Intellectual Property Rights of Graduate Research Students Policy

Purpose

It is the University Council's desire to encourage and reward innovative research work by its staff and students that leads to the creation of intellectual property (IP).

The purpose of this policy is to support and safeguard such research within the graduate research student community by:

1. acknowledging the partnership between student and University in the creation of IP during, and directly related to, the course of the student's studies;
2. protecting the respective interests, including legal rights, of both parties; and
3. providing a mechanism for the appropriate sharing, in a mutually beneficial manner, of the financial benefits obtained from the commercial exploitation of the resultant IP.

Graduate research students can generally choose whether or not they wish to protect the IP arising from their research. It is not the intent of this policy to require students to protect and/or share the financial benefits of IP if they do not wish to do so. Rather, the objective of this policy is to protect the interests of students and the University when students do wish to commercially exploit IP.

Organisational scope

This policy applies to all graduate research students and those University or external staff involved in their supervision.

While this policy is intended primarily for graduate research students, other students may elect to protect the IP arising from their research in terms of the provisions of this policy.

Please note that matters pertaining to the authorship of research are outside the scope of this policy, which focuses specifically upon IP. Discussion of authorship can be found in the following:

• Responsible Practice in Research – Code of Conduct
• Guidelines for Graduate Research Supervisors
• Allegations of Misconduct in Research Procedures

Definitions

Graduate Research Student

a candidate enrolled in a Master's or doctoral programme where the thesis component comprises 90 points (0.75 FTE) or more.

Intellectual Property

for the purposes of this policy this means all industrial and intellectual property rights (including applications for such rights) whether conferred by statute, at common law or in equity, including, but not limited to:

• copyrights and similar rights that may subsist in works or other subject matter
• rights in relation to inventions (including all patents and patent applications)
• rights in relation to trade secrets and confidential information
• rights in relation to designs (whether or not registrable)
• rights in relation to plant varieties
• rights in relation to registered and unregistered trademarks and business names
• rights in relation to circuit layouts, and
• other rights as defined by Article 2 of the Convention of July 1967 establishing the World Intellectual Property Organisation as may exist anywhere in the world.

Inventorship

the Patents Act 2013 stipulates that in relation to an invention, inventor means the actual deviser of the invention. Under New Zealand patent law, a person is generally considered an inventor if they conceived the original idea(s) which led to the patented invention.¹ On the other hand, a person is not considered an inventor if they carried out instructions from the deviser of the invention. Importantly, where research is collaborative (e.g. involving more than one researcher, research group or organisation), there may be multiple inventors.

IPA

Intellectual Property Agreement

Ownership

the term recognising the owner of the legal title to an invention. While inventorship is static (inventors can't change), ownership can be dynamic – a patent is a property right that can be transferred from one owner to another. Owners can be organisations.

1. The Patents Act 2013

Content

1. Intent

The University understands and acknowledges that the IP of graduate research students is underpinned by different circumstances, factors and relationships to the IP of staff. Generally speaking, the IP of graduate research students is created during, and directly related to, the course of their supervised research studies, while the IP of staff is created during the course of their employment at the University.

To protect the interests of both parties, it is essential for the student and the University, in partnership, to develop an appropriate Intellectual Property Agreement (IPA) that includes specific detail around University and student ownership of the IP, and which is tailored to the particular circumstances of the IP that the student has created or anticipates creating.

The University's view is that IP is produced with the assistance of the University through its staff and other resources, and the University accordingly has part-ownership of the IP. When the University does wish to exercise a claim on ownership of IP, it will enter into an agreement with the respective student, in accordance with this policy, to share the financial benefits that may arise. Should the University waive ownership, the student is free to make their own arrangements regarding the IP.

Students who are also staff, and whose staff roles do not include a research component, will be considered as students and this policy will apply – provided the IP in question has been created through their graduate research studies. The University of Otago Intellectual Property Rights Policy (for staff) will apply to those students who are also members of the academic staff and whose staff roles include a bona fide research component.

Where students are employed by a third (external) party within a research collaboration, the covering IPA must include specific detail around University, student and third party ownership of the IP.

When using IP created by a graduate research student, a supervisor must declare both the supervisor's and the student's respective roles in creating the IP, particularly as these pertain to inventorship. A supervisor may not commercially exploit the IP created with a student without the express written agreement of both the student and the University.

2. Copyright

The University does not claim copyright in work or material produced by students during, and directly related to, their course of studies and agrees that copyright in such work or material is owned by the students who produce it.

