Vice-Chancellor's Operational Directive – Research-Generated Intellectual Property and Commercialisation

1. Background and context

The UTS Intellectual Property Policy (2006) defines Intellectual Property (IP) formally in terms of 'statutory and other property rights … protected by Australian law and international agreements…'. More broadly, intellectual property refers to products of the mind (intellect, imagination, creativity) including copyright property such as literary or artistic works, and ideational property, such as patents, appellations of origin, business methods, and industrial processes.

The creation of IP, its good management and successful commercialisation may result in significant benefits shared between the inventors (staff and students), their faculties and the University generally. Benefits may include revenue, continued research or R&D funding and support, valued relationships with industry, government and community organisations, enhanced reputation for researchers and the University, and our contribution of economic, social, cultural and environmental benefits to the broader community.

At the same time, management and commercialisation of IP can involve considerable financial and reputational risk to the University, and these risks may need to be managed for many years after the initial IP disclosure is made by its creators.

Consequently the University's management of IP has two key objectives:

• to maximise the benefits; and
• to identify and manage the risks.

Achieving these objectives requires effective partnerships between:

• IP creators, who are staff, students and others connected to the University, the professional legal, commercial and research management staff;
• the inventors' faculties and divisions (at a minimum, the Research and Innovation Office, a division of the Deputy Vice-Chancellor (Research), and the Division of the Deputy Vice-Chancellor (External Relations) and Registrar);
• University governance (especially the Commercial Activities Committee of Council) and management; and
• external partners, including industry, business, professional, government and community partners.

2. Purpose and scope

The UTS Intellectual Property Policy (IP Policy), approved by the UTS Council, sets out the principles for ownership, management, commercialisation, rights and responsibilities in relation to UTS intellectual property generated by UTS staff, students and others connected to the University. In addition to the Intellectual Property Policy (2006), this Directive should be read in conjunction with Council's Directives for UTS Commercial Activities (2005) and the UTS Register of Standing Delegations.

This Directive sets out key administrative decisions and processes for implementing the IP Policy in relation to commercialising IP that is created through research.

This Directive applies to all staff, including casual employees, adjunct, visiting and honorary appointees, and to all students. It also applies to consultants, conjoint appointees, and other persons generating Intellectual Property in collaboration with University staff or students, or engaged by the University to undertake a specific activity, and it may also apply from time to time to other persons by agreement.

In addition to research-generated IP, the IP Policy also covers course and educational materials and creative and scholarly works. Guidance on the implementation of the Policy in relation to course and educational materials should be sought from the Deputy Vice-Chancellor (Teaching, Learning and Equity). Guidance on the implementation of the Policy in relation to creative and scholarly works should be sought from the Deputy Vice-Chancellor (Research).

3. Definitions

See section 3 of the Intellectual Property Policy.

Commercial activity means an activity defined as such under the Council's Directives for UTS Commercial Activities (2005);

Commercialisation Manager means the delegated UTS representative nominated by the Deputy Vice Chancellor (Research) who is responsible for negotiating the commercial arrangements on behalf of the University.

DVC(R) means Deputy Vice-Chancellor (Research)

Intellectual Property Manager (IP Manager) means the delegated UTS representative nominated by the Deputy Vice-Chancellor (Research) who is responsible for managing the University's IP and trademark portfolio.

Research Commercialisation Committee refers to a committee that advises the Deputy Vice-Chancellor (Research) on research-related IP and commercialisation policies, directives and their implementation, as well as individual projects and matters. Its membership and terms of reference are at Appendix 1.

RIO means the UTS Research and Innovation Office.

Substantial contribution or use of University resources means UTS resources over and above those which would normally be made available to students and non staff members in the normal course of their work/study in any particular discipline area of the University and could include major equipment and/or facilities developed specifically to support research leading to creation of IP, or R&D activities to develop the IP. [Note the AVCC Principles that are relevant in this regard: Universities and their Students: Principles for the Provision of Education by Australian Universities (PDF)]

4. Vice-Chancellor's Statement

4.1 General Responsibilities of Staff, Students and Others Connected to UTS

4.1.1 Knowledge of UTS IP requirements

UTS staff have a responsibility to understand and comply with the IP Policy and this Directive.

