Intellectual Property Regulations 2017

Table of contents

• Part 1. Preliminary
• Part 2. Principles to be applied
• Part 3. Administration
• Part 4. Sharing of net commercialisation revenues
• Part 5. Students

Part 1. Preliminary

1. The Objective

The objectives of these Regulations are to—

a. establish a regime for the treatment, protection and exploitation of University intellectual property and research intellectual property and any benefits or proceeds arising from that in a manner that—

i. encourages an environment at the University in which teaching, learning and research will flourish;

ii. supports responsible, open access to knowledge, ideas and cultural expression for the benefit of the entire community;

iii. maximises the benefits to Australia arising from publicly funded research;

iv. balances public and private interests in access to and use of intellectual property, and protection of the rights of originators;

v. provides incentive for the creation of valuable intellectual property and new ventures and partnerships by sharing benefits or proceeds of commercialisation with the originators;

vi. supports responsible and transparent procedures and management systems for the development of industry and international research collaborations;

vii. complies with the National Codes and Principles;

b. make further provision in relation to intellectual property, in accordance with the Governance and Administration Statute 2012 and sections 28, 29 and 30 of the Swinburne University of Technology Act 2010.

2. Authorising provision

These Regulations are made under the Governance and Administration Statute 2012 and sections 28, 29 and 30 of the Swinburne University of Technology Act 2010.

3. Commencement and revocation

a. These Regulations come into operation on the day on which they are made.

b. The Intellectual Property Regulations 2012 are revoked.

4. Definitions

In these Regulations—

commercialisation means selling, hiring, licensing or otherwise disposing of or dealing with intellectual property (other than the use of course material in the delivery of a University program or course of study), including—

a. its design, development, manufacture, marketing or distribution; and

b. provision of any product or service based on, or incorporating, the intellectual property;

commercialised intellectual property includes University intellectual property and intellectual property transferred to the University which is commercialised under these Regulations;

course material means work created for use in, or in connection with, a program or course of study, subject, module or unit;

distribution principles means the principles set out in regulation 7;

HDR student means a Higher-Degree-By-Research student;

HDR Student IP Agreement has the same meaning as in regulation 15;

Intellectual Property Officer means the person appointed under regulation 8;

National Codes and Principles means relevant Australian codes and principles for the conduct of research and the management of intellectual property at publicly funded universities, including—

a. the Australian Code for the Responsible Conduct of Research developed jointly by the National Health and Medical Research Council, the Australian Research Council and Universities Australia;

b. the National Principles of Intellectual Property Management for Publicly Funded Research developed by a working party of the Australian Government’s Coordinating Committee on Innovation; and

c. any successor documents.

originator means a person who creates or invents any form of intellectual property, whether alone or in conjunction with other persons;

research intellectual property means intellectual property created in the course of research at the University, including intellectual property which is created by an HDR student in the course of an agreed research program;

University intellectual property has the same meaning as in section 34 of the Governance and Administration Statute 2012.

Part 2. Principles to be applied

5. Scholarly works

1. The University disclaims ownership of copyright in works created by staff as part of their research and scholarship for the sole purpose of publication (including in electronic form) in the form of books, articles and conference papers, including creative works and audiovisual productions made for the sole purpose of non-commercial exhibition, subject to—

a. subregulation (2); and

b. the terms of any agreement between the University and relevant staff member.

2. The staff member who creates a work or production referred to in subregulation (1) grants the University a non-exclusive, royalty-free, worldwide and irrevocable licence to use the copyright for educational, teaching and research purposes.

6. National Codes and Principles

1. The University supports the National Codes and Principles.

2. The University must, if reasonable, consider the National Codes and Principles in the administration of these Regulations.

7. Distribution principles

1. In the application of these Regulations to financial returns derived by the University from commercialised intellectual property, the following principles are to be considered—

a. distributions of royalties and licence fees, after recovery of direct costs, should be based on a 50:50 split between the originators and the University;

b. allocations of equity in new spin-off companies should be considered on a case-by-case basis as part of the development and implementation of a commercialisation plan, with the final decision based on a 50:50 split between the originators and the University as a starting point.

Part 3. Administration

8. Intellectual Property Officer

1. The Vice-Chancellor may appoint a person to hold the office of Intellectual Property Officer.

2. The functions of the Intellectual Property Officer are—

a. to develop management structures (including advisory structures) and processes for the protection, dissemination and utilisation of research intellectual property;

b. to oversee the administration of these Regulations;

c. to make recommendations to the Vice-Chancellor and University Council relating to research intellectual property;

d. to oversee resource allocations, investment strategies and priorities across the innovation pipeline, from development and protection of new intellectual property to commercialisation;

Example: Patenting, licensing and the creation of new companies.

e. approve commercial intellectual property licenses, intellectual property assignments and collaborative research programs relating to the development and utilisation of intellectual property;

f. assist in the mediation of disputes between the University and staff or students relating to intellectual property ownership, treatment, protection and exploitation and any entitlement to share commercialisation income;

Note: This function relates to occasions when ownership or entitlements are not fixed by these Regulations.

g. any other function conferred on the Intellectual Property Officer by the Vice-Chancellor.

