Hostname: page-component-745bb68f8f-kw2vx Total loading time: 0 Render date: 2025-01-30T23:16:10.588Z Has data issue: false hasContentIssue false
  • English
  • Français

Allocating the Rights in Intellectual Property in Australian Universities: An Overview of Current Practices

Published online by Cambridge University Press:  24 January 2025

Ann L Monotti
Ann L Monotti*
Affiliation:
Faculty of Law, Monash University
Get access Rights & Permissions [Opens in a new window]

Extract

“Universities occupy a central position in a national innovation system” and the benefits of their research extend to having better educated students, developing a body of knowledge and effective transfer of that knowledge to users. This knowledge may generate intellectual property with, not only educational and research value for the university itself, but also commercial or applied potential.

Australian universities recognise the need to protect, allocate and exploit these intellectual property rights and have policies or statutes that govern the management of their intellectual property resources. They face at least three challenges in the process. The first is to formulate a policy that clarifies ownership and limits misunderstandings between the originators of intellectual property and the university Establishing the appropriate mix of rights is fundamental to the success of their intellectual property management programs and their reputation. If they claim too much, the originators may produce an inferior product or seek employment or studies elsewhere. If they are too generous and considerate of originators’ rights, they may fail to provide adequate protection for both university interests and those of the wider community.

Type
Research Article
Information
Federal Law Review , Volume 27 , Issue 3 , September 1999 , pp. 421 - 470
Copyright
Copyright © 1999 The Australian National University

Access options

Get access to the full version of this content by using one of the access options below. (Log in options will check for institutional or personal access. Content may require purchase if you do not have access.)

Footnotes

The author thanks Professor Sam Ricketson for his comments on an earlier draft of this article. The article represents some results of a study funded by a Monash Research Fund Grant and a two year ARC Large Grant. The Chief investigators are Professor Sam Ricketson, Associate Professor Sue McNicol and the author.

References

1 Industry Commission, Research and Developrnent (1995) vol 1, at C3.2.

2 When I use the term “intellectual property policy” or “policy” throughout the article it is to be read as encompassing either an intellectual property policy or statute.

3 University of New South Wales, Report of Working Party on Intellectual Property: a Discussion Paper (1996).

4 Any examination of the approaches that universities take to commercial exploitation of intellectual property is outside the scope of this paper. See S Ricketson, “Universities and their Exploilalion of Intellectual Properly” (1996) 8 Bond LR 32 for an analysis of the issues that arise.

5 From an original sample of 1500 records, which was selected from the 31 March 1997 DEETYA file, 704 records of academics with FTE of 5 or greater and currenlly employed at Monash University were selected.

6 Clayton, Gippsland, Parkville, Peninsula, Caulfield and Be1wick.

7 A second copy of the questionnaire was sent three weeks after the original mailing.

8 Of this number, 44 were professors, 45 associate professors, 13 readers, 104 senior lecturers, 127 lecturers and 33 assistant lecturers. Of these, 177 were humanities based and 189 were science based. Six respondents did not disclose their level of appointment or their discipline.

9 With 372 respondents the 95 per cent confidence interval for the percentages given is within +/ - 5 per cent.

10 Monotti, A, “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FL Rev 340Google Scholar.

11 Monotti, A, “Who Owns my Research and Teaching Materials? My University or Me?” (1997) 19 Syd LR 425Google Scholar; Monotti, A, “Universities and the Validity of their Claims to Student Intellectual Property Rights” (1998) 24 Mon LlLR 145Google Scholar; Monotti, A, “Power to Modify the Vesting of Copyright in an Employer: Subsection 35(3) of the Copyright Act 1968 (Cth), and Australian Universities” [1997] 19 EIPR 715Google Scholar.

12 Monotti, A, “Who Owns my Research and Teaching Materials? My University or Me?” (1997) 19 Syd LR 425 at 432-438Google Scholar for a discussion of how the various regimes deal with original ownership.

13 Plant Breeder's Rights Act 1994 (Cth), s 3(1)(c); Designs Act 1906 (Cth), s 19(3); Copyright Act 1968 (Cth), s 35(6) (works); Circuit Layouts Act 1989 (Cth), s 16(2). There is no express statutory provision protecting an employer's right lo an invention or a trade mark that its employee creates. The employer's right to an invention rests upon either an express agreement to that effect with the employee or exists because of the application of the general principles of employment law. The same principles would apply in respect of trade marks. A Monotti, above n 12 at 432-438; Dean, R, The Law of Trade Secrets (1990) ch 4Google Scholar; J McKeough and A Stewart, Intellectual Property in Australia (2nd ed 1997) at 13.lff and 19.12.

14 A Monotti, above n 10.

15 Plant Breeder's Rights Act 1994 (Cth), s 11; Copyright Act 1968 (Cth), s 31(1) and ss 85 and 86; Circuit Layouts Act 1989 (Cth), s ·17(c) and s 8; Patents Act 1990 (Cth), s 13(1) and Schedule 1; Designs Act 1906 (Cth), ss 25 and 30; Trade Marks Act 1995 (Cth), s 20.

16 Leaving aside confidential information, rights in all other forms of intellectual property are personal property, and can be fragmented in any number of ways, either by assignment or licensing. Technically, if confidential information is not property, there is nothing to assign. Patents Act 1990 (Cth), s 13(2); Designs Act 1906 (Cth), s 25C(1); Plant Breeder's Rights Act 1994 (Cth), s 20(1) ands 25(1); Copyright Act 1968 (Cth), s 196(1); Circuit Layouts Act 1989 (Cth), s 45CJ); Trade Marks Act 1995 (Cth), s 21(1).