3. Procedures

The following procedures facilitate the creation and protection of commercially valuable IP:

1. Graduate research students are required to sign an IP declaration when enrolling as thesis students in eVision. This declaration is included together with the other declarations in the Consent and Declaration page in eVision. The declaration reads as follows, under the heading “Intellectual Property Rights (for thesis students)”: “I undertake to abide by the University's Policy for Intellectual Property Rights of Graduate Research Students.”
2. When research activity generates or is likely to generate results that are novel and have potential commercial applicability, students should immediately advise the Director, Research and Enterprise, through their Head of Department. The Director, Research and Enterprise will make an assessment of commercial applicability, and, where appropriate, will initiate formal procedures to develop a mutually agreeable IPA, covering (among other things) the respective student and University ownership proportions of the IP and the term of the IPA. Any costs involved will be paid by the University in the first instance but will be recovered subsequently pursuant to section 4 below. Should no remuneration eventuate, the University will bear these costs.
3. Any IP or idea or specific knowledge with potential commercial applicability that is already in existence at the commencement of the student's studies should be appropriately identified and registered in a statement of prior IP in the IPA. The purpose of this statement is to:
   1. accurately identify, and hence appropriately protect, any relevant IP the graduate research students is bringing with them to the research project; and/or
   2. identify and protect the student's contribution in the creation of any subsequent IP so as to minimise the possibility of any conflicts of interest arising.
   When enrolling in eVision, graduate research students are also required to indicate whether or not they are bringing relevant IP to a research project. There is provision within eVision to upload a statement outlining any such IP.
4. To safeguard any IP created within the University, it is important that students are cautious about publically sharing the results of research activity with potential commercial applicability so as to avoid inadvertent disclosure. (Inadvertent disclosure may occur via seminars, public talks, conference proceedings, posters, published articles, social media and so on.) It is in the best interests of the student and the University to not publicise the results of their research until the Director, Research and Enterprise has made a final assessment on commercial applicability and protection of any IP that may arise from the research activity. This decision shall be made expeditiously, so that publication or dissemination of the student's work is not unreasonably delayed.
5. Students are advised to maintain full records of all documentation related to the creation of IP and to keep the University informed of their contact details.

4. Distribution of income from intellectual property

Any royalties or other remuneration received by the University as a consequence of licensing, selling, or otherwise dealing with IP which the University claims part-ownership of pursuant to this policy, shall be distributed in a manner consistent with this policy and the IPA entered into with the student (section 3(b)) – incorporating, where applicable, any associated statement of prior IP (section 3(c)).

As a general principle, the following distribution model will be used in determining the respective shares of the parties:

1. Firstly, the University and the student shall recover the following expenses incurred in the protection and/or commercialisation of the IP.
2. Secondly, the balance of the royalties or other remuneration shall then be divided between the student and the University based upon the percentage contribution of the student in creating the IP.
   This percentage contribution will be determined through a process of consultation and mediation between the student and the University, including the student's supervisor(s), with a view to reaching an agreement. It is the University's intent that the percentage contribution should represent an accurate, mutually agreeable, fair and reasonable figure. If required, an appropriate third party, agreeable to by the student and the University, may be requested to independently assess the relative value of contributions by the student and the University and to make a final and binding decision.
3. The University's share of the royalties and other remuneration will be divided in accordance with the relevant provisions of the Intellectual Property Rights Policy.

5. Cessation of study

When a student who is entitled to payments pursuant to section 4(b) leaves the University upon completion of their studies, or dies while studying at the University, the payments will continue either to the student in the case of the former or to their estate in the case of the latter.

6. Redress

1. Any complaints related to the application of this policy, including the apportionment of income from the IP, should be made in writing to the Deputy Vice-Chancellor (Research and Enterprise).
2. Complaints will be addressed in accordance with the relevant redress provisions in the respective IPA.

7. External Research Contracts

1. The University may enter into contracts to provide research resources to external clients, including those in the commercial sector. Ownership of IP generated by such research, and distribution of income from that IP will be governed by the terms of the contracts, and sections 3, 4, 5 and 6 above will not apply.
2. Students engaged in such contract research must:
   1. be fully informed in writing of the IP provisions that have been arranged;
   2. give their consent in writing to these arrangements prior to beginning their research; and
   3. comply with all contract terms and conditions, including any confidentiality requirements and publication constraints.
3. The University's “Externally Sponsored Graduate Research Procedures” should be consulted when study based on externally funded research is contemplated.

Related policies, procedures and forms

• Academic Integrity Policy
• Allegations of Misconduct in Research Procedures
• Copyright Act 1994
• Designs Act 1953
• Externally Sponsored Graduate Research Procedures
• Fair Trading Act 1986
• Guidelines for Graduate Research Supervisors
• Intellectual Property Rights Policy
• Layout Designs Act 1994
• Open Access Policy
• Patents Act 2013
• Plant Variety Rights Act 1987
• Resources for Graduate Research Candidates Guidelines
• Responsible Practice in Research – Code of Conduct
• Student Academic Misconduct Procedures
• Trade Marks Act 1953

Contact for further information

If you have any queries regarding the content of this policy or need further clarification, contact:

David Geraghty
Senior Research and Policy Analyst
Office of the Deputy Vice-Chancellor
Research and Enterprise
Email david.geraghty@otago.ac.nz