Explanatory Memorandum for IP Statute and Regulations
Explanatory Memorandum - Intellectual Property Statute
Section 1
This section contains all relevant definitions.
Attention is drawn to the definition of “course material”, “originator” and “student”.
“Course material” includes all forms of materials produced for teaching a course, that is, not only printed matter. It covers material produced for lectures, distance education and the Open Learning program.
“Originator” is defined in terms of the person who creates intellectual property (IP). This could be a member of the teaching or general staff, a student, Emeritus Professor, visiting Professor, or Fellow.
“Student” is defined for the purposes of the IP legislation as special provisions are required for the University to assert ownership of material created by students. This stems from the Federal Copyright Act which restricts ambit claims of ownership to employers over material created in the course of employment by employees.
Section 2
This section deals with ownership of IP.
Subsection 2.1 makes an ambit claim for University ownership in IP produced by originators (other than students) who are University employed, have University support or use University owned background IP. The most obvious examples of the ambit claim are course materials and inventions. Subsection 2.2 requires students to assign only intellectual property prescribed under the regulations. These provisions reflect the University’s concern that as far as possible students on scholarships do not incur taxation disadvantages. It is proposed, after discussion with the sub-committee of the Monash Postgraduate Association, if the recent controversial taxation ruling proceeds, students’ rights could be protected in individual cases through an assignment and exclusive licence back process of relevant IP. It would of course be the student’s option to do this. A full account of the implications of the University’s IP legislation for students and supervisors will be set out in the PhD and EdD Handbook. Attention will need to be given to enrolment documentation to ensure that the IP legislation is brought to the students’ attention and is made a condition of enrolment. Similarly, the terms of the Statute should be reflected in contractual arrangements with non-employees who draw on background IP owned by the University.
Both provisions are subject to subsection 2.3 which provides the flexibility to enter into agreements about ownership, licensing and exploitation of IP. An agreement of this kind prevails over the Statute.
Revenue distribution flowing from commercialisation of IP in patents will continue to be governed by the University’s policy outlined in the Statement on Patent Revenue Distribution.
The ambit claim is also subject to section 2.5 which vests copyright in an originator for works prescribed by the regulations. These works (for detail see Explanatory Memorandum on the Regulations) are, generally speaking, academic works which reflect individual academic endeavour which is not the subject of specific funding or other University support. Journal articles, conference papers, textbooks and computer programs which fit this description are examples.
Copyright arises automatically through the creation of the relevant original subject matter and in Australia there is no requirement or avenue for registration of it. Copyright attaches to the developing stages of a work as well as to the completed work. Interim stages would include a report of an experiment, a diagram or chapter of a novel.
Royalty-free licences to use IP are granted by operation of the Statute to whichever of the University and originator is not the owner, under subsections 2.6 and 2.7 respectively. Licences granted to academic staff limit the use of IP to their own teaching and research purposes. This does not, of course, permit the publishing for profit by an originator nor the publishing for profit or otherwise by any other institution to which the originator transfers.
In addition, under subsection 2.8, the originator of a copyright program owned by the University may publish information about the program with the approval of the Intellectual Property Officer who must preserve the opportunity for appropriate academic discussion wherever possible.
Subsection 2.9 provides an administrative mechanism by which the Intellectual Property Officer is able to control the disclosure, including publication, and use of IP where this would jeopardise matters such as a patent application in which the University or another party has any interest, e.g. a Co-operative Research Centre (CRC). Accordingly, student theses and various journal articles will be subject to this provision, but publication of student theses may not be delayed beyond a timeframe set by the PhD and Scholarships Committee. The Intellectual Property Officer must consult with appropriate academic staff before prohibiting the disclosure or use of intellectual property.
To ensure maximum flexibility is maintained in setting the parameters of which works may be “exempted”, the Statute provides for proscription to occur through IP Officer determination rather than the more rigid system of legislative proscription.
Subsection 2.13 provides protection against abuse of University rights in IP.
Subsections 2.14 and 2.15 recognise that the University has an obligation to ensure author agreement regarding acknowledgement of authorship where a work owned by the University is published, sold or licensed.
Subsection 2.16 ensures that inventors and co-inventors will be acknowledged in documentation referring to the invention.
Section 3
This section imposes a duty on originators to report IP details if required by the Intellectual Property Committee to do so.
Section 4
This provision sets up an Intellectual Property Committee whose composition is determined under the Regulations. This Committee is a committee of Council.
Section 5
This provision establishes the office of Intellectual Property Officer. It is appropriate that this position be of senior executive status to reflect University policy on any decision made in relation to IP. Accordingly, the Officer should be the DVC(R) .
Section 6
This provision provides for an appeals process from decisions of the Intellectual Property Officer.
Section 7
This provision contains the regulation making powers and the promulgation requirements.
Section 8
This provision repeals the Discoveries, Inventions and Patents Statute from the day the new Statute comes into force.
Explanatory Memorandum - Intellectual Property Regulations
Section 1
This provision identifies the Intellectual Property Statute as the Principal Statute, which makes for easy reference throughout the Regulations.
Section 2
Subsection 2.1 prescribes the copyright works created by staff members in which ownership is waived by the University, and which consequently vest in the originator. These works must be primarily scholarly or artistic works, e.g. journal articles, textbooks, conference papers, computer programs and paintings, unless they constitute course materials, their creation has been University supported (e.g. funded), the University owns the background intellectual property or ownership has been assigned by the originator.
It should be noted that copyright protection is given to computer programs as literary works, therefore these may be prescribed and that the definition of ‘course material’ includes computer programs.
Subsection 2.2 prescribes the intellectual property which is to be assigned by students. Other Intellectual Property will be retained by students, e.g. copyright in a thesis and an invention created without specific University contributions. The copyright works claimed are similar to those for which the University claims ownership when created by staff.
Section 3
This provision retains the existing definition of a patent worthy discovery or invention.
Section 4
This provision determines the composition and terms of reference of the Intellectual Property Committee. This Committee replaces the existing Patents Committee, expanding the current membership categories slightly by including the Intellectual Property Officer as a member. The new Committee will be a Standing Committee of Council.
Section 5
This provision is a technical position regarding the proceedings of the Committee and duty to report annually to Council.
Sections 6 to 10
These provisions reproduce the existing Discoveries, Inventions and Patent Regulations.
Section 11
This provision revokes the Discoveries, Inventions and Patents Regulations on and from the date of promulgation of the Intellectual Property Regulations.
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