17 There may be specific agreements for the production of specific teaching materials in multimedia or other format. They are also common in externally funded collaborative research and development, contract research and consultancy arrangements. Policy terms may guide the negotiation of agreements but do not determine the issues.

18 Patents Act 1990 (Cth), s 18.

19 An extension of term is available for certain pharmaceutical patents. Intellectual Property Laws Amendment Act 1998 (Cth), Schedule l.

20 Patents Act 1990 (Cth), s 13(1) and Schedule 1.

21 For recommendations to change the categories, see Copyright Law Review Committee, Simplification of the Copyright Act Part 2: Categorisation of Subject Mattrr and Exclusive Rights and Other Issues (1999).

22 Copyright Act1968 (Cth), s 32.

23 Copyright Act, s 10(1).

24 Copyright Act, s 190.

25 Copyright Act, s 191.

26 Copyright Act, s 192.

27 Copyright Amendment Bill 1997 (Cth), Schedule 1. The Copyright Amendment Act (No 1) 1998 (Cth), which received the Royal Assent on 31 July 1998, does not include the proposed moral rights provisions. These were removed from the Bill for further discussion.

28 Copyright Act, ss 85, 89, 93 and 97.

29 Copyright Act, ss 86, 90, 94 and 98.

30 Copyright Act, ss 87, 91, 95 and 99. These provisions apply to the Australian Broadcasting Corporation, the Special Broadcasting Corporation and any person with a licence issued under the Radiocommunications Act 1992 (Cth). They are unlikely to be relevant to a university.

31 Copyright Act, ss 88, 92, 96 and 100.

32 Copyright Act, s 97(2).

33 Copyright Act, s 98(2).

34 Copyright Act, ss 97(3) and 98(3).

35 Copyright Act, s 100.

36 Copyright Act, Part XIA - Performers' Protection.

37 Sega Enterprises Limited v Galaxy Electronics Pty Ltd (1996) AIPC if91-269; (1997) AIPC if91- 321.

38 Copyright Act, s 10(1) definition of “literary work”; Copyright Law Review Committee, above n 21; Douglas, J, “Too Hot to Handle? Copyright Protection of Multimedia” (l997) 8 AIPJ 96Google Scholar.

39 For example, University of Melbourne Statute 14.l - Patents was concerned only with patents. In one sense this discriminated against those researchers in scientific fields, but could be justified if necessary on several grounds. The inventor would usually need the financial and administrative assistance of the university to pursue the registration of a patent. Further, the university was likely to have committed substantial fonds, infrastructure, resources and facilities to the research itself.

40 Monotti, A, “Power to Modify the Vesting of Copyright in an Employer: Subsection 35(3) of the Copyright Act, and Australian Universities” [1997] 19 EIPR 715Google Scholar.

41 Wiseman, L, “Trade in Education: The Role of Copyright” (1998) 16 Prometheus 331CrossRefGoogle Scholar. This issue is not new. In 1993, the University of Melbourne identified in the explanatory memorandum to its new Statute 14.1 - Intellectual Property three developments that required the university to review its policy of abandoning claims to own copyright works without retaining any rights to use those works. One was the “annual fee that the university must pay to Copyright Agency Limited (CAL) for the use of copyright works owned by others”.

42 A recent initiative in this area is a pilot project called Janus that is to be funded by the Federal government to the extent of $455,000 to develop a business model for an integrated collaborative approach to research collections and information. It is the result of an initiative of the National Scholarly Communications Forum and brings together the AVCC, the Academies, the CSIRO, the National Library, the Council of Australian University Librarians and the Council of Australian University Directors of Information Technology. Its aim is to cut costs of journal subscriptions and maintain a broadly based coverage of journals collected within the country by coordinating journal subscriptions. The concern about maintaining optimal access to new works and the advancement of learning has been the subject of extensive discussion in the United States. See, for example: Consortium for Educational Technology for University Systems, “Ownership of New Works at the university: Unbundling of Rights and the Pursuit of Higher Leaming”, http://www.cetus.org (California State University, State University of New York, City University of New York)

43 University of Adelaide, Australian National University, James Cook University, University of Canberra, La Trobe University, QUT, Southern Cross University, Swinburne University.

44 Australian Vice-Chancellors' Committee, University Research: Some Issues (1996).

45 Ibid.

46 Minister for Industry Science and Tourism, Going for Growth: Business Programs for Investment, Innouation and Export (1997) (The Mortimer Report) at 123.

47 Department of Employment, Education and Training, The Report of the Committee to Review Higher Education Research Policy (1989) at 6.1.

48 Ibid at 32.

49 National Board of Employment, Education and Training, Committee to Review Higher Education Research Policy Report Cl989); Australian Science and Technology Council, Research and Technology: Future Directions (1992); Business/Higher Education Round Table, Promoting Partnerships: Enhancing Interaction between Business and Higher Education Research (Task Force Report No 2, 1992); National Board of Employment, Education and Training, Productive Interaction—An Investigation of the Factors which Constrain and Promote Proposals under the APR.A([) and ARF(l) Schemes (1992); Twomey, P, Creating Economic Growth Through Enterprise Generation and Industry Research Partnerships(1995)Google Scholar; Twomey, P,Creating Economic Growth through Enterprise Generation and Tndustry Research Partnerships: The Role 4 the Post-Secondary Education Sector(1993)Google Scholar; Prime Minister's Science and Engineering Council The Role of Intellectual Property in Innovation (1993); National Board of Employment, Education and Training, Crossing Innovation Boundaries: the formation and maintenance of research links between industry and universities in Australia (1993); Induslry Commission, Research and Development (1995); National Board of Employment, Education and Training, Maximising the Benefits: Joint ARC/I-IEC Advice on Intellectual Property (1995); Department of Industry, Technology & Regional Development, Guidelines for Protection of Tntelleclual Property in Tnternational R & D Projects (1993); Report of the CRC Program Evaluation Steering Committee,Changing Research Culture Australia (1995).

