What is a Deed of Assignment?
A "Deed of Assignment" is a legal document used to assign intellectual property from one person to another person or organisation.
Deeds of Assignment also clarify the ownership of the relevant intellectual property.
Why is the University Requesting a Deed of Assignment?
The University may request you to assign your intellectual property rights 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.
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.
Benefits of assigning IP to the University
Benefits of assigning intellectual property to the University might include:
the University to accept research funding, where it is a condition of the
funding that the University owns the project intellectual property;
able to participate in a research project or accept a scholarship
certainty about ownership (particularly where there are several potential
employee owners who all assign intellectual property to the University);
to the University's BD&TT services); and
- A share
of net commercialisation revenue (see the University's
Intellectual Property Ordinance).
Consequence of not Signing
The consequence of not signing a Deed of Assignment will vary depending on the circumstances.
If the University is required 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.