1. Purpose of policy
The following policy is intended to address the ownership and management of intellectual property arising in connection with the conduct of USC’s activities and does not address the compliant use of third party copyright content as this is addressed in the Copyright - Managerial Policy.
2. Application of policy
This policy applies to all staff, students and members of University decision-making or advisory bodies.
In this policy the following definitions apply:
Author means the author of copyright works
Administration Works means works in which copyright subsists that are brought into existence in relation to the administration, promotion and management of USC, but excludes Commissioned Works and Course Materials
Commercialisable IP means Intellectual Property that may have Commercialisation prospects
Commercialisation means any process to sell, assign, license, sub-license, or otherwise trade in or deal with Intellectual Property for financial profit (excluding fees paid by student enrolled in a program leading to a USC award) and commercialise and commercialising have corresponding meanings
Copyright means all rights in the nature of copyright pursuant to the Copyright Act 1968, including literary works, Course Materials, dramatic works, musical works, artistic works, films, sound recordings, broadcasts, published editions and certain types of performances
Cost Centre Manager means the manager responsible for the budget of the organisational unit
Course Materials, when not Commissioned Works, means (but is not limited to) materials created by a staff member and used by the staff member in a course for the provision of lectures, tutorials, seminars, workshops, field or laboratory classes, and other teaching activities conducted by USC, and includes (but is not limited to) overhead transparencies, slides, photographs, maps, diagrams, handbooks, manuals, course outlines, exercises, assessment items, answer/marking guides, computer programs and multimedia works and all other material created, developed used or supplied for the purposes of learning and teaching at USC. It includes the output, in whatever form, of any investigation undertaken to develop the materials.
Creative Works means materials which are the creative output of academic staff members including creative literary works ( e.g. novels, short stories, plays, poems, song lyrics, creative writing or dramatic works),visual performing and fine arts (e.g. music compositions, sound recordings, films, paintings, photographs, sculptures, dance , theatre , architecture , photography and print making ) and includes material created in its development and any art form developed primarily for aesthetic and/or concept purposes rather than utility or teaching purposes.
Creator means the Staff Member or Student responsible for creating Intellectual Property and includes an author, creator or inventor.
Intellectual Property means Statutory Intellectual Property (protected by statute) including:
- the Patents Act, 1990, which deals with patents granted over inventions, discoveries, and new products and processes
- the Copyright Act, 1968, which deals with works in which copyright subsist, including literary works (including computer programs), dramatic works, musical works, artistic works, films, sound recordings, broadcasts, published editions and certain types of performances
- the Plant Breeders’ Rights Act, 1994, which deals with new plant varieties
- the Designs Act, 1906, which deals with industrial and product designs
- the Trade Marks Act, 1995, which deals with trade marks
- The Circuit Layouts Act, 1989, which deals with circuit layouts
- Confidential information and trade secrets (protected by general law) including:
- an invention or discovery, before the filing of a patent application
- the contents of a patent application up to the time that a patent is granted
- new commercially valuable knowledge which is intentionally omitted from a patent application, and never becomes protected by the grant of a patent, for example, to minimise the prospect of reverse engineering
- biological materials
- other trade secrets.
Moral rights has the meaning specified in the Copyright Act 1968 applying to all works except films in existence on 21 December 2000 which are still protected by copyright and all works including films created after that date. The moral rights of a creator are the right of attribution of authorship in respect of that work, the right not to have authorship of the work falsely attributed and the right of integrity of authorship in respect of that work.
Net Commercialisation Revenue means net returns after deduction of all direct costs in the creation development and protection of the Intellectual Property
Scholarly Works means materials which are the conventional output of academic staff members, including academic publications, any article (refereed or non-refereed), presentations, papers, book or book chapter(s) (including textbooks), manuals, in any medium and includes materials created in its development.
Staff or Staff Member means an employee of USC
Student means any person enrolled in any degree, diploma, subject or unit offered by USC whether on a full-time or part-time basis, or at an undergraduate and postgraduate level
University Project means a program of work or research which is funded by an external source; or is carried out in collaboration with another person or entity; or a project which has been funded internally with substantial resources beyond that which is ordinarily provided to staff or students.