Visiting, adjunct, honorary and conjoint appointees and those working with UTS under specific contract arrangements have a responsibility to understand and comply with the IP Policy, this Directive and any contract provisions for IP. Staff responsible for the engagement of such appointees and contracted persons have a responsibility to bring the IP Policy and Directive to their attention and ensure their understanding of the requirements prior to the engagement being finalised.

On enrolment all students undertake to comply with UTS policies and directives. Without in any way diminishing students' responsibilities, UTS faculties and staff should bring the IP Policy and Directives to the attention of students who are about to undertake studies that may lead to the creation of IP. Identifying intellectual property

Researchers, including students, should have, or develop, the ability to identify intellectual property created in the course of their work and, if in doubt, seek advice from mentors or supervisors or designated Commercialisation Managers in RIO.

Research communities and academic cultures are grounded in expert peer assessment of research outcomes. Academic contribution to this culture fosters the capacity to identify intellectual products.

4.1.2 University contracts

Under no circumstances should staff or students, other than those specifically authorised by the University, enter into binding negotiations, or come to agreement, with third parties for the commercialisation of research.

Negotiating contracts, commercial partnerships and other deals requires the professional expertise provided by RIO. In working with external partners to develop research projects and funding applications, researchers must not pre-empt the University's negotiation of contracts by intentionally or inadvertently making commitments on behalf on the University.

In preliminary discussions with potential industry partners, it is helpful if researchers comment that they are not authorised to make binding commitments on behalf of the University.

4.1.3 Confidentiality Agreements

A disclosure of Confidential Information may be necessary in the course of discussions or negotiations with an external partner, a potential licensee or an investor.

Staff members and students must not disclose confidential information relating to UTS IP without the approval of the RIO Director or a Commercialisation Manager. Such approval will normally require that a signed Confidentiality Agreement is in place. The signature of staff and students who are IP inventors or creators (staff and/or students) will be required as evidence of their agreement to abide by the conditions of the Agreement. Staff members and students must not receive Confidential Information from another person without that being preceded by a signed Confidentiality Agreement.

A Commercialisation Manager will negotiate the terms of Confidentiality Agreements. The DVC(R) has the delegated authority to sign Confidentiality Agreements relating to research-generated IP on behalf of the University.

4.1.4 Material Transfer Agreements

Staff members and students may not transfer University material relating to UTS IP without the approval of a Commercialisation Manager. Such approval will normally require that a signed Material Transfer Agreement is in place. The signature of staff and students who are IP inventors or creators (staff and/or students) will be required as evidence of their agreement to abide by the conditions of the Agreement. Staff members and students must not receive material from another party without that receipt being preceded by a signed Material Transfer Agreement.

A Commercialisation Manager will negotiate the terms of any Material Transfer Agreements. The DVC(R) has the delegated authority to sign Material Transfer Agreements on behalf of the University.

4.1.5 Conflict of Interest

UTS researchers must be aware of their responsibilities under the UTS Code of Conduct, including the requirement to advise their supervisors of any conflict of interest they have. Supervisors are required to advise the RIO Director or a Commercialisation Manager of the conflict of interest.

Conflicts of interest may arise when UTS staff members or students have an interest (either financially or other types of benefits) in a company or other entity which also has an interest in UTS or jointlyowned IP. A conflict of interest may also arise where a researcher is working on multiple projects with different external entities in relation to the same IP (background or other).

4.1.6 Record-keeping

All UTS researchers must keep appropriate records of their research. Maintaining good notes in relation to research may be important in substantiating inventorship and the date of invention during IP disputes. Staff, research students, research assistants and other researchers involved in projects that may create exploitable intellectual property should use notebooks (laboratory or other) to detail their work. Uniquely numbered laboratory notebooks are available from RIO.

