D/3.1 Intellectual property policy

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3.1.1 Policy principles
3.1.2 Definitions
3.1.3 Roles and responsibilities
3.1.4 Ownership of intellectual property generated by staff
3.1.5 Ownership of copyright
3.1.6 Intellectual property in QUT teaching materials
3.1.7 Intellectual property generated by students
3.1.8 Intellectual property created by visitors
3.1.9 Commercialisation and commercialisation revenue
3.1.10 Moral rights
3.1.11 Traditional knowledge
3.1.12 Dispute resolution
3.1.13 Breaches of the policy
3.1.14 Conflict of interest
Related Documents
Modification History

3.1.1 Policy principles

QUT is committed to providing an environment where scholarship and innovation can flourish. QUT encourages its staff and students to generate and share knowledge that will provide social, cultural and economic benefits for QUT and for the broader community. Appropriate management of QUT’s intellectual property by a strong intellectual property protection regime facilitates the best delivery of these benefits to QUT, its staff and students, and the wider community.

Benefits of scholarship may be achieved by the dissemination of knowledge, for example, by academic publications, and QUT acknowledges that the contribution to knowledge is an important function of academic endeavour. QUT is committed to Open Content Licensing principles and provides for their application in some specific settings (eg teaching grant outputs). It is important to balance the benefits of optimal access in an open access context with the need to protect intellectual property in cases providing commercial opportunity. This requires a considered approach at an early stage to the likely opportunity for commercial benefit, for example, where an innovation can only reach and benefit the broader community after a speculative investment is made by industry partners, or where the commercial skills of industry partners are necessary.

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3.1.2 Definitions

“commercialisation expenses” means the expenses incurred by QUT or qutbluebox in the production, development, protection, marketing and commercialisation of QUT intellectual property and includes:

• patenting and other intellectual property protection expenses;
• legal expenses incurred on the commercialisation project (and not just on the particular transaction giving rise to the revenue);
• external professionals’ expenses incurred on the commercialisation project (and not just on the particular transaction giving rise to the revenue), which may include:
• accountants’ expenses for financial and taxation modelling
• valuers’ expenses, and
• other consultants’ expenses (eg commercialisation consultants);
• costs associated with the development of the intellectual property including proof of concept studies, prototype development, marketing studies and business planning;
• travel and accommodation expenses incurred on the commercialisation project (and not just on the particular transaction giving rise to the revenue) by any person (whether staff member, or an external professional);
• legal costs and related expenses incurred to commence or defend infringement proceedings;
• taxes, duties or any other government levies incurred by QUT or qutbluebox, in respect of the commercialisation project or revenue;

and does not include:

• QUT’s and qutbluebox’s administration expenses;
• the cost of undertaking research, unless such research is funded by QUT or qutbluebox under a proof of concept or other funding mechanism.

The determination of whether particular expenses not listed above are considered commercialisation expenses will be made by the Deputy Vice-Chancellor (Research and Commercialisation).

“commercialisation revenue” means the gross cash revenue received by QUT or qutbluebox from the commercialisation of QUT intellectual property and includes:

• royalties upon sales by a licensee;
• royalties from sub-licence fees received from a licensee;
• lump sum licence fees (except where those fees are required to be used to subscribe for equity in a start-up company);
• proceeds from the assignment of QUT intellectual property;
• proceeds of sale of the QUT intellectual property (where a sale occurs);
• signing fees;
• milestone payments;
• minimum annual payments;
• reimbursement of patent prosecution and maintenance expenses;
• dividends upon shares owned by QUT or qutbluebox in a start-up company to which it grants a licence;
• proceeds of sale of shares owned by QUT or qutbluebox in a start-up company to which it grants a licence;
• damages from infringement proceedings;

and does not include:

• payments pursuant to a research or consulting agreement.

The determination of whether particular revenue not listed above is considered commercialisation revenue will be made by the Deputy Vice-Chancellor (Research and Commercialisation).

“contributor” means the creators, and any other staff member or student who has substantially contributed to QUT intellectual property, as determined by the Deputy Vice-Chancellor (Research and Commercialisation).

“creator” means a staff member or student who creates QUT intellectual property, and includes:

• inventors of patentable subject matter;
• authors of works and makers of other subject matter subject to copyright;
• designers of industrial designs.

