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Intellectual Property Policy

This is the current version of this document. To view historic versions of this document click the link in the main navigation (grey) bar above or contact policies@uws.edu.au for versions that expired pre 1 June 06.

Section 1 - Purpose and Context

(1) The purpose of this policy is to promote innovation by University of Western Sydney (UWS) employees and Students, and the Commercialisation and dissemination of new Intellectual Property for the benefit of the University employees, Students and the wider community.

(2) This policy reflects the law relating to Intellectual Property at the time this policy is published. Changes in the law arising after this policy comes into effect will prevail over this policy if there is any inconsistency. Any clauses within this policy that deal with the law relating to Intellectual Property are not intended to be relied on as legal advice by any person; they describe the law in brief general terms and are provided only as background information to this policy.

(3) Intellectual Property law may briefly be described as the law relating to ownership rights in human invention or creativity. Specific Intellectual Property laws create and protect rights in things such as: inventions; works of literature, drama or art; brands; circuit layouts; designs and plant varieties. The law also recognises certain rights and obligations in Confidential Information or trade secrets. Inclusion of any University employees or Student(s) as an inventor on a patent or as a creator of Intellectual Property arising from any activity is dependent on such individual meeting the legal requirements of the laws governing the grant or registration of such Intellectual Property.

(4) The law generally provides that where someone creates new Intellectual Property in the course of or incidental to their employment, such Intellectual Property belongs to the employer rather than the employee.

(5) The University pursues the development of Intellectual Property through investment and attraction of funds to the University's research endeavours. The University (in accordance with its legislative mandate) also undertakes the Commercialisation of suitable Intellectual Property of the University. The University's Commercial Activities Guidelines provide a set of principles and processes by which commercial activities are undertaken at UWS.

(6) The University is also committed to fostering partnerships with industry through which Intellectual Property can be commercialised. These partnerships provide benefit by accessing industry sources of funding for research, and this provides benefits to employees and Students, as well as the University.

(7) This policy applies to the employees, Students, visiting academics, research assistants, honorary appointees of the University including adjunct and conjoint appointees, emeritus professors, research fellows and contractors. For the purpose of this policy, honorary appointees of the University including adjunct appointees and emeritus professors will be considered and dealt with in the same manner as employees of the University. In addition, this policy applies to employees and Students of its controlled entities.

(8) The following are the principal categories and laws that have been created to define Intellectual Property rights:

  1. patents, protected in Australia under the Patents Act 1990;
  2. trade marks, protected in Australia under the Trade Marks Act 1995;
  3. designs, protected in Australia under the Designs Act 2003;
  4. copyright works, protected in Australia under the Copyright Act 1968, including literary works, dramatic works, musical works, artistic works, film, sound recordings, radio and TV broadcasts, published editions of works, and computer programs, processes, course material;
  5. traditional and indigenous knowledge;
  6. circuit layouts, protected in Australia under the Circuit Layouts Act 1989;
  7. plant varieties, protected in Australia under the Plant Breeder's Rights Act 1994;
  8. biological material;
  9. confidential information, including trade secrets and know how, protected in Australia under the common law;
  10. all similar intellectual and industrial property, which may be protected under law elsewhere in the world; and
  11. All other rights with respect to Intellectual Property as defined in Article 2 of the July 1967 Convention Establishing the World Intellectual Property Organisation.

Section 2 - Definitions

(9) For the purposes of this policy:

  1. Intellectual Property - means:
    1. statutory and proprietary rights in relation to Copyright and neighbouring rights including, literary works, dramatic works, musical works, artistic works, film, sound recordings, radio and TV broadcasts, published editions of works, and computer programs;
    2. all rights in relation to inventions, patents, plant varieties, registered and unregistered trade marks, registered and unregistered designs, circuit layouts;
    3. all other rights with respect to Intellectual Property as defined in Article 2 of the July 1967 Convention Establishing the World Intellectual Property Organisation;
    4. all rights in relation to traditional and indigenous knowledge;
    5. biological material;
    6. Confidential Information, including trade secrets and know how, protected in Australia under the common law and equity; and
    7. all similar intellectual and industrial property.
  2. Commissioned Work - means a specific work which the University has directed or requested an employee to create, over and above the employee's usual teaching, administrative or other duties, and includes a work created where the employee is remunerated over and above the employee's usual salary. A Commissioned Work may include course work, Creative Works or Scholarly Works.
  3. Commercialisation - means the process of developing and applying science, technology, research or an invention into a product, service or process which may also include the exploitation of, or dealing in, Intellectual Property, for the purpose of generating a commercial return or benefit.
  4. Confidential Information - includes commercially valuable information and trade secrets but it may also extend to personal information as well as secret or sacred information usually communicated by indigenous people.
  5. Copyright - means all rights in the nature of Copyright pursuant to the Copyright Act, including literary works, Course Materials, dramatic works, musical works, artistic works, films, sound recordings, broadcasts, published editions and certain types of performances. This policy should be read in conjunction with the Copyright Policy.
  6. Course Materials - means materials used in a course for the provision of lectures, tutorials, seminars, workshops, field or laboratory classes, and other teaching activities conducted by the University, and includes overhead transparencies, slides, photographs, maps, diagrams, handbooks, manuals, course outlines, exercises, computer programs and multimedia works that serve a teaching function.
  7. Course of Employment - includes any work undertaken by an employee within the scope of duties described in the applicable employee's Agreements, contract of employment, duty statement, position description, workload agreement, external consultancy or other work carried out on behalf of the University, work arising from directives or approvals by University officers on behalf of the University, work which may be inferred as in the Course of Employment by reason of use of University titles or resources or by involvement of other University employees or by direct derivation from activities or positions within the University.
  8. Creative Work - means works of a purely artistic or aesthetic nature (such as paintings and sculpture), and which are not otherwise included in the definition of 'Scholarly Works' under this policy.
  9. Scholarly Works - means works, such a scholarly books, articles, musical and dramatic works, but does not include works which are Course Materials.
  10. Student - means any person currently enrolled or enrolled at the time of creation of Intellectual Property, in any degree, diploma, award course, subject or unit offered by the University whether on a full-time or part-time basis, or at an undergraduate or postgraduate level.

Section 3 - Policy Statement

Part A - Notification and Disclosure of Intellectual Property Procedures

(10) When employees or contractors become aware of Intellectual Property developed by themselves, their team or a Student under their supervision, which may be suitable for registration or Commercialisation, they should advise their Unit head and UWS Innovation. Notification to the Associate Director, Innovation of any development of Intellectual Property is a pre-condition to any employees being able to have a share in any Commercialisation revenue generated by such Intellectual Property.

(11) The details of the Intellectual Property should be outlined in an Invention Disclosure Form and returned to the Associate Director, Innovation as soon as practicable or within one month of request by their Unit head or UWS Innovation.

Part B - Employees

(12) Application of this policy may be modified or excluded by written agreement between the University and employees subject to the approval of the Deputy Vice-Chancellor, Research and Development or their delegate.

(13) Unless otherwise agreed in writing, the University will, in its capacity as an employer, own all Intellectual Property developed by employees in the Course of Employment with the University. An employee shall not, without the prior written permission of the University, apply for registration of Intellectual Property in the name of the employee if that Intellectual Property is created in the Course of Employment.

(14) Moral rights are conferred on individual authors under the Copyright Act. These rights include, in relation to an author:

  1. a right of attribution of authorship; or
  2. a right not to have authorship falsely attributed; or
  3. a right of integrity of authorship.

    Moral rights are not transferred and can only be exercised by an individual author (or co-authors) of a Copyright work.

(15) Employees who work on personal projects and external private work outside of their Course of Employment with the University should declare this activity to their Unit head Such activities are also covered by the UWS Code of Conduct, External Work Policy, Additional Work Policy, and the Additional Work provisions in the current employee's Agreements. Employees should make such declaration to their immediate supervisor before they commence the personal project.

(16) Employees must avoid premature disclosure of inventions, material or information which may constitute Intellectual Property. The consequences of such a disclosure may prevent the University from obtaining protection or registration of Intellectual Property and may result in loss of commercial opportunity. The Associate Director, Innovation should be consulted prior to any disclosure of new inventions or developments in publications, to the media or otherwise to any third party.

(17) Intellectual Property may constitute a valuable and useful asset of the University. For instance, a trademark such as the University brand is an important University asset. Inventions from discovery by researchers may warrant protection to allow effective Commercialisation. Course Materials created by lecturers are Copyright protected and industrial designs, business methods or new plant breeds arising from research and development in different parts of the University, may all give rise to Intellectual Property which should be retained for the benefit of the University.