4.1.7 Education Program

RIO will provide an education program for all staff and students, both undergraduate and postgraduate. The program will consist of quarterly seminars/workshops related to the following areas:

• The IP Policy and Directives;
• record keeping;
• engaging with industry and industry linked grants; and
• commercialisation of IP.

4.2 IP ownership

4.2.1 IP created by UTS staff

Under the UTS Intellectual Property Policy, the University, in most circumstances, asserts ownership of intellectual property created in the course of UTS employment.

Only with the approval of the DVC(R) will the University enter into an Agreement Not to Assert Ownership of IP that has commercial value.

4.2.2 IP created by UTS students

The UTS IP Policy makes the following provisions in relation to IP created by UTS students.

A student owns the copyright in his/her thesis. UTS asserts the right to retain the original or a copy of student work and requires students to grant the University a licence to make the work available for consultation, loan or copying.

A student and UTS will jointly own intellectual property in cases where the student's supervisor has contributed to the creation of intellectual property with the student.

The University asserts ownership of Intellectual Property created by students where:

• a student participates in a research team whose members include staff members and those staff have input into the IP development;
• the IP has been created with substantial contribution or use of University resources;
• the IP has been created as the result of pre-existing Intellectual Property owned by the University; and/or
• the IP has been created as a result of substantial funding provided or obtained by the University.

A student who participates in the creation of UTS IP will benefit from, and otherwise be subject to, the relevant provisions of the UTS IP Policy and this Directive in the same manner as other UTS staff.

If the University asserts ownership of student-created IP created, the student will be required to sign an Assignment Deed. In this instance, the University may agree to cover the costs of independent legal advice on the student's rights in relation to the UTS IP Policy. Students should ensure that they have this approval before committing to legal costs, and should talk to their supervisor or a Commercialisation Manager regarding UTS IP.

4.2.3 IP created by visiting, adjunct and conjoint appointees

Faculties seeking approval of visiting, adjunct and conjoint appointments should clarify institutional or company IP Policies applicable to appointees before they commence the appointment. A Background IP Statement should be provided to the Faculty Dean or Institute Director and lodged with RIO so that suitable IP arrangements can be made. Subjects to these arrangements, normally the University will assert ownership of the IP created by the appointee if such IP:

• involves substantial contribution or use of University resources;
• results from the use of pre-existing UTS IP;
• is generated by a team including members who are University employees; and/or
• is generated as a result of funding provided or obtained by the University.

If any of these circumstances apply, either on appointment or during the course of the appointment, RIO advice should be sought on whether or not the University will assert ownership of the IP. Appointment contract provisions relating to IP must be approved by the DVC(R) prior to the contract being signed.

The DVC(R) will decide whether or not the University will assert ownership of the IP. If the University does intend to assert ownership, a Commercialisation Manager will negotiate with the appointees and, where relevant, any other institution(s) which may also intend to assert IP ownership. The National Principles of IP Management from Public Institutions will apply when asserting ownership if not otherwise governed by an existing agreement.

4.2.4 IP created by consultants and others contracted to the University for specific purposes

The ownership of IP created by consultants and others contracted to the University for specific purposes will be determined under the provisions of the relevant contract. As a general principle, UTS will seek to own, or at least have extensive use rights for research of, any IP created under such contract arrangements.

4.3 Pre-existing Intellectual Property

Staff, students and others connected to UTS should disclose pre-existing intellectual property (often referred to as Background Intellectual Property (BIP)) that they bring to UTS or to a specific project. BIP Statements allow creators and the University to avoid future uncertainty and disputes.

A BIP Statement describes the know-how, knowledge, experience and understanding that a person or organisation already owns. Normally a BIP Statement comprises a brief description of the IP and may include a list of relevant publications, a description of work, and/or experience previously gained.