“intellectual property” refers to the legal rights which protect intellectual and creative effort recognised by law and includes:

• patents for new or improved products or processes;
• trade marks for letters, words, phrases, sounds, smells, shapes, logos, pictures, aspects of packaging or a combination of these, to distinguish the goods and services of one trader from those of another;
• designs for the shape or appearance of manufactured goods;
• copyright for original material in literary, artistic, dramatic or musical works, films, broadcasts, multimedia and computer programs;
• circuit layout rights for the three-dimensional configuration of electronic circuits in integrated circuit products or layout designs;
• plant breeders’ rights for new plant varieties; and
• confidentiality / trade secrets including know-how and other confidential or proprietary information.

“net commercialisation revenue” means commercialisation revenue less commercialisation expenses in relation to a particular item or related items of intellectual property.

“open content licensing” refers to the licensing of a copyright work or other subject matter under a system which preserves the creator’s intellectual property rights whilst giving permission in advance for the material to be used in certain defined ways, subject to certain defined conditions. At a minimum, such licences provide the user with the right to reproduce, copy and communicate the content on prescribed terms or conditions. Examples of open content licensing systems include the Creative Commons licences, the GNU Public Document Licence and the AESharenet licences.

“QUT” means the Queensland University of Technology established pursuant to the Queensland University of Technology Act 1998.

“qutbluebox” means qutbluebox Pty Ltd, a subsidiary company of QUT.

“QUT intellectual property” is intellectual property created by staff in the course of their QUT employment and intellectual property assigned by students to QUT.

“QUT teaching materials” are teaching materials created by staff in the course of their QUT employment.

“scholarly works” means any article (refereed or un-refereed), book or book chapter(s), manual, musical composition or creative writing or any digital or electronic version of these that contains material written by staff or a student, but does not include work that is a computer program, teaching materials, or administration material or work produced at the request of a third party under contract with QUT.

“staff” and “staff member” means an employee of QUT at the time that person creates intellectual property and includes academic staff and professional staff whether employed on a full-time, part-time, sessional or casual basis.

“staff materials” means teaching materials in which the intellectual property is owned or licensed by staff to QUT.

“student” means a person enrolled as a student of QUT, or in a course or program of study conducted by or on behalf of QUT, at the time they create intellectual property.

“teaching materials” are lecture notes, course notes, slides, presentations, overheads, course assignments, examination papers, answer guidelines, tutorial questions, handbooks, spreadsheets, course outlines, course reading lists, computer programs solely used for teaching purposes, drawings and diagrams, maps, photographs, broadcasts, films and all other materials created, developed, used or supplied for the purpose of learning and teaching at QUT.

“visitor” means any person other than a staff member or student who takes part in any research or scholarly activity at QUT pursuant to which that person creates intellectual property, and includes a person who holds an adjunct, honorary, voluntary or other similar appointment at QUT.

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3.1.3 Roles and responsibilities

All staff

All staff generating intellectual property in the course of their QUT employment have an obligation to comply with the specific requirements of this policy. In view of the ownership arrangements outlined in section 3.1.4 below, staff must act in a manner which is consistent with QUT’s ownership of intellectual property generated in the course of employment. Creators who are staff members are expected to assist or facilitate the exploitation of intellectual property which they have been involved in generating, where avenues for exploitation or commercialisation are identified by or on behalf of QUT.

Executive deans, heads of division and institute directors

Executive deans, heads of division or institute directors, as the line managers of creators, have a role in promoting this policy to staff and students and in making determinations on the use of any commercialisation returns to the faculty, division or institute in accordance with QUT policies and which use is normally subject to the Vice-Chancellor’s approval.

Deputy Vice-Chancellor (Research and Commercialisation)

The Deputy Vice-Chancellor (Research and Commercialisation) has a general role in developing QUT’s research capacity and ensuring that research innovations with commercial relevance are exploited to their full potential. As part of this role, the Deputy Vice-Chancellor (Research and Commercialisation) is responsible for administering this policy, for the formulation and approval of procedures and protocols to implement this policy, and for the management of disputes arising under this policy.

qutbluebox Pty Ltd

qutbluebox is a company which has the specific function of protecting and commercialising intellectual property (other than teaching materials) developed at QUT and supporting creators in the recognition and identification of commercialisable intellectual property. qutbluebox reports annually to the Deputy Vice-Chancellor (Research and Commercialisation) on matters relating to the management and commercialisation of QUT intellectual property.

Office of Commercial Services

The Office of Commercial Services deals with contract research, consultancies, continuing professional education, international projects and cooperative research centres. The Office of Commercial Services refers transactions to qutbluebox when commercialisation or related risks to QUT need to be considered.

Office of Research

The Office of Research deals with research grants, data management and research ethics, and refers transactions to qutbluebox when commercialisation or related risks to QUT need to be considered.