Scholarly Works and Creative Works

(18) Subject to clause (20) of this policy, the University grants ownership of Copyright in Scholarly Works or Creative Works created by an employee in the Course of Employment to the employee. The exception is where the Scholarly Works or Creative Works have been created pursuant to legally binding agreements with external funding bodies or commercial partners which otherwise vest ownership in the Scholarly Works or Creative Works.

(19) The grant of ownership of Copyright in Scholarly Works or Creative Works is subject to the reservation to the University of a non-exclusive, perpetual, irrevocable, royalty free licence to use the Scholarly Works or Creative Works for its teaching and research purposes.

Commissioned Works

(20) Intellectual Property in Commissioned Works, pursuant to the contract or arrangement by which the work is commissioned, will be owned by the University.

Course Materials

(21) The University owns Copyright in Course Materials created, developed and presented by employees of the University in the course of their employment. The University may license the use of such Copyrighted materials by employees in forums and workplaces external to the University of Western Sydney at its sole discretion.

(22) This principle does not prevent an employee from:

  1. using the skills they have developed during the course of their employment, in any future employment;
  2. receiving from the University at the end of the employee's employment, on request, a royalty-free, non-exclusive personal licence (in writing executed by an authorised officer of the University) to use conventional Course Materials, such as lecture notes, solely for teaching and scholarly purposes.

(23) This licence issued under clause (22) b will not allow Commercialisation of the Course Materials or transfer of any rights in the materials by the employee to any Third Party.

(24) With regard to non-conventional Course Materials, such as multimedia materials or course packs developed by a team, the University will consider, at its complete discretion, whether it is appropriate to grant a licence to an employee in the particular case.

(25) The author(s) of Course Materials created under a University research project and commercialised by the University (i.e. by licensing or sale to a Third Party other than for use by Students of the University or of an entity of the University) will be entitled to a distribution of profits as outlined in this policy.

Part C - Students

(26) Students, as they are not employees of the University, generally own the Intellectual Property that they create, subject to any written agreement to the contrary entered into by the Student.

(27) Students may be asked to assign their interest in the Intellectual Property that they create to the University. This assignment will usually be a condition of student participation in projects that:

  1. are funded by or involve industry collaborators;
  2. have Commercialisation horizons or objectives;
  3. have pre-existing Intellectual Property owned by the University or a Third Party; and/or
  4. result in Intellectual Property created jointly with the Student's supervisor or other University staff,

(28) The terms of the assignment, particularly where the research project or other activity involves an industry collaborator and/or is commercially focused, will usually provide that:

  1. the Student will share (together with other inventors or creators) in the net profit from Commercialisation (as outlined in this policy) that may be received by the University;
  2. the Student will retain Copyright in the Student's thesis;
  3. the Student must not be impeded in submitting a thesis for examination and completing requirements for the award of a degree, but reasonable arrangements must be entered into if necessary to protect the commercial value of Intellectual Property;
  4. the University may withhold the thesis from public access for a period determined by relevant contractual obligations;
  5. during the period described in sub-paragraph (d), the Student will also refrain from public disclosure of thesis content without prior written consent of the Associate Director, Innovation;
  6. it will be possible for the Student to submit academic papers to scholarly journals, subject to (g) below;
  7. the Student must maintain confidentiality in relation to the project; and
  8. the University will be provided with all necessary Intellectual Property rights to comply with its relevant contractual obligations; and
  9. the Student will agree to do all such things and sign such documents as reasonably necessary to give effect to the assignment of Intellectual Property to enable the University to protect and/or commercialise that Intellectual Property.

(29) The Student should be given the opportunity to obtain independent legal advice in relation to the assignment document.

(30) If a Student declines to assign Intellectual Property to the University, the University must, with the Student, select an alternative research project, of equal academic merit, for the Student to undertake, which does not involve an industry collaborator and is not commercially focused.

Student Theses

(31) A Student will own Copyright subsisting in the Student's thesis. The University will not claim ownership of Copyright in a Student thesis notwithstanding contractual agreements with external funding bodies or commercial partners.

Part D - Contractors

(32) Sometimes, the University will retain contractors for particular projects such as architects, executive search firms, business people or consultants. It is standard practice for Intellectual Property in material created for the purpose of the contract to be assigned to the University by the contractor.

(33) The University will request all contractors to assign to it the Intellectual Property in material created for the purposes of the contract and to provide appropriate Moral Rights consents to ensure that the University can use created works as envisaged under the contract. Employees responsible for developing contracts should seek to ensure that contract provisions reflect this clause.

(34) Contractors should not be entitled to distribution of profits from Intellectual Property created by them for the University.

Part E - Visiting Academics and Honorary Appointments

(35) Visiting academics and honorary appointments (such as Adjunct and Visiting Appointments, Conjoint and Emeritus Professor) working in the University should disclose their pre-existing Intellectual Property to the Associate Director, Innovation prior to commencement of their appointment or visitation rights. In certain circumstances the person may be asked to sign a confidentiality agreement or assign to the University the Intellectual Property they create while on appointment or visiting the University.

Part F - Intellectual Property Rights

Moral Rights

(36) The University recognises the moral rights of employees who are authors, as such rights are defined under the Copyright Act. On occasion third parties negotiating agreements with the University may seek the consent of such employees for them to waive moral rights. While the University will seek to preserve such moral rights of employees, in these instances (and other occasions where Commercialisation may occur), it may be required to seek the employee's consent to waive such moral rights. An employee may freely grant or withhold such consent.

Indigenous and Traditional Knowledge and Intellectual Property

(37) Employees and Students involved in the development of Intellectual Property in the University context shall ensure that they are respectful of and correctly acknowledge indigenous spiritual and cultural beliefs. Traditional knowledge or Intellectual Property is to be acquired from indigenous people on terms that are fair and with the agreement of the indigenous people from whom the knowledge or Intellectual Property is acquired. Use or acquisition of traditional knowledge (including making a written, visual or audio record) must be respectful of the secrecy or confidentiality obligations imposed on the material by the traditional owners.

(38) The University is also committed to protecting indigenous and traditional knowledge as being the Intellectual Property of Aboriginal and Torres Strait Islander people.

Third Party Rights

(39) The rights of Intellectual Property owners external to the University must be respected. To ensure that the University is not in violation of another party's rights through inadvertent infringement of their Intellectual Property all employees and Students should undertake reasonable investigation for potential Third Party Intellectual Property rights (including Copyright, patents and other rights) required for their research and/ or development of Course Materials prior to any use of the Intellectual Property. If an employee or Student is aware of Third Party rights which may be infringed by activities in which he or she is involved, this should be disclosed to responsible supervising staff.

Pre-existing Intellectual Property

(40) Employees must disclose, when they commence their employment (or as soon as possible thereafter):

  1. Any Intellectual Property that has relevance to the employee's work at the University that was developed by the employee before the employment commenced; and
  2. Whether that Intellectual Property is subject to any Third Party rights, for example the rights of the employee's previous employer, a publisher or a consultancy company.
  3. The terms of any agreement or arrangement (including but not limited to research and funding agreements preceding their employment) which may restrict the work, or the development or use of Intellectual Property arising out of such work, of that employee with the University.

(41) Where any pre-existing Intellectual Property of an employee is likely to be relevant to any present or future work performed for the University, or is subject to an agreement with a third party negotiated through the University, then the employee must notify the University of its existence, together with the details of any restriction on its use (as contemplated by Clause 42 of this policy). The University will assume that any such Intellectual Property applied by an employee can be freely used by the University, unless there is documentary evidence to the contrary.

(42) An employee should not purport to include Intellectual Property Rights (whether or not pre-existing) that are subject to Third Party rights in work produced for the University (including Course Materials), without first ensuring the University is notified and that written consent of those third parties is obtained.

Unauthorised Use of University Intellectual Property

(43) An employee, Student, or contractor who becomes aware of any unauthorised use or dealing in University Intellectual Property by a Third Party must report the unauthorised use or dealing to UWS Innovation.

Part G - Commercialisation of Intellectual Property

Exploitation and Dealing in University Intellectual Property

(44) Exploitation and dealing in University Intellectual Property is managed by UWS Innovation. Any exploitation and dealing in Intellectual Property by employees or Students should be endorsed by the Associate Director, Innovation prior to negotiations being commenced with third parties.

(45) Overall management of Commercialisation projects will rest with UWS Innovation, unless otherwise determined by the Deputy Vice-Chancellor, Research and Development, and the project will be managed in accordance with the University's Commercial Activities Guidelines. Contractual provisions in respect to the University's Intellectual Property should not be negotiated or agreed to with a Third Party without the advice of the Office of Legal Counsel.

(46) The Pro Vice-Chancellor, Research and Innovation or nominee will conduct a review of requests for investments in, or financial support of the protection of Intellectual Property developed by employees or Students, through applications for patents and other available registrable protections of Intellectual Property with the intention of making a decision in relation to such request.

(47) The University will use all reasonable endeavours to ensure the employee(s) and Student(s) are given the opportunity to have a role in any further research associated with the Commercialisation of the Intellectual Property.

Distribution of Profits

(48) The University is committed to sharing with academic staff employees who are creators or inventors of Intellectual Property the rewards that may arise from the Commercialisation of any University owned Intellectual Property arising out of the academic activities of the University, namely teaching and research. General Staff employees such as research assistants and technical staff may also have an entitlement where they are directly involved in these academic activities, dependent upon their contribution as a creator or inventor. Commercialisation of University Intellectual Property not directly arising from academic activities such as teaching and research is otherwise not subject to these distribution principles and such revenue will be retained solely by the University.

Transfer of Intellectual Property to Employees or Student Creators

(49) If the Pro Vice-Chancellor or their delegate determines that the Intellectual Property is not suitable for registration and Commercialisation or if the Commercialisation process has been terminated by the University, unless the University requires such Intellectual Property, then the employee(s) or Student(s) who created the Intellectual Property may request the University to transfer ownership of the Intellectual Property to them. This request must be made in writing to the Pro Vice-Chancellor.

(50) In response to a request under Clause 49 the Associate Director, Innovation may execute an agreement assigning the Intellectual Property to the inventor(s) and, subject to the University's discretion to determine otherwise where it is reasonable to do so, the terms of the assignment will usually provide for:

  1. the recovery of any direct costs incurred by the University in relation to the creation, protection and Commercialisation of the Intellectual Property created within the University;
  2. a reasonable return to the University (such as a percentage of profits) arising from any Commercialisation of the Intellectual Property by the parties to whom the Intellectual Property is assigned; and
  3. the retention by the University of a perpetual licence to use the Intellectual Property for its research and teaching purposes.

Part H - Record Storage and Retention

(51) In accordance with legislation and University Records Management Policy, Research Code of Practice and other relevant data management policies which may be developed from time to time, employees must ensure that full and accurate records are made and kept of all their activities associated with the development of Intellectual Property arising from research (including, bound laboratory notebooks, prototypes, formulae, data, software code, theses, grant applications, and reports), course development materials and Commercialisation activities (including market assessments, term sheets, prior art searches and agreements).

(52) Employees and Students must assist their organisational unit to ensure that these records are managed in accordance with the University's Records Management Policy and related legislation.

(53) Ownership of all records outlined in Clause 52 will vest with the University.

Part I - Dispute Resolution

(54) Any disputes or complaints arising in relation to the implementation of this Policy or a decision by the University should be addressed to the Deputy Vice-Chancellor, Research and Development in the first instance. The Deputy Vice-Chancellor, Research and Development may seek internal or external expert advice in dealing with the matter and he or she may at their sole discretion:

  1. decide the matter;
  2. refer the matter to internal grievance resolution mechanisms or external mediation for resolution;
  3. refer the matter for binding external arbitration; or
  4. decide the matter in the light of the outcomes of the internal grievance resolution or mediation.

(55) A decision of the Associate Pro Vice-Chancellor (Research) may be appealed to the Deputy Vice-Chancellor, Research and Development and then to the Vice-Chancellor if the process has not been followed correctly or new information becomes available which may influence the decision. The final determination for all disputes or complaints under this policy rests with the Vice-Chancellor and will be binding on all parties. This policy should be read in conjunction with the Complaint Handling and Resolution Policy.

Section 4 - Procedures

Part J - Evaluation of Intellectual Property Disclosures Procedures

(56) The Associate Director, Innovation will evaluate inventions and other Intellectual Property for possible protection and Commercialisation. This initial evaluation procedure should have regard to:

  1. University ownership of Intellectual Property;
  2. inventorship;
  3. Commercialisation rights;
  4. the existence of Third Party Intellectual Property or Background Intellectual Property not owned by the University;
  5. Intellectual Property protection strategy including patentability (including prior art, publications and prior use); and
  6. preliminary market assessment.

(57) The above assessment should be undertaken within a period of three months from the date of receipt of a properly completed invention disclosure form.

(58) During the notification, disclosure and evaluation periods there is an obligation of confidentiality placed upon relevant employees, Students, contractors and visitors in respect of the Intellectual Property. This provision is consistent with the UWS Code of Conduct.

(59) Employees, Students, contractors and visitors must inform the Associate Director, Innovation at the time the Invention Disclosure is submitted if any publications or disclosures are scheduled to occur during or after the evaluation period. This obligation of confidentiality may only be lifted on advice from the University or when the University determines not to proceed with Commercialisation and on the basis that no Third Party rights are affected.

Part K - Commercialisation and Exploitation of Intellectual Property Procedures

(60) If, following the recommendation of the Associate Director, Innovation or delegate(s) it is determined that the Intellectual Property is suitable for registration and/or Commercialisation, then:

  1. inventors who are employees or contractors whose Intellectual Property is owned by, or conveyed by contract to the University, will be required to execute a Deed or similar instrument confirming assignment of the Intellectual Property to the University;
  2. inventors who are Students (or employees and contractors where the employment or consultancy contract does not provide for the University to hold the Intellectual Property) will be requested to grant the University an assignment of the Intellectual Property and may also subsequently be required to further confirm such assignment in writing to allow for registration and/or Commercialisation by the University.

(61) Employee(s) providing assistance to the Commercialisation project may be eligible to seek recognition of their contribution in their workload agreement. This is subject to the endorsement of their Unit head, verification by the Associate Director, Innovation and the relevant employment agreement.

(62) The Associate Director, Innovation will inform the inventors at six month intervals of the Commercialisation activities undertaken in respect of the Intellectual Property.

(63) The University will use its best endeavours to ensure the employee(s) and Student(s) are given the opportunity to have a role in any further research associated with the Commercialisation of the Intellectual Property.

Distribution of Profits

(64) Prior to Commercialisation, agreement must be reached between the University and the inventors or creators regarding the distribution of profits. If there is no written agreement between the University and the inventors and creators in relation to the distribution of profits arising from the Commercialisation of the Intellectual Property, the inventors and creators will prima facie not be entitled to any such distribution.

(65) Subject to a contrary agreement in writing between the University and the inventors, net profit distribution will be as follows:

  1. 40% to the inventor(s) of the Intellectual Property. If there is more than one inventor, the amount is to be divided equally between all parties, unless there is a written agreement to the contrary.
  2. 30% to the University unit or units which supported development of the Intellectual Property.
    1. the University reserves the right to make a discretionary distribution of a proportion of these funds to the inventors or to the inventor's research unit(s). This decision will be made by the Deputy Vice-Chancellor, Research and Development.
  3. 30% to UWS Innovation.

(66) Subject to a contrary agreement in writing between the University and the inventors net profits from the Commercialisation are calculated after deducting:

  1. the University's costs of registering and maintaining the Intellectual Property;
  2. the University's costs relating to the development and creation of the Intellectual Property (which will be deemed to include the salaries, wages and expenses paid by the University to or on behalf of a employees or Student and the cost of any equipment, material and resources used in the development and creation of such Intellectual Property) and
  3. costs of the Commercialisation project.

(67) Net profits include only profits derived by the University, and do not include profits derived by any Third Party which is involved in commercialising the Intellectual Property.

Protection and Registration of Intellectual Property

(68) If the University, as advised by UWS Innovation, decides to undertake Commercialisation of Intellectual Property, the University will be responsible for making, and bearing the costs (or finding a commercial partner or other external funding to bear the costs) of any application for registration of Intellectual Property Rights until such time as the University determines that it will discontinue Commercialisation.

Section 5 - Guidelines

Part L - Intellectual Property Created Jointly by Employees and Students

(69) Students will generally own the Intellectual Property that they create, subject to any written agreement to the contrary entered into by the Student. However, in some cases the Student may not be sole owner of the Intellectual Property they create during their studies or candidature and due recognition of the intellectual contribution of all participants is part of a proper learning and research process.

