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Intellectual Property Policy

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Section 1 - Background and Purpose

(1) This document sets out the Policy and Procedures for disclosure, assessment and commercialisation of Exploitable Intellectual Property arising from research at the University. 

(2) As described in the Intellectual Property Statute 2009 and this Policy, the University owns Intellectual Property (‘IP’) generated by Staff Members in the course of employment except for Specified Works, which the authors own. The University does not own IP created by Students or Honorary Staff Members, except by express assignment. Staff Members, Honorary Staff Members and Students have an obligation to declare any Exploitable IP for assessment by the University. Proceeds of Commercial Exploitation of Exploitable IP will be shared with the Creators. Copies of the associated documents and forms described in this procedure may be obtained from www.latrobe.edu.au/commercial 

(3) The purpose of this Policy and Procedure is to:

  1. To state the principles for the exploitation and other use of Intellectual Property (‘IP’) in the outcomes of the research and teaching activities of Staff Members in the course of employment;
  2. To define the rights of the Staff Members involved in generating teaching and research outcomes;
  3. To assist Students and Honorary Staff Members to give effect to their obligations in relation to IP generated by them at the University.
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Section 2 - Scope

(4) Applies to:

  1. All campuses
  2. All staff members, students, honorary staff and visiting staff
  3. Research and teaching activities
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Section 3 - Policy Statement

(5) Under the Intellectual Property Statute, the University owns IP generated by Staff Members in the course of employment except for Specified Works, which the authors own. The University does not own IP created by Students or Honorary Staff Members, except by express assignment.

Exploitable IP and Obligations of Staff and Students

(6) Staff Members have an obligation to: declare any Exploitable IP arising in the course of employment; assist the University to protect and secure title in the IP (including executing formal assignments); and refrain from dealing in the IP. 

(7) Students and Visiting Researchers have an obligation to declare any Exploitable IP arising in the course of studies or work at the University.

Publication

(8) Staff Members, Students and Honorary Staff Members are encouraged to communicate the results of their research by submitting works for publication but must avoid undermining Exploitable IP through premature disclosure. Once Exploitable IP has been declared to the University, the University will keep any delay in publication to the time reasonably necessary to assess and protect the Exploitable IP. The University will maintain management arrangements to ensure prompt appraisals by professional staff. The University will not enter into contracts with third parties which prevent or delay publication except with the consent of the authors. In the case of research Students, the University will not agree to a delay which will prejudice completion of the Student’s thesis or damage future career prospects. 

Exploitable IP, Assignment and Reversion

(9) If the University decides to protect and exploit Exploitable IP, the University will require Creators who are Staff Members to sign an agreement confirming that the ownership of the IP rests with the University. In the case of Creators who are Students and Honorary Staff members, the University will require an assignment of ownership of the IP.

(10) If the University decides not to protect and exploit Exploitable IP the rights will be offered to the Creators on agreed conditions, which will usually include the University retaining a right to use the IP for its teaching and research.

Proceeds of Exploitation

(11) Not less than 30% of any proceeds of the Commercial Exploitation of IP will be payable personally to the Creator or Creators. An additional 15% will be available to academic Staff Members who are Creators to support their research or to be paid to them if they resign or retire. A further 25% will be available to the Creators’ School or Schools. The method of calculation and procedures for payment and distribution of proceeds is defined in the Intellectual Property Procedures.

Teaching Materials

(12) The University encourages the authors of Teaching Materials to consider making such materials publicly and freely available, e.g., via the internet, or publishing commercially providing that those materials are not subject to a prior third party agreement, such as a contract for the design or delivery of a course or training program. 

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Section 4 - Procedure

Part A - Disclosing Exploitable IP

(13) Staff Members, Students and Honorary Staff Members should obtain and complete the Invention Disclosure and Assessment form. This form enables the collection of brief details of any Exploitable IP arising from their research at the University. Completed forms should then be forwarded to the IP Manager for review. The Invention Disclosure and Assessment form may also be used by Staff Members, Students and Honorary Staff Members who wish to obtain an opinion from the IP Manager as to whether any potentially novel outcomes of research are Exploitable IP.

Part B - Appraisal of Invention Disclosure for Exploitable IP

(14) The IP Manager will ensure that disclosures made in accordance with section 1 above (‘Disclosures’) are reviewed in accordance with the process set out in the IP Review Flow Chart. 

(15) Receipt of Disclosures will be acknowledged by the IP Manager within two working days. 

(16) The IP Manager will review aspects of patentability, market potential, ownership, technical maturity and the research team provided in the Disclosure. Decisions about protecting Exploitable IP, e.g., through patent applications, will be made in consultation with Creators, based on commercial criteria set out in the Invention Disclosure and Assessment form. 

(17) Persons making Disclosures will be provided with responses within thirty days confirming:

  1. whether the subject matter is Exploitable IP and prima facie protectable; if protectable, e.g., in the form of a patent application, whether the University will support the cost of external professional Patent Attorney services and initial patent filing fees; or 
  2. if the University does not wish to support patent costs, whether the IP might be assigned to the Creator(s) for them to proceed with protection and commercialisation independently (Reversion); or
  3. whether a decision regarding the Invention Disclosure should be deferred, e.g., pending further research findings; or
  4. whether the Creators should proceed with publication.

(18) Students and Honorary Staff Members making Disclosures will additionally be asked to assist in determining whether:

  1. any Staff Member is potentially a Creator or co-Creator of the putative Exploitable IP disclosed; or 
  2. any third party has an interest in the putative Exploitable IP, e.g., through a funding agreement with the University.

(19) If in the opinion of the IP Manager a Staff Member is a Creator or co-Creator of the subject of the Disclosure, or there is an obligation to a third party, the IP Manager will respond to the person making the Disclosure confirming the potential interest of the University in any Exploitable IP.