Development Office

The Development Office identifies and facilitates the management of relationships between QUT and the external community, and refers transactions to qutbluebox when commercialisation or related risks to QUT need to be considered.

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3.1.4 Ownership of intellectual property generated by staff

• an inventory of that intellectual property, and
• all documents relating to the ownership of the intellectual property, including any contracts, licensing agreements or other relevant documents.

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3.1.5 Ownership of copyright

In accordance with general law principles noted in section 3.1.4 above, QUT as an employer is the owner of copyright where the work is created by staff members in the course of their employment. QUT’s ownership of copyright applies to both academic and professional staff.

Assignment of scholarly works

Provided that QUT does not have contractual obligations to a third party which would prevent QUT effecting such an assignment, QUT assigns the right to publish scholarly works to the creator(s) of that work. The assignment is subject to a perpetual, irrevocable, worldwide, royalty-free, non-exclusive licence in favour of QUT to allow QUT to use that work for teaching, research and commercialisation purposes and toreproduce and communicatethat workonline for non-commercial purposesvia QUT's open access digital repository.

If required, QUT will sign documents to more fully record the staff member’s ownership of the right of publication of the copyright in a scholarly work and QUT’s non-exclusive licence to that work.

The “right to publish” scholarly works in this section 3.1.5 means the right to publish a work as referred to in the Copyright Act 1968 (Cwth).

The version of the scholarly work that QUT can make available via the digital repository may be the published version or the final post-peer review manuscript version. QUT will agree to third party publisher-requested embargoesof 12 months or less (from date of publication by the third party publisher) on the publication of the manuscript via the digital repository.

Any subsequent publication agreement or assignment of the right to publish the scholarly work entered into by the creatorwill be subject to the terms of the pre-existing non-exclusive licence referred to in this section 3.1.5.

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3.1.6 Intellectual property in QUT teaching materials

In line with section 3.1.4 above, QUT owns the intellectual property in QUT teaching materials. This ensures the University has the unrestricted ability to use QUT teaching materials for its teaching, research and training responsibilities.

Non-exclusive licence

QUT grants to creators a perpetual, worldwide, non-exclusive, royalty-free licence to use QUT teaching materials to fulfil their teaching, research and training responsibilities at QUT. This licence does not include any use for commercial purposes nor does it involve a transfer of ownership of QUT intellectual property.

In the absence of an obligation of confidentiality or separate legal constraint, QUT recognises that staff may personally use knowledge they have developed in the course of their employment at QUT, once that employment ceases. That right does not extend to the reproduction of QUT teaching materials.

Staff materials

QUT’s access to staff materials is necessary to enable the University to deliver the courses in which staff materials are used. This access continues after a staff member ceases to be employed at QUT. If staff materials are used in the course of the staff member’s employment at QUT, the staff member must grant a perpetual, worldwide, royalty-free, non-exclusive licence to QUT to use staff materials for all purposes connected with delivery of courses and teaching programs by QUT.

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3.1.7 Intellectual property generated by students

In accordance with general law principles, students personally own the intellectual property that they generate.

However, in order to participate, or continue to participate, in certain projects students may need to assign to QUT their interest in the intellectual property, in particular, where:

• the project is externally funded, or
• the project has clear commercialisation potential or objectives.

It is intended that requests for students to assign their intellectual property will be done only where necessary to enable QUT to meet its legal obligations to industry partners, or to achieve the objective of deriving appropriate benefits from innovation at QUT by commercialising intellectual property.

The terms of any assignment of intellectual property by a student will be agreed with the student. In general the student will:

• share in net commercialisation revenues along with all other contributors;
• retain copyright in the student’s thesis;
• not be unreasonably impeded in submitting a thesis for examination and completing requirements for the award of a degree;
• observe obligations of confidentiality in relation to the project.

Responsibility for identifying circumstances when the assignment of student intellectual property may be appropriate rests with the research thesis supervisor and the relevant executive dean or institute director (or delegate).

To protect student interests, and in recognition of the different considerations which apply to student intellectual property, a student intellectual property protocol, approved by the Deputy Vice-Chancellor (Research and Commercialisation), sets out the mechanisms to implement these principles.

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3.1.8 Intellectual property created by visitors

Ownership and rights relating to intellectual property brought to QUT by a visitor must be resolved before any activity commences at QUT. This may necessitate negotiation between QUT and the owner of the intellectual property.

