This policy covers the identification, protection, transfer and disposal of Knowledge Assets, and covers all aspects of Knowledge Asset Transfer for the purpose of protecting Knowledge Assets as Intellectual Property.
The University owns all Knowledge Assets created by staff in the course of their employment.
Any benefits derived from a protected and commercialised Knowledge Asset (Intellectual Property) will be shared with the Creator(s) in line with the provisions of this policy. The University will assign any Knowledge Assets it is not interested in commercialising back to the Creator(s). Knowledge Assets that can be commercialised (Intellectual Property) will be protected by the University.
The University does not assert ownership over Knowledge Assets created by students but will insist on assignment of the Intellectual Property where required for on-going research, teaching or Knowledge Asset Transfer. Students retain ownership of the copyright in their thesis. However, confidentiality may restrict publication.
(1) Identification of Knowledge Assets includes recording those assets, their ownership and if relevant their creators before, during the course of, and at the conclusion of
(2) Uncommissioned Knowledge Assets must still be disclosed where they fall under either the Paid Outside Work or Conflict of Interest policies.
(3) The Creator(s) of a Knowledge Asset includes
(4) A Creator may be a member of staff, including Emeritus, Adjuncts, honorary staff, etc., or a student of the University, or an external collaborator. The Creator(s) will be determined when the Knowledge Asset is identified, and at subsequent additions to that Knowledge Asset.
(5) When a new Knowledge Asset is identified as having potential commercial value, it must be kept confidential until protected, if necessary, and at this point the Knowledge Asset becomes Intellectual Property.
(6) The University is the owner of Knowledge Assets created by staff in the course of their employment, unless agreement to the contrary has been made with the author. Materials prepared for teaching in the course of employment, e.g. course notes, cd roms, websites, are owned by the university.
(7) Copyright is a set of exclusive rights automatically granted to authors and creators of original works, such as literary works, film, musical works, sound recordings, paintings, photographs, software, and industrial designs that are expressed in tangible or material form. It does not protect the ideas themselves.
(8) Books and other scholarly works which University staff wish to publish, must be disclosed to the university and approved for publication as designated in the appropriate discipline area.
(9) Moral Rights apply to any work in which copyright subsists, except for those films and works included in a film made prior to December 2000. The rights are
(10) These rights remain with the Creator, irrespective of the ownership of copyright and remain in force for the duration of the copyright protection of the work see Moral Rights Guidelines: www.une.edu.au/copyright/moral_rights.htm
(11) Knowledge Asset Transfer or transfer of knowledge relates to the process of taking Knowledge Assets from within the University environment, protecting it, and/or providing it to others. Knowledge Asset Transfer may occur through publication (dissemination to the general public), teaching (dissemination to students of the University). Protected Knowledge Assets (IP) can be transferred through "Commercialisation" (transferring the knowledge, or inventions for profit) or "Technology Transfer" (transferring the knowledge for no cost or on a cost recovery basis).
(12) Knowledge Asset Transfer may include external communication of new Knowledge Assets by written or oral disclosure, media interviews or articles, submission of a conference paper, publication or a thesis, information in electronic or hardcopy format.
(13) Commercialisation includes sale, licence, franchise, joint venture/strategic alliance, company formation (start-up, spin-off or spin out) or in-house production.
(14) Before engaging in Commercialisation, the University will require
(15) The University as the owner of the Knowledge Asset has the right to commercialise the Knowledge Asset. Creators of the Knowledge
(16) Asset may be involved in the commercialisation of the Knowledge Asset by such activities as
(17) The University will manage the Knowledge Asset as appropriate.
(18) The individual Staff Member will be responsible for
(19) The Supervisor / Line Manager / Head of School / PVC will be responsible for assessing the transfer proposal.
(20) The Pro Vice-Chancellor (Research) or delegate is the Intellectual Property Officer, who is delegated to exercise the University's powers and functions under this policy, and is responsible for
(21) The Research Office will be responsible for
(22) The Legal Office will be responsible for providing advice, and negotiating and drafting agreements where required.
(23) Knowledge Asset audits and the protection of a Knowledge Asset will be reviewed regularly by the University.
(24) Continued protection of the Knowledge Asset will only be required where the University decides to commercialise the Knowledge Asset.
(25) Benefit value is calculated as the net return to the University following the "commercialisation" of Intellectual Property.
(26) A benefit of 1/3 of the net return to the University from the commercialisation will flow through to the creator(s). This does not apply to "teaching materials" as set out in clause 6.
(27) Benefit sharing will be dependent on correct identification of Creator(s) because incorrect identification can invalidate formal protection mechanisms such as patents.
(28) The benefit to a UNE employee may be paid, as directed by the creator(s)
(29) The proportion of funds to be shared by each of the Creators will be determined at the time that the IP is assigned to the University.