Visitor means a person who is not an employee at the hosting institution
4. Policy Principles
4.1 The University is committed to:
(a) Preserving academic values and expectations
(b) Providing an environment for staff and students where scholarship, innovation and entrepreneurship can flourish
(c) Protecting the interests of staff, students and the University arising from the creation, protection and commercialisation of Intellectual Property
(d) Maximising the economic, social and cultural benefit for the University and the community arising from research
(e) Valuing and respecting external partnerships
5. Ownership of Intellectual Property Created by Staff
5.1.1 In accordance with general law principles, USC as an employer is the owner of Intellectual Property created by Staff Members, in the course of their employment
5.1.2 USC includes express provisions on ownership of Intellectual Property in its terms of employment.
5.2 Scholarly or Creative Works
5.2.1 The University grants ownership of Copyright in Scholarly Works or Creative Works created by a Staff Member to the Staff Member.
5.2.2 The exception is Scholarly Works or Creative Works which have been created pursuant to a legally binding agreement between USC and any funding, collaborative or commercial entity, which vests ownership otherwise.
5.2.3 The grant of ownership of Copyright to the Staff Member is subject to USC reserving a non exclusive perpetual irrevocable royalty free licence to use the Scholarly Works or Creative Works for teaching and research purposes.
5.3 USC Staff Visiting Other Institutions
5.3.1 Prior to USC Staff Members commencing as Visitors to another institution they are required to resolve, as between the Staff Member, USC and that other institution, issues of intellectual property ownership and rights relating to the works created by them during their visit.
5.4 USC Staff Commissioned Work
5.4.1 USC is the owner of all Intellectual Property rights in work which USC has directed or requested a Staff Member to create, over and above the Staff Member’s usual duties, for which the Staff Member is remunerated over and above the Staff Member’s usual salary and the provisions for Intellectual Property Created by Contractors below, will be applied.
5.5 USC Course Materials
5.5.1 Course Materials created by USC staff prior to their USC employment
126.96.36.199 USC does not own copyright or any other form of Intellectual Property in Course Materials written or created by a Staff Member prior to the commencement of the staff member’s employment.
5.6 License to USC by staff
5.6.1 Where staff members own or have the right to use copyright in Course Materials, staff members are required upon employment, to grant USC a non-exclusive, royalty-free, worldwide licence to reproduce the Course Materials for USC’s teaching purposes, and this license continues after the staff member’s employment at USC ceases.
5.6.2 This license extends to the use of these Course Materials for the on line delivery of courses.
5.6.3 Pursuant to this license, USC may reproduce these Course Materials, distribute these Course Materials, and may amend, adapt, and translate these Course Materials as USC in its sole discretion determines.
5.6.4 Any assignment or license by staff members of these Course Materials to another person, such as book publishers, must be subject to this continuing license to USC.
5.6.5 The staff member warrants that any material to which this clause applies is at law owned by them.
5.6.6 It is the staff member’s responsibility to ensure that during their employment at USC, that they do not breach the IP rights of any party or cause USC to breach the IP rights of any party.
5.7 Course Materials created by staff during USC employment
(a) USC owns copyright and any other form of Intellectual Property in Course Materials written or created by any staff member in the course of the staff member’s employment at USC.
(b) Any Staff Member may use Course Materials in the course of teaching at USC.
5.7.2 License to Staff Members
(c) USC grants Staff Members who have created Course Materials during their employment at USC, a non-exclusive, royalty-free, worldwide, non-transferable licence to use the Course Materials (excluding the contribution of others to collaboratively-produced materials) for teaching and research purposes, both during and after the Staff Member’s term of employment at USC
6. Intellectual Property in Administration Works
6.1 USC will retain copyright and all other intellectual property rights in all Administration Works created by Staff Members (including professional, teaching and research staff).
7. Intellectual Property Created by Visitors
7.1 Visitors having access to and use of any USC facilities, equipment or intellectual property or participating in any teaching or research activities of USC are required to disclose any pre-existing intellectual property brought to USC and resolve intellectual property ownership and rights relating to work created by them during their visit through negotiations between themselves, USC and any other third party prior to commencing their visit or appointment.
8. Intellectual Property Created by Contractors
8.1 As a general rule USC will require ownership of all intellectual property arising from work performed by its contractors.
8.2 USC recognises that there may be exceptions to this in which case USC will ensure that USC is granted a license on suitable terms, to use any such intellectual property that it does not own.