50 The ABS statistics for sources of funds for expenditure on R&D in 1994-95 in the higher education sector show that about 89 per cent (down from 91 per cent in 1992-93) came from the Commonwealth Government, about 2 per cent came from State Governments and business enterprises provided 3 per cent: W McLennan, Australian Statistician, Australian Bureau of Statistics, 1997 Year Book Australia at 571. The statistics are based on OECD definitions for national R&D surveys: “The OECD defines R&D to comprise creative work undertaken on a systematic basis in order lo increase the stock of knowledge, including knowledge of people, culture and society, and the use of this stock of knowledge to devise new applications” (at 569).

51 Prime Minister's Science and Engineering Council, The Role of Intellectual Property in Innovation:Perspecti,,es (1993) vol 2 at 1.3.

52 National Academies Policy Advisory Group, Intellectual Property & the Academic Community (1995).

53 Ibid, “Summary and Key Recommendations, Part 1”.

54 James Cook University, Intellectual Property Policy (1995) s 7.4. (Proposed new policy, s7.5)

55 Curtin Institute of Technology, Ownership of intellectual property policy (1995) s 1.2.

56 Guide Section 2 - Background; University of Newcastle, Part 1: Introduction and Objectives; Murdoch University, Statute No 18 - Intellectual Properly 1995, s 1.2.

57 These objectives include provision of educational and research facilities and promotion and advancement and transmission of knowledge.

58 For example, Royal Melbourne Institute of Technology Act I992 (Vic), s 6:

Objects of the University:… (d) the advancement of knowledge and its practical application by research and other means, the dissemination by various means of the outcomes of research and the commercial exploitation of lhe results of such research; (e) the participation in commercial ventures and activities;… (k) the maintenance of close interaction with industry and the community and the development of associations or agreements with any other educational, commercial, governmental or other instilu lion.

Curtin University of Technology Act 1966 (WA), s 7:

Functions of University include: (a) to provide courses of study appropriate to a university.… and to aid the advancement, development and practical application of knowledge;… (d) to encourage and undertake research and to aid directly or indirectly the application of science and technology to industry.

59 Leading the way: The Monash Plan. 1998-2002 at 5. The latest publication, Leading the Way: Monash 2020 (July 1999) continues the defining theme of “engagement” and stronger strategic orientation to research.

60 The Higher Education Financing and Policy Review Committee, Learning for life: review of higher education financing and policy: final report (The West Review, 1997).

61 National Committee of Inquiry into Higher Education, Higher Education in the Learning Society (The Dearing Report, 1997).

62 Ibid at para 57 and Recommendation 34. See also the United Kingdom White Paper, Our Competitive Future: Building the Knowledge Driven Economy (1998, Cm 4176) http://www.dti.gov.uk/comp/competitive/whinfl.htm.

63 Loughlin, P, “Of patents and Professors: Intellectual Property, Research Workers and Universities” [1996] 18 EJPR 345Google Scholar; Crespi, S, “Intellectual Property and the Academic Community” [1997] 19 ETPR 6Google Scholar. See also a good overview article of the issues raised by commercialisation of university research: Wood, F Q, “The Commercialisation of University Research in Australia: Issues and Problems” (1992) 28 Comparative Ed 293CrossRefGoogle Scholar.

64 Cornish, W R, “Rights in University Innovations: The Herchel Smith Lecture for 1991” [1992] 14 ETPR 13 at 15Google Scholar.

65 Ricketson, S, “Universities and their Exploitation of Intellectual Property”, (1996) 8 Bond LR 32 at 33Google Scholar.

66 For empirical research conducted in the United States that supports these arguments see: Cohen, W, Florida, R, Randazzese, L and Walsh, J, “Industry and the Academy: Uneasy Parb1ers in the Cause of Technological Advance” in RG Noll (ed), Challenges to Research Universities (1998) ch 7Google Scholar.

67 “Pure basic” is defined in the Glossary to DEETYA, Selected Higher Education Research Expenditure Statistics (1996), as “experimental and theoretical work undertaken to acquire new knowledge without looking for long-term benefits other than the advancement of knowledge”. “Sb·ategic basic” is defined as “experimental and theoretical work undertaken to acquire new knowledge directed into specified broad areas in the expectation of useful discoveries. It provides the broad base of knowledge necessary for the solution of recognised practical problems.”

68 Industry Commission, Research and Deuelopment (1995), vol 1, Box A1.2 at 61.

69 This issue is too complex for adequate attention to be given in this essay. There is considerable literature that examines the issues. See, eg, W Cohen et al, above n 66 for discussion of the effect of disclosure restrictions on university research and possible solutions. Other recent publications include: H Etzkowilz and L Leydesdorff (eds), Uni11ersities and the Global Knowledge Economy: A Triple Helix if Uniuersity-lndustry-Government Relations (1997); J Smyth (ed),Academic Work: The Changing Labour Process in Higher Education (1995); J Kirkland (ed), Barriers to International Technology Transfer (1996);] Sharpham and G Hannan (eds), Australia's Future Universities (1997); P Coaldrake and L Stedman, On the Brink: Australia's Universities Confronting Thf.'ir Future (1998).

70 For an interesting commentary on the distinction between pure and applied research in science, see PB Medawar, Advice to a Young Scientist (1817). See also Industry Commission, Research and Development (1995) vol 1, Al.2 at 59-64.

