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Research Intellectual Property and Research Translation Procedure

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Purpose | Scope | Principles | Procedure statements | Roles and responsibilities | Definitions | Approval information | Version history | References

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1. Purpose

1.1 The Research Intellectual Property and Research Translation Procedure (the procedure): 

  1. outlines the requirements for managing intellectual property generated from research, and 
  2. supports and enables the translation of research arising from research activities.

1.2 This procedure should be read in conjunction with the Intellectual Property Policy and the Research Policy.

2. Scope

2.1 This procedure applies to intellectual property (IP) related to UTS research activities where that IP is owned by UTS in full or in part or is assigned to UTS (hereafter research IP) as part of the university’s research translation activities including:

  1. existing IP
  2. newly created or discovered IP, or
  3. IP that is anticipated to arise.

2.2 This procedure applies to individuals under the scope of the Intellectual Property Policy and the Research Policy, including all staff, students and affiliates involved in research and research-related activities. In this procedure:

  1. staff means staff and affiliates unless otherwise indicated, and
  2. students means students who are engaging in research.

2.3 The following are out of scope of this procedure:

  1. IP related to course and educational materials (refer Teaching and Learning Intellectual Property Procedure)
  2. Indigenous Cultural and Intellectual Property (refer Intellectual Property Policy).

3. Principles

3.1 The principles outlined in the Intellectual Property Policy and the Research Policy apply for this procedure.

4. Procedure statements

Research translation

4.1 UTS is committed to the broad public dissemination and use of research outcomes in line with the UTS Research Strategy and the Open Access Policy. 

4.2 UTS seeks to balance the strategic focus on connected research, the principles of open access and knowledge exchange, and the management and protection of IP to facilitate beneficial impact on UTS and to society more broadly. UTS will not put unreasonable constraints on the ability to publish or otherwise disseminate the outcomes of research. 

4.3 There are multiple pathways for research translation. These pathways include research commercialisation (also known as commercial research translation) as well as forms of research translation that create societal impacts that may not yield direct commercial benefit for UTS or other businesses but may provide other benefits (for example, social, cultural, policy, environmental or health). In addition, some translation activities may have streams of both research commercialisation and societal impact operating in parallel or, in some situations, may start off as research commercialisation and transition to societal impact and vice versa.

Research IP management

4.4 Research IP must be appropriately and effectively disclosed, documented and managed to protect the interests of UTS, its staff, students, collaborators, partners, research clients and/or society more broadly. 

4.5 Staff and students must consider IP matters in line with the Intellectual Property Policy, this procedure and the Research Policy through the various stages of undertaking research, including project proposals, IP creation, IP protection and research translation.

Student IP

4.6 As outlined in the Intellectual Property Policy, students generally own the IP created through their research, with specific exceptions, and always own the copyright in their thesis. 

4.7 Students must familiarise themselves with the terms of any research contracts and other agreements related to their project. UTS may require all researchers (including students) to assign the IP arising from the project to UTS (or a third party) as a condition of working on the project to meet contractual obligations (this may be required before working on the project). 

4.8 Supervisors of students involved in externally funded research are responsible for ensuring the student understands the IP requirements detailed in the research contract. 

4.9 Supervisors and/or research project leaders (as appropriate) are responsible for ensuring students are made aware of when and how staff may use data collected as part of their graduate research degree (refer Intellectual Property Policy and Rule 3.9, Student Rules). 

4.10 Where UTS asserts ownership or requests assignment of student IP, students are entitled and encouraged to seek independent legal advice regarding their rights and any potential implications of IP assignment.

Assigning pre-existing IP to UTS

4.11 In some cases, staff or students may wish to assign ownership of pre-existing IP to UTS. For example, where a: 

  1. new staff member with pre-existing IP moves to UTS and the pre-existing IP will be the subject of ongoing research at UTS, or 
  2. student wants UTS to assist with the protection and/or translation of their research into use. 

4.12 Requests for UTS to assume responsibility for ownership of IP may be made to the Research Office for consideration and must be approved in line with the UTS Delegations. These requests are assessed and approved using the same review process (and delegations) for new research IP as outlined in this procedure. 