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3.1.9 Commercialisation and commercialisation revenue

Commercialisation of QUT teaching materials

Any commercialisation of QUT teaching materials will be done by QUT through the Office of Commercial Services as determined by the Deputy Vice-Chancellor (Research and Commercialisation) in consultation with the Deputy Vice-Chancellor (Academic) and the relevant executive dean. Any distribution to contributors from net commercialisation revenue received from commercialisation of teaching materials will be determined by the Deputy Vice-Chancellor (Research and Commercialisation) in consultation with the Deputy Vice-Chancellor (Academic) and the relevant executive dean.

Commercialisation of intellectual property other than QUT teaching materials

The commercialisation of QUT intellectual property (other than teaching materials) will be pursued through qutbluebox as licensor or commercialising entity.

Contributors are expected to comply with QUT’s commercialisation protocol, approved by the Deputy Vice-Chancellor (Research and Commercialisation).

In particular, and without limiting the matters to be complied with, QUT expects creators to:

1. Identify intellectual property that may have commercialisation prospects.
2. Disclose that identified intellectual property via forms available on the qutbluebox website.
3. Confer with qutbluebox on the timing of publications to ensure that publication and intellectual property protection may be achieved without either hindering the other.
4. Assist qutbluebox in the assessment, management, protection, and commercialisation of intellectual property.
5. Assist qutbluebox in inventorship and contributor determinations.
6. Ensure that qutbluebox is engaged in any process of application for patents.
7. Ensure that qutbluebox is involved in the engagement of any patent attorneys.
8. Work with patent attorneys engaged by qutbluebox, including preparing parts or drafts of patent specifications.
9. Assist qutbluebox in preparing other documents that will assist in the protection and commercialisation of intellectual property including technical descriptions and evaluations, and market descriptions and evaluations.
10. Sign documents required in the patent application process within an agreed timeframe.
11. Answer questions and provide information requested by qutbluebox within an agreed timeframe.
12. Promptly notify qutbluebox when approached by a possible commercial partner.
13. Assist qutbluebox in its negotiations with commercial partners.
14. Include qutbluebox in any commercial discussions relating to intellectual property.
15. Ensure that qutbluebox is consulted about, and agrees to, the signing of any contracts or commitments binding upon QUT or qutbluebox.
16. Seek qutbluebox approval for any media statements regarding intellectual property with commercial potential.

As a general rule, net commercialisation revenue (excluding that derived from the commercialisation of teaching materials) will be distributed in the following manner:

• one third to all the contributors between them;
• one third to the contributors’ faculty, division or institute for its use as the executive dean, head of division or institute director determines, subject to the approval of the Vice-Chancellor; and
• one third to qutbluebox.

In exceptional circumstances, QUT has the discretion to increase the amount available for distribution amongst all contributors above one third, to a maximum of one half.

The discretion to increase distributions to particular contributor(s) will be exercised with agreement of the Deputy Vice-Chancellor (Research and Commercialisation) and the Deputy Vice-Chancellor (Academic), upon recommendation of qutbluebox. Consideration will be given, amongst all other relevant matters, to:

• the extent to which the contributor(s) have complied with the expectations upon the staff and students contained in the commercialisation protocol;
• the agreement by the contributor(s) to contribute to the commercialisation process beyond the expectations upon the contributor(s) contained in this policy and subject to this contribution being approved by the relevant executive dean;
• an assessment by qutbluebox as to the need and desirability for the contributor(s) to continue to be involved in the commercialisation process;
• the desire or requirement by the third party that the contributor(s) remain involved in the commercialisation process; and
• the adherence by the contributor(s) to arrangements requiring the contributor(s)’ continued involvement in the commercialisation process, if any.

It follows that this discretion to increase distributions to any particular contributor cannot be prematurely exercised at the time of, for example, lodging a patent application, and can only be most appropriately exercised after the criteria in the paragraphs above can be assessed.

In these exceptional cases, the distribution of net commercialisation revenue shall be:

• up to one half among the contributor(s);
• of the remainder:
  • one half to the contributors’ faculty, division or institute for its use as the executive dean, head of division or institute director determines, subject to the approval of the Vice-Chancellor; and
• one half to qutbluebox.

Net commercialisation revenues will be distributed to contributors according to the proportionate contribution made by them to the intellectual property. If necessary, for instance, in cases of uncertainty or if there is dispute between contributors, the Deputy Vice-Chancellor (Research and Commercialisation) determines proportionate contributions for the purposes of net revenue distribution to contributors.

Where creators or contributors are staff employed by a faculty, the distribution of net commercialisation revenue is made to the employing faculty at the time that the intellectual property was developed, even though the creator or contributor was also a member of an institute at that time. In the case where there are several contributors who are employed by different organisational areas, distribution to relevant faculties, divisions or institutes will be made in the same proportions as apply to contributors. At its discretion, the faculty, division or institute may apply the commercialisation revenue to funding further research by the creators / contributors.