Part C - Managing and Protecting Exploitable IP

(20) Subject to budget and expenditure limits, the IP Manager may decide on initial provisional patent filings. The University will not normally invest in protection beyond the provisional patent stage except with the approval of the Deputy Vice-Chancellor (Research) based on a business case or evidence of commercial interest or risk sharing with another organisation.

(21) Once a provisional patent application has been filed, the IP Manager will consult with the Creator(s) regarding the persons to be named as inventors using the Inventorship Enquiry Form. 

(22) The University will also seek to secure its rights in the ownership of the Exploitable IP by seeking a confirmatory assignment of ownership from each of the inventors. 

(23) The University may also obtain confidentiality undertakings and assignments from any students involved in projects that involve or potentially involve Exploitable IP.

Part D - Commercialisation of Exploitable IP

(24) The University will support the Commercial Exploitaton of Exploitable IP in consultation with the Creators having due regard for the preferences of Creators, ensuring fair terms for commercial rights to the Exploitable Intellectual Property through agreements with third parties, such as assignments, licences or collaborative research funding agreements.

(25) The aims of Commercial Exploitation are, in order of priority:

  1. to obtain support for research activities;
  2. to obtain a fair return for the skill and effort of researchers and the investment of the University; and
  3. to apply knowledge for public good.

Part E - Publication of Exploitable IP

(26) A delay in public disclosure of Exploitable IP may be required for a reasonable period to enable due assessment of commercial potential and protection options. Normally the period of any such delay will not exceed three months.
Creators of Exploitable IP will be provided with professional advice about drafts of publications to reduce the risk of prejudicial disclosure.

Part F - Reversion of IP to Creators

(27) If the University declines to protect and commercialise Exploitable IP in response to a Disclosure, Creators are entitled to require an assignment of rights from the University on reasonable terms in accordance with the Reversion Request Form.

(28) A decision to defer consideration of a Disclosure on reasonable grounds in accordance with procedure 2 above does not give rise to an entitlement to require assignment.

Part G - Commercialisation Proceeds

(29) The proceeds of commercialisation of Exploitable IP (not including Teaching Materials) shall be distributed in the portions defined in the Intellectual Property Policy, as follows:

  1. Creators’ personal share: This portion is available to be paid personally to the Creators or to their heirs or assigns. If there is more than one Creator, this portion will be distributed in accordance with any agreement between the Creators, absent which it shall be distributed in equal shares.
  2. Creators’ research share: If the Creators are current academic Staff Members at the time that proceeds are received, this portion is available to support their ongoing research. If the Creators are not current Academic Staff Members, this portion is available to be paid personally along with portion A above.
  3. Creators’ Academic Areas: Where the Creators include or at any time have included academic Staff Members, the Academic Areas to which those Staff Members are or were affiliated, will receive this portion to be used to assist the research development of the Academic Area at the discretion of the duly appointed head of that area.
  4. To University central funds: Accrued University central costs associated with registration and commercialisation of the relevant Exploitable IP will be charged against portion D. The balance will be available to support research commercialisation initiatives at the discretion of the Deputy Vice-Chancellor (Research).

Part H - Dealing in Teaching Materials

(30) Proposals to deal in, i.e., to license or assign to another party, rights in Teaching Materials must be approved by the Dean of the author’s Faculty. Contracts involving such transactions, such as licence agreements or contracts to deliver teaching services, must be approved in accordance with contract signing delegations and as set out in University policies and procedures.

(31) Any commercial proceeds from dealing in Teaching Materials will be available to the authors’ Schools or Centres as discretionary income.

(32) Staff Members may make those Teaching Materials of which they are the authors freely and publicly available without approval, provided that, where Teaching Materials have been co-authored, all authors are consulted and agree.

Part I - Primary Reviews of Decisions

(33) Without derogating from any other right of appeal or review under University legislation, any person who has an interest in a decision made under this Policy or these Procedures may request the Deputy Vice-Chancellor (Research) to review the decision.

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Section 5 - Definitions

(34) For the purpose of this Policy and Procedure:

  1. Commercial Exploitation has the meaning given in the Statute: the application, publication, development, use, assignment, licensing, sub-licensing, franchising, exploitation, sale or other utilisation of IP for the purpose of generating financial or other commercial gains.
  2. Creator means a Student, Staff Member or Honorary Staff Member who creates IP whether in conjunction with others or otherwise that is owned by the University.
  3. Exploitable IP means IP which may be the subject of Commercial Exploitation by the University.
  4. Honorary Staff Member means any person who is appointed to an honorary position at the University in order to pursue research and other scholarly activities at the University and includes visiting researchers.
  5. Intellectual Property/IP means any rights in relation to copyright, designs, inventions, plant varieties, trade marks (including service marks), confidential information, trade secrets, know-how, circuit layouts and patent rights, whether registered or unregistered.
  6. IP Manager means the officer designated to manage the University’s intellectual property.
  7. Specified Work has the meaning given in the Statute. Specified Works include any literary, dramatic, musical or artistic works but do not include (a) Teaching Materials, (b) computer programs, or (c) copyright works subject to an agreement between the University and a third party.
  8. Staff Member means a member of the full-time, part-time or casual academic or general staff, whether holding a permanent or other position.
  9. Statute means the Intellectual Property Statute 2009
  10. Student means a person enrolled in a course or subject at the University and includes a post-graduate student.
  11. Teaching Materials has the meaning given in the Statute and includes works developed by a Staff Member and made available to a Student in any format. 
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Section 6 - Stakeholders

Responsibility for implementation – Director, Research Services.
Responsibility for monitoring implementation and compliance – Manager, Research Development