71 National Academies Policy Advisory Group, Intellectual Property and the Academic Community (1995, UK).

72 For example, in its review of higher education, the West Committee identified an ever-increasing expectation that higher education research must respond to the needs of the users of that research: The West Review, above n 60, “Executive Summary - Priorities in Research”. It is impossible to pursue these significant issues adequately in this article. They raise the fundamental philosophical debate of the role of a university which is to be explored by the author and her co-investigators in another publication.

73 It is common for universities to accept limited delays in publication of research findings as a condition for external funding. Where a postgraduate student is involved, this may mean that the student's thesis must be examined under a confidentiality agreement.

74 See DEETYA, above n 67, for the breakdown of research expenditure in 1996 among the following four defined categories: pure basic research; strategic basic research; applied research; experimental research. The total expenditure in these four categories across the ten New South Wales universities in $'000 was respectively: 255,157; 136,334; 207,864; 53,916. (Table 5 and Glossary). See Table 2 for the respective sources of funds. These terms and ddinitions are used by the OECD and the ABS for purposes of collecting data on science, teclrnology and ilrnovation. ABS Cat No 1297.0. The different types of research are differentiated by their intended output.

75 Industry Commission, above n 68 vol 1, C3.2 at 374. An example of a commercial arrangement that has sparked a debate about the influence of industry money on academic research is a five year, $25 million “strategic alliance” between the Swiss company Novartis and the plant-biology department at University of California al Berkeley, USA. See http://chronicle.corn/colloquy/98/transfer/background.htm.

76 A further extensive debate that is beyond the scope of this article concerns the criteria for funding university basic research. Should this be excellence and originality by international standards alone or should wider benefits such as generation of national prosperity and relevance to national priorities be the relevant criteria? For an outline of some of the views see: Industry Commission, above n 68 vol 1, C4.2 at 396-412.

77 National Academies Policy Advisory Group, Intellectual Property and the Academic Community (l995 UK) at 1 l.3(i).

78 Policies deal with a number of other matters. These include: procedures for disclosure of intellectual property; means for evaluation of its commercial potential and protection of rights; establishing a mechanism of distributing financial returns from any commercial exploitation of intellectual property; dispute resolution; providing information and education about the policy. Two other common provisions concern specific agreements for ownership of intellectual property. One is that the university owns il1tellectual property it commissions. The other confirms the power of the university to enter into specific agreements concerning intellectual property ownership and exploitation.

79 University of Queensland aims for an appropriate balancing of the interests of the community, the University as a corporate body and the University as a fluid organisation made up of both staff and students. University of Canberra - “to strike an equitable and workable balance between the rights of originators and the interests of the University.” University of New England - “The aim of these rules is to provide appropriate protection to the various parties involved in the creation of intellectual property”.

80 The Dearing Report, above n 61 at para 3: at http://www.leeds.ac.uk/educol/ncihe/.

81 WR Cornish, above n 64 at 16.

82 A Monotti, above n 10.

83 For a chart that displays how 27 universities deal with copyright ownership see the Appendix in A Monotti, above n 40 at 720-722.

84 Appendix B sets out a chart of how 20 universities distribute rights to the originator where the university owns the intellectual property.

85 Other classes of originators include students and visiting scholars. For the position of students see A Monotti, “Universities and the Validity of their Claims to Student Intellectual Property Rights”, above n 11. Those universities that seek assignment of visitors' rights generally equate their rights with those of an academic staff member. However, the position of visiting scholars is more complex than that of students because of possible rights that subsist in their employers and collaborators. They may not be free to agree to assign rights to an Australian university.

86 See above under heading “Allocating the rights - the legal background”.

87 James Cook University takes this approach, but does not continue this position in its proposed new policy.

88 Of 33 policies examined, 22 make no extended claims to intellectual property that academic staff create.

89 For example, Australian National University, Inlellectual Properly Guidelines 1281£/1998; Edith Cowan University, Intellectual Property Policy 1994, ss 2.2 and 2.4; Southern Cross University, Intellectual property policy 1995, ss 3.1 and 3.2; University of Southern Queensland, Intellectual Property Policy. 1996, s 3.1.

90 Other criteria may be where: their intellectual property is incorporated in or has contributed to the creation of the new intellectual property concerned; there is specific contribution, or in some cases substantial contribution, of funding, resources, facilities or apparatus; there is substantial contribution of supervision or salary. The allocation of ownership was discussed in detail in A Monotti, above n 12.

91 See A Monotti, above n 10. Often, there is no dear definition of these duties. Furthermore, academics may work at home and are entitled to perform approved outside work. Employees work some days at the university and other days in another work environment where there is some overlap with the work performed at each venue. This may be in a collaborative research centre or for a third party while taking advantage of outside work regulations.

92 For the legal problems that arise in connection with these “extended claims” to ownership, see A Monotti, above n 12.

93 See the table in Appendix B for a brief summary of express economic rights in the policies of 20 Australian universities.

94 For example, Griffith University, Intellectual Property Policy 1991, s 7.

95 For example, Edith Cowan University, Intellectual Property Policy 1994, s 5.

96 For example, University of Canberra, Policy on Intellectual property 1995, s 5.2; James Cook University, Intellectual properti; policy 1995, s 5.1 (unrestricted licence); Monash University, Statute 11.2 - lntellectual properly 1995, s 2.7; University of New England, Rules on Intellectual property 1995, s 2.4. It is worth noting that employees have the right to use and exploit their skill, experience and knowledge to earn their living: Herbert Morris Ltd v Saxelby [1916] l AC 688 al 707. Any restraint that an employer imposes on this right must be reasonable in the sense that it is in the interests of both parties and also in the interests of the public. Accordingly, irrespective of the presence of an express right to use intellectual property for subsequent purposes, they cannot be unfairly restrained from using their skill, experience and knowledge.

