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Intellectual Property

What is Intellectual Property (IP)?

The World Intellectual Property Organisation (WIPO) defines intellectual property as

"creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce."

There are many different types of IP which provide the IP owner with different rights:

Types Description Rights in Australia
Copyright Textual material (literary works), computer programs, compilations, artistic, dramatic and musical works, cinematograph films, sound recordings, broadcasts and published editions. Exclusive rights to publish, perform, adapt, and broadcast the work and control the copying of the work. Term - Life of creator + 70 years.
Patents Inventions (device, method, process, substance). Must be novel, have inventive step and be useful. Exclusive rights to exploit (use to make, hire, sell, import) the invention for the life of the patent. Term - 20 years from file date.
Registered Designs Overall appearance of a product (shape, configuration, pattern etc.). Must be new and distinctive. Exclusive right to (make, sell, hire, import) a product in relation to which the design is registered. Term - 10 years.
Registered Trade Marks Mark to distinguish goods and services in the course of trade. Exclusive right to use (and authorise others to use) your TM in relation to the goods/services under which it is registered. term - perpetual (if fees are paid).
Plant Varieties New plant varieties that are distinct, uniform and stable. Exclusive right to produce or reproduce the propagating material, condition for propagation, and offer, sell, import or export the propagating material Term - 25 years for trees and grapevines, 20 years for other.
Circuit Layouts Original layout designs or plans of integrated circuits. Exclusive right to copy the layout, make the circuits and exploit commercially in Australia. Term - 10 years.
Trade Secrets Confidential information. May include know-how. Term - perpetual (if kept confidential)
  • It costs something, (in both human and financial terms) to create new knowledge and information
  • Often there are significant resources required from third-parties to translate research outputs into products and services
  • IP provides a mechanism to create an economic incentive to invest in new knowledge and information (intangible asset)
  • It is a currency that allows us to transmit new knowledge and create impact

This Fact Sheet (DOCX 63.7 KB) provides information for UTAS applicants’ initial discussions with potential industry partners relating to (i) IP (UTAS’s default IP position), (ii) the role of the Business Development and Technology Transfer Office (BD&TT) if the default IP position is not adopted and (iii) detail to be included in ARC proposals.

Generally speaking, unless an agreement has been entered into to the contrary, the creator of the intellectual property will own the intellectual property rights. However, IP ownership can be complex. As such, we recommend that you speak with BD&TT or Legal Services to discuss your particular situation.

University Employees

The intellectual property that you create could be solely owned by you, UTAS or another entity or could be jointly owned depending on the circumstances of its creation.

There are a number of ways in which employee-created intellectual property might be assigned to the University, including:

  • The intellectual property is created in the course of the employee's employment duties and assigned to the University by statute or implication of law (but note that in each case this will depend on what the employee is employed to do);
  • The employee's employment contract contains a clause which assigns certain intellectual property created by the employee to the University; or
  • Employees may execute a Deed of Assignment or contract where they assign intellectual property.
Non-Employees

Non-Employees include non-employees with discretionary titles such as an Honorary Appointee and other non-employee appointees as listed in the Discretionary Titles Policy.

The intellectual property that you create could be solely owned by you, UTAS or another entity or could be jointly owned depending on the circumstances of its creation.

The University will usually only own intellectual property created by a non-employee where that person has assigned that intellectual property to the University in the form of a Deed of Assignment or another form of agreement with the University.

The University may request that a non-employee assign or licence their intellectual property to the University where:

  • It is a requirement of a third party which is funding or facilitating the research or consultancy in which the non-employee is or will become involved in; or
  • The University proposes to commercialise the particular intellectual property.

Where a non-employee does not agree to sign a Deed of Assignment, the University may not be able to guarantee that the non-employee will be able to be involved in the relevant research project or consultancy.

Students

The intellectual property that you create could be solely owned by you, UTAS or another entity or could be jointly owned depending on the circumstances of its creation. For example, you may also create intellectual property jointly with your supervisor or another University employee.

The University will usually only own intellectual property created by a student where that person has assigned the intellectual property to the University in the form of a Deed of Assignment or another form of agreement with the University (for example, a scholarship agreement).

The University may request that a student assign or licence their intellectual property to the University where:

  • It is a requirement of a third party which is funding or facilitating the research project in which the student is or will become involved in; or
  • It is a requirement of a scholarship; or
  • The University proposes to commercialise the intellectual property

Where a student does not agree to sign a Deed of Assignment, the University may not be able to guarantee that the student will be able to receive a scholarship grant or be involved in the relevant research project.

Please note that the University's Intellectual Property Ordinance (PDF 41.0 KB) does not automatically assign any intellectual property.

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.
Your Responsibilities

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:

  • Enabling the University to accept research funding, where it is a condition of the funding that the University owns the project intellectual property;
  • Being able to participate in a research project or accept a scholarship
  • 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 BD&TT services); and
  • A share of net commercialisation revenue (see the University's Intellectual Property Ordinance (PDF 41.0 KB)).
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.

Intellectual property created in the course of your past employment, in projects undertaken independent of the University or that you have obtained from third parties, should not be used or applied to a UTAS research project without first confirming you have the right to do so.

If in doubt, you should contact BD&TT or Legal Services.

One of the requirements for patentability and registration of a design in Australia is that the invention or design is new as of the date of filing the application.

In order to assess whether or not the invention or design is new, it is compared to the "prior art" (information that has been made available to the public).

Prior art can include public disclosures made by the inventors prior to filing the application. A public disclosure is any written or oral disclosure of the invention or design and includes but is not limited to:

  • conversations with third parties without limitation or obligation of secrecy
  • posters and abstracts
  • journal articles
  • reports
  • news articles
  • social media posts
  • email correspondence
  • oral disclosures
  • public use or sale

In the case of an invention however, if the disclosure only describes the benefit and not how it works so that it doesn't teach the person how to make, operate or duplicate the invention, it is not considered a public disclosure.

To preserve your IP rights prior to filing an application,  inventions and new designs can be discussed underneath a confidentiality agreement.

An IP register is an accurate record of a project's IP assets and is a useful tool for managing IP. IP registers help to identify IP assets that are of value and helps to avoid infringing other people's rights.

IP registers can take many forms and can vary in complexity. Appropriate thresholds may be required to determine what IP needs to be managed (e.g. only registrable IP).

IP registers usually include:

  • Background IP- IP created prior to or independently of the project
  • Third Party IP- IP being contributed by a third party
  • Project IP- IP created during the project

The record may then detail: the type of IP, short description of the IP, ownership, creators, date created or made available, limitations on use etc.

Importantly, IP registers are not static and should be continuously used and regularly reviewed.

Moral rights are a component of copyright protection and refer to the ongoing rights of the creator. Even if copyright is assigned, the author/ performer still retains their moral rights which cannot be assigned to the University or anyone else.

Moral rights include:

  • A right of attribution;
  • A right not to have work/performance falsely attributed; and
  • A right of integrity (including not subjecting a work or performance to derogatory treatment)

Sometimes funding bodies ask the University to obtain consent to specific infringements of copyright on their behalf. The University seeks preserve its staff and students' moral rights.