Part 4. Sharing of net commercialisation revenues

9. Procedure where there may be potential for commercialisation

1. An originator or a person who has an interest in University intellectual property or research intellectual property assigned under an HDR Student IP Agreement which appears to have potential commercial value must notify the Intellectual Property Officer of—

a. the existence of that intellectual property; and

b. any developments in respect of that intellectual property.

2. After receiving a notification, the Intellectual Property Officer must, within 12 weeks, decide whether to initiate protection of the intellectual property.

3. If the Intellectual Property Officer requires additional information, he or she may—

a. request the person to provide additional information; and

b. by notice to the person, extend the period for decision to enable the additional information to be considered.

10. Consideration by the Intellectual Property Officer

1. In considering a notification under regulation 9, the Intellectual Property Officer must consider—

a. the objects of the University;

b. the nature of the intellectual property and the extent of patent or other protection that is desirable;

c. whether the securing of patent or other protection is likely to assist in the development and commercial exploitation of an invention;

d. whether it is desirable for the University to maintain an interest in the quality and technical efficiency of production through the licensing of patents; and

e. the likely commercial returns to the University, taking into consideration the distribution principles.

2. In considering a notification under regulation 9, the Intellectual Property Officer—

a. must consult, in confidence, with the originator; and

b. may consult, in confidence, with other relevant parties.

11. Commercialisation plan

If the Intellectual Property Officer decides to initiate protection of intellectual property, the University must, within 12 months, develop a commercialisation plan.

12. Distribution of revenue

1. If the University derives financial return from commercialised intellectual property the distribution of the proceeds must take into account the distribution principles, subject to—

a. subregulations (2) and (3); and

b. the terms of any agreement between the University and relevant originators.

2. If the commercialisation of intellectual property involves establishing or participating in a limited company—

a. the originators are not entitled to share further in any financial returns or net revenues arising from the University’s equity interest or the commercialisation of the intellectual property;

b. the transfer, issue or allocation of shares in the company to the originators must occur at the time of establishment of the company or as soon as possible thereafter, at the election of the originators, subject to the originators indemnifying the University against any tax liabilities arising from the transfer, issue or allocation of the shares to the originators;

c. if the originators do not take up shares in the company, the University may take action as it considers appropriate in relation to the structure, management and operation of the company, including disposal of shares or closure of the company.

3. If the University takes action under subregulation (2)(c) and disposes of shares in the company, it must account to the originator for any net benefit from the disposal of the originator’s equity entitlement, based on the distribution ratio set out in subregulation (1).

4. The University may, upon receiving a request in writing from an originator to do so, vary the distribution of net revenues or equity ratios to reduce the revenue or equity received by the originator and increase the revenue or equity received by the University.

5. If there is more than one originator in respect of a particular item of intellectual property, they must determine how shares of net revenue or equity are to be distributed among them and inform the University of their decision in the form required by the University.

6. For the purposes of this regulation—

net revenues means revenue after deducting all costs relating to commercial development, protection and marketing.

13. Assignment if IP not protected or commercialised

The University must, on request by the originator, provide a written assignment of the intellectual property to the originator if—

a. the Intellectual Property Officer decides under regulation 9 not to initiate protection of the intellectual property;

b. the University decides, under an HDR Student IP Agreement, not to initiate protection of the intellectual property; or

c. the University, or an appropriate partner, does not proceed with commercialisation under the commercialisation plan developed under regulation 11.

Note: Swinburne Ventures Limited is an appropriate partner.

Part 5. Students

14. Intellectual property created by students 

Except as provided in section 32 of the Governance and Administration Statute 2012, a student owns intellectual property which he or she creates.

15. HDR students 

1. In this regulation, “HDR Student IP Agreement” means an agreement between the University and an HDR student under which the HDR student agrees to assign to the University his or her rights to research intellectual property (other than copyright in his or her thesis) that is not already University intellectual property.

2. The University may as a condition of an HDR student’s acceptance of offer, enrolment or progress require the HDR Student to enter an HDR Student IP Agreement.

3. At the time of entering an HDR Student IP Agreement, an HDR student must notify the University of—

a. the existence of any background intellectual property claimed by the HDR student and not being assigned to the University; and

b. any developments in respect of that background intellectual property.

4. An HDR Student IP Agreement may incorporate, with or without modification, provisions, principles or procedures set out in these Regulations, including—

a. the development of a commercialisation plan using the resources and expertise of the University;

b. the distribution of proceeds from commercialisation taking into account the distribution principles;

c. the assignment of the intellectual property back to the HDR student if protection or commercialisation do not proceed.

16. Assistance to student

The University must not, other than in exceptional circumstances, provide assistance to a student to patent an invention or commercialise intellectual property unless the student assigns the intellectual property rights to the University in accordance with these Regulations.

17. Assessment and granting of awards

If the University owns intellectual property created by a student, the University must ensure that the ownership does not affect the assessment of the student’s academic performance or the granting of an award.

18. Confidentiality

1. A student, assessor or examiner must not disclose confidential information without permission in writing of the University.

2. In subregulation (1) confidential information means information about intellectual property wholly or partly owned by the University.