Disclosures of pre-existing intellectual property are made by completing and signing a Background Intellectual Property (BIP) Statement and submitting it to a Commercialisation Manager via the researcher's supervisor and Dean/Director. (See Appendix 2).

4.4 Summary of stages in IP protection and commercialisation

Significant commercial and legal expertise is involved in assessing the commercial potential of intellectual property, protecting it, and developing appropriate commercial pathways in the context of the University's commercialisation and risk management frameworks.

UTS provides professional commercial and legal expertise through RIO, the UTS Legal Office and the Commercial Director, to assess IP and promote its commercialisation for the benefit of its creators, their faculties and the University. The following sections set out the stages of this process. In summary, they are:

• Stage 1: identification and disclosure of IP;
• Stage 2: assessment of IP;
• Stage 3: Commercialisation Plan and IP management;
• Stage 4: University approval of commercial activities;
• Stage 5: execution of Commercialisation Plan including contracts; and
• Stage 6: on-going monitoring and review, including execution of exit strategies (as appropriate), revenue collection and distribution to creators and University (faculties and University general purposes).

4.5 Stage 1 – Identification and disclosure of IP

4.5.1 Disclosing Intellectual Property

IP created or developed from research conducted under a grant, UTS contract or in the course of UTS employment or studies must be disclosed to a Commercialisation Manager. The disclosure must be made as soon as its creator judges that IP has been created or developed. The disclosure must be made before research findings are published and/or IP is disclosed to any third party(ies).

In most instances, initial advice should be sought from the supervisor, Associate Deans (Research) (ADR) and/or Directors of UTS Research Centres and Institutes. Advice about IP disclosure may be sought from the IP Manager or a Commercialisation Manager.

Associate Deans (Research) and/or Directors of UTS Research Centres and Institutes have the responsibility to advise researchers and students to disclose IP and refer the creator(s) to RIO. If, within four weeks giving this advice and referral, ADRs or Directors believe that the IP disclosure may not have been made, they should inform RIO. RIO staff will contact researcher(s) or student(s) directly to discuss the IP and assess whether a written disclosure is required. If, in RIO's judgment, a written disclosure is required and not made, RIO will inform the DVC(R) who will refer the matter to the appropriate Dean and/or Director.

The DVC(R), RIO Director, Deans, ADRs, Directors of UTS Research Centres and Institutes, researchers' academic supervisors, and students' supervisors or course coordinators may require researchers or students to make a written disclosure.

4.5.2 Agreeing on the relative contribution of researchers to IP creation

Staff and students involved in groups, teams, joint projects and collaborative research should identify, agree on and record the specific contributions to the IP creation made by each of the members of the group. The agreed relative contributions should be recorded on the IP Disclosure or in subsequent Assignment Deeds.

If gaining agreement is difficult, assistance and advice should be sought as early as possible to minimise inter-personal conflict and create the most accurate record possible of the process of invention and relative contributions. Advice and support may be sought from a Commercialisation Manager, ADRs and/or Directors of UTS Centres and Institutes.

In the event that agreement cannot be reached, the DVC(R) will determine the distribution of commercialisation revenues to the IP creators. The DVC(R) may seek expert advice and/or refer the matter to the Research Commercialisation Committee for advice.

Once notified of the dispute, a process for its resolution will be initiated within 14 days of notification. If a matter is relatively straightforward, it should be resolved within 21 working days. More complex may take longer, in which case RIO will keep IP creators informed of progress.

4.6 Stage 2 – Assessment of IP

RIO will assess whether or not the disclosed IP has realisable commercial potential and advise the creators and the DVC(R). Where appropriate, RIO will also inform Deans, researchers' academic supervisors, and students' supervisors or course coordinators. A reasonable time for this assessment will be agreed between the researcher and the Commercialisation Manager.

