1 Intellectual Property Management Victoria University policy and how it affect you as a member of staff or student Dr John McDougall Director Office for

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Intellectual Property Intellectual Property ManagementManagement

Victoria University policy and how it Victoria University policy and how it affect you as a member of staff or affect you as a member of staff or

studentstudent

Dr John McDougallDr John McDougall

DirectorDirector

Office for Research and DevelopmentOffice for Research and Development

Office for Research and Development

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What is Intellectual PropertyWhat is Intellectual Property

IP is generally regarded as representing ‘…the IP is generally regarded as representing ‘…the tangible output of your mind or intellect’ tangible output of your mind or intellect’

It does not include your thoughts or knowledgeIt does not include your thoughts or knowledge Some intellectual property must be registered for Some intellectual property must be registered for

protection of rights e.g. patents, trademarks. protection of rights e.g. patents, trademarks. Other intellectual property rights comes into Other intellectual property rights comes into existence on creation e.g. copyrightexistence on creation e.g. copyright


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Why is Intellectual Property Why is Intellectual Property Important to a University (1)Important to a University (1)

Government policyGovernment policy– Wills ReportWills Report– Batterham ReportBatterham Report– White PaperWhite Paper– Backing Australia’s AbilityBacking Australia’s Ability– Knowledge NationKnowledge Nation– ‘‘Crossroads’Crossroads’– National Principles of IP Management for National Principles of IP Management for

Publicly-funded Research (multiple agencies)Publicly-funded Research (multiple agencies)– Interim National Guidelines for IP Management Interim National Guidelines for IP Management

(NHMRC)(NHMRC)– Managing and Commercialising IP (Victorian)Managing and Commercialising IP (Victorian)


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Why is Intellectual Property Why is Intellectual Property Important to a University (2)Important to a University (2)

Potential source of incomePotential source of income– Access to Government funding Access to Government funding

sourcessources– Direct through exploitationDirect through exploitation– Indirect through funding Indirect through funding

arrangementsarrangements– Leverage for other grantsLeverage for other grants

Good custodianship of public Good custodianship of public resourcesresources


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Intellectual property of potential Intellectual property of potential importance to Victoria Universityimportance to Victoria University

Patents Patents for new or improved products or processes;for new or improved products or processes; Copyright Copyright for original material in literary, artistic, dramatic or musical for original material in literary, artistic, dramatic or musical

works, and in other works that include films, broadcasts, multimedia works, and in other works that include films, broadcasts, multimedia and computer programs;and computer programs;

Trade mark Trade mark for words, symbols, pictures, sounds, smells or a for words, symbols, pictures, sounds, smells or a combination of these, to distinguish the goods and services of one combination of these, to distinguish the goods and services of one trader from those of another;trader from those of another;

Design Design for the shape or appearance of manufactured goods;for the shape or appearance of manufactured goods; Circuit layout rights Circuit layout rights for the 3-dimensional configuration of electronic for the 3-dimensional configuration of electronic

circuits in integrated circuit products or layout designs;circuits in integrated circuit products or layout designs; Plant breeder’s right Plant breeder’s right for new plant varieties;for new plant varieties; TTrade secret rade secret including know-how, other confidential or proprietary including know-how, other confidential or proprietary

information and background knowledge.information and background knowledge.


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What are the issues?What are the issues?

OwnershipOwnership IdentificationIdentification ProtectionProtection Management Management Exploitation/CommercialisationExploitation/Commercialisation


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VU PolicyVU Policy

New policy approved by Council September New policy approved by Council September 20022002

http://research.vu.edu.au/ordsite/consult0.phphttp://research.vu.edu.au/ordsite/consult0.php


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OwnershipOwnership

Who owns the IP?Who owns the IP? Is there a difference in ownership Is there a difference in ownership

between different classes of IP?between different classes of IP?


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Ownership – VU Policy(1)Ownership – VU Policy(1)6.1 Subject to exceptions or qualifications elsewhere

in this Policy, Victoria University claims sole ownership of intellectual property created or developed by staff in the course of their employment by the University, by independent contractors while engaged by the University and by other legal persons engaged under agreements with the University

6.2 Outside paragraph 6.1, the University makes no claim to ownership of intellectual property created by staff in the course of their employment by the University.


