Intellectual Property

The University of Western Australia's policy on intellectual property centres around the following documents:

• the Intellectual Property Regulations
  
• General Regulation 32A
  
• the Constitution of the Intellectual Property Committee

The University's primary mission is to advance, transmit and sustain knowledge and understanding through the conduct of teaching, research and scholarship at the highest international standards, for the benefit of the international and national communities and the state of Western Australia.

As funding for the activities relating to its primary mission tightens, and as competition for students and research funding grows, the University cannot afford to ignore the commercial benefits to be gained from the by-products of those activities. The benefits should provide equitable returns to the originators of intellectual property, both as an incentive and reward, as well as to the University.

The Intellectual Property Regulations replace the former Patent Regulations, which did not encompass copyright and other forms of intellectual property. The Intellectual Property Regulations cover a more comprehensive range of intellectual property, and codify the University's policy on intellectual policy. The Regulations should be consulted when specific cases are being considered.

The Intellectual Property Regulations focus solely on intellectual property issues within the University. Other issues, such as the storage of data and authorship, are covered by other University policies and guidelines. The Regulations also do not specifically address the ownership of intellectual property where shared facilities are being used and there is no pre-existing agreement on ownership between the parties, for example in hospitals; nor do they address issues surrounding clinical and adjunct appointments. These matters should be resolved on a case-by-case basis.

The key elements of the policy are as follows:

3.1 Effects of other agreements (Regulations 2 and 3)

In cases where there may be conflict between the Intellectual Property Regulations and agreements entered into by the University with other parties, the relevant provisions of those other agreements apply. This ensures that the University is able to fulfil its obligations to the other parties under those agreements (Sub-regulation 3(2)). The University is required under the Regulations, however, to consult as far as practicable with staff, students and others who may be affected by those agreements. In practice, this is the responsibility of principal investigators and supervisors of students, who should obtain advice from the Intellectual Property & Contracts Officer. The consultations should take place before staff, students and others commence the research activity, or as soon as it becomes apparent that matters concerning intellectual property rights or confidentiality might arise.

The Regulations also require the University to reflect as much as is reasonable, the terms and intent of its intellectual property policy when other agreements containing obligations about intellectual property or confidential information are negotiated (Sub-regulation 3(3)).

Staff, students or other persons may be required to assign intellectual property to the University, or sign licence or confidentiality undertakings when other agreements override the Regulations (Sub-regulation 3(4) ). In return, the Regulations provide for the originators of intellectual property to receive a share of net revenue received by the University from the commercialisation of that intellectual property (Regulation 10).

The provisions of Sub-regulation 4(3) and General Regulation 32A protect the interests of students and other parties where a candidate's thesis or other work for a higher degree may be affected by other agreements.

3.2 Ownership of intellectual property (Regulation 4)

3.2.1 Students

Students own intellectual property which they create, subject to the terms of other agreements (Sub-regulation 4(2) and Regulations 2 and 3). Students also own the copyright in their thesis (Sub-regulation 4(2)).

Where other agreements prevail so that students do not own intellectual property, students have the same rights as staff for the purposes of the University's intellectual property policy. A separate agreement between the University and the student to confirm matters regarding intellectual property must be negotiated on these occasions (Sub-regulation 4(3)). Supervisors of students have a particular responsibility to identify situations where other agreements prevail and to alert the Intellectual Property & Contracts Officer to the need for a separate agreement.

The University must take all practicable steps to ensure that the academic progress of students, including the examination of theses, is not hindered by the provisions of the Intellectual Property Regulations (Sub-regulation 4(3)). In practice, the student's supervisor has a key role in ensuring that the student's interests are protected. This includes identifying any possible issues concerning intellectual property or confidentiality as soon as they become apparent, so that they can be discussed with the Intellectual Property & Contracts Officer.

Refer also to 3.2.4. below.

3.2.2 Staff

Apart from computer-programs, staff own copyright in all copyright works created by them (Sub-regulations 4(1) and 4(4)).

The University owns all other intellectual property created by staff in the course of their employment with the University (Sub-regulation 4(4)).

3.2.3 Visitors

Visitors working within the University and collaborating with staff may be required to enter into an agreement with the University concerning issues such as the ownership of intellectual property and confidentiality (Sub-regulation 4(15)). Staff should contact the Intellectual Property & Contracts Officer if they are interacting with visitors to whom this Sub-regulation might apply.

Refer also to 3.2.4 below.

3.2.4 Specific resources made available to students, visitors and others

There are occasions when specific resources earmarked for the purpose of creating intellectual property are made available by the University to students, visitors and others. For the purposes of the Intellectual Property Regulations, specific resources do not include basic infrastructure, or scholarships. A written agreement concerning the ownership of intellectual property should be negotiated between the University and the recipient of specific resources on these occasions (Sub-regulation 4(14)). The person making the resources available has a responsibility to ensure that the Intellectual Property & Contracts Officer is informed, so that an agreement can be drawn up.

3.2.5. Summary of rights to ownership

The following is a summary of rights to the ownership of intellectual property if:

(i) no specific resources (excluding basic infrastructure and scholarships) earmarked for the purpose of creating intellectual property have been made available by UWA to staff, students, visitors and others; and

(ii) no existing intellectual property owned by UWA has been inseparably mixed with the newly created intellectual property;

(iii) no agreement between UWA and an external body exists or makes arrangements with regard to intellectual property so as to require modification of the "default" arrangements below.