Subject to any existing agreements regarding revenue distributions, this policy will apply in relation to all net commercialisation revenue received by QUT or qutbluebox after this policy comes into effect, including under agreements made before this policy comes into effect. Distribution to a contributor under this policy shall not be affected by the death, resignation or retirement of the contributor.

A commercialisation revenue protocol, approved by the Deputy Vice-Chancellor (Research and Commercialisation), sets out the mechanisms to implement these principles.

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3.1.10 Moral rights

Moral rights has the meaning specified in the Copyright Act 1968 (Cwth). In summary, moral rights apply to all works, except films, in existence on 21 December 2000 and which are still protected by copyright, and to all works including films created after that date.

The moral rights of the creator of works are:

• the right of attribution of authorship in respect of the work;
• the right not to have authorship of the work falsely attributed; and
• the right of integrity of authorship in respect of the work.

In summary:

• the right of attribution is a right to be identified as the author of a work;
• false attribution means to associate someone else's name with a work in a way that falsely implies that person is the author of the work; and
• the right of integrity of authorship is the right not to have the work subjected to derogatory treatment, such as the doing of anything that results in a material distortion, mutilation of, or alteration to, the work that is prejudicial to the author's honour or reputation.

QUT shall take reasonable steps to respect moral rights and to endeavour to ensure that others respect moral rights. However, QUT is not obliged to take action if the moral rights of authors are not exercised.

QUT recognises that staff and students may retain moral rights in copyright works owned by QUT and may, on appropriate occasions, ask creators to consent to certain uses of their work, where moral rights may be affected.

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3.1.11 Traditional knowledge

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3.1.12 Dispute resolution

Determinations on matters relating to this policy and associated protocols are made by the Deputy Vice-Chancellor (Research and Commercialisation).

To the extent of any inconsistency between an associated protocol and this policy, this policy will prevail.

A person who does not agree with a determination, action or inaction on a matter relating to this policy and associated protocols must in the first instance notify the Deputy Vice-Chancellor (Research and Commercialisation) in writing of the dispute. The Deputy Vice-Chancellor (Research and Commercialisation) will respond to that notice promptly.

If the concerned person is dissatisfied with the reply (or if the reply is not timely) the person should advise the Vice-Chancellor in writing of the unresolved dispute.

The Vice-Chancellor or the Vice-Chancellor’s nominee shall meet with the person and the Deputy Vice-Chancellor (Research and Commercialisation) within five working days from the date of being advised in writing of the ongoing dispute. Prior to the meeting, the Vice-Chancellor shall advise the person of their right to be accompanied by a staff representative at that meeting. The staff representative excludes a person who is currently practising as a solicitor or barrister.

The Vice-Chancellor or the Vice-Chancellor’s nominee may seek assistance in investigating a dispute, as appropriate. That advice may be sought from qutbluebox on matters relating to exploitation or commercialisation of QUT intellectual property or may determine it is appropriate to appoint a panel of up to three people, to report on matters raised by the dispute. This panel will be composed of such persons, from within and external to QUT, who by reason of their collective skills and expertise are able to consider the specific issue raised, and provide advice to the Vice-Chancellor or his or her nominee, as applicable.

The Vice-Chancellor shall respond to the written notice of dispute within 30 days of receipt of the notice or shall inform the person of an alternative timeline for resolution. The final response of the Vice-Chancellor to the written notice of dispute shall conclude the matter.

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3.1.13 Breaches of the policy

Any breach of this policy or associated protocols by a staff member may be subject to disciplinary action in accordance with QUT’s provisions on disciplinary action for misconduct and serious misconduct (see B/8.4 and B/8.5 ).

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3.1.14 Conflict of interest

The management of any potential conflict of interest shall be undertaken in accordance with QUT’s Code of Conduct (see B/8.1 ).

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Related Documents

MOPP Appendix 3 Schedule of Authorities and Delegations

MOPP B/8.1 Code of Conduct

MOPP D/2.6 QUT Code of Conduct for Research

MOPP D/5.4 Code of Good Practice for Postgraduate Research Studies and Supervision at QUT

MOPP D/7.1 Policy on outside work - academic staff

MOPP A/8.3 QUT Reconciliation Statement

Circuit Layouts Act 1989 (Cwth)

Copyright Act 1968 (Cwth)

Designs Act 1906 (Cwth)

Patents Act 1990 (Cwth)

Plant Breeder's Rights Act 1994 (Cwth)

Trade Marks Act 1995 (Cwth)

Intellectual property protocols

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Modification History

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