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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, academic title holders, 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, Affiliate, 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, Affiliate, 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 Traditional Knowledge - 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 registrable under the Trade Marks Act 1995 (Cth);

(d) Designs registered or registrable 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, Affiliate, Student or Visitor prior to the date of their employment, enrolment or engagement at the University.

Procedure - any procedure approved by the Director, Research Partnerships, 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 and employees of the University, and includes academic, professional, technical and administrative officers and employees.

Student - any student (including undergraduate and postgraduate 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, an Affiliate or a Student who creates IP while taking part in any research project, scholarly activity or occupational traineeship 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:

(a) 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 PPL 1.50.02 (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

but does not include IP in Scholarly Works.

5.2 Ownership by the University of Intellectual Property developed by Affiliates

The University does not assert ownership of IP created by Affiliates, other than for IP:

(a) created in and during the course of the appointment with the University while working on a University project;

(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 and/or Students; or

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

For the avoidance of doubt, the University does not assert ownership over IP created by the Affiliate for another employer of the Affiliate unless agreed otherwise.

5.3 Ownership of Intellectual Property developed by Visitors

A Visitor must disclose to the Research Partnerships Manager (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)) with a copy to the University Commercialisation Company, all IP created by that Visitor using University Resources and/or working on University research projects 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.

A Visitor should sign an agreement governing their involvement in a University research project before commencement of the Visitor's involvement in that research project.

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

The University does not assert ownership of IP created by Students, except as set out in (a) to (d) below.

(a) Where a Student agrees to assist in the creation of Teaching Material, the Student may be required to agree to an assignment to the University of the Student’s IP in relation to that Teaching Material;

(b) 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 to the University 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.

(c) Students working on collaborative projects or on ongoing long term projects that give rise to the joint creation of IP, or interdependent IP, may be required to agree to an assignment to the University of the Student’s IP in relation to those projects.

(d) A Faculty or Institute may have a policy which requires all enrolling Students of that Faculty or Institute to assign all IP created in the course of their study with that Faculty or Institute to the University as a condition of enrolment. This practice will typically be put in place where research at the Faculty, School or Institute is generally commercial in nature, is characterised by long term projects and/or is generally commercial in nature, where significant amounts of background IP may feed into the research projects and/or where the outcomes of individual research projects may inform the broader discovery aims of the Faculty or Institute.

The University owns IP created by Students (including that jointly developed with Staff, Affiliates or other Students) where the IP has been separately assigned to the University by deed or agreement with the Student in the circumstances set out in (a) to (d) above, but, for the avoidance of doubt, the intention is not to assign copyright in the Student’s thesis or Scholarly Works unless explicitly agreed.

Note that the scenarios above only deal with ownership of IP as between the Student and the University. Where a Student is sponsored by a third party or undertaking research training at an affiliated institution, the Student may be required to enter into an agreement with the sponsor in relation to intellectual property or may be affected by the IP policy of the affiliated institution. Students should check the terms of any sponsorship agreement and the IP policies of any affiliated institutions in relation to ownership of intellectual property.

This Clause is primarily intended to deal with Higher Degree by Research Students, but to the extent that undergraduate and other postgraduate Students create IP in the circumstances set out in (a) to (d) above, this Clause will apply.

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.

The Creator of any Scholarly Work must also reposit a copy of their Scholarly Work in UQ eSpace in accordance with PPL 4.20.08 (Open Access for UQ Research Outputs Policy).

5.8 Teaching Materials

The University owns IP in Teaching Materials created by Staff, Affiliate, Visitors and Students.

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 to the extent that such Teaching Materials are generated or contributed to by other Staff, Affiliates, Visitors 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

In any of the circumstances listed in 5.4(a) to (d) apply, 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 or enroll in such Faculty or Institute. 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 and enrolment in some Faculties or Institutes 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 Traditional Knowledge

12.1 The University recognises the significance of Indigenous Traditional Knowledge. The heritage of Indigenous people is a living one and includes items that may be created in the future, based on that heritage. If Indigenous Traditional Knowledge is involved in any proposed research and/or Commercialisation activities by the University of the University Commercialisation Company, the University or University Commercialisation Company must consult with the Pro-Vice-Chancellor (Indigenous Education) in relation to such research and/or Commercialisation to ensure appropriate recognition and protection is given to such Indigenous Traditional Knowledge and its owners.

Consistent with the University's recognition of the significance of Indigenous Traditional Knowledge, the University will:

(a) not Commercialise IP developed using Indigenous Cultural and Traditional Knowledge without the approval and involvement of the holders of such Indigenous Cultural and Traditional Knowledge;

(b) ensure the equitable sharing of benefits arising from Indigenous Traditional Knowledge; and

(c) acknowledge the source of the traditional knowledge from which such IP is derived.

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.

PPL 1.50.01 (Code of Conduct), PPL 1.50.04 (Personal Relationships in the Workplace) 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.

Custodians
Deputy Vice-Chancellor (Research) Professor Bronwyn Harch