Research Intellectual Property Procedure

1. Purpose

1.1 The Research Intellectual Property Procedure (the procedure) outlines the requirements for managing UTS owned or managed intellectual property generated from research activities. This procedure should be read in conjunction with the Intellectual Property Policy (the 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 part or in full or is assigned to UTS (hereafter research-generated IP), including:

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

2.2 This procedure applies to all those under the scope of the policy including all staff, students and affiliates involved in research and research-related activities. For the purposes of clarity, in this procedure:

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

2.3 The following are out of scope of this procedure:

pre-existing IP that is disclosed by a new staff member to the Research Office within 30 days of their start date at UTS
IP related to course and educational materials (refer Teaching and Learning Intellectual Property Procedure).

3. Principles

3.1 The principles outlined in the policy apply for this procedure.

3.2 UTS is committed to the broad public dissemination of research outcomes, in line with the Open Access Policy, as well as achieving beneficial use and impact from research-generated IP. UTS seeks to balance the principles of open access and, where appropriate, protection of IP to facilitate beneficial impact. UTS will not put unreasonable constraints on the ability to publish or otherwise disseminate the outcomes of research.

4. Procedure statements

IP management

4.1 Research-generated IP must be appropriately and effectively managed in order to protect the interests of UTS, its staff, students, collaborators, partners, and/or research clients.

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

Student IP

4.3 As outlined in the policy, students generally own the IP created through their research, with specific exceptions (refer the policy), and always own the copyright in their thesis.

4.4 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).

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

4.6 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 the policy and Rule 3.9, Student Rules).

4.7 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 existing IP to UTS

4.8 In some cases, staff or students may wish to assign IP ownership to UTS. This may be useful where, for example:

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

4.9 Requests for UTS to take ownership of IP may be made to the Research Office for consideration. These requests are assessed using the same review process used for new research-generated IP as outlined in this procedure (refer statements 4.32 to 4.35).

4.10 Staff and students are responsible for undertaking all actions to enable assignment of IP as requested by the Research Office.

4.11 On assignment the IP will be managed in the same manner as IP created by UTS staff under the policy and this procedure unless otherwise noted.

IP terms in research contracts and research-related agreements

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

4.13 UTS’s position on research generated 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:

any IP constraints imposed by the client or funding body or research contract
ongoing or future value of the IP to UTS
existing encumbrances on the background IP
freedom to operate for UTS researchers
risks associated with the ownership or beneficial use of the IP
Commonwealth or state legislation
national security and/or national interest
the party best placed to translate the IP into use or benefit
the range of applications of the IP
the range of territories involved in the research or IP ownership
the price of the research, and/or
any associated IP that is being created.

4.14 The Deputy Vice-Chancellor (Research), or their nominee in line with the UTS Delegations, is responsible for the approval of IP terms in a research contract on behalf of UTS. Staff and students must not agree to, or set expectations about, IP ownership or rights without approval by the Deputy Vice-Chancellor (Research) or their nominee.

4.15 Staff and students involved in a research project that is subject to a research contract or related agreement with IP terms are responsible for:

familiarising themselves with the IP terms and, where appropriate, informing others of these terms
complying with the IP terms
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.

4.16 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 IP

4.17 Any perceived or actual conflicts of interests related to IP created from or used in UTS research must be declared as soon as possible in line with the Code of Conduct and the Student Rights and Responsibilities Policy. Conflicts of interest include, but are not limited to situations where:

a researcher is working on multiple projects with different parties using the same IP
a researcher is working on a project that utilises IP owned by the researcher or is owned by a family member or friend of the researcher, or
a researcher may benefit personally from decisions made by UTS in translating IP into use.

4.18 Staff and students must seek advice from an appropriate supervisor and/or the Research Office regarding actual or perceived conflicts of interest related to IP in line with the Code of Conduct.

