• Section 1 - Purpose and Context
• Section 2 - Definitions
• Section 3 - Policy Statement
• Part A - University environment
• Part B - Relationships with industry
• Part C - Developing this Policy
• Part D - Procedures and Protocols
• Part E - Ownership of Intellectual Property
• Part F - Pre-existing Intellectual Property
• Part G - Course Materials created by Staff Members
• Part H - Commissioned Works
• Part I - Scholarly works and student theses
• Part J - Intellectual Property Created by Students
• Part K - Intellectual Property created by Contractors
• Part L - Commercialisation of Intellectual Property
• Part M - Distribution of Profits
• Part N - Moral Rights
• Part O - Dispute Resolution
• Part P - Review Of This Policy
• Section 4 - Procedures
• Section 5 - Guidelines

Section 1 - Purpose and Context

(1) This document sets out the University of Western Sydney's policy with respect to Intellectual Property, for the guidance of staff (academic and general), students (undergraduate and postgraduate) and contractors. Matters considered include the nature of intellectual property, its ownership and exploitation and the specific procedures adopted within the University.

Section 2 - Definitions

(2) For the purposes of this policy, intellectual property means:

1. inventions;
2. patents, protected in Australia under the Patents Act 1990;
3. trade marks, protected in Australia under the Trade Marks Act 1995;
4. designs, protected in Australia under the Designs Act 1906;
5. copyright works, protected in Australia under the Copyright Act 1968, including literary works, dramatic works, musical works, artistic works, film, sound recordings, radio and TV broadcasts, published editions of works, and computer programs;
6. circuit layouts, protected in Australia under the Circuit Layouts Act 1989;
7. plant varieties, protected in Australia under the Plant Breeder's Rights Act 1994;
8. biological material;
9. confidential information, including trade secrets and know how, protected in Australia under the common law; and
10. all similar intellectual and industrial property.

(3) 'Author' means the author of course materials (including computer programs which are course materials, but not including computer programs which are within the meaning of Intellectual Property).

(4) 'Biological material' means all biological material including molecules, compounds, reagents, cell lines, antibodies, viruses, proteins, peptides, enzymes, clones, etc.

(5) 'Circuit layout' rights mean EL rights as defined by the Circuit Layouts Act 1989.

(6) 'Commissioned work' means a specific work which the University has directed or requested a staff member to create, over and above the staff member's usual teaching duties, and includes a work written where the staff member is remunerated over and above the staff member's usual salary.

(7) 'Computer program' means a computer program as defined by the Copyright Act 1968.

(8) 'Confidential information' means all commercially valuable information and trade secrets.

(9) 'Copyright' means all rights in the nature of copyright pursuant to the Copyright Act, including literary works, course materials, dramatic works, musical works, artistic works, films, sound recordings, broadcasts, published editions and certain types of performances.

(10) 'Course materials when not commissioned works' means materials used in a course for the provision of lectures, tutorials, seminars, workshops, field or laboratory classes, and other teaching activities conducted by the University, and includes overhead transparencies, slides, photographs, maps, diagrams, handbooks, manuals, course outlines, exercises, computer programs and multimedia works that serve a teaching function.

(11) 'Creator' means the staff member(s), student(s) or contractor(s) responsible for creating Intellectual Property.

(12) 'Invention' means an invention or discovery of a product, a process, a method or principle of manufacture, a business method, method or principle of construction, chemical composition or formulation, whether patentable or not.

(13) 'Plant breeder's rights' means PBR rights as defined in the Plant Breeder's Rights Act.

(14) 'Scholarly works' includes such works as scholarly books, articles, artistic works, musical works and dramatic works, except where these works have been specifically commissioned by the University.

(15) 'Staff member' means an employee of the University.

(16) 'Student' means any person enrolled in any degree, diploma, subject or unit offered by the University whether on a full-time or part-time basis, or at an undergraduate or postgraduate level.

(17) 'University' means the University of Western Sydney, including its controlled entities.

Section 3 - Policy Statement

Part A - University environment

(18) The University is committed to providing an environment where scholarship and innovation can flourish and those participating can be rewarded for their efforts. At the same time, recognising that certain intellectual property is developed as a result of the environment provided by the University, and that special relationships exist between the University, its staff, students and contractors, the University itself must, where appropriate, benefit from the activity, with the benefits flowing on to future generations of staff and students.

Part B - Relationships with industry

(19) The University is also committed to fostering partnerships with industry. These partnerships provide benefit by accessing industry sources of funding for research, and this benefits staff and students, as well as the University. To form these partnerships with industry, the University must enter into legally binding contracts, which will invariably deal with Intellectual Property ownership. This policy needs to anticipate and reflect these contractual commitments that the University must make, to benefit staff and students.