3.3 Moral rights (Regulation 5)

The Regulations acknowledge the moral rights of authors and other originators of intellectual property.

3.4 Duty to report (Regulation 6)

There is an obligation on originators of intellectual property and certain other staff to inform the Deputy Vice-Chancellor (Research & Innovation) in writing of the creation of any patentable invention or commercially significant computer program to be owned by the University (Sub-regulation 6(1)).

Students and staff are not permitted to act in any way which is inconsistent with the University's rights under the Intellectual Property Regulations (Sub-regulation 6(2)) .

3.5 Protection of intellectual property (Regulation 7)

There is an obligation upon the originator to consult with the Deputy Vice-Chancellor (Research & Innovation) about what needs to be done to protect intellectual property which is likely to be commercially significant, and how best to facilitate that commercialisation process (Sub-regulation 7(1)). This does not preclude established researchers from filing a provisional patent prior to consulting the Deputy Vice-Chancellor (Research & Innovation), as long as the outcome is not inconsistent with the University's rights (Sub-regulation 6(2)). The consultation would normally follow the intellectual property being reported to the Deputy Vice-Chancellor (Research & Innovation). The Deputy Vice-Chancellor (Research & Innovation) will normally determine an appropriate course of action within ninety days of that consultation.

One option available to the Deputy Vice-Chancellor (Research & Innovation) at that point, or at any time thereafter, is to decide that the University has no further interest in the intellectual property. Originators may apply for or continue to protect, at their own expense, intellectual property in which the University has no further interest. The University will assign rights to the originators within 90 days if this option is exercised (Sub-regulation 7(4)).

3.6 Management of intellectual property (Regulations 8 and 9) and the Intellectual Property Committee)

The Deputy Vice-Chancellor (Research & Innovation) is empowered under the Intellectual Property Regulations to act on behalf of the University on a wide range of intellectual property matters (Sub-regulation 9(1)). On a day-to-day basis, the Deputy Vice-Chancellor (Research & Innovation) obtains advice from the Intellectual Property & Contracts Officer.

The Deputy Vice-Chancellor (Research & Innovation) is also Chair of the Intellectual Property Committee, which acts as an advisory committee to the Vice-Chancellor on matters relating to intellectual property. The Committee meets three times each year and otherwise as needed. As part of its function, the Intellectual Property Committee reviews all relevant matters determined by the Deputy Vice-Chancellor (Research & Innovation), to ensure that proper policy advice on intellectual property is developed (Regulation 8 and the Intellectual Property Committee).

3.7 Apportionment of net revenue (Regulations 9 and 10)

The principles for sharing any cumulative net revenue received by the University from the commercialisation of intellectual property are intended to encourage staff and students to co-operate in the commercialisation process. The originators of intellectual property receive 85% of the first $50,000 of cumulative net revenue, 65% of the next $100,000 and 50% of all cumulative net revenue thereafter (Sub-regulation 10(3)).

Where there is more than one originator, the share of net revenue is apportioned equitably between them by the Deputy Vice-Chancellor (Research & Innovation) (Sub-regulation 10(2)(a)). In reaching a decision, the Deputy Vice-Chancellor (Research & Innovation) will normally obtain the advice of the originators on how they wish to divide their share among themselves.

A significant portion of the net revenue retained by the University is returned to the originator's faculty. The remainder is set aside for other activities, including research and commercialisation (Sub-regulation 10(4)).

3.8 Dispute resolution (Regulation 11)

If a dispute arises in relation to this policy, the Intellectual Property Committee must appoint a mediator to assist the parties in resolving their dispute. If the mediator is unable to resolve the dispute, an arbitrator, who as far as possible is acceptable to all parties, will be appointed.

3.9 Information and education (Regulation 12)

Education programs concerning this policy are held from time to time. The Intellectual Property Regulations are also accessible through the Research Administration Unit's World Wide Web Home Page.

Recognising the existence of intellectual property, assessing its potential value, deciding how to develop it, and locating potential backers all require experience and access to networks that many staff and students engaged in research do not have. Formal advice within the University is available from the Deputy Vice-Chancellor (Research & Innovation) and the Intellectual Property & Contracts Officer, who may seek further advice from a range of sources, including Technology and Innovation Management Pty Ltd (TIM). TIM is a company owned jointly by the four public universities in Western Australia. It exists to commercialise intellectual property developed in the universities. Staff and students intending to make contact with TIM should only do so through the Intellectual Property & Contracts Officer.

Intellectual property should be handled with care and with an awareness that pursuing its commercialisation can incur serious legal liabilities. It is advisable for originators of intellectual property who wish to take up the option to apply for or continue to protect intellectual property in which the University has no further interest, to seek independent legal advice. By that means, they will better protect their interests and minimise their exposure to risk.

Staff who offer their services as private consultants to bodies outside the University normally make use of personal knowledge and skills, and are free to do so within limitations. The limitations are outlined in the University's Guidelines on Policy and Procedures for Academic Professional and Consultative Work. Issues of intellectual property usually do not arise but may do so in various ways. Intellectual property may be developed in the course of the consultancy and, if no prior agreement exists as to ownership, disputes may arise. Staff and students who are acting as consultants must take care not to make inappropriate use of knowledge that is protected by covenants of confidentiality, or of intellectual property of which they are not the exclusive owners.

Staff and students who act as private consultants should inform the Deputy Vice-Chancellor (Research & Innovation) of any circumstances which raise issues of intellectual property in which the University may have an interest.