4.13 Staff and students are responsible for undertaking all actions, including but not limited to submission and IP disclosure, to enable assignment of IP as requested by the Research Office. 

4.14 On assignment the IP will be managed in the same manner as IP created by UTS staff under the Intellectual Property Policy, the Research Policy and this procedure unless otherwise noted.

IP handover for departing staff and affiliates

4.15 Staff or affiliates who are leaving UTS, or who are no longer subject to the terms of an agreement with UTS in relation to research IP, must provide all documents and records relevant to the research IP with which they were engaged as soon as practicable from the date of formal notice of their departure. 

4.16 Requests to use UTS research IP by staff or affiliates after their departure from UTS must be made to the Research Office. These will be considered for approval in line with the Delegations.

IP terms in research contracts and agreements

4.17 Research contracts must include IP terms that outline who has rights to or ownership of IP, including access to background IP, project IP and improvements to background IP. The method by which new IP is identified and reported may also be defined. 

4.18 The IP terms in the research contract must be approved by the authorised delegate (refer Delegations). Staff and students must not agree to, or set expectations about, IP ownership or rights without the authorised delegate’s approval. 

4.19 UTS’s position on research IP ownership is assessed on a case-by-case basis. Factors to be considered when determining IP terms in any research contract and/or a related agreement include but are not limited to: 

  1. any IP constraints imposed by the client or funding body or research contract 
  2. ongoing or future value of the IP to UTS or others 
  3. existing encumbrances on the background IP 
  4. freedom to operate for UTS researchers 
  5. risks associated with the ownership or beneficial use of the IP, including other translation opportunities that may be missed 
  6. Commonwealth or state legislation 
  7. national security and/or national interest 
  8. the party best placed to translate the IP into use or benefit 
  9. the range of applications of the IP 
  10. the range of territories involved in the research or IP ownership 
  11. the price to be paid by the external party for the research activities, and/or 
  12. any associated IP that is being created. 

4.20 Staff and students involved in a research project that is subject to a research contract or related agreement with IP terms are responsible for disclosing IP in line with the Intellectual Property Policy and this procedure and for: 

  1. familiarising themselves with the IP terms and, where appropriate, informing others of these terms 
  2. complying with the IP terms 
  3. explicitly identifying in writing and listing all relevant existing background IP (formal UTS disclosure reference numbers may be used), if the agreement requires such identification, so that it cannot be inappropriately claimed by the external party. 

4.21 Staff or students receiving confidential information, data or materials that are subject to any signed research contract or related agreement must comply with the terms.

Conflicts of interest related to research IP

4.22 Any perceived or actual conflicts of interest related to IP created from or used in UTS research must be declared as soon as possible in line with the Conflicts of Interest Disclosure Policy, the Research Policy and the Research Management Procedure (SharePoint).

Disclosure, management and communication of research IP to support research translation

4.23 Researchers should be conscious of prematurely communicating research data, results or other forms of IP through their publication, dissemination, presentation or promotion activities, which might prevent or jeopardise achieving societal benefit via social impact and/or commercial research translation pathways. 

4.24 Researchers creating research IP must: 

  1. disclose and manage research IP with potential societal impact and benefit as set out in this procedure to enable UTS to assess the IP and determine whether it requires protection before broader communication and ensure that pathways for research translation are appropriately supported and enabled, or 
  2. disclose where the IP arises from work specifically commissioned by UTS, or 
  3. disclose where UTS has a duty to identify IP and/or maintain an IP register in a funding or other agreement. 

4.25 Before sharing, revealing or communicating any UTS research IP to another party (including for the purposes of research paper publication, submission, presentation, demonstration and/or public release through a website) the following must be confirmed by the Research Office (or other individuals endorsed by the Deputy Vice-Chancellor (Research) or the Research Office): 

  1. that necessary IP protections are in place 
  2. that the communication is unlikely to jeopardise future research translation 
  3. that the communication is in accordance with any contractual terms and that there are no contractual or other blocks to sharing or disclosing, and 
  4. whether a formal agreement is required between UTS and the external party to protect confidentiality. 