Part C - Developing this Policy

(20) In developing this policy, the University has been guided by intellectual property policies elsewhere and by statements provided by stakeholders, including the National Tertiary Education Industry Union and the Council of Australian Postgraduate Associations. It acknowledges, in particular, input provided by two key publications of the Australian Vice-Chancellors' Committee (now Universities Australia) and has adopted some wording from these documents:

1. "Ownership of Intellectual Property in Universities" (AVCC, 1995); and
2. "University Research - Some Issues" (AVCC, 1996)

Part D - Procedures and Protocols

(21) This Policy will be complemented by Procedures and Protocols to be prepared by the Deputy Vice-Chancellor Academic and Enterprise (DVCAE). The Procedures and Protocols will:

1. be consistent with this Policy;
2. set out procedures to implement this Policy;
3. include documents to give effect to this Policy; and
4. include explanatory memorandums to explain the reason for the procedures and protocols, and to serve an educative function.

Part E - Ownership of Intellectual Property

Intellectual Property created by Staff Members

(22) In accordance with legal principles, the University, as employer, is the owner of Intellectual Property created by staff, in the course of their employment.

Guidelines in relation to 'course of employment'

(23) Generally, the University will consider that a staff member has acted in the course of employment if the staff member is performing the duties for which the staff member has been engaged. In the case of the particular staff member, this may include teaching duties, research, or the preparation of material for the University's use.

(24) Subject to law and the circumstances of the particular case, the University will consider factors including but not limited to the following, in determining if any material created during the time of the staff member's employment was created in the course of the employment. For clarity, the following indicators are indicators that suggest the staff member is performing the duties in the course of their employment:

1. whether resources of the University were used. Resources include office facilities and equipment;
2. whether the staff member created the material with the input of other staff members;
3. whether the staff member, in dealing with any external agency in relation to the material was understood to be a representative of the University, for example through the use of University letterhead, use of University facilities for communication or production, or business cards; and
4. whether the staff member claimed pay for additional or any in-kind payment for additional (over workload) work or other entitlements in respect of the creation of the material.

(25) The University encourages staff members who work on personal projects to discuss the projects with their supervisor at an early stage, to assist in identifying whether any issues in relation to the ownership of Intellectual Property may arise.

(26) In accordance with the same legal principles and subject to these guidelines, the University is not the owner of Intellectual Property created by staff outside the course of their employment. If staff use University resources and facilities to create that Intellectual Property, this will be a strong indicator that Intellectual Property has been created in the course of employment.

Part F - Pre-existing Intellectual Property

(27) The University needs to ensure that it treats pre-existing Intellectual Property appropriately and does not claim rights that it does not have.

(28) Accordingly, staff members must disclose when they commence their employment:

1. any Intellectual Property that has relevance to the staff member's work at the University of Western Sydney that was developed by the staff member before the employment commenced; and
2. whether that Intellectual Property is subject to any third party rights, for example the rights of the staff member's previous employer, a publisher or a consultancy company.

(29) Where a pre-existing Intellectual Property right is likely to be relevant to a present or future work commissioned by the University, or is subject to an agreement with a third party negotiated through the University, then the originator should notify the University of its existence. The University will assume that anything in this category, not disclosed, is Intellectual Property of the University, unless there is evidence to the contrary and subject always to any agreement between the individual staff member and the University.

Part G - Course Materials created by Staff Members

(30) The University owns copyright in course materials created, developed and presented by employees of the University. The University may license the use of such copyrighted materials by staff members in forums and workplaces external to the University of Western Sydney at its sole discretion.

(31) This principle does not prevent a staff member from:

1. using the skills they have developed during the course of their employment, in any future employment;
2. receiving from the University at the end of the staff member's employment, on request, a royalty-free, non-exclusive personal licence to use conventional course materials, such as lecture notes, for teaching purposes.

(32) This licence will not extend to allow commercialisation of the course materials or transferral to the staff member's subsequent employer.

(33) With regard to non-conventional course materials, such as multimedia materials or course packs developed by a team, the University will consider whether it is appropriate to grant a licence in the particular case, but will start from the position that these materials go beyond a reflection of the staff member's skills.

(34) Nothing in this clause shall operate to frustrate the operation of individual agreements between the University and the staff member.

Part H - Commissioned Works

(35) Copyright in commissioned works, pursuant to the contract by which the work is commissioned, will be owned by the University. Procedures and Protocols will set out the terms of any use of commissioned works by the author, other than for the University's purposes.

Part I - Scholarly works and student theses

(36) In accordance with conventions in the university community for many years, the University will not claim ownership of copyright in scholarly works.

(37) A student will own copyright subsisting in the student's thesis. The University will not claim ownership of copyright in a student thesis.

Part J - Intellectual Property Created by Students

(38) Students, not being employees of the University, will own the Intellectual Property that they generate.

(39) Where a student's supervisor makes a contribution to the Intellectual Property, the Intellectual Property will be owned jointly by the student (who is not an employee), and the University (as the supervisor's employer), unless the product is a scholarly work, in which case the Intellectual Property will be owned jointly by the student and the staff member.