97 For example, University of Ballarat, Statute 8.2 - Intellectual property 1996, s 5(5)(a); University of Canberra, Policy on Intellectual properti; 1995, s 4.5; James Cook University, Intellectual property policy 1995, s 6; Murdoch University, Statute No 18 - Intellectual property 1995, s 5; Monash University, Statute 11.2 - Intellectual property 1994, ss 2.14-2.16; University of Newcastle, Intellectual property policy 1995, Part 4; University of New England, Rules on Intellectual property 1995, ss 2.8-2.10; University of New South Wales, Policy on Intellectual property 1997, s 6; Southern Cross University, Intellectual properf:IJ polfry 1995, s 5; Swinburne University of Technology, Tntellectual property policy 1997, s 10.4; University of Southern Queensland,Intellectual property policy 1996, s 5; University of Western Australia, Intellectual Property Regulations, s 5.

98 For example, University of New England, Rules on Intellectual property 1995, ss 2.8 and 2.10 (although the right not to be acknowledged as the creator of a modified work extends to all intellectual property - s 2.9); James Cook, Intellectual property policy, s 6; Murdoch University, Statute 18 - Intellectual Property 1995, s 5.

99 For example, University of Ballarat Statute 8.2 - Intellectual Property 1996, s 5(5)(a); University of Canberra, Policy on Intellectual property 1995, s 4.5.

100 For example, James Cook University, Intellectual property policy, s 6:1; Murdoch University,Stat1.1te No. 18 - Intellectual Property 1995, s 5.1; Monash University, Stat1.1te 11.2 - Intellectual Property 1994, s 2:14.1.

101 For example, Griffith University, Intellectual Property Policy .1991, s 5(4); Monash University, Statute 11.2 - Intellectual Property 1994, s 2.16; University of New South Wales, Intellectual Property Policy 1997, s 6.1.

102 For example, University of Ballarat Stah1te 8.2 - Intellectual Property 1996, s 5(5)(a); University of Canberra, Policy on [ntellt'ctual propt'rty 1995, s 4.5

103 For example, University of New England, Rules on Intellectual property 1995, s 2.8; University of Western Australia, Intellectual Property Regulations 1996, s 5(l)(b).

104 For example, Murdoch University, Statute No. 18 - Intellectual Property 1995, s 5.3; University of Western Australia, Intellectual Properly Regulations 1996, s 5(1)(3).

105 For example, University of Western Australia, Intellectual Property Regulations 1996, s 5(4) (copyright work); Southern Cross University, Intellectual property policy 1995, s 5.l; James Cook University, Intellectual property policy, s 6.2 (copyright work).

106 For example, University of New South Wales, Intellectual Property Policy 1997, s 6.1; University of Newcastle, Intellectual property policy 1995, Part 4.

107 For example, Monash University, Statute 11.2 - Intellectual Property 1994, s “15; University of Western A1.1stralia, Intellectual Property Regulations 1996, s 5(2).

108 Codes of research practice commonly contain these rights eg, Macquarie University Code of Good Research Practice, s 6.6, Research Manual. One university expressly states that it will “use its besl endeavours to assist authors in asserting their moral rights in cases where clear breaches of accepted academic conventions occur”: University of New South Wales, Intellectual Property Policy 1997. See also s 6; UTS, Intellectual Property Policy 1998, s 4.

109 Reputation is protected by the laws of defamation. There is some protection in the Copyright Act 1968 (Cth), for example, against false attribution of authorship. In a business context, the law of passing off and laws against misleading or deceptive conduct contained in trade practices and fair trading legislation may provide protection.

110 Copyright Amendment Bill 1997 (Cth), Schedule 1. The Copyright Amendment Act (No 1) 1998 (Cth), which received the Royal Assent on 31 July 1998, does not include the proposed moral rights provisions. These were removed from the Bill for further discussion.

111 This is commonly referred to as the “academic exception”, the scope of which is not clear: Stephenson Jordan :r FJ.arrison Ltd v MacDonald & Evans (1952) 69 RPC 10; Noah v Shuba [1991] FSR 14 at 26; Re Greater Glasgow Health Board's Application ['1996] RPC 207. These issues are discussed in detail in A Monotti, above n 10.

112 WR Cornish, above n 64.

113 For a detailed analysis of the extent to which the various universities relinquish ownership in copyright works and other subject matter see A Monotti, above n 40.

114 Monash University claims ownership of copyright, but provides that the originator owns copyright in “a copyright work, the subject matter of which is primarily concerned with scholarship, research, artistic expression, creativity, or academic debate” except for certain specified works. One exclusion is a computer program that is created in association with a patent-worthy discovery or invention. See also UTS, Intellectual property policy 1998, s 1.2.

115 For example, James Cook University, Intellectual proper0; policy, s 4.1 (this policy is under review. The revised version changes this clause and will significantly reduce its scope); Southern Cross University, Intellectual property policy 1995, s 3.2.

116 See A Monotti, above n 12.

117 Some consideration of team generation of intellectual property was given by the Australian Vice Chancellors' Committee in its discussion paper Ownership of Intellectual Property in Universities (1995) at 4.1.5 and 4.3. The concept of what is meant by a team was not defined but could presumably include 2 or more people.

118 It is common in American intellectual property policies to include specific provisions that relate to ownership of and distribution of rights in “tangible research materials”. See, for example “Guide to the Ownership, Distribution and Commercial Development of MIT Technology”: http://web.mit.edu/tlo/www/guide.I.html#1.5; Stanford University Policy: Tangible Research Property RPH 5.3: http://www-portfolio.stanford.edu/101241.

119 For example, Edith Cowan University, Intellectual Property Policy 1994; Griffith University,Intellectual Property Policy 1991.