9. Intellectual Property Agreements created in the course of externally funded projects, research collaborations or joint ventures
9.1 USC may enter into agreements or University Projects concerning intellectual property rights and ownership including agreements to assign or licence ownership of intellectual property. This includes agreements with third parties, staff members and/or students
9.2 In negotiating such an agreement the University will, as far as practicable, ensure that the terms of the agreement are consistent with the principles set out in the other provisions of this policy.
9.3 Where such an agreement requires creators to assign intellectual property to the University, or to some other person, the University must, as far as practicable, ensure that the terms of the agreement are brought to the attention of those creators before they commence the work in question.
10. Moral Rights
10.1 USC recognises the Moral Rights of Staff and Students i.e. the right of attribution of authorship in respect of their work, the right not to have authorship of the work falsely attributed and the right of integrity of authorship in respect of that work.
10.2 USC will observe all Moral Rights. However USC may seek the written consent of creators for their work to be treated in a manner that would otherwise be an infringement of their Moral Rights where USC is obliged so to do under the conditions of funding for any research project or program.
11. Indigenous and Traditional Knowledge
11.1 USC recognises the six core values of reciprocity, respect, equality, responsibility, survival & protection, and spirit & integrity as being important to indigenous Australians. Acquisition of Indigenous Australian traditional knowledge, ideas, cultural expressions and materials (including making a written, visual or audio record) of by Staff Members or Students must be done in consultation and agreement with the relevant indigenous group or Elders and with respect for and acknowledgement of their spiritual and cultural beliefs.
12. Intellectual Property Created by Students
12.1 Students own the Intellectual Property they create in the course of their studies except where a student participates in a University Project.
12.2 Where a student participates in a University Project in which the student creates or may create intellectual property, the student:
(a) May be required , as a condition of participation , to assign or license their Intellectual Property (excluding copyright in their Thesis) and/or give consent to in relation to any moral right he or she may have in their work in order for USC to meets its legal obligations with third parties;
(b) Is entitled to a share in net commercialisation revenues received by USC from development of that intellectual property in accordance with this Policy
(c) Will be advised to seek independent legal advice on the effect of the assignment or license and/or consent in relation to moral rights;
(d) May be required to observe obligations of confidentiality and sign a Confidentiality Agreement in relation to the University Project;
(e) Is free to decline to participate in any University Project where sub clause (i) applies.
12.3 The Director, Office of Research may identify circumstances when assignment of student’s Intellectual Property may be an appropriate condition imposed for participation in a University Project
12.4 It is the responsibility of the lead USC researcher, investigator or project leader in the University Project and/or the student’s supervisor to notify the student, prior to their commencement of any activities in a University Project, of the conditions of participating, including:
(a) Requirements for assignment or licensing of the student’s intellectual property rights
(b) Requirements for consent in relation to the student’s moral rights
(c) Requirements for Confidentiality Agreements by the student
12.5 It is the responsibility of the Director, Student Wellbeing to provide referral services and information to assist students to seek independent legal advice.
12.6 A student cannot be required by USC to assign his or her Intellectual Property in order to qualify for enrolment or to remain enrolled in a course or to complete the requirements of a course.
13. Commercialisation of Intellectual Property
13.1 IP Notification Register
13.1.1 USC will maintain an Intellectual Property Notification Register
13.1.2 When Staff Members or Visitors become aware of Commercialisable IP, which has been developed either by them or a staff member or a team of staff and students, they must identify and disclose the Commercialisable IP pursuant to the IP Procedures.
13.1.3 Notification is a pre-condition of entitlement to distribution of any Net Commercialisation Revenue.
13.2 Cost Centre Managers Determination and Recommendations
13.2.1 Upon receiving advice of entry to the IP Notification Register of Intellectual Property which has been created in connection with their Cost Centre, Cost Centre Managers will within 14 days:
(a) Determine whether their Cost Centre will allocate resources to the investigation, protection and development of notified Commercialisable IP which has been generated in connection with their Cost Centre.
(b) Recommend whether USC exercise its discretion to increase distributions of Net Commercial Revenue to a particular creator as an exceptional case
(c) Inform the Director, Office of Research of their determinations and recommendations above.
13.3 Director, Office of Research
13.3.1 Upon receipt of the Cost Centre Managers’ advices the Director, Office of
Research will refer determinations and recommendations from Cost Centre Managers within 14 days:
- in the case of research developments to the Deputy Vice-Chancellor (Research and Innovation)
- in the case of all other developments to the Senior Deputy Vice-Chancellor together with advices relating to any relevant projects.
