1. Purpose
1.1 These procedures outline the University’s process for the commercialisation of Intellectual Property (IP).
1.2 These procedures comply with the University’s obligations under the National Principles of Intellectual Property Management for Publicly Funded Research and must be read in conjunction with the linked Intellectual Property – Governing Policy and the Intellectual Property: Commercialisation Revenue – Procedures.
2. Scope and application
2.1 These procedures provide guidance to all staff, students and invited scholars.
3. Definitions
3.1 Refer to the University’s Glossary of Terms for definitions of terms as they specifically relate to policy documents.
4. Managing and commercialising IP
4.1 The role of creator
4.1.2 Creators of IP have a critical role to play in assisting in the management and commercialisation of IP.
4.2 Expectations upon creators
4.2.1 The University recognises that much of its research output realise community benefit through publications and not have commercialisation potential. However, significant research outputs can also have commercial value. To maximise the commercialisation outcomes of this research, decisions must be made to protect and commercialise these outputs.
4.2.2 The University expects creators of IP to help the University achieve the optimal community and financial benefits. To this end, the Office of Research undertakes education and training for staff, students and invited scholars to support them in realising these expectations.
4.2.3 The University expects creators of IP to:
(a) identify whether IP has commercialisation prospects;
(b) disclose any identified IP to the University;
(c) confer with the Office of Research on the timing of publications to ensure that publication and IP protection are achieved;
(d) assist the University in the assessment, management, protection, and commercialisation of IP;
(e) assist the University in inventorship, authorship and contributor determinations;
(f) ensure that the University is engaged in any process of application for patents;
(g) ensure that the University is involved in the engagement of any patent attorneys;
(h) work with patent attorneys engaged by the University, including preparing parts or drafts of patent specifications;
(i) assist the University in preparing other documents that assist in the protection and commercialisation of IP, including technical descriptions and evaluations, and market descriptions and evaluations;
(j) sign documents required in the patent application process within an agreed timeframe;
(k) answer questions and provide information requested by the University within an agreed timeframe;
(l) promptly notify the University when approached by a possible commercial partner;
(m) assist the University in its negotiations with commercial partners;
(n) include the University in any commercial discussions relating to IP;
(o) ensure that the University is consulted about, and agrees to, the signing of any contracts or commitments binding upon the University;
(p) seek University approval for any media statements regarding IP with commercial potential; and
(q) assist the University in other relevant and related matters relating to IP.
5. Identification and disclosure of IP
5.1 Identification of IP
5.1.1 The University relies on staff, students and invited scholars to identify commercially valuable IP from any IP that are created.
5.1.2 To ensure commercialisation opportunities are not missed, creators must disclose IP to the Office of Research via a creator disclosure form.
6. Assessment of IP
6.1 Initial assessment
6.1.1 The Office of Research makes an initial assessment of the IP disclosed in a creator disclosure form. The assessment is made with the creator’s assistance and includes key issues, such as (but not limited to):
(a) the commercialisation prospects of the IP;
(b) the appropriateness of seeking the protection of the IP;
(c) whether it would be prudent to undertake further work or research on the IP to increase its commercial value;
(d) sources of research monies for further research;
(e) commercialisation strategies; and
(f) potential industry partners.
6.1.2 The Office of Research undertakes this assessment within an appropriate commercial timeframe and informs the creators of any time constraints that can affect this process.
6.1.3 Assessments are subject to regular review, and further assessment of the commercialisation opportunity undertaken in order to maximise commercial opportunities for the University.
7. Protection of IP
7.1 The Office of Research seeks advice of patent attorneys, creators and other experts as appropriate to determine the best approach to protect IP on a case-by-case basis.
7.1 Patenting
7.1.1 The Office of Research is responsible for assessing:
(a) whether to apply for a patent;
(b) the timing of a patent application;
(c) the scope of protection to be sought;
(d) whether to proceed from a provisional application to a patent cooperation treaty application; and
(e) whether to proceed to national filings of a patent application.
7.2 Other forms of protection
7.2.1 The Office of Research is responsible for making similar assessments in relation to other forms of IP and will implement those decisions and manage the progress of those applications.
7.3 Publications and seeking IP protection
7.3.1 The University encourages staff, students and invited scholars to publish their research findings in academic and scholarly journals and recognises the importance of both in terms of career progression. At the same time, commercially valuable IP can need to be maintained in confidence, so as not to adversely affect its commercialisation prospects.
7.3.2 The objective to commercialise IP must not operate to the exclusion of the objective to publish. The two objectives are not mutually exclusive, but should be complementary, each supporting the other.
7.3.3 IP disclosed to the Office of Research can and should be the subject of publications.
7.3.4 The Office of Research works with contributors to maximise:
(a) the opportunities for the publication of potentially commercial IP; and
(b) the commercial opportunities of IP.
7.3.5 In practice, this means that the Office of Research and creators work together to formulate timetables that do not:
(a) unnecessarily hinder publications; and
(b) put the protection and commercialisation of IP at risk.
7.3.6 This helps preserve the achievement of both objectives in a cooperative fashion, without the achievement of either objective hindering the other.
8. Distribution of net commercialisation revenue
8.1 The University distributes net commercialisation revenue it receives from the commercialisation of the University’s IP in accordance with the Intellectual Property – Governing Policy, the Intellectual Property: Commercialisation Revenue – Procedures and associated guidelines.
9. Authorities and Responsibilities
9.1 The Deputy Vice-Chancellor (Research and Innovation) is authorised to make these procedures and related guidelines for the operation of University Policy. These procedures and related guidelines must be compatible with the provisions of the Intellectual Property – Governing Policy.
9.2 The Director, Office of Research is authorised to make associated documents to support the application of policy documents. These must be compatible with the provisions of the respective policy document.
9.3 These procedures operate from the Last Amended date, will all previous procedures related to the commercialisation of IP are replaced and have no further operation from this date.
9.4 All records relating to the commercialisation of IP must be stored and managed in accordance with the Information Management – Governing Policy.
9.5 These procedures must be maintained in accordance with the Policy Framework – Procedures and reviewed on the shortened two-year policy review cycle.
9.6 Any exception to these procedures to enable a more appropriate result must be approved in accordance with the Policy Framework – Procedures prior to deviation from the policy document.
9.7 Refer to Schedule C of the Delegations Manual in relation to the approved delegations detailed within this policy document.
END