(30) Knowledge Assets which cease to have value to the University may be disposed of by the University.
(31) Disposal of a Knowledge Asset will involve
(32) Disputes on matters contained in this policy will be handled by the Pro Vice-Chancellor (Research) in the first instance.
(33) Where the dispute has not been able to be resolved through this process, the matter may be referred by either party to a person or process that is mutually agreed (between the University and staff member concerned). In such a case agreement will not be unreasonably withheld.
(34) New Knowledge Assets must be disclosed to the University through the Head of a Cost Centre, reporting to the Pro Vice-Chancellor (Research).
(35) For Knowledge Assets which are not expected to have a commercial implication for the University, approval will be the responsibility of the Pro Vice-Chancellor (Research).
(36) Where a staff member of the University has conceived and developed a system, product or process which is deemed to be new and innovative and which may have commercial potential, (i.e. Intellectual Property), then Form Intellectual Property Disclosure must be completed and lodged with the Pro Vice-Chancellor (Research) or delegate within five working days of realising the potential of the discovery. It is the responsibility of the staff member to act in the interest of the University.
(37) On receipt of this information, the University will make a decision regarding the commercial viability of the IP. Within 20 working days the University may elect to
(38) Where appropriate, the University will make services and financial resources available to protect and commercialise the IP. The University may require staff members and other parties to sign a confidentiality agreement.
(39) There will be a centrally co-ordinated data collection each year. This information, coordinated by the Pro Vice-Chancellor (Research) or delegate, will be provided to the Vice-Chancellor in February each year.
(40) Knowledge Asset is a broad descriptive term meant to encompass any result of intellectual effort which is considered by the University to have value for ongoing teaching and research endeavours. The value need not be economic, it may be knowledge of cultural significance or social interest. The term is used to express the breadth of knowledge which the policy is aiming to cover.
(41) Intellectual Property is a Protected Knowledge Asset(s) which can be commercialised. Intellectual Property may include, but not be limited to:
(42) This diagram may assist with the visualisation of the asset management process.
(43) The circle zone represents Knowledge to which the University does not ascribe a value and is therefore not the subject of this policy.
(44) Box 2 contains Knowledge + Value = a Knowledge Asset. The University is interested in using it for further research or for Knowledge Asset Transfer. It must remain confidential until the University decides what to do with it. If at some point a Knowledge Asset in Box 2 loses its value to the University (although it may have value to others), then it slips into circle 1 zone and the University may dispose of it.
(45) The Knowledge Asset in Box 3 is knowledge with a value which the University has taken steps to protect (or, if covered by copyright or circuit layout rights, is protected upon creation) because the University intends to use it for further research or Knowledge Asset Transfer. It is described as Protected Knowledge Assets. Box 3 includes all of the confidential information, patents, trade marks, copyright, which are critical for further research or Knowledge Asset Transfer. If, at some point, the Knowledge Asset in Box 3 ceases to have value to the University, the University may then dispose of it.
(46) It should be emphasised that Protected Knowledge Assets (Box 3) is a subset of Knowledge Assets (Box 2) that the University is managing for the purposes of further research or Knowledge Asset Transfer.
(47) Knowledge Assets with no value to the University, will be disposed of.
(48) Marcus, an academic in the Law School developed software that can be used as an assessment feedback tool for monitoring, assessing and providing feedback for the performance of students and staff.
(49) Marcus and UNE signed a confidentiality and intellectual property rights assignment agreement to capture any background IP brought by Marcus to UNE. PVC(R) and Marcus negotiated a split of net commercialisation income for commercialisation and a royalty sharing deed was signed. The Legal Office applied to IP Australia for a trade mark in UNE's name to protect the logo (designed by Marcus).
(50) A meeting with Patent Attorneys was held to discuss and instruct them to draw up specifications and to file provisional patent with IP Australia to protect the software.
(51) Confidentiality deeds were sent to interested education providers and a demonstration of the software was presented. As a result license terms (including royalties) were negotiated and licenses made with several educational institutions.
(52) As a result of his royalty sharing agreement with the university, Marcus received a stream of royalties from the licensing of the software he developed.
(53) Lee and Evelyn undertook PhDs through the School of Rural Science and Agriculture. Lee's topic coincided with a UNE project which had been running for several years, while Evelyn's aligned with an Australian Cotton CRC sponsored project involving CSIRO Plant Industry and the UNE.
(54) Both Lee and Evelyn were requested to assign any intellectual property they may create while working on the project to the UNE. Lee refused to do so and was offered an alternative topic in another area. Evelyn signed an intellectual property rights assignment deed prepared by the UNE Legal Office after receiving independent legal advice from Evelyn's family solicitor.