120 University of Melbourne, Statute 14.1 - Intellectual Properly 1996, s 14.1.11(3) - “for the University's own educational purposes in the delivery of its education programs, including, without limitation, the University's own research, leaching and scholastic endeavours.”

121 James Cook University, Intellectual property policy, s 5.2; Southern Cross University, Intellectual property policy 1995, s 4.2; University of Southern Queensland, Intellectual Property Policy 1996, s 4(2); University of New England, Rules on Intellectual property 1995, s 2.5.

122 For example, Curtin Institute of Technology, Ownership of intellectual property policy 1995, s 2.1.2 (computer software, course material and lecture notes); Murdoch University, Statute No 18 - Intellectual Property 1995, s 4 (copyright material produced for teaching purposes); University of Melbourne, Statute 14.1 - Intellectual Property 1996, s 14.1.11(3) (Copyright in literaiy, dramatic, musical and artistic works other than computer programs); Monash University, Statute 11.2 - Intellectual Property 1994, s 2.6 (copyright work); University of Newcastle, Intellectual property policiJ 1995, s 2.3 (scholarly works).

123 University of Canberra, Policy on Intellectual property 1995, s 5.3; Southern Cross University, Intellectual property policy 1995, s 4.2; University of Southern Queensland, Intdlectual Property Policy 1996, s 4.2.

124 The issue of licences, their validity and scope is complex and cannot be dealt with satisfactorily in this article.

125 The University of Melbourne takes this type of approach in its Statute 14.1 - Intellectual Property.

126 In its Statute 14.1 - Intellectual Property, the University of Melbourne asserted ownership of copyright in scholarly publications but agreed to assign copyright on request. It amended this position in a revised statute after strong representations from academic staff, their union and publishers.

127 University of New South Wales, Policy on Intellectual property 1997, s 5.10.

128 A Monotti, above n 10 at 372.

129 Appendix A.

130 I explore the remaining questions in a separate article.

131 A Monotti, above n 12.

132 This must be subject to the “academic exception” over scholarly copyright works: see A Monotti, above n 10.

133 See Appendix A for the questions asked.

134 The same pattern appears irrespective of whether the first two, three, four, five or six rights are compared.

135 Monash University, Intellechtal Property Regulations (1994), 2.1.1.

136 Psychological tests; editorials in joumals; consultancies; non patented developments;managerial (environmental strategy); equipment.

137 University of Adelaide, Intellectual Property Policy, s 8.2.

138 A formula for sharing profits from commercialising a patent exists in all universities.

139 I believe that 1 should receive a share of profits from commercial dealings with these materials.

140 A Monotti, above n 10 at 353.

141 In some policies, the terms of entitlement to a share of profits from commercialisation are sufficiently broad to extend to course materials.

142 The University of Melbourne Multimedia products - Intdlectual property guidelines are of interest here:http://www.meu.unimelb.edu.au/.

143 SECTION F: Commercial dealings with your research and teaching materials. Q1(a): Where research is likely to have commercial potential, academic staff should seek advice on their intellectual property rights in that research prior to its publication.

144 SECTION F: Commercial dealings with your research and teaching materials. Ql(b): Academic staff should explore the commercial potential of their research and teaching materials.

145 Research: 200 of 295; Teaching: 202 of 298.

146 See table inn 144 above.

147 SECTION F: Commercial dealings with your research and teaching materials. Q2: Have you commercialised, or are you commercialising any of your research and leaching materials?

148 103 of 298 respondents - 34.5 per cenl

149 Only one respondent contacted the author to object to this line of questioning.

150 In some cases, the provisions may be drawn so widely that universities would be wise to review whether they achieve what was intended.

151 The Australian National University distributes a percentage of net earnings to the its commercial arm, Anutech Pty Ltd. Other examples include Macquarie University, Murdoch University, and the University of Adelaide.

152 Some universities give the intellectual property officer power to apportion proceeds, taking into account certain listed matters. Eg, University of Melbourne and Victoria University of Technology.

153 For example, Monash University, University of Ballarat, Curtin University and University of NSW (not less than one third).

154 For example, University of Newcastle, University of Western Sydney, Macquarie University and UTS.

155 For example, University of Southern Queensland. Edith Cowan University distributes 40 per cent of net revenue to the originator and 20 per cent to the originator's research account.

156 For example, James Cook University and University of Canberra - 100 per cent of first $15,000. University of Tasmania - 100 per cent of first $20,000.

157 For example, University of South Australia - 60 per cent of first $20,000. Murdoch University distribute 75 per cent of first $20,000. Swinburne University - 90 per cent of first $14,999 and Southern Cross University - 80 per cent of first $15,000.

158 For example, Murdoch.

159 University of Western Australia.

160 See Appendix C which sets out a chart of 20 universities and the general nature of rights provided in their intellectual property policies. See Appendix D for examples of express rights that originators grant their universities.

161 Whether through increased research funding or through royalties and other financial gains.

162 Dr David Kemp, Federal Minister for Employment, Education, Training and Youth Affairs, Address to the OECD Thematic Review Seminar (21 April 1998). http://www.deetya.gov.au/minwn/kemp/kspeeches_apr98.htm.

163 Not included: La Trobe; RMIT; QUT; Flinders; Charles Sturt

164 ANU, Intellectual Property Guidelines (1281E/1998)

165 Ibid, clauses 4.3 - 4.5. Commercialisation not carried out by any agency of the ANU.

166 Ibid, clause l0.2. Schedule A.

167 Ibid, clause l0.3. Schedule B.

168 After payments in full of costs incurred in protecting the intellectual property, costs of commercialisation and payment of 1 per cent of gross income to the IP Fund for litigation related to IP protection. (ibid, clause l0.3)

169 Ibid, clause l0.4: the Research School, Facullv, Centre or Division.

170 Ibid, clause l0.4: the general revenue fund a'£ the University, a first call upon which would be recovery of patent expenses not otherwise recouped.

