(1) The purpose of this policy is to promote innovation by University of Western Sydney 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 the University.
(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:
(9) For the purposes of this policy:
(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 Research Engagement, Development and Innovation. Notification to the Director, Research Engagement, Development and 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 Director, Research Engagement, Development and Innovation as soon as practicable or within one month of request by their unit head or Research Engagement, Development and Innovation.
(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 and Vice-President, 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:
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 University's 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 Director, Research Engagement, Development and 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.
(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.
(20) Intellectual Property in Commissioned Works, pursuant to the contract or arrangement by which the work is commissioned, will be owned by the University.
(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:
(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.
(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:
(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:
(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.
(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.
(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.
(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 Director, Research Engagement, Development and 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.
(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.
(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.
(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.
(40) Employees must disclose, when they commence their employment (or as soon as possible thereafter):
(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.
(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 Research Engagement, Development and Innovation.
(44) Exploitation and dealing in University Intellectual Property is managed by Research Engagement, Development and Innovation. Any exploitation and dealing in Intellectual Property by employees or Students should be endorsed by the Director, Research Engagement, Development and Innovation prior to negotiations being commenced with third parties.
(45) Overall management of Commercialisation projects will rest with Research Engagement, Development and Innovation, unless otherwise determined by the Deputy Vice-Chancellor and Vice-President, 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.
(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.
(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 Director, Research Engagement, Development and 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:
(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.
(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 and Vice-President, Research and Development in the first instance. The Deputy Vice-Chancellor and Vice-President, Research and Development may seek internal or external expert advice in dealing with the matter and he or she may at their sole discretion:
(55) A decision of the Associate Pro Vice-Chancellor (Research) may be appealed to the Deputy Vice-Chancellor and Vice-President, Research and Development and then to the Vice-Chancellor and President 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 President and will be binding on all parties. This policy should be read in conjunction with the Complaint Handling and Resolution Policy.
(56) The Director, Research Engagement, Development and Innovation will evaluate inventions and other Intellectual Property for possible protection and Commercialisation. This initial evaluation procedure should have regard to:
(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 University's Code of Conduct.
(59) Employees, Students, contractors and visitors must inform the Director, Research Engagement, Development and 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.
(60) If, following the recommendation of the Director, Research Engagement, Development and Innovation or delegate(s) it is determined that the Intellectual Property is suitable for registration and/or Commercialisation, then:
(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 Director, Research Engagement, Development and Innovation and the relevant employment agreement.
(62) The Director, Research Engagement, Development and 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.
(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:
(66) Subject to a contrary agreement in writing between the University and the inventors net profits from the Commercialisation are calculated after deducting:
(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.
(68) If the University, as advised by Research Engagement, Development and 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.
(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:
(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:
(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 University's 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).
(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:
(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:
(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.
(79) Additional information and links may be available on the Associated Information page for this policy and on the Research Engagement, Development and Innovation's website. Employees and Students may also direct enquiries regarding Intellectual Property to email@example.com.