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Ownership – VU Policy(2)Ownership – VU Policy(2)6.3 The University makes no claim to ownership of

intellectual property created by students, except where the creation of that intellectual property involves…


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Ownership – VU Policy(3)Ownership – VU Policy(3)

6.6 As between Victoria University and its staff and students, copyright in -

(a) journal articles and conference presentations,(b) textbooks and audio-visuals,(c) literary, artistic, dramatic or musical works, and(d) subject matter other than works, including sound

recordings, cinematographic films, television and sound broadcasts, digital works and published editions of works, that have not been specifically commissioned by the University but which might, except for this clause, be held by the University will be waived to the originators unless, …


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Ownership – VU Policy(4)Ownership – VU Policy(4)6.7 Victoria University claims ownership of all teaching and learning

materials developed by staff in the course of their employment by the University, by independent contractors while engaged by the University for this purpose and by other legal persons working under agreements with the University.

6.8 Where Victoria University owns intellectual property in teaching and learning materials pursuant to paragraph 6.7, Victoria University shall grant the author or creator of the teaching and learning materials a fee free irrevocable non-exclusive licence to use that intellectual property for teaching or research or for any other purpose that the author or creator as an individual may have that is within the scope of Victoria University’s objects including, without limitation, using that intellectual property for teaching or research at another university or educational institution, but not for any commercial use by the creator or any other university, educational institution or other person, body or entity whatsoever.


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IdentificationIdentification

Who has the expertise? Who has the expertise? Who has the responsibility?Who has the responsibility?

– ResearchersResearchers– MentorsMentors– Intellectual Property OfficerIntellectual Property Officer

Understanding the difference Understanding the difference between IP and a ‘good idea’ or a between IP and a ‘good idea’ or a discoverydiscovery


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Identification –VU PolicyIdentification –VU Policy

9.2 Subject to paragraph 9.1 [excludes teaching and learning material unless it has commercial potential] where an originator creates intellectual property which s/he has grounds to believe could be commercially exploitable, s/he will be required to:

(a) immediately report its existence to the Intellectual Property Officer through the relevant head of department or course supervisor…

(b) …[may be required to] treat the intellectual property as confidential…


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ProtectionProtection What is necessary?What is necessary?

– Some IP requires registration, other IP does Some IP requires registration, other IP does notnot

Competing needs in relation to career Competing needs in relation to career advancement and commercial successadvancement and commercial success

Patent process well developed and Patent process well developed and described, but many requirementsdescribed, but many requirements– E.g. laboratory books; importance of getting E.g. laboratory books; importance of getting

the claims rightthe claims right Who pays for registration?Who pays for registration?

– Full national phase registration of patents Full national phase registration of patents up to $100k+up to $100k+


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Protection – VU Policy(1)Protection – VU Policy(1) Refer Section 9 of policyRefer Section 9 of policy Generally the University will take Generally the University will take

responsibility for management of responsibility for management of the protection of its intellectual the protection of its intellectual property. property.

If University does not wish to If University does not wish to proceed, it may assign the IP to proceed, it may assign the IP to the creator to exploitthe creator to exploit


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Protection – VU Policy(2)Protection – VU Policy(2)

9.3 Once the Intellectual Property Officer becomes aware (whether by notification or otherwise) of intellectual property that may require protection, s/he must decide, within a reasonable time, whether or not Victoria University wishes to become involved in the protection of the intellectual property. Originators will be required to provide all relevant information to support the Intellectual Property Officer in making this determination.


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Protection – VU Policy(3)Protection – VU Policy(3)

9.4 If the University determines that it wishes to become involved in the protection of intellectual property pursuant to paragraph 9.3, the University shall determine within a reasonable time the most appropriate means for protecting that intellectual property.

9.5 If the University decides that it wishes to become involved in the exploitation of intellectual property … the University shall determine … the most likely route for its exploitation and will normally commence activity towards this exploitation within that time.

.


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Protection – VU Policy(4)Protection – VU Policy(4) 6.4 Where …Victoria University owns or is entitled to intellectual

property that has commercial exploitation potential, the University will waive its rights to the originator under agreed conditions… determined on a case by case basis if: (a) the Intellectual Property Officer decides at any time that the University

will not become involved in the commercial exploitation of the intellectual property;

(b) the Intellectual Property Officer fails to make a decision in accordance with section 9; or

(c) the Intellectual Property Officer decides that Victoria University will become involved in the commercial exploitation, but the University fails to take any further steps to facilitate the exploitation.

… The originator may not assign the rights to a third party without the approval of the University, such approval shall not be withheld unreasonably.


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ManagementManagement

What decisions have to be made?What decisions have to be made? Who makes them?Who makes them? Expertise?Expertise? Who pays?Who pays? Understanding of roles and mutual Understanding of roles and mutual

obligations of researchers and obligations of researchers and universities e.g. timing of release universities e.g. timing of release


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Management – VU PolicyManagement – VU Policy

Section 9 of IP PolicySection 9 of IP Policy Intellectual Property Officer – Pro Intellectual Property Officer – Pro

Vice-Chancellor (Research and Vice-Chancellor (Research and Development)Development)

Technology Commercialisation Technology Commercialisation Manager - Dr Terry Harders in Manager - Dr Terry Harders in Office for R&DOffice for R&D


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Exploitation/CommercialisationExploitation/Commercialisation

Choice of best pathwayChoice of best pathway Early exit vs. hold onEarly exit vs. hold on Can only be done on case by case Can only be done on case by case

basisbasis Financial recognition for Financial recognition for

originators if not owners of the IPoriginators if not owners of the IP


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Exploitation/Commercialisation – Exploitation/Commercialisation – VU Policy (1) VU Policy (1)

Case by caseCase by case9.6 In making her/his decision under

paragraph 9.3, 9.4 and 9.5, the Intellectual Property Officer will normally consult with the originator and any other relevant persons…


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Exploitation/Commercialisation – Exploitation/Commercialisation – VU Policy (2)VU Policy (2)

Recognition that staff should benefit from Recognition that staff should benefit from the commercialisation of IP created by themthe commercialisation of IP created by them

10.1 Except for work as described in paragraph 10.4 [consultancy] and 10.5 [commissioned by University], if Victoria University as owner, or licensee, solely or jointly with others who are not staff or students, derives any financial return from the commercial exploitation of intellectual property, the University will normally distribute the return, or arrange for its distribution, in accordance with the provisions below.

Refer box for guidance on eligibility


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Commercialisation – VU Policy (3)Commercialisation – VU Policy (3)10.2 Generally, it is the intention that, after deducting reasonable

costs, as set out earlier in paragraph 4.2(c)(ii), and in consideration of the likely return, the net revenue received by the University from commercial exploitation will be distributed as follows:

Net revenue Originator/s Appropriate Unit/s University

First $5,000 100% 0% 0%Additional 40% 30% 30%

10.6 … the Intellectual Property Officer may determine that the staff member is offered equity in the company, as an alternative to the distribution of net revenue from the exploitation of the intellectual property.


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Other important issues for Other important issues for researchers researchers

Moral rights of creatorsMoral rights of creators Confidential informationConfidential information Conflict of interestConflict of interest


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Moral rightsMoral rights

Recent addition to the Copyright ActRecent addition to the Copyright Act1.14 Victoria University recognises and will make reasonable effort to

protect the moral rights of authors or other creators of copyright works:

(a) to attribution of authorship or creation;

(b) not to have authorship or creation falsely attributed; and

(c) to not have the work subjected to any material distortion, mutilation or other modification to the integrity of the work that is prejudicial to the author’s or creator’s honour or reputation.

Moral rights cannot be waived, but creators can agree to have their moral rights infringed


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Confidential InformationConfidential Information

Only relates to information that is defined Only relates to information that is defined as confidentialas confidential

Staff may be asked to sign a Confidentiality Staff may be asked to sign a Confidentiality Agreement with a third party. This is a Agreement with a third party. This is a requirement of some contracts, or even requirement of some contracts, or even interaction with other organisations. interaction with other organisations.


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Conflict of InterestConflict of Interest

Potential for conflict of interest to Potential for conflict of interest to arise for staff during the arise for staff during the exploitation of IPexploitation of IP

Managed on a case by case basis Managed on a case by case basis and generally requires the staff and generally requires the staff member to sign a Deed of member to sign a Deed of Agreement with the University that Agreement with the University that sets out the process for sets out the process for management of the conflictmanagement of the conflict

Documents

1 Intellectual Property Management Victoria University policy and how it affect you as a member of staff or student Dr John McDougall Director Office for