4.26 Staff or students may be required to: 

  1. delay the sharing of UTS research IP outside of UTS until such time as an IP strategy and, if appropriate, IP protection is in place, and/or 
  2. modify the content of the information to be shared outside of UTS to ensure the research IP can be appropriately protected. 

4.27 When sharing confidential IP or commercially sensitive information, data or materials between UTS and an external organisation, a confidentiality or non-disclosure agreement (CDA or NDA), data transfer agreement (DTA) or materials transfer agreement (MTA) must be used unless there is a legal obligation already in place to protect the information or the Research Office has advised that an agreement is not necessary. 

4.28 CDAs, NDAs, DTAs and MTAs must be on templates developed by UTS Legal and approved and signed by the authorised delegate in line with the Delegations. The use of non-standard templates must be approved by the authorised delegate. No other person can sign these agreements even if the external organisation asks them to do so. The Research Office can provide further guidance and advice. 

4.29 All UTS-owned information, data or materials to be shared under a CDA, NDA, DTA or MTA or similar agreement should clearly display the appropriate information security classification as per the UTS Information Security Classification Standard (available at Information security (SharePoint)) (refer Records Management Policy).

Research IP disclosure and review process

4.30 Research IP with potential commercial value and/or that could be translated via commercial research translation pathways must be disclosed to the Research Office using the disclosure form (refer Disclosing IP: How to disclose your IP (Staff Connect)). Where there is doubt whether research IP should be disclosed, researchers must still disclose using the form to allow for the Research Office to make an assessment and provide advice. 

4.31 Research IP that is expected to have societal impact through its translation may still benefit from support to ensure optimum dissemination as well as guidance in relation to translation pathways. Researchers should still inform the Research Office of its existence so that they can provide support and advise on pathways for disclosure. 

4.32 Research IP must be disclosed in writing before any public communication to allow reasonable time for UTS to assess the IP for best use or translation. Disclosure must be made at least 30 days before the anticipated date of communication. Any delays in disclosing research IP may result in an inability to put in place appropriate protections and/or fulfil contractual obligations to clients, funding bodies and collaborators. 

4.33 Researchers must assist with the IP disclosure and review process by providing additional information in a timely and transparent manner as requested by the Research Office.

4.34 Pending review and advice on the research IP, researchers should only discuss the IP with the other creators (if any), UTS staff members on a need-to-know basis, and external individuals as requested by the Research Office. 

4.35 On receipt of the research IP disclosure, the Research Office will: 

  1. review the disclosure to provide support and advice as needed (this may occur in consultation with the researcher(s), appropriate faculty representatives and other subject matter experts to determine the potential value of the IP and confirm or identify any research translation opportunities) 
  2. keep an appropriate record (IP register) of all IP disclosures received and their management 
  3. advise as to whether the external communication can proceed as planned or must be delayed to enable preliminary IP protection to ensure that the IP rights are properly secured.

Advisory committees

4.36 The Deputy Vice-Chancellor (Research) may establish advisory committees to support research translation, provide advice and make recommendations (refer Research Policy).

Societal impact research translation

4.37 Some research has inherent impact and translation, while other types of research require more deliberate translation actions and support. Consequently, support for societal impact research translation will be contextual, reflect a continuum of activities and be iterative and evolve over time. 

4.38 Support and enablement for societal impact translation may occur locally or at a university level. The Deputy Vice-Chancellor (Research) may directly, or via advisory committees or the Research Office, request or require actions to support this translation and/or ensure appropriate governance and oversight. Where required, approval processes will follow the process set out for commercial research translation (refer Commercial research translation).

Commercial research translation

IP protection and registration

4.39 Research IP protection is an important precursor to many forms of commercial research translation and may need to be established before formal commercialisation plans are implemented. 

4.40 The Research Office aims to review disclosed research IP (refer Research IP disclosure and review process) in a timely manner. Decisions to protect the IP will not be unreasonably rushed to meet external communication deadlines. 

4.41 The decision to protect IP is made by the authorised delegate (refer Delegations) on advice and recommendation from the Research Office or as otherwise determined by the Deputy Vice-Chancellor (Research). 

4.42 Authorised delegates reserve the right not to protect/patent and/or commercialise research IP. This may include (but is not limited to) situations where, for example: 

  1. the costs of protecting and/or commercialising the IP exceed, or are likely to exceed, the potential or expected commercial or other benefits 
  2. the most appropriate way to create impact from the IP is to make it freely available to anyone, and/or 
  3. protecting the IP aids UTS’s core business needs or strategic objectives.

Commercialisation of research IP

4.43 The Deputy Vice-Chancellor (Research) is the Council-approved delegate for the approval of research IP commercialisation (refer Commercial Activities Policy). The Research Office is responsible for supporting and enabling commercial research translation of research IP (under the Director, Research Office). 

4.44 The Deputy Vice-Chancellor (Research) will receive advice and recommendations on opportunities and proposals for commercialisation in relation to: 

  1. commercial research translation plans 
  2. IP management, including the registration and protection of IP 
  3. terms and term sheets associated with the licensing, assignment or use of UTS research IP 
  4. UTS internal funding to support the further development of research IP 
  5. investment opportunities and proposals from external investors 
  6. the appropriateness of business cases for spinout or start-up companies to commercialise or otherwise translate UTS IP, and 
  7. ending institutional support for research translation opportunities or activities that are commercial in nature.

IP strategy and impact plan

4.45 Where research IP has been identified as suitable for commercial research translation, and has been recommended for further development, researchers, with support from the Research Office and other internal or external supports as required, must prepare an appropriate IP strategy and impact plan to support the translation approach. 

4.46 The impact plan will formally identify and include: 

  1. a research translation lead who is responsible for implementing the plan and reporting progress 
  2. additional staff and/or external expertise as needed 
  3. the IP strategy (including proposed patent applications in line with the Delegations) for protecting and managing the IP 
  4. the proposed approach(es) to realise value from the IP, including the relative benefits and disadvantages of commercial translation pathways such as licensing assignment or company creation 
  5. specific industry partners to approach 
  6. other relevant information such as commercial market assessment and IP prior art 
  7. project milestones or key performance indicators 
  8. estimated timing and/or review periods 
  9. a risk management plan identifying risks associated with the translation of the research IP including financial, reputational, social, environmental or other risks to the university 
  10. additional resources required to support the further development and/or translation of the research IP, if required, including requirements for space, infrastructure, equipment or IT resources, and 
  11. such other matters as communicated by the Research Office. 

4.47 Staff and students must assist the research translation lead with: 

  1. translation activities outlined in the impact plan (for example, signing documents required for patent applications), and 
  2. post translation activities requested by the Research Office.

Licensing or assignment of research IP

4.48 The decision to license or assign UTS research IP will be made by the authorised delegate and recorded and managed by the Research Office. 

4.49 The authorised delegate will execute such legal agreements to give effect to the licence or assignment on advice of the Research Office and the Office of General Counsel.

Establishment of a research commercialisation company

4.50 The Deputy Vice-Chancellor (Research) may determine it appropriate to establish a company that may be wholly owned (a controlled entity) or partly owned by UTS to enable the translation of research IP through commercialisation (refer Commercial Activities Policy). 

4.51 The research translation lead will work with the Research Office (and other support staff or advisors as directed) to develop the research commercialisation business case (the business case). The business case must be completed in a format approved by the Director, Research Office and must include: 

  1. the benefits to UTS of research IP commercial translation and for broader societal impacts 
  2. a strategic market analysis associated with exploitation of the opportunity 
  3. the proposed legal and governance structure for the company including advice on tax implications and details of the proposed founding board 
  4. requested investment by UTS and details of other proposed investors and investments 
  5. the proposed equity position of UTS and other investors/shareholders 
  6. details of research IP including the proposed model for use by the company (for example, licensing or assignment) 
  7. the projected financial return to UTS via licensing or sale of the research IP 
  8. details of key personnel including the role of the research translation lead or other UTS staff in the company 
  9. an operating model (including financial details such as projected revenue and investments), all costs (staff, equipment, leasing, insurance, professional fees), expected profit and loss, and cash flow statements for the first 3 years of operation 
  10. a risk management plan identifying risks associated with the translation of the research IP including financial, reputational, social, environmental or other risks to the university 
  11. any other matters requested by the Deputy Vice-Chancellor (Research), and 
  12. a proposed term sheet incorporating the above. 