(55) Evelyn's work assisted the project team to obtain an Australian provisional patent, which eventually led to patents in the United States and parts of the European Union, paid for by the joint venturers in the Australian cotton CRC, including the university. (The level of costs is beyond the resources of most post graduate students.)
(56) Due to the contribution of a useful idea, Evelyn was named on the patent granted to the UNE as one of the inventors. Along with the other inventors, Evelyn signed a royalty sharing deed with the UNE under which Evelyn was to receive 8% of the inventors' share.
(57) After Lee and Evelyn were awarded their PhDs, the project Evelyn worked on was successfully commercialised. Evelyn received a small amount of income from the royalties but, more importantly, Evelyn's participation in the project enhanced her CV and assisted with obtaining a post-doctoral position in the United States.
(58) Vivian undertook a PhD in English Literature. The thesis focused on the themes in Mary Shelley's Frankenstein and from where Shelley drew her inspiration. One of the reviewers of the thesis suggested to Vivian that it would, with some rewriting, make an excellent non-fiction book
(59) During the course of the PhD, Vivian and Vivian's supervisor had recorded each person's IP contributed to the thesis. When publication is contemplated Vivian's supervisor agrees to waive his/her rights over the IP so that Vivian is able to proceed with the rewriting for publication.
(60) Through a literary agent, Vivian contacted a publisher who agreed to publish the final manuscript. As the UNE makes no claim over the copyright in a student's thesis, and the IP issues have been resolved between Vivian and her supervisor, Vivian is free to publish the book and will be the sole recipient of royalties from its sales.
(61) Jessie, an academic with the UNE, completed the development of a new process to assist seeds to germinate more quickly. The work was part of an ongoing project conducted by the UNE which Jessie took over from another academic at an advanced stage. Jessie was employed, in part, to take over the project because of special expertise in the subject area.
(62) Jessie, without reference to the UNE, applied for a provisional patent over the process and set up a company to commercialise it. On behalf of the company, Jessie negotiated with several organisations to acquire licenses to use the process. One of those organisations undertook due diligence on the patent and, after discovering that intellectual property arose from a UNE project, declined to take a license.
(63) Having run short of funds, Jessie convinced several friends to invest in the company in exchange for equity in the form of shares. Finally, Jessie succeeded in licensing the process and the licensee agreed to take over the payments for the patents.
(64) When the UNE became aware that Jessie had failed to disclose the patent and set up the company to commercialise it, the UNE commenced a civil action against Jessie and the company. The court found in favour of the UNE, ruling that it was entitled to a constructive trust over Jessie's shares in the company and Jessie was required to account to the UNE for sales of shares and for the royalties received under the license. In addition, the UNE conducted a misconduct hearing into Jessie's actions which resulted in Jessie being demoted.
(65) Simon is working on a cutting edge PhD project building on several years of research by his supervisor Caroline.
(66) Having just analysed the results of their latest experiment Simon realises that they have discovered a new class of chemicals which will provide the basis for new research directions as well as a variety of veterinary and medical treatments. On consulting with Caroline their first impulse is to publish the results in the next issue of their discipline journal.
(67) Scenario 1 —Publish.
(68) Scenario 2 —Protect
(69) Case study 6 — publishing course materials
(70) John, an academic in the School of Languages, Cultures and Linguistics, came across some course materials from a course no longer offered at UNE. John felt that, with some updating and judicious editing, the course materials would make an excellent textbook. John contacted a colleague at the University of New South Wales who said that John's proposed textbook would make an excellent resource for a course which she intended to set up at UNSW next year.
(71) John, being somewhat cautious, wondered whether the University still had any claim over the course materials, since he'd noticed a copyright claim by the University on the front cover of the old materials. On checking the University's homepage, John discovered that there was an Intellectual Property Policy and that it was administered by the PVC (R).
(72) On talking to the PVC (R), John was informed that the University did indeed hold the copyright to the course materials. John was amazed to discover that the University's copyright would last for over sixty years and that some of the original contributors possessed enforceable Moral Rights over the course materials.
(73) After some discussion, the PVC (R) and John negotiated an agreement under which he would convert the course materials into a textbook. Under the agreement drafted by the Legal Office, the University and John would share the royalties from sales of the book.
(74) In line with the legislative requirements, the agreement also required John to honour the Moral Rights of two original contributors to the course materials by contacting them and obtaining their written permission to amend their works before including them in the textbook. One of the original contributors wrote back to John waiving her Moral Rights on the grounds that the chapter of the book based on her work would be almost entirely rewritten and the contribution felt that she couldn't really make a claim over it. The other contributor insisted that he be named as an author for that chapter of the book, which John did.
(75) With the help of the Legal Office, John negotiated and signed a publishing contract. The book was published and many copies sold through the UNSW bookshop. As a result John enjoyed a share (along with the university) of the stream of royalty payments on sales.