may develop open source software in the course of employment.

10.2 If software developed by a Staff member is UQ IP under PPL 4.10.13a, and the software is used in relation to or created as part of an externally funded project or similar activity, or where the software is likely to have a commercial value to the University, the software must not be created or dedicated as open source software unless the Staff member first consults with and obtains written permission from the relevant University Commercialisation Company.

11. Assignment of IP back to Staff where Commercialisation does not proceed

11.1 If the University Commercialiser finally decides (in accordance with clause 8.3 of PPL 4.10.13a not to proceed with, or continue with, the protection and/or Commercialisation of UQ IP listed in an IP Notification, subject to the Creators having complied with PPL 4.10.13a and any ancillary agreements, the Creators may request that such UQ IP be assigned to them.

11.2 A request for the assignment of UQ IP to the Creators will be considered by the University on a case-by-case basis taking into consideration the overall commercialisation and IP protection strategy of the University and the University Commercialiser, and will be at the discretion of the University and the University Commercialiser.  If there is an assignment to Creators, the Creators will be free to protect and Commercialise that IP.  The University will not be under any obligation to assist in the further development, protection or Commercialisation of that IP.

11.3 In the event that one or more Creators do not wish to have the IP assigned to them, any Creators who wish to proceed with the Commercialisation of UQ IP can request an assignment to them.  The University may agree to assign the Commercialisation rights and benefits to the Creators, on the basis that the assignees undertake to meet all costs and risks associated with the UQ IP, and subject to any other reasonable conditions.

11.4 It will be a condition of assignment of the UQ IP to Creators that the Creators will take on the role of commercialiser.  To formalise arrangements, the Creators and the University must negotiate and enter into a written agreement (approved by the Vice-Chancellor or Deputy Vice-Chancellor (Research)) clearly identifying the UQ IP assigned to the Creators and dealing with the Creator’s role of commercialiser.  The written agreement must provide that, as a condition of the assignment of the UQ IP to the Creators, that the Creators will reimburse the University Commercialiser its costs of protection and/or Commercialisation previously incurred.  The written agreement will also include provisions to compensate the University, the intention being that the relevant faculty or institute of the University will be paid by the Creators a benefit of up to 1/3 of the net proceeds (being all revenues minus reasonable costs of IP protection) received by the Creators from the Commercialisation of the IP.

11.5 As a condition of assignment to a Creator, the University will retain a non-exclusive, perpetual, royalty-free licence to use the IP for education and research purposes, and this will be recorded in the written agreement.

11.6 The written agreement will also require the Creator(s) to report regularly to the University Commercialisation Company in relation to progress made with the Commercialisation of the assigned IP and the revenue entitlements of the University.

12. Moral Rights Consent 

12.1 A purpose of clause 11.1 of PPL 4.10.13a is to allow the University to ask for a moral rights consent if doing so is required by a commercialisation partner.  If the relevant staff member refuses to provide the consent, the University may then elect not to undertake the commercialisation activities.  The scope of the required consent is anticipated to match that required by the commercialisation partner.
 
12.2 This will typically include consent to acts that would otherwise constitute an infringement of moral rights, such as failing to attribute authorship and using works in a manner other than as anticipated by the Creator.  It is not intended that consent would extend to allowing false attribution as this is not consistent with the relevant legislation.

Forms

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IP Notification Form - IMBcom

IP Notification Form - IMBcom

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Body
Description: 

IP Notification Form for IMBcom-related disclosures.

Attached File: 
IP Notification Form - SMI

IP Notification Form - SMI

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Body
Description: 

IP Notification Form for SMI-related disclosures.

IP Notification Form - UniQuest

IP Notification Form - UniQuest

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Description: 

IP Notification Form for UniQuest-related disclosures.

Notification of Pre-Existing IP - Form

Notification of Pre-Existing IP - Form

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Description: 

Form for new staff, students and visitors to notifiy UQ of pre-existing intellectual property they intend to bring to UQ.

Custodians
Deputy Vice-Chancellor (Research)
Professor Robyn Ward