Murdoch University Intellectual Property Regulations PDF

Intellectual Property Regulations This Regulation should be read in conjunction with Intellectual Property (Statute No. 18) 1. Introduction and Application 1.1. The purposes of these Regulations are to: 1.1.1. specif y the respective rights and obligations of each of Murdo...

Intellectual Property Regulations This Regulation should be read in conjunction with Intellectual Property (Statute No. 18) 1. Introduction and Application 1.1. The purposes of these Regulations are to: 1.1.1. specif y the respective rights and obligations of each of Murdoch, Employees and Students in relation to Intellectual Property owned by, or created or developed at, Murdoch; 1.1.2. specif y procedures f or identif ying, protecting and commercially exploiting the Intellectual Property ref erred to in regulation 1.1.1; and 1.1.3. establish a mechanism by which Murdoch will provide equitable returns to Contributors involved in the creation or development of Intellectual Property that is exploited by Murdoch f or commercial return. 1.2. It is a condition of every Employee’s employment contract and every Student’s enrolment that the Employee or the Student, as the case may be, agrees to be bound by these Regulations. 1.3. If there is any inconsistency between these Regulations and a written agreement between Murdoch and either an Employee or a Student, or both, the terms of the written agreement will take precedence over these Regulations. 1.4. Employees and Students must: 1.4.1. respect and not breach any third party’s Intellectual Property rights (in particular, but not exclusively, copyright); and 1.4.2. comply with any policies, regulations or similar that Murdoch has in place f rom time to time in respect of the use of a third party’s Intellectual Property. 2. Dictionary and Interpretation 2.1. Except to the extent that they are expressly excluded of modif ied, the provisions of Statute No. 8 – Interpretation apply to these Regulations. 2.2. Words appearing in italics in these Regulations are def ined terms and have the meanings detailed in column two of the Dictionary (see the schedule). 2.3. Headings are inserted f or convenience only and do not af f ect the interpretation of these Regulations. 2.4. A ref erence to any legislation, statute, ordinance, code, act or other law includes regulations or other instruments under it and consolidations, amendments, re enactments or replacements of them. 2.5. Where an expression is def ined in these Regulations, another part of speech or grammatical f orm of that expression will have a corresponding meaning. Page 1  2.6. If , in these Regulations, an example is given of anything (including a right, obligation or concept), such as by saying it includes something else, the example does not limit the scope of that thing. 2.7. All amounts and payments ref erred to in these Regulations are inclusive of GST and all other taxes, duties, charges and levies payable in respect of them. 3. Ownership of Employee Related Intellectual Property 3.1. Subject to regulation 3.2, Murdoch owns all Intellectual Property created by its Employees: 3.1.1. in the course and scope of that Employee’s employment with Murdoch; or 3.1.2. using Murdoch resources, f acilities or apparatus, including all course materials and teaching materials so produced. 3.2. Murdoch will not own copyright in an Employee’s Conventional Scholarly Output, except where Murdoch has commissioned the relevant publication. 3.3. Murdoch is granted a perpetual, irrevocable, royalty-f ree, non-exclusive, worldwide licence (including the right of sub licence) to use copyright material in an Employee’s Conventional Scholarly Output f or its teaching and research purposes, where that Conventional Scholarly Output was produced in the course or as part of that Employee’s duties of employment. 3.4. An Employee who is the author of course materials or teaching materials may request that Murdoch transf er copyright in such materials to that Employee. 3.5. An application under regulation 3.4 must be in writing addressed to Murdoch’s Vice Chancellor, and submitted through the respective Employee’s School Dean or Director. 3.6. Murdoch has an absolute discretion whether or not to accede to a request under regulation 3.4 and if so on what terms. Subject to any agreement to the contrary, any such transf er will be subject to Murdoch retaining a perpetual, irrevocable, royalty-f ree, non-exclusive, worldwide licence (including the right of sub-licence) to use the material f or any purpose. 4. Ownership of Student Related Intellectual Property 4.1. Subject to the f ollowing provisions of this regulation 4, Students own their respective Student IP. 4.2. Each Student grants Murdoch a perpetual, irrevocable, royalty -f ree, non- exclusive, worldwide licence (including the right of sub-licence) to use his or her Student IP f or Murdoch’s teaching and research purposes. 