(40) The same will be the case where a student participates in a research team whose members include University staff. The Intellectual Property arising from the research team will be owned jointly by the student (who is not an employee), and the University (as the university staff member's employer), unless the product is a scholarly work, in which case the Intellectual Property will be owned jointly by the student and the staff member.

(41) Students will not be asked to assign to the University the Intellectual Property that they create, where they undertake research that:

1. is publicly funded (that is, the research is not funded from an industry collaborator), and
2. has no commercialisation horizon or objective.

(42) Where students participate in research projects that:

1. are funded by industry collaborators; and/or
2. do have commercialisation horizons or objectives;
   there should be a formal agreement between the University and any industry collaborator, and students will be asked to assign their interest in the Intellectual Property that they create to the University.

(43) The terms of the assignment, particularly where the research project is funded by an industry collaborator or is commercially focused, will usually provide that:

1. the student will share in net commercialisation revenues, along with all other creators not withstanding limitations imposed due to contractual agreements with external funding or commercial partners;
2. the student will retain copyright in the student's thesis;
3. the student must not be impeded in submitting a thesis for examination and completing requirements for the award of a degree, subject to (e) below;
4. the student will be encouraged to submit academic papers to scholarly journals; and
5. the student must maintain confidentiality in relation to the project.

(44) The student should be given the opportunity to obtain independent legal advice in relation to the assignment document.

(45) If a student declines to assign Intellectual Property to the University, the University must, with the student, select an alternative research project, of equal academic merit, for the student to undertake, which is not funded by an industry collaborator and is not commercially focused.

(46) Procedures and Protocols will set out the implementation of these principles.

Part K - Intellectual Property created by Contractors

(47) Sometimes, the University will retain contractors for particular projects. Examples may include architects who are providing designs for University buildings, executive search firms, visiting academics, or business people who are asked to develop course materials. It is standard practice for Intellectual Property in material created for the purposes of the contract, to be assigned to the University by the contractor.

(48) The University will request all contractors to assign to it the Intellectual Property in material created for the purposes of the contract and to provide appropriate Moral Rights consents to ensure that the University can use created works as envisaged under the contract.

Part L - Commercialisation of Intellectual Property

(49) When staff members or contractors become aware of Intellectual Property developed by themselves, their team or a student under their supervision, which is suitable for registration or commercialisation, they should advise their supervisor.

(50) If the Deputy Vice-Chancellor Academic and Enterprise or his or her delegate, in accordance with the UWS Delegations, determines that the Intellectual Property is suitable for registration or commercialisation, then:

1. in the case of staff members and contractors, the Intellectual Property will, in most cases, already be held by the University on its creation;
2. students (and staff members and contractors where the employment or consultancy contract does not provide for the University to hold the Intellectual Property) will be requested to grant the University a confirmatory licence of the Intellectual Property to allow registration and/or commercialisation.

(51) The University will be responsible for making, and bearing the costs (or finding a commercial partner to bear the costs) of any application for registration.

(52) If this determination is made and the University decides to proceed with commercialisation, then the commercialisation project will be managed by the University and the relevant staff members, contractors and students will provide reasonable assistance in the project.

(53) Procedures and Protocols will describe the procedures to implement commercialisation.

Part M - Distribution of Profits

(54) Prior to commercialisation, agreement shall be reached between the University and the creators regarding the distribution of profits.

(55) The University is committed to sharing the rewards that may arise from the commercialisation of any University owned Intellectual Property with the creators of that Intellectual Property. Any agreement providing for distribution of profits between the creators and the University (with an allocation to the relevant College or Office) will, as a minimum, ensure that creators receive a 30% distribution of net profits from the commercialisation, after deducting:

1. the University's costs of registering the Intellectual Property; and
2. costs of the commercialisation project, where appropriate.

Part N - Moral Rights

(56) The University recognises the moral rights of authors and creators. These include the right of attribution of authorship or invention; the right of protection against false attribution; and the right of integrity, the need for a work not to be altered or used in such a way that it harms the reputation of the originator and an opportunity for the originator to be consulted in determining the final outcome of the originator's labours.

Part O - Dispute Resolution

(57) Any disputes in relation to the implementation of this Policy; or the contents or implementation of Procedures and Protocols, will be referred to the Vice-Chancellor in the first instance. The Vice-Chancellor may decide to refer to a committee to assist the resolution of a dispute.

Part P - Review Of This Policy

(58) This Policy will be periodically reviewed, and when necessary, given the changing environment in which university research is undertaken, will be amended to be responsive to that changing environment.

(59) The first review will be undertaken approximately 12 months from the date that this Policy commences operation, and if necessary, will be amended at that time. Further reviews are intended to take place at least every two years.

Section 4 - Procedures

(60) Nil.

Section 5 - Guidelines

(61) Nil.