4.52 Where a controlled entity is being proposed: 

  1. the legal structure must be signed off by the General Counsel and Executive Director, Risk and Compliance 
  2. the financial structure and details must be reviewed and signed off by the Chief Financial Officer, and 
  3. any other required approvals must be obtained (refer Commercial Activities Policy).

Approval for company establishment, variations or winding-up 

4.53 The business case must be presented to the Deputy Vice-Chancellor (Research) for consideration who may use an advisory committee to provide feedback or other advice (refer Advisory committees). 

4.54 The Deputy Vice-Chancellor (Research) may: 

  1. request that further work on the business case be completed by the research translation lead before approval 
  2. recommend, regarding the benefits, costs and risks articulated in the business case, that an alternative translation pathway or other action(s) is more appropriate, or 
  3. recommend that the establishment of a company should proceed. 

4.55 The Deputy Vice-Chancellor (Research) will present the business case and associated documentation to the Vice-Chancellor (refer Delegations and the Commercial Activities Policy). 

4.56 The Vice-Chancellor will either approve or reject the recommendation to establish a company for research commercialisation. The Director, Research Office will supervise the necessary activities to give effect to that decision. 

4.57 The Vice-Chancellor, on the recommendation of the Deputy Vice-Chancellor (Research), may also approve the decision to vary a company structure or wind-up a company established by the university (refer Delegations). 

Distribution of commercialisation revenue 

4.58 Where UTS receives commercialisation revenue derived from research IP, the income will be distributed in the following order: 

  1. UTS will recover all reasonable costs it incurred during the commercialisation process, and 
  2. remaining commercialisation revenue will be distributed as one third shared among all the creators of the IP, one third to the creator’s faculty (or shared between faculties if appropriate) and one third to UTS. 

4.59 Where a creator of IP is eligible to receive commercialisation revenue arising from that IP, they may choose to redirect some or all of their revenue share into a research investment account (RIA) to fund research activities (refer the Research Policy and the Research Finance Procedure (SharePoint)). 

Assignment to creators where research commercialisation does not proceed 

4.60 Where UTS does not proceed with protection and/or commercialisation of UTS research IP, the Deputy Vice-Chancellor (Research) may, in consultation with the appropriate faculty dean, agree to license or assign the research IP to the creators or to an entity with which the creators are associated (refer Delegations). This decision is subject to an appropriate rationale, outside work provisions and conflict of interest declarations where relevant. 

4.61 UTS reserves the right not to permit the creators of UTS research IP to commercialise the IP if such action is not in the best interest of UTS and/or may breach UTS’s contractual or other obligations. 

4.62 Decisions to license or assign research IP, if approved, may be subject to conditions, including without limitation, the recuperation of its costs, a share of the proceeds from commercialisation, and rights to a perpetual royalty-free licence for research and teaching purposes. 

Records management 

4.63 To ensure proper governance and oversight of research IP, and to support reporting requirements, the Research Office will ensure full and accurate records of all IP disclosures, IP management, investor interest, licensing, assignment, options and details of companies established by the university for commercial research translation are kept in line with the Records Management Policy. 

Reporting 

4.64 The Deputy Vice-Chancellor (Research) will report on matters related to research IP translation and research commercialisation (including societal impact) in line with the Research Policy. 

Research commercialisation reports 

4.65 Reports on research commercialisation will be produced by the Research Office including information on: 

  1. activity and performance metrics in relation to research IP disclosures, patent applications, commercialisation income, licences, options and assignments and benchmarking with similar organisations where obtainable 
  2. research translation activities supporting the UTS Research Strategy and the Research Translation Plan (available at Research Ecosystem (SharePoint))
  3. risks and outlook for commercial research translation 
  4. commercial research activities under UTS management or oversight including commercialisation partners 
  5. status updates, expected benefits, risk status and risk management if required 
  6. other matters as proposed by the Deputy Vice-Chancellor (Research) or requested by Council. 