4.3. Murdoch owns Student IP where: 4.3.1. the Student created or developed that Student IP in circumstances where the Student’s use of or reliance on any one or more of Murdoch’s resources and services was materially beyond that which Murdoch ordinarily provides to its Students; 4.3.2. that Student IP f orms part or will f orm part of a set of Intellectual Property generated by a team of which the Student is or will be directly or indirectly a member and which is considered by Murdoch to be property that should be managed by Murdoch in the best interests of the team as well as Murdoch; Page 2  4.3.3. if Murdoch is of , or f orms, the reasonable opinion that the nature of that Student IP is such that ownership by Murdoch is or would be the best means of protecting the integrity of Murdoch; 4.3.4. Murdoch reasonably requires control of that Student IP to ensure that research and teaching programmes and other activities are conducted in the best interests of Murdoch and its Students. 4.4. Where regulation 4.3 applies to Student IP, Murdoch: 4.4.1. has an absolute discretion whether to assert ownership of the relevant Student IP or to assert some lesser interest, f or example a licence, and may, at its absolute discretion, agree to assign or licence that Student IP to the relevant Student; 4.4.2. may require the Student to sign a written acknowledgement conf irming the ef f ect of regulation 4.3; 4.4.3. will, to the extent that it commercialises that Student IP, provide the same rights and entitlements to the Student that an Employee would have pursuant to regulation 9; and 4.4.4. will ensure that the Student suf f ers no prejudice in the assessment of that Student’s academic perf ormance as a consequence. 4.5. If Murdoch invites or requests a Student to participate in work conducted, or to be conducted, under an agreement between Murdoch and a Third Party, Intellectual Property generated by that Student as part of the Student’s participation in that work will be owned in accordance with that agreement. Murdoch may (at Murdoch’s cost) require the Student to sign all necessary documents to give ef f ect to this regulation 4.5. 5. Notification 5.1. Employees and Students must obtain written authorisation in accordance with regulation 5.2 bef ore: 5.1.1. dealing with Third Parties on Murdoch’s behalf ; or 5.1.2. using Murdoch IP, where such dealing or use will or is likely to involve any one or more of the use, creation, sharing, development or exploitation of Murdoch IP by or with any Third Party. 5.2. A request f or authorisation will be in writing, made prior to the dealing or use, and made to the f ollowing person: 5.2.1. if the Murdoch IP is copyright in sof tware produced by a General Staf f Employee, the Director IT Services; 5.2.2. if the Murdoch IP is copyright in course materials or teaching materials, the Provost; 5.2.3. if the Murdoch IP was created as part of or arose f rom the conduct of research and is not covered by regulation 5.2.1 or 5.2.2, the Director Division of Research and Development; and 5.2.4. in all other cases, the Employee or Student’s divisional head. 6. Moral Rights to Copyright Materials 6.1. Murdoch will not inf ringe any Moral Rights of Employees or Students in copyright materials. Page 3 7. Identifying, Protecting and Commercialising Intellectual Property 7.1. Contributors to Registrable IP or otherwise signif icant Intellectual Property (excluding any course materials or teaching materials), which pursuant to these Regulations is owned by Murdoch, must notif y the Director Division of Research and Development as soon as possible af ter the creation of that Intellectual Property. Where a Contributor is uncertain whether or not Murdoch owns the Intellectual Property, he or she must assume that Murdoch does own the Intellectual Property and notif y in accordance with this Regulation. 7.2. A notice under regulation 7.1 must provide all inf ormation relevant to that Intellectual Property, including: 7.2.1. the nature of the Intellectual Property created; 7.2.2. the circumstances in which it was created or devised, including whether it was created under a grant of f unds; 7.2.3. the names of all Employees, Students and any Third Parties involved; and 7.2.4. the use of any pre-existing or independently created Intellectual Property. 7.3. A Contributor to Murdoch IP must not act contrary to Murdoch’s rights in relation to that Intellectual Property or in a manner that could harm or prejudice Murdoch’s ability to commercially exploit that Intellectual Property. 7.4. Subject to regulation 7.6, an Employee or Student must not, without f irst obtaining approval in accordance with regulation 5.2, disclose inf ormation relating to Murdoch IP to any Third Party (including by way of academic publication) where: 7.4.1. such disclosure would be contrary to a contractual obligation that Murdoch owes to any other Third Party of which the Employee or Student has been made aware or should reasonably be aware; or 7.4.2. the Murdoch IP could be commercially exploited. 7.5. If an Employee or Student is in any doubt over whether Murdoch IP could be commercially exploited, he or she must treat it as being capable of commercial exploitation until the Employee or Student obtains advice to the contrary f rom the appropriate person noted in regulation 5.2. 7.6. Regulation 7.4 will not prevent any disclosure that is required to be made under an existing contractual obligation of Murdoch, provided that such disclosure is limited to, and made in accordance with, such contractual obligation. 