171 lbid,clause l0.4 if Anutech is responsible for marketing the IP. If not, then the return under this priority is to be divided between Priorities 3 and 4.

172 Policy on Copyright and Royalties (approved by Council 13 March 1978 and amended 6.12.1990)

173 Ibid, section 1: created by member of staff while in University employment.

174 Ibid, section 5.

175 Ibid, section 6

176 Ibid, section 7.1

177 Ibid, section 7.2

178 Ownership of Intellectual Property Policy A42 [Council C116/95 - 28 June 1995, Amended UAB 145/97 - 29 August 1997 - see 2.1.1 g]

179 Ibid, section l.4: all intellectual property excluding copyright works and other subject matter and computer programs.

180 lbid,section3.l.9.

181 Ibid, section 1.3 - revenue remaining after the deduction of costs of production and/ or commercial exploitation of inlelleclual properly. Section 2.3.2: Intellectual Properly Committee has the authority to apportion the net revenue arising from the commercial exploitation.

182 Ibid, section 3.1.10. Apportionment among originators is according to their respective contributions, and if failure to agree, will be determined by the lntellechtal Property Committee.

183 Ibid, section 3.2.4.

184 Statute 13.01 - Copyrights, Inventions and Patents (incorporating all amendments to 27.8.1991). Regulation 13.0l(l) - Copyright (incorporating all amendments to 16.12.1994). There is also provision for a percentage of nel profits from exploitation of “unit materials” to be paid into a general purpose fund (reg 7). J ntellectual property legislation is currently under revision.

185 Statute 13.01 - Copyrights, Inventions and Patents (s 8).

186 Intellectual Property Policy.

187 If there is more than one originator, the distribution will be divided in a manner agreed by them (ss5.6; 5.7; 5.13).

188 Distribution shall be decided by the Faculty Research Committee (s 5(20)).

189 Vice Chancellor or nominee will decide how the income will be applied on a case by case basis.

190 Distribution to be decided by the University Resources Committee on recommendation from the Research and Development Committee (s 5(20)).

191 Intellectual property policy 5.8.91

192 Section 7.

193 Intellectual Property Policy 1995 (currently under review; new policy approved by Research Committee 31 May 1999 and due to be considered by Academic Board on 6 September and Council on 7 October.) New policy does not change the proportions in which profit is distributed.

194 Section 8.

195 Where more than one originator is involved they must determine how their share of the profit is to be divided among them and inform the intellectual property officer of their decision (s 8.2; new policy s 8.3).

196 Department is defined to mean “any department, centre, institute, unit, division or school of the University (s 2). (New policy refers to “school”.)

197 Draft Intellectual property policy statement

198 Macquarie Research Limited

199 Statute 11.2-Intellectual property 1994.

200 Intellectual property Regulations 1994, reg 4.2.5.

201 Revenue less all external costs to the University directly attributable to the patenting and defence of patents, and charges authorised by the Intellectual Property Committee in the exploitation of the invention within a calendar year.

202 Statute 18 - Intellectual property (approved 7/11/95). Detailed provisions are contained in s 7.

203 Sections 7.1 and 7.2. Originator is entitled to a HJ per cent share during this period until the first charge is liquidated.

204 School, unit or office.

205 General revenue fund of the universitv.

206 Unico.

207 Funds received may be divided between the Section as a whole and a department or group within the Section in proportions agreed between the interested parties. In the absence of agreement, the proportions shall be determined by the Vice-Chancellor (s 7.5). Earnings to which more than one Section of the University may be entitled are divided as agreed. In absence of agreement, proportions to be determined by an independent arbitrator. Failing agreement on an arbitrator, latter to be appointed by the V-C (s 7.6). There are provisions for reduction in entitlements where a staff member resigns or retires.

208 Intellectual Property Policy 1995.

209 To be determined by agreement prior to exploitation (s 4.1).

210 Intellectual property policy 1995. Distribution of financial return from the commercial exploitation of intellectual property.

211 Section 8.

212 Where there is more than one originator, they must determine how to share the net revenue and inform the intellectual property officer of their decision.

213 Intellectual property policy 1997.

214 Includes any direct and indirect costs associated with further development for the commercialisation of any intellectual property.

215 Section 6.3.

216 Where more than one originator, they determine the distribution of shares and inform the intellectua I property officer of their decision (s 6.5).

217 Appropriate unit - refers to the budgetary organisational unit in the university within which a work is created and may include one or more of the following: division, faculty, school, department, centre, institute or administrative unit as determined by the Intellectual Property Committee.

218 Intellectual Property Policy 1989, s 8.12.

219 Ibid, ss 8.3, 8.4 and 8.10. “Direct initial costs” comprise: fee for filing of provisional patent specifications; all patent attorney fees; Luminis Pty Ltd legal and other service fees; fees for filing of final patent specifications; annual maintenance fees for patents, trade marks etc; quarterly escalation of Lhe above costs by the quarterly CPI.

220 Section 8.4. Departmental share is not less than 1/8 of the whole annual income from the venture, such proportion applying where 3 or more inventors are involved.

221 Section 8.5 - Departmental share being not less than 1/6 of the whole income, such proportion applying when 3 or more inventors are involved.

222 Statute 8.2-Intellectual Property 1996 and Regulations 8.2-Intellectual Property 1996

223 Section 4(3)(b) and reg 2[d].

224 Regulation 2[d][v].

225 Policy on Intellectual property (approved 8.11.95)

226 Section 7.

227 Where more than one originator is involved, they decide how to split the revenue.

228 Statute 14.1 - Intellectual Property 21.5.96.

229 Section 14.1.3.

230 Rules on intellectual property (June-July 1995).

231 Section 5.2. This will apply to copyright of original course and teaching materials published by the University for use in award and continuing education programs offered by the University as well as to other intellechtal property owned by the University.

232 Intellectual property policy.

233 Sale, royalty, licensing or other income received from commercial exploitation of intellectual property in any invention less legal and other fees and expenses in establishing and protecting intellectual property and in negotiating and concluding any licensing or other agreements (s 3.8).

234 If more than one researcher, distribution of share to be agreed and in case of failure to be determined by the Pro Vice-Chancellor (Research).

235 Policy on Intellectual property 1997.

236 Section 5.4.

237 Benefit after costs are recovered and the legitimate claims of any third party are satisfied (s 5.5).

238 Section 5.5. If more than one staff member is involved, benefits shared in proportions agreed by them.

239 Statute No 41 - Inventions. Under the University of Queensland Act 1998, s 69(2) this statute expired on 1.7.1999. Guidelines for commercial research. Related policies include Policy on Distribution of Annual Net Profits Generated by Patents, Senate resolution 61 1993.

240 Senate resolution for distribution of annual net profits from University patents.

241 Intellectual property policy C-20.0, 1997.

242 Section 7.2.

243 Faculty/Institute/Unit.

244 Intellectual Property Policy 1996.

245 Section 7(2).

246 Where there is more than one originator, they shall determine the division of the annual net revenue and inform the intellectual property officer of their decision.

247 Intellectual property policy 1997. Note that ch 14 (innovations and patents) of the University By-laws is currently under review. In the event of inconsistency between the policy and ch 14, ch H prevails. Distributions for patents and innovations does differ from the formulae expressed above.

248 Section 13(a).

249 If more than one originator, income shared according to individual contribution to creation, unless otherwise agreed (s 13(c)).

250 Department.

251 Chapter 14 (innovations and patents) of tl1e University By-Laws is currently under review. If any inconsistencies with the intellectual property policy, ch 14 prevails to the extent of any inconsistency.

252 If more than one, distributed as determined bv the Senate on the recommendation of the Finance Committee (s 6(a)).“

253 Intellectual property policy 1999.

254 ln the case of artislic works, Lhe same formula applies except that the originator is entitled to the first $50,000 rather than $20,000.

255 Intellectual property policy 1998.

256 Seclion 1.3 - UTS and the researcher share ownership.

257 If there is more than one originator, they share according to their agreed proportions. Failing agreement, shares determined by the Pro-Vice-Chancellor (Research) (s 1.5).

258 If more than one faculty is involved, Pro-Vice-Chancellor (Research) determines shares.

259 Section 3.

260 Section 2.2.

261 Intellectual Property Regulations 1996.

262 Section 10.

263 Where there is more than one originator, share of net revenue apportioned by Pro Vice-hancellor (Research) (s 10(2)).

264 Significant proportion to be returned to faculty. Remainder to be set aside for other activities including research and commercialisation (s 10(4)).

265 Interim Intellectual Property policy (endorsed Board of Governors 8.8.94).

266 Consultancy, Contract Research and Intellectual property Policy (revised 1998).

267 Section 9.2.

268 Section 9.7.

269 Policy on intellectual property.

270 Section3.l(c).

271 This right is generally limited to scholarly works and usually arises through university relinquislunent of copyright in these works. Where the publication may disclose a patentable invention, the originator is generally asked to delay publication to allow time for filing a patent.

272 The forms of intellectual property that benefit from these rights varies among universities. The right arises where there is successful commercialisation of intellectual property. It is usual to share the economic benefits among the inventors/ originators, their departments and the university. In some cases, the university commercial company also receives a share. Occasionally the originator may also be offered part ownership of the intellectual properly.

273 This is a moral right and generally arises in the context of copyright works. However, in some cases it is limited to identification in patent documentation (eg, Griffith University).

274 Where a university assigns or vests copyright in the originators (see column 1), continuity of use is automatic. This right concerns ability to continue to use intellectual property that the university owns.

275 The most likely context in which this right may arise is production of course materials for the university.

276 This right refers to the circumstances in which the university owns the intellectual property but decides that it will not pursue commercial exploitation.

277 Statute 8.2-Intellectual property 1996, s 2(1).

278 Ibid, s 2(2).

279 Policy on Intellectual property 1995, s 5.3.

280 Ibid.

281 Ibid, s 5.4.

282 A42 Ownership of Intellectual property 1995, amended 1997, s 2.1.2.

283 Ibid, s 2.1.2(b). The licence includes restrictions to protect the copyright in the software.

284 Ibid, s 2.l.2(c).

285 Ibid, s 2.1.2(d).

286 intellectual proper / policy 1995,s 4.1. (currently under review; new policy approved by Research Committee 31 May 1999 and due to be considered by Academic Board on 6 September and Council on 7 October.)

287 Ibid, s 5.2. The proposed new policy provides ins 5.2 “a non-exclusive licence to use the Intellectual Property for tl,e purposes of teaching, research and scholarship.” It also provides in a new s 5.4 that where this intellectual property “has been specifically commissioned by the University, or which has been produced for teaching or administrative purposes, tl1is licence includes the right to adapt the subject matter of the intellectual property.”

288 Statute 14.l - Intellectual property 1996, s 14.1.11(1).

289 Ibid, s 14.1.11(3).

290 Statute 11.2 - Intellectual property -1995, s 2.5 and reg 2.1.-1.

291 Ibid, s 2.6.