Societal impact reports 

4.66 Reports on societal impact of research translation activities are recorded and reported through UTS research impact reporting and research impact case studies. 

4.67 The Deputy Vice-Chancellor (Research) may provide or request additional reports on the societal impact of research translation. These may be further reported to relevant UTS committees as required. 

Reporting to key stakeholders 

4.68 The Deputy Vice-Chancellor (Research) may provide reports to other key stakeholders on: 

  1. disclosed IP maintained in the IP register for the relevant faculty and its status 
  2. commercialisation and research translation activities in progress 
  3. any other research translation requirements or updates. 

Breaches 

4.69 Breaches of this procedure may be managed as a breach of the Intellectual Property Policy, the Research Policy or the Commercial Activities Policy as appropriate.

5. Roles and responsibilities

5.1 Procedure owner: The Director, Research Office is responsible for enforcement and compliance of this procedure and for research translation activities and commercialisation.

5.2 Procedure contact: The Research Translation Manager, Research Office is the primary point of contact for advice on implementing this procedure.

6. Definitions

The following definitions are in addition to the definitions outlined in the Intellectual Property Policy and Schedule 1, Student Rules. Definitions in the singular include the plural meaning of the word.

Affiliate is defined in the Code of Conduct.

Background IP means UTS owned or managed IP that exists before a research project or activity is undertaken.

Client (also funder) is defined in the Research Policy.

Commercialisation revenue means revenue received by UTS from a third party resulting from the use or sale of UTS owned or managed IP.

Controlled entity is defined in the Commercial Activities Policy.

Freedom to operate means the ability to develop, make and market products and services without legal liabilities to third parties.

Impact plan means a plan to translate IP and other outcomes of research into practical use or impact. All impact plans must appoint a research translation lead.

Inventorship determination means the process of determining the creator(s) of IP based on their inventive contribution.

IP disclosure means the formal written notification to the Research Office of the creation or discovery of new IP by staff, students or affiliates in line with this procedure.

IP register means a list of IP created in a research project. The register captures pertinent information about the IP and the creator(s).

IP strategy means an agreed way of managing, translating and protecting IP. The IP strategy may involve, for example, UTS undertaking an inventorship determination to clearly identify staff and students that have contributed to the creation and development of the IP.

Pre-existing IP means IP wholly or in part owned by an individual or their previous employer before their undertaking work or research with or for UTS.

Prior art means evidence that the IP was already available to the public, in any form, before IP protection or review.

Project IP means IP created from a defined research project.

Research-related agreement is the formal written document that is not included in the definition of research contract. It articulates the legally binding terms agreed between UTS and an external party for a research-related matter, for example, an IP licence agreement, IP assignment agreement or inter-institutional agreement.

Research contract (also contract, research project agreement or research agreement) is defined in the Research Policy.

Sharing (including public disclosure) means the release or communication of IP, whether intentional or not, formal or informal, written or oral, to anyone who is not UTS staff and is not a party to a confidentiality agreement or equivalent regarding that IP, including but not limited to journal publications, conferences, posters, presentations, demonstrations, abstracts (including for grant funding proposals), theses, dissertations, open thesis defences, information posted online (including pre-publication papers), conversation with any external party, or conversation with a UTS student who is not a creator or owner of the IP.

Societal impact research translation means research translation that creates societal impacts which may not yield direct commercial benefit for UTS or other businesses but may provide other benefits including social, cultural, policy, environmental, health or other impacts or benefits for communities, government agencies, businesses or industry locally or globally.

Student is defined in the Student Rights and Responsibilities Policy.

Translation project lead means the person responsible for leading the implementation of an impact plan.

UTS owned or managed IP for the purpose of this procedure means any IP created from research activities that is owned by UTS, including any assigned IP, or is otherwise managed by UTS through an agreement.