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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, academic title holders 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, 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 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 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.

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 and employees 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; and

(b) 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 or UniQuest Pty Ltd (as deemed most appropriate by the SMI IP Committee) is responsible for Commercialisation and IP Protection; and

(b) 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 member, Affiliate 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 an Invention Notification Form

(a) Where a Staff member, Affiliate 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, Affiliate 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, Affiliate 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 Partnerships) or to an Officer appointed by the Pro Vice-Chancellor (Research Partnerships) 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 PPL 5.70.08 (Staff Grievance Resolution) or in the case of students, PPL 3.60.02 (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 the subject of an IP Notification 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 and release 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 Staff member must first consult as appropriate with the relevant University Commercialisation Company in relation to creating or dedicating the software as open source software.

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, external sponsor or other third party. If the relevant staff member refuses to provide the consent, the University may then elect not to undertake the research and/or commercialisation activities.

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.

Custodians
Deputy Vice-Chancellor (Research) Professor Bronwyn Harch