7.7. The Division of Research and Development will be responsible for coordinating all applications f or, and maintenance of , statutory protection f or Murdoch IP. 7.8. Each and every person involved in creating Intellectual Property at or by Murdoch must, at Murdoch’s request and at its cost and in a timely f ashion, execute all such documents and do all such other acts or things as may be necessary or desirable in order to enable Murdoch to properly and ef f iciently protect and commercially exploit its Intellectual Property and to give f ull ef f ect to these Regulations. 8. Assignment of Murdoch IP Page 4  8.1. A Contributor to Murdoch IP may request that ownership of the relevant Intellectual Property be assigned to him or her. 8.2. An application under regulation 8.1 must be in writing addressed to Murdoch’s Vice Chancellor, and submitted through the Director Division of Research and Development. 8.3. Murdoch has an absolute discretion whether or not to accede to a request under regulation 8.1 and if so on what terms. Subject to any agreement to the contrary, any such transf er will be subject to Murdoch retaining a perpetual, irrevocable, royalty-f ree, non-exclusive, worldwide licence (including the right of sub-licence) to use the Intellectual Property f or such purposes as Murdoch requires. 9. Distribution of Revenues Derived From Intellectual Property 9.1. For the purpose of regulation 9, “Murdoch IP” does not include course materials or teaching materials, and Murdoch will not be obliged to share any revenues that may be obtained f rom the commercial exploitation of such materials. 9.2. Contributor(s) to Murdoch IP will receive a share of Net Revenues that Murdoch obtains f rom its commercial exploitation of that Murdoch IP on the f ollowing basis: 9.2.1. Murdoch 50% of Net Revenue 9.2.2. Contributor(s) 50% of Net Revenue 9.3. Within 90 days af ter the end of a Financial Year, Murdoch will calculate the Gross Revenue, Costs and Overhead Charge in respect of each component of Murdoch IP: 9.3.1. that was commercially exploited in that Financial Year; and 9.3.2. in respect of which Contributor(s) would be entitled to a share of Net Revenues pursuant to regulation 9.2). Where the Gross Revenue or Costs relate, in whole or in part, to more than one component of Murdoch IP (regardless of whether that Murdoch IP is of a type described in regulation 9.3.2), Murdoch will allocate the Gross Revenue or Costs, as the case may be, amongst the dif f erent components of Murdoch IP on a reasonable estimate basis. 9.4. Within 30 days af ter completing the calculation ref erred to in regulation 9.3 in respect of particular Murdoch IP, Murdoch will notif y the Contributor(s) to that Murdoch IP, advising of the relevant calculation and seeking instructions as to disbursement of the Contributor(s)’ share of the Net Revenue. Murdoch may def er payment to a Contributor due to Murdoch’s reasonably anticipated f uture Costs or cash f low requirements relating to the ongoing commercial exploitation of the relevant Murdoch IP. 9.5. Subject to regulation 9.6, where there is more than one Contributor to the Murdoch IP being commercialised, those Contributors will agree between themselves as to how to share the Net Revenue payable to Contributor s under this regulation 9, and provide written notice of that agreement, signed by all Contributors, to the Director Division of Research and Development as soon as reasonably practical af ter reaching such agreement. 9.6. If the Contributors f ail to provide notice as contemplated by regulation 9.5 within 60 days of the date of a request f rom the Director Division of Research and Development, the Contributors will be deemed to agree to share the Net Revenue in equal shares. Page 5  9.7. Any delay in the Contributors agreeing as to their respective shares of the Net Revenue will not delay Murdoch taking action to commercially exploit the relevant Intellectual Property. 10. Dispute Resolution 10.1. Subject to the f ollowing provisions of this regulation 10, if a dispute arises out of or in connection with the operation of these Regulations, any party to the dispute may ref er it to a mediator agreed by both parties, or f ailing agreement within 21 days, by a mediator appointed by the President of the Law Society of Western Australia. 10.2. Subject to any agreement to the contrary, all mediations commenced under these Regulations are subject to the f ollowing provisions: 10.2.1. The parties to the dispute will share the cost of the mediator equally. 10.2.2. Ref erral to mediation is a precondition to any party commencing legal proceedings in respect of the dispute, except f or legal proceedings ref erred to in regulation 10.3. 10.2.3. If the dispute is not successf ully mediated af ter 30 days then either party to the dispute may commence proceedings in a court of competent jurisdiction. 