This often occurs when the University is obliged to take steps to ensure it owns certain intellectual property in order to comply with the terms of a research, consultancy or CRC agreement, or where the intellectual property has potential to be commercialised.
The University may request you to assign intellectual property to the University where:
- It is a requirement of a third party which is funding or facilitating a research project, consultancy, CRC agreement or Joint Venture Agreement; or
- You are doing research on valuable intellectual property that already belongs to the University, and the University wants to own any improvements that you make to it; or
- You are, or might be, one of several possible owners of the intellectual property and the University wants to consolidate that ownership for the purpose of commercialisation; or
- The University proposes to commercialise the intellectual property; or
- It is a requirement of a scholarship which a student is granted.
A "Deed of Assignment" is a legal document used to assign intellectual property from one person to another person or organisation.
Deed of Assignments also clarifies the ownership of the relevant intellectual property.
There can be a number of things to consider when determining whether the University owns intellectual property created by an employee, student, or non-employee with a discretionary title.
Where you are asked to execute a deed of assignment, you should:
- Read through a deed of assignment to ensure that you understand all the terms and agree with the description of the intellectual property that you are being asked to assign; and
- Disclose whether you have any doubts about whether you own it (e.g. if you are also an employee of another institution or company, you should ensure that the other institution or company has no claim to the IP that you propose to assign); and
- Obtain your own legal advice.
The University cannot give you advice about a deed of assignment. Such advice could be in conflict with its own interests.
The University can explain, from it is position, why it is seeking a deed of assignment from you. In the first instance, any such queries should be directed to the person providing you with the deed of assignment. You can also contact a Lawyer in Research Operations - Funding (Grants, Contract Research and Consultancies).
Benefits of assigning IP to the University
Benefits of assigning intellectual property to the University might include:
- Being able to participate in and accept research funding, as a third party might require or requests the University to do so, as a condition of the University’s receipt of research or other funding;
- Greater certainty about ownership (particularly where there are several potential employee owners who all assign intellectual property to the University);
- Access to the University’s commercialisation services (including the University’s acceptance of the risk of making a loss as a result of its payment of commercialisation costs); and
- A share of commercialisation revenue .
Consequence of not Signing
The consequence of not signing a Deed of Assignment will vary depending on the circumstances.
If the University is required under a research, consultancy or CRC agreement to take steps to ensure that it owns all the intellectual property created in the course of a project in which you propose to participate, the University may be forced to exclude you from participating from that project.
In the commercialisation context, the University will not proceed to commercialise intellectual property where there are any doubts about its entitlement to do so as the true legal owner. Any doubt surrounding ownership in such circumstances would also potentially preclude you from doing so either.