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 Research and Development

2 What is Intellectual Property IP is generally regarded as representing ‘…the tangible output of your mind or intellect’ IP is generally regarded as representing ‘…the tangible output of your mind or intellect’ It does not include your thoughts or knowledge It does not include your thoughts or knowledge Some intellectual property must be registered for protection of rights e.g. patents, trademarks. Other intellectual property rights comes into existence on creation e.g. copyright Some intellectual property must be registered for protection of rights e.g. patents, trademarks. Other intellectual property rights comes into existence on creation e.g. copyright

Office for Research and Development3 Why is Intellectual Property Important to a University (1) Government policy Government policy –Wills Report –Batterham Report –White Paper –Backing Australia’s Ability –Knowledge Nation –‘Crossroads’ –National Principles of IP Management for Publicly- funded Research (multiple agencies) –Interim National Guidelines for IP Management (NHMRC) –Managing and Commercialising IP (Victorian)

Office for Research and Development4 Why is Intellectual Property Important to a University (2) Potential source of income Potential source of income –Access to Government funding sources –Direct through exploitation –Indirect through funding arrangements –Leverage for other grants Good custodianship of public resources Good custodianship of public resources

Office for Research and Development5 Intellectual property of potential importance to Victoria University Patents for new or improved products or processes; Patents for new or improved products or processes; Copyright for original material in literary, artistic, dramatic or musical works, and in other works that include films, broadcasts, multimedia and computer programs; Copyright for original material in literary, artistic, dramatic or musical works, and in other works that include films, broadcasts, multimedia and computer programs; Trade mark for words, symbols, pictures, sounds, smells or a combination of these, to distinguish the goods and services of one trader from those of another; Trade mark for words, symbols, pictures, sounds, smells or a combination of these, to distinguish the goods and services of one trader from those of another; Design for the shape or appearance of manufactured goods; Design for the shape or appearance of manufactured goods; Circuit layout rights for the 3-dimensional configuration of electronic circuits in integrated circuit products or layout designs; Circuit layout rights for the 3-dimensional configuration of electronic circuits in integrated circuit products or layout designs; Plant breeder’s right for new plant varieties; Plant breeder’s right for new plant varieties; Trade secret including know-how, other confidential or proprietary information and background knowledge. Trade secret including know-how, other confidential or proprietary information and background knowledge.

Office for Research and Development6 What are the issues? Ownership Ownership Identification Identification Protection Protection Management Management Exploitation/Commercialisation Exploitation/Commercialisation

Office for Research and Development7 VU Policy New policy approved by Council September 2002 New policy approved by Council September

Office for Research and Development8 Ownership Who owns the IP? Who owns the IP? Is there a difference in ownership between different classes of IP? Is there a difference in ownership between different classes of IP?

Office for Research and Development9 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.

Office for Research and Development10 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…

Office for Research and Development11 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, …

Office for Research and Development12 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.

Office for Research and Development13 Identification Who has the expertise? Who has the expertise? Who has the responsibility? Who has the responsibility? –Researchers –Mentors –Intellectual Property Officer Understanding the difference between IP and a ‘good idea’ or a discovery Understanding the difference between IP and a ‘good idea’ or a discovery

Office for Research and Development14 Identification –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:   immediately report its existence to the Intellectual Property Officer through the relevant head of department or course supervisor…   …[may be required to] treat the intellectual property as confidential…

Office for Research and Development15 Protection What is necessary? What is necessary? –Some IP requires registration, other IP does not Competing needs in relation to career advancement and commercial success Competing needs in relation to career advancement and commercial success Patent process well developed and described, but many requirements Patent process well developed and described, but many requirements –E.g. laboratory books; importance of getting the claims right Who pays for registration? Who pays for registration? –Full national phase registration of patents up to $100k+

Office for Research and Development16 Protection – VU Policy(1) Refer Section 9 of policy Refer Section 9 of policy Generally the University will take responsibility for management of the protection of its intellectual property. Generally the University will take responsibility for management of the protection of its intellectual property. If University does not wish to proceed, it may assign the IP to the creator to exploit If University does not wish to proceed, it may assign the IP to the creator to exploit

Office for Research and Development17 Protection – VU Policy(2) 9.3Once 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.

Office for Research and Development18 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..

Office for Research and Development19 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.

Office for Research and Development20 Management 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 obligations of researchers and universities e.g. timing of release Understanding of roles and mutual obligations of researchers and universities e.g. timing of release

Office for Research and Development21 Management – VU Policy Section 9 of IP Policy Section 9 of IP Policy Intellectual Property Officer – Pro Vice- Chancellor (Research and Development) Intellectual Property Officer – Pro Vice- Chancellor (Research and Development) Technology Commercialisation Manager - Dr Terry Harders in Office for R&D Technology Commercialisation Manager - Dr Terry Harders in Office for R&D

Office for Research and Development22 Exploitation/Commercialisation Choice of best pathway Choice of best pathway Early exit vs. hold on Early exit vs. hold on Can only be done on case by case basis Can only be done on case by case basis Financial recognition for originators if not owners of the IP Financial recognition for originators if not owners of the IP

Office for Research and Development23 Exploitation/Commercialisation – VU Policy (1) Case by case Case by case 9.6 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…

Office for Research and Development24 Exploitation/Commercialisation – VU Policy (2) Recognition that staff should benefit from the commercialisation of IP created by them Recognition that staff should benefit from the 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

Office for Research and Development25 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, % 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.

Office for Research and Development26 Other important issues for researchers Moral rights of creators Moral rights of creators Confidential information Confidential information Conflict of interest Conflict of interest

Office for Research and Development27 Moral rights Recent addition to the Copyright Act Recent addition to the Copyright Act 1.14 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

Office for Research and Development28 Confidential Information Only relates to information that is defined as confidential Only relates to information that is defined as confidential Staff may be asked to sign a Confidentiality Agreement with a third party. This is a requirement of some contracts, or even interaction with other organisations. Staff may be asked to sign a Confidentiality Agreement with a third party. This is a requirement of some contracts, or even interaction with other organisations.

Office for Research and Development29 Conflict of Interest Potential for conflict of interest to arise for staff during the exploitation of IP Potential for conflict of interest to arise for staff during the exploitation of IP Managed on a case by case basis and generally requires the staff member to sign a Deed of Agreement with the University that sets out the process for management of the conflict Managed on a case by case basis and generally requires the staff member to sign a Deed of Agreement with the University that sets out the process for management of the conflict