(70) Students will frequently undertake research or study in the following situations and they need to be aware of the Intellectual Policy rights and responsibilities of all persons and/or organisations involved:

  1. team-based projects or collaborative research with their supervisors and/or other Students and staff;
  2. professional development placements (work experience programs) with industry or professional organisations;
  3. research institutes, centres, groups or Cooperative Research Centres;
  4. commissions, consultancies or Commercialisation projects; and/or
  5. Government or privately funded research projects.

(71) For example, a Student's supervisor may contribute intellectual or inventive input during the course of the Student's study or candidature. In these instances both the Student and the supervisor may be joint creators of the Intellectual Property and the rights associated with co-creation such as joint authorship and inventorship need to be respected.

(72) Co-creation gives rise to joint ownership of Intellectual Property. Ownership of Intellectual Property is governed in the first instance by the Intellectual Property Policy. The policy states that the University:

  1. Will claim ownership of Intellectual Property created by employees in the course of their employment (Clause 13).
  2. Will not claim ownership of Copyright in Scholarly Works or Creative Works created by employees (except where they have been commissioned or created for the University or a Third Party) (Clauses 18 and 19). The University reserves the right to use the Scholarly Works or Creative Works for its teaching and research purposes.
  3. Will not claim ownership of Intellectual Property created by Students (Clause 26) unless the Student has made a prior agreement to transfer ownership or agrees subsequently to transfer ownership to the University.

(73) Where the co-created Intellectual Property is Copyright in a Scholarly Work or Creative Work (other than those works which have been commissioned or created for the University or a Third Party) the ownership of the Copyright will vest with employee(s), Student(s) and if applicable, a Third Party. The UWS Research Code of Practice provides further guidance in respect to determining authorship, the consequences of misrepresenting authorship and dispute resolution mechanisms for use when authorship is in question.

(74) All other co-created Intellectual Property will be jointly owned by the Student and the University and, if applicable, a Third Party. In such instances, if the University or the Third Party seeks to exploit or deal in the Intellectual Property the creators will be asked to assign their Intellectual Property to the University. A Royalty Sharing Agreement will be negotiated between the employee(s) and Student creators (not all creators may have made equal contributions to the development of the Intellectual Property).

Part M - Course of Employment

(75) Generally, the University will consider that an employee has acted in the Course of Employment if the employee is performing the duties for which the employee has been engaged. In the case of the particular employee, this may include teaching duties, research, innovation or the preparation of material for the University's use.

(76) Subject to law and the circumstances of the particular case, the University will consider factors including but not limited to the following, in determining if any Intellectual Property was created in the course of the employment. For clarity, the following are indicators that may lead the University to conclude that Intellectual Property has been created in the Course of Employment:

  1. whether resources of the University were used. Resources include office facilities, University email accounts, internet access and equipment;
  2. whether the employee created the Intellectual Property with the input of other employees or enrolled Students;
  3. whether the employee or Student, in dealing with any external agency in relation to the Intellectual Property was understood to be a representative of the University, for example through the use of University letterhead, University email account, use of University facilities or University title for communication or production, or business cards; or
  4. whether the employee claimed pay for additional, or any in-kind payment for additional (over workload), work or other entitlements in respect of the creation of the Intellectual Property.
  5. whether the employee was expressly directed to do the work.

Part N - Visiting Academics and Honorary Appointments

(77) Prior to commencement or during the course of the appointment or visitation rights the appointee may be asked to sign a confidentiality agreement and/or assign to the University the Intellectual Property they create while on appointment or visiting the University. This request will usually be made in circumstances where the appointee may create Intellectual Property:

  1. jointly with UWS employees or Students;
  2. which includes UWS pre-existing Intellectual Property; and/or
  3. pursuant to a UWS grant or UWS commercial agreement with a Third Party.

(78) The request will take into account the appointee's employment status and if necessary an assignment of Intellectual Property or sharing arrangements will be sought from the appointee's employer.

Part O - Employee's Further Information

(79) Additional information and links may be available on the Associated Information page for this policy and on the UWS Innovation website. Employees and Students may also direct enquiries regarding Intellectual Property to ip@uws.edu.au.