4.19 Any actual or perceived conflicts of interest relating to IP must be declared on the appropriate form (refer Code of Conduct) and actively managed. Those making a declaration must also notify the Research Office if the Research Office or its nominee is reviewing, managing or otherwise dealing with the IP.

Disclosing or sharing IP with another party

4.20 The details of UTS owned or managed IP must not be shared or revealed to anyone outside of UTS, or to students within UTS who are not co-creators of the IP, until after the IP has been internally disclosed and reviewed in line with this procedure (refer IP discovery and disclosure).

4.21 Before sharing or revealing any UTS owned or managed IP to another party (including research paper publication, submission, presentation, demonstration and/or public release through a website) the following must be confirmed from the Research Office:

necessary IP protections are in place
this is the best path to achieve impact from the IP
there are no contractual or other blocks to sharing or disclosing, and
whether a formal agreement is required between UTS and the external party to protect confidentiality.

4.22 Staff or students may be required to:

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

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

4.24 CDAs and NDAs must include, at a minimum:

a description of the type and nature of information to be disclosed
the purpose of the disclosure, and
the period for which the information must be kept confidential.

4.25 When sharing or transferring commercially sensitive data or materials between UTS and an external organisation, a data transfer or material transfer agreement (DTA and MTA) must normally be used unless there is a legal obligation already in place to protect the data or materials or an approval from the Research Office that an agreement is not necessary. These agreements are similar to CDAs and NDAs, specifically covering the transfer of data and materials and may include conditions relating to:

how the data or materials can or cannot be used
who can have access
who owns any subsequent improvements, and
what should be done with the data or materials when they are no longer required and/or when the agreement expires.

4.26 CDA, NDA, DTA, MTA and similar agreements bind the whole of UTS to confidentiality. These agreements must be approved and signed by the authorised delegate in line with the Delegations. No other person can sign these types of agreements even if asked to do so by the external organisation. Further guidance and advice on developing and approving these arrangements is available from the Research Office.

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

IP discovery and disclosure to UTS

4.28 The creation or discovery (hereafter creation) of new IP from research may be planned or unplanned. Researchers must disclose new IP to the Research Office using the disclosure form (available at Commercialisation process (Staff Connect)) as soon as possible after the creation. Disclosures must be made where:

the IP arises from work specifically commissioned by UTS
UTS has a duty to identify IP and/or maintain an IP register in a funding or other agreement, or
the IP may have value beyond publication, such as commercial value, community use or strategic value.

4.29 New IP must be disclosed in writing before any public disclosure of the IP to allow reasonable time for UTS to assess the IP. Any delays in the disclosure of IP may result in an inability to protect the IP and/or fulfil contractual obligations to clients, funding bodies and collaborators and is considered a breach of this procedure and the policy.

4.30 The Research Office will:

provide support and advice, as needed, to researchers making a disclosure
keep an appropriate record of all IP disclosures received and their management
provide advice regarding the potential commercial interest or other value of the IP to UTS.

4.31 Pending review and possible protection of the IP, the IP should be discussed only with the other creators (if any), UTS staff members who need to know, and external persons as requested by the Research Office.

IP review process

4.32 IP disclosures are reviewed by the Research Office to determine the potential value of the IP and the ability to translate the IP into practical use prior to any sharing or public disclosure. The review will be undertaken in consultation with the researcher(s), appropriate faculty representatives and other subject matter experts as needed. The Research Office may nominate another person or party, with subject matter expertise, to undertake or supervise the review on their behalf.

4.33 Researchers must assist with the IP review by providing additional information and opinion as reasonably requested by the Research Office in a timely and transparent manner. This may include, for example, reviewing any prior art identified that may impact on UTS’s ability to protect the IP.

4.34 UTS aims to review the IP in a timely manner. Decisions to protect the IP will not be unreasonably rushed to meet external publication deadlines.

4.35 If the review determines that the IP has value beyond publication, the Research Office will help prepare an appropriate IP strategy and research translation plan (refer IP strategy and impact plan).

Decisions not to protect or commercialise IP

4.36 UTS reserves the right not to protect and/or commercialise UTS owned or managed IP where, for example:

the costs of protecting and/or commercialising the IP exceed the likely financial return
the best way to create impact from the IP is to make it freely available to anyone, and/or
to protect UTS’s core business needs or strategic objectives.

4.37 UTS may, at the discretion of the Deputy Vice-Chancellor (Research) or their nominee, and in consultation with the appropriate faculty dean or their nominee, agree to license or assign IP to the creators or to an entity with which the creators are associated, subject to an appropriate business case, outside work provisions and declarations of interest.

4.38 UTS, at the discretion of the Deputy Vice-Chancellor (Research), reserves the right not to permit the creators of UTS owned or managed IP to commercialise the IP if, such action is not in the best interest of UTS.

IP strategy and impact plan

4.39 Following review, UTS may determine that the IP has value beyond publication. The Research Office may call on internal and external resources in the development of the IP strategy and impact plan. Staff and students are responsible for assisting with the development of the strategy and plan by providing information and opinion as reasonably requested by the Research Office in a timely and transparent way.

4.40 The IP strategy may involve UTS undertaking an inventorship determination to clearly identify staff and students that have contributed to the creation and development of the IP. IP protection is approved in line with the Delegations.

4.41 The impact plan will formally identify:

a translation project lead who is responsible for implementing the plan and reporting progress
additional staff and/or external expertise as needed
the strategy for protecting and managing the IP
the proposed approach(es) to realise value from the IP, including specific industry partners to approach
other relevant information such as commercial market assessment and prior art
project milestones or key performance indicators, and
estimated timing and/or review periods.

4.42 The translation project lead will present the impact plan as a business case proposal to the person or panel nominated by the Deputy Vice-Chancellor (Research) for review and approval before the plan is implemented.

Translation

4.43 If the impact plan is approved, the translation project lead is responsible for implementing and progressing the plan.

4.44 The translation project lead will report progress regularly to the Research Office as agreed and/or requested and report any identified issues in a timely manner, including any need for significant change to the plan.

4.45 Staff and students must assist with the:

translation of the IP into use as defined in the impact plan and as reasonably requested by the translation project lead and/or the Research Office (for example, signing documents required for patent applications), and
post translation activities reasonably requested by the Research Office.

Distribution of commercialisation revenue

4.46 Commercialisation is one of many pathways to the translation of IP into practical use (refer Intellectual Property Policy and Commercial Activities Policy). Where UTS receives commercialisation income derived from UTS owned or managed IP, the income will be distributed in the following order:

UTS will recover all reasonable costs it incurred during the commercialisation process, and
remaining commercialisation income 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.

4.47 Where a creator of IP is eligible to receive commercialisation income arising from that IP they may choose to redirect some or all of their income share into a research investment account (RIA) to fund research activities. More information on RIAs is available in the Research Policy and Research Finance Procedure (SharePoint).

4.48 Disputes regarding the costs incurred by UTS during the commercialisation process will be managed in line with the policy.

5. Procedure owner and contact

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

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

5.3 Others: The Deputy Vice-Chancellor (Research) is responsible for approving this procedure and any associated guidelines and user guides.

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.

Background IP means UTS owned or managed IP that exists prior to a research project or activity being undertaken.

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

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

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

Impact plan (also research translation plan) means a plan to translate IP and other outcomes of research into practical use or impact (see also UTS Research Strategy).

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 regarding the IP and the creator(s).

IP strategy means an agreed way of managing and protecting IP.

Pre-existing IP means IP wholly or in part owned by an individual or their previous employer prior to 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, prior to IP protection or review.

Project IP means IP created from a defined research project.

Research-related agreements refers to formal written documents that are not included in the definition of research contract and articulate 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, whether 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.

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.

Approval information

Procedure contact	Director, Research Office
Approval authority	Deputy Vice-Chancellor (Research)
Review date	2023
File number	UR21/874
Superseded documents	None