13.4 Deputy Vice-Chancellor (Research and Innovation) and Senior Deputy Vice-Chancellor Determinations
13.4.1 The Deputy Vice-Chancellor (Research and Innovation) or the Senior Deputy Vice-Chancellor will determine, in accordance with USC’s risk management framework, whether USC wishes to commercialise any Intellectual Property and the distribution of Net Commercial Revenue
13.4.2 In making a determination the Deputy Vice-Chancellor (Research and Innovation) or Senior Deputy Vice-Chancellor will:
(a) Consult in confidence with all creators and any other relevant party
(b) Take into account:
(i) The direct and indirect contribution made by USC to the development of the Intellectual Property including the nature and extent of use of University facilities
(ii) The requirement that creators be treated fairly and equitably in relation to sharing the benefits of commercialisation
(iii) The degree of intellectual input from students, University staff and third parties
(iv) The nature of the Intellectual Property and the extent of patent or other protection desirable
(v) Whether the grant of patent or other protection will assist the development and subsequent commercial exploitation of the Intellectual Property
(vi) Whether it is desirable for USC to maintain an interest in the further development of the Intellectual Property and
(vii) The probable commercial returns to USC
13.5 Distribution of Net Commercial Revenue
13.5.1 Subject to Section 8, if USC commercialises any Intellectual Property, or receives any revenue from commercialisation of intellectual property, USC normally will distribute Net Commercial Revenue in the following manner:
(a) 50 percent to the Creators .In the case of more than one creator then distribution shall be according to the proportionate individual contribution of each creator unless those contributors agree otherwise. In the case of uncertainty or dispute between contributors, the Deputy Vice-Chancellor (Research and Innovation) or Senior Deputy Vice-Chancellor will determine proportionate contributions for the purpose of net revenue distribution to the contributors.
(b) 25 percent to the Creator’s Cost Centre or, if a member of a School, the Creator’s School, for use as Executive Dean or the Head of the School determines. At its discretion the Faculty may apply this revenue to funding further research by the creators.
(c) 25 percent to USC central funds to contribute to University overhead costs.
13.5.2 USC may exercise discretion to vary distributions in exceptional cases.
13.6 Assignment of Intellectual Property to Staff or Students
13.6.1 Where it is determined that USC does not wish to commercialise Intellectual Property, or the commercialisation process has been terminated by USC then the creators of the Intellectual Property may request USC transfer ownership of the Intellectual Property to them. This request must be made in writing to the Deputy Vice-Chancellor (Research and Innovation) or Senior Deputy Vice-Chancellor.
13.6.2 In response to such a request the Deputy Vice-Chancellor (Research and Innovation) or Senior Deputy Vice-Chancellor may execute an agreement assigning the Intellectual Property to the creators and subject to the University’s discretion to determine otherwise, the terms of assignment will provide for:
(a) The recovery of any direct costs associated with the commercialisation process to the date of assignment, and/or
(b) A reasonable return to the University arising from any commercialisation of the Intellectual Property by the parties to whom the Intellectual Property is assigned, and/or
(c) The retention by USC of a worldwide royalty free non-exclusive perpetual licence to use the Intellectual Property for its research and teaching purposes.
13.7 Dispute Resolution of Commercialisation issues
13.7.1 This clause does not apply to disputes involving third party agreements, unless all the third parties agree to be so bound.
13.7.2 If a creator has a concern or dispute arising in relation to the implementation of this section of the Policy that person may notify the Deputy Vice-Chancellor (Research and Innovation) or Senior Deputy Vice-Chancellor in writing about that dispute. The Deputy Vice-Chancellor (Research and Innovation) or Senior Deputy Vice-Chancellor will convene a meeting within 21 days of receipt notification and try to resolve the dispute.
13.7.3 If the issue cannot be resolved by the Deputy Vice-Chancellor (Research and Innovation) or Senior Deputy Vice-Chancellor or a meeting is not convened in that time then a creator may refer the matter in writing to the Vice Chancellor and President.
13.7.4 The Vice-Chancellor and President must consider any dispute so referred and determine that dispute within 30 days of it being so referred. The Vice-Chancellor and President's determination is final and binding on all parties to the dispute.