To the extent that it is possible, and working closely with the IP creators, RIO will undertake an extensive review of the published and patented information ('prior art' search) to determine if the IP is novel. The search is not guaranteed to demonstrate conclusively whether or not the IP is novel, but it assists the University to decide whether or not to protect and commercialise the IP.

A preliminary commercial assessment will be made by a Commercialisation Manager. This assessment will be undertaken iteratively with the prior art search. If the preliminary information is positive, then a more extensive assessment will be made, often using a independent external expert from industry. If positive, the assessment will be provided to the DVC(R) with a recommendation to progress to Stage 3.

4.6.1 IP assessed as not having realisable commercial potential

IP assessed as not having commercial potential at this stage may warrant a new IP disclosure if further research development leads to the creation of IP that may have commercial value.

If the University does not proceed with commercialisation of IP:

• the University may negotiate with the creators/inventors on the assignment of the IP to them; in this case, the University will negotiate for compensation for the use or contribution of its facilities and resources to the development of the IP; this compensation may be in the form of a share of future commercialisation revenues realised by the creators/inventors; or
• in some cases, the University may continue to assert its ownership of the IP and prohibit its commercialisation on the basis that, in its reasonable judgement, the IP commercialisation is incompatible with the best interests of the University.

If the University has not agreed to assign ownership of IP to its creators, they are advised not to act on any assumption or expectation that the University will assign or licence its IP to any particular person or company, including a company set up by UTS staff and/or students.

The University will not impede scholarly publication or disclosure in relation to IP judged not to have realisable commercial value.

4.6.2 IP and Contractual Agreements

IP assessed as having commercial potential will be dealt with under the protection and commercialisation stages set out in clause 4.4 and further detailed below.

The management of IP created under contract or external grants must comply with the relevant clauses of the funding or contractual agreement, or the National Principles of Intellectual Property Management for Publicly Funded Research as appropriate.

Confidentiality in relation to IP may be critical for ensuring that the University meets its contractual obligations to industry partners and clients, and generally involves minimal cost to the University. A number of different ways may be used to protect IP with commercial potential before a Commercialisation Plan has been developed and approved. These will be discussed with the IP creators.

IP protection includes decisions on:

• how best to protect the Intellectual property (e.g. through patent, copyright, trademark or trade secret);
• the terms of disclosures of confidential information and the terms of Confidentiality Agreements; and
• the terms of provision of biological or other material (including data) to persons outside the University, and from others to the University, and the terms of Material (including data) Transfer Agreements.

Ongoing IP protection will be managed by the IP Manager. The RIO Director is authorised to take the necessary steps to protect IP, including requiring researchers' cooperation where necessary, subject to reasonable recourse to appeal to the DVC(R).

4.6.3 Disclosure and protection of IP created in non-commercial research activities

Some research projects and activities are classified as non-commercial under the Council's Directives for UTS Commercial Activities (2005), including:

• research funded under the Australian Research Council's Linkage Projects program;
• contract research;
• research conducted under sponsorship / strategic partnership arrangements;
• joint research centres with other universities (excluding Cooperative Research Centres);
• other funded and unfunded research projects; and
• unclassified research activities which the Deputy-Vice-Chancellor (Resources) determines are not commercial in relation to the criteria contained in the Council's Directives.

Nevertheless, IP that is created in the context of this research must be disclosed by creators, and may be protected by the University.

4.7 Stage 3 – Commercialisation Plan and IP Management

4.7.1 Commercialisation Plan

Where disclosed IP is assessed as having commercial potential, a Commercialisation Manager will develop a Commercialisation Plan.

The Commercialisation Plan will include confidentiality requirements, options for commercialisation pathways, risk assessment and management strategies, consideration of ethical issues, due diligence reports on potential or actual commercialisation partners, and, as appropriate, a business plan. The Commercialisation Plan will include a timeframe for implementation. The Commercialisation Plan will assist the University to decide whether, and through which channels, to register IP. The Plan will include a Publication and IP Management Strategy outlