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Intellectual Property and Research Agreements Intellectual Property and Research Agreements Agreements
1. Research Agreements1. Research Agreements 1. Research Agreements 1. Research Agreements
1.1 Augments the functions of Research Administration1.1 Augments the functions of Research Administration1.1 Augments the functions of Research Administration 1.1 Augments the functions of Research Administration 1.1 Research Admin
1.2 Nature of funding and granting bodies1.2 Nature of funding and granting bodies1.2 Nature of funding and granting bodies 1.2 Nature of funding and granting bodies 1.2 Funding
1.3 Lack of uniform terms but common problems1.3 Lack of uniform terms but common problems1.3 Lack of uniform terms but common problems 1.3 Lack of uniform terms but common problems 1.3 common problems
1.4 Importance of researcher's ability to observe terms of agreement1.4 Importance of researcher's ability to observe terms of agreement1.4 Importance of researcher's ability to observe terms of agreement 1.4 Importance of researcher's ability to observe terms of agreement 1.4 observing agreement
1.5 Students to be bound by obligations if involved in project1.5 Students to be bound by obligations if involved in project1.5 Students to be bound by obligations if involved in project 1.5 Students to be bound by obligations if involved in project 1.5 Students obligated
1.6 Ownership of intellectual property1.6 Ownership of intellectual property1.6 Ownership of intellectual property 1.6 Ownership of intellectual property 1.6 Ownership of IP
1.7 Confidentiality and publications1.7 Confidentiality and publications1.7 Confidentiality and publications 1.7 Confidentiality and publications 1.7 Confidentiality
1.8 Insurance1.8 Insurance1.8 Insurance 1.8 Insurance 1.8 Insurance
1.9 Indemnities and warranties1.9 Indemnities and warranties1.9 Indemnities and warranties 1.9 Indemnities and warranties 1.9 Indemnities and warranties
1.10 Budget - allowing for infrastructure charge, and possibly for patenting1.10 Budget - allowing for infrastructure charge, and possibly for patenting1.10 Budget - allowing for infrastructure charge, and possibly for patenting 1.10 Budget - allowing for infrastructure charge, and possibly for patenting 1.10 Budgeting
1.11 Sub-contracting: Are all researchers staff of UWA?1.11 Sub-contracting: Are all researchers staff of UWA?1.11 Sub-contracting: Are all researchers staff of UWA? 1.11 Sub-contracting: Are all researchers staff of UWA? 1.11 Sub-contracting
2. UWA Intellectual Property Policy Guide2. UWA Intellectual Property Policy Guide 2. UWA Intellectual Property Policy Guide 2. IP Policy Guide
3. Standard Research Agreements3. Standard Research Agreements 3. Standard Research Agreements 3. Standard Research Agreements
4. Intellectual Property4. Intellectual Property 4. Intellectual Property 4. IP
5. Copyright5. Copyright 5. Copyright 5. Copyright
6. Commercialisation of Intellectual Property6. Commercialisation of Intellectual Property 6. Commercialisation of Intellectual Property 6. Commercialisation of IP
7. Private Staff Consultancies7. Private Staff Consultancies 7. Private Staff Consultancies 7. Priv Staff Consult
8. Links to major intellectual property Acts and sources of useful information8. Links to major intellectual property Acts and sources of useful information 8. Links to major intellectual property Acts and sources of useful information 8. Links
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1.6 Ownership of intellectual property

1.6.1  Ownership of intellectual property arises as a question with research contracts in three ways. The first is the nature of ownership as between the researcher and the University, the second is between the University and the external funding body and the third is in relation to the student's intellectual property.

1.6.2  Where intellectual property developed is developed by students or staff members, their positions relative to the University is handled by the Intellectual Property Policy. If the terms of the research agreement make no claim to intellectual property and do not require it to be either licensed or assigned then the intellectual property will be handled according to the provisions of the Intellectual Property Policy. The Policy is overridden by the terms of any agreement signed by the University with an external funding body. This is primarily because the University must remain flexible in its legal position if it hopes to attract funding from a wide variety of sources.

1.6.3  Ownership of intellectual property where a commercial collaborator is involved raises many complex policy and legal issues. These include:

(a)  UWA prefers to own the intellectual property generated by its research activities. That is so even when those activities are sponsored in part or even significantly by the contributions of external bodies. That said, UWA always recognises such other parties by according rights or concessional terms in response to their contributions. Sometimes, in the case of patents, the cost of protecting the intellectual property can be significant. When effective ownership of the patentable invention is granted to a licensee by an exclusive licence, UWA expects that the costs of maintaining the protection given by the patent will be paid by that exclusive licensee.

(b)  The R&D Tax Concession administered by the Industry Research and Development Board pursuant to section 73B of the Income Tax Assessment Act 1936 is not prejudiced by UWA retaining ownership of the intellectual property. Tax rulings by the Australian Tax Office (including Ruling IT2451) state that effective ownership includes the substantial control afforded to a licensee by an exclusive licence. In any case, it is for any commercial collaborator to investigate its own tax position and make application for its research expenditure to be deducted pursuant to the rules administered under the tax legislation.

(c)  UWA's retention of ownership is the best way of protecting its intellectual property when that property is being licensed to a company which may be a technology speculator or in some way has its success hinging on the profitable commercial implementation of the technology. By its very nature, new and untried technology is inherently risky and UWA does not wish to lose its technology in the legal and financial entanglements of company liquidation. UWA licence agreements complement that strategy by providing as standard a provision by which the agreement terminates should any licensee enter administration or receivership or resolve to wind up. Further, as a public body in receipt of public funds, UWA has a higher duty to ensure that its resources are used to the best effect for both itself and the wider community.

(d)  Joint ownership of intellectual property is not desirable for a number of different reasons. For example patentable inventions, which are jointly owned, may be freely used by either of the owners. Obviously, UWA is not in a position to be a manufacturer of goods or a user of industrial processes in its own right. That therefore leaves it in an unequal position in being able to reap the rewards from the patent itself. Further, the nature of joint ownership also requires that any licence to be granted by either of the owners must be granted with the consent of both. There is generally no requirement that the consideration of consent must be reasonable. Therefore, joint ownership is often a way of putting off discussions as to the appropriate commercialisation path and merely leaves difficulties for a later day. Additionally, it potentially imposes stamp duty liabilities depending on the nature of the transactions which must be undertaken as a result of joint ownership.

(e)  With regard to ownership and ownership shares in the case of joint ownership, it is the usual intention of Commonwealth and State funded research projects that the contribution of the Government is to be counted in any calculation as the contribution of UWA.

(f)  While some intellectual property is the mere result of a continuous and diligent path of research (writing software, for example), other intellectual property requires a sustained effort often down non-obvious paths, which may result in patentable inventions. While inventions are often hoped for, encouraged and desirable, they are an additional outcome of a successful research programme. In a sense, a patent is a bonus to any research project. Therefore, UWA will not accede to the argument that merely because its basic costs of undertaking the project have been covered that it should hand over 100% of the research results no matter what they are. To assume that UWA can act as a research machine in which cash is inserted at one end, the handle turned, and successful results come out of the other is to make fundamental mistakes about the nature of research.
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