Intellectual Property Rights Policy

Purpose

It is the University Council's desire to encourage and reward innovative research work within the University which leads to the creation of Intellectual Property. To encourage such research, the Council believes that the University should share the financial benefits obtained from commercial exploitation of Intellectual Property owned by the University among the staff members involved in its creation, the relevant University department and the University itself.

The purpose of this Policy is to underpin these principles.

Organisational scope

This Policy applies to all University staff who conduct research.

Definitions

Intellectual Property

For the purposes of this policy 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 trade marks 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.

Content

1. Notification and Disclosure

1. To facilitate the creation and protection of commercially valuable Intellectual Property, a staff member should immediately advise the Director, Research and Enterprise when research activity generates results that are novel and have potential commercial applicability. The Director, Research and Enterprise will make the final decision on commercial applicability, and, where appropriate, will initiate formal procedures to protect Intellectual Property. Any costs involved will be paid by the University but may be recovered subsequently pursuant to clause 5 below.
2. In order to safeguard any Intellectual Property arising from research activity within the University, staff members must not disclose the results of research activity with potential commercial applicability to anybody outside the University until the Director, Research and Enterprise has made a final decision on commercial applicability and protection of any Intellectual Property that may arise from that activity. This decision shall be made expeditiously, so that publication of staff members' work is not unreasonably delayed.

2.  General principle

1. Except as otherwise specified in this Policy or agreed in writing:
   1. subject to clause 3 below, the University claims ownership of all Intellectual Property in or to any works, materials, inventions or research activity produced or created by University staff in the course of their employment with the University, and
   2. University staff may not use, disclose or commercially exploit any works, materials, inventions or research results in which the University owns any Intellectual Property, except as directed or permitted to do so by the University.

3.  Copyright

1. The University does not claim copyright in work or material produced by University staff in furtherance of their general employment obligations to teach and to undertake scholarly research, and agrees that copyright in such work or material is owned by the University staff members who produce it. For the avoidance of doubt, clause 2(a)ii still applies where such work or material incorporates or discloses any inventions or research results in which the University owns any Intellectual Property.

4.  Copyright licence and restriction on use of copyright materials

1. Where University staff, in the course of their employment, produce teaching materials or resources for distribution or display to students, or for use in University research:
   1. the copyright owner shall not, while employed by the University, assign or license the copyright in such materials or resources with potential commercial applicability to any other institution providing educational or research services without the consent of the University, and
   2. the University is entitled to a non-exclusive, non-assignable, royalty-free, irrevocable and perpetual licence from the copyright owner to copy, reproduce and distribute the materials or resources for use within the University for teaching and research purposes, and
   3. the University is entitled to a non-exclusive, irrevocable and perpetual licence from the copyright owner to copy, reproduce and distribute the materials or resources when incorporated into computer software (“Courseware”). The Intellectual Property in Courseware will be owned by the University and Courseware may be sold or licensed to any other institution providing educational services. The distribution of income from the sale or licensing of Courseware shall be pursuant to clause 5 below.

5.  Distribution of income from Intellectual Property

1. Any royalties or other remuneration received by the University as a consequence of licensing, selling, or otherwise dealing with any Intellectual Property which the University claims ownership of pursuant to clause 2 and 4(a)iii above, shall be distributed as follows.
   1. As a first charge the University shall recover all direct expenses incurred in the protection and/or commercialisation of the Intellectual Property.
   2. As a second charge the relevant cost centre of the University shall recover time-based fees related to the protection and/or commercialisation of the Intellectual Property. The hourly rate for these fees shall be no greater than the hourly rate charged in the Service Level Agreement then current between the Director, Research and Enterprise and University departments.
   3. The balance of the royalties or other remuneration shall then be divided as follows:
      • one third to the University staff member(s) who produced the works, materials, inventions or research results in which the Intellectual Property subsists
      • one third to the University department where the works, materials, inventions or research results in which the Intellectual Property subsists were produced
      • one third to the University.
2. The University department referred to in clause 5(a)(iii) shall reserve one half of the funds it receives to support further research projects within the University of the staff members referred to in clause 5(a)(iii). These funds shall be available for two years, and if not used by that time will become general funds of the University department.
3. If anyone entitled to payments pursuant to this clause acts to hinder the University in the exercise of its Intellectual Property rights, the University may cease the payments.

6. 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 the Intellectual Property arising from such research, and distribution of income from that Intellectual Property will be governed by the terms of the contracts, and clauses 2, 3 and 5 above will not apply.
2. University staff members engaged in such contract research must comply with all contract terms and conditions, including any confidentiality requirements and publication constraints.

Related policies, procedures and forms

• Code of Conduct for Responsible Practice in Research
• Intellectual Property Rights of Graduate Research Students Policy
• Copyright Act 1994
• Designs Act 1953
• Fair Trading Act 1986
• Layout Designs Act 1994
• Patents Act 2013
• Plant Varieties Act 1987
• Trade Mark Acts 2002

Contact for further information

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

The Director
Research and Enterprise
Email martin.gagnon@otago.ac.nz