10.3. Any party to a dispute may seek urgent injunctive or other equitable relief without recourse to the dispute resolution procedure set out in regulation 10.1. Schedule (Dictionary) Column 1 (defined term) Column 2 (meaning) "Accrued Costs" Any costs and their associated Overhead Charges that are not recovered by way of Gross Revenue in any Financial Year and that are carried over to the next and subsequent Financial Years. “Contributor” Either an Employee, or a Student, or both, whose authorship of , or contribution to the development of, Intellectual Property, if it were done: (a) in his or her private capacity; and (b) in the absence of any express or implied contractual arrangement to the contrary between that Employee or Student and any one of more of : (i) Murdoch; (ii) A Related Entity; or (iii) Another party, would entitle that Employee, or a Student, or both, to own, in whole or in part, that Intellectual Property. “Conventional Scholarly Output” Academic publications produced by an Employee for the purpose of publication in academic books, journals or conf erence papers (whether hard copy or electronic). For the avoidance of doubt, the Page 6  expression “Conventional Scholarly Output” does not include course materials or teaching materials. “Costs” All costs, charges and expenses incurred or paid by Murdoch in a Financial Year relating to the creation, development, protection or commercial exploitation of Murdoch IP, including costs, charges and expenses: (a) associated with acquiring and maintaining statutory protection f or the Murdoch IP; (b) base costs of undertaking f urther development of the Murdoch IP; (c) of licensing Murdoch IP; (d) of marketing, production, distribution, product testing, advertising and sale; (e) of obtaining advice relating to commercial exploitation; and (f ) of obtaining licences or assignment of Intellectual Property owned by a Third Party to be used as part of the commercial exploitation. “Employee” Any person employed by Murdoch in a f ull, part time or casual capacity, regardless of the permanency of the position. For the purposes of these Regulations and f or the avoidance of doubt, the expression “Employee” includes a Student who is employed by Murdoch. “Financial Year” The accounting period that Murdoch adopts f rom time to time f or its accounting and f inancial reporting requirements. “Gross Revenue” All income, including royalties, assignment f ees, etc that Murdoch derives or receives, and retains, in a Financial Year resulting f rom the commercial exploitation of Murdoch IP. For the avoidance of doubt, “Gross Revenue” does not include amounts received: (a) f or conducting research (including research grants); (b) f or creating or developing the Intellectual Property in question; or (c) pursuant to a consultancy (whether a research consultancy or otherwise) conducted by a Contributor on behalf of Murdoch. "Intellectual Property" The results of creative ef f ort protected by law, including rights relating to: (a) inventions (including patent rights); (b) inf ormation which is of a kind and which has been communicated in such a way as to give rise to a duty of conf identiality; Page 7  (c) inf ormation which is subject to an Employee's duty of f idelity to his or her employer; (d) trade secrets; (e) copyright; (f ) trademarks, whether registered or un- registered; (g) registered designs and designs capable of being registered; (h) plant varieties and the rights of breeders of such varieties; (i) circuit layouts; and (j) other rights resulting f rom intellectual activity in the industrial, commercial, scientif ic, literary and artistic f ields. “Moral Rights” Has the same meaning that it has under the Copyright Act 1968 (Cth). “Murdoch” Murdoch University. “Murdoch IP” Subject to regulation 9.1, Intellectual Property that Murdoch owns, either in whole or in part, and whether by virtue of these Regulations or otherwise. “Net Revenue” The balance remaining in a Financial Year af ter deducting the Accrued Costs, the Costs and the associated Overhead Charge in relation to particular Murdoch IP f rom the Gross Revenue f or that Murdoch IP. “Overhead Charge” 15% of the total Costs in a Financial Year, as and by way of a contribution in respect of overheads. “Registrable IP” Intellectual Property that is potentially patentable or registrable under relevant legislation, and by registration or patenting provides monopoly rights to the registrant, such as patentable inventions, designs, trademarks, plant varieties and circuit layouts. “Regulations” These regulations. “Related Entity” Any company: (a) in which Murdoch holds a majority of shares; or (b) is a subsidiary of or is controlled by a company in which Murdoch holds a majority of shares. “Student” Has the same meaning that it has under the Murdoch University Act 1973 (WA). “Student IP” Intellectual Property that a Student creates in the course of his or her studies, scholarship or research at Murdoch. “Third Party” A party other than Murdoch, an Employee or a Student. Page 8 Related Documents: Statute No. 8 - Interpretation Statute No. 18 - Intellectual Property Revision History: Version Date Effective Date (if later Next Review Resolution No. Approved than ‘Date Approved’) Date (if applicable) Adm inistrative 06/12/2017 am endm ent by UniSec Approved 05/12/2007 S/56/2007 Approved 06/10/2006 S/40/2006 Approval and Implementation: Approval Authority: Senate Responsible Officer(s): University Secretary Note: All enquiries relating to Legislation should be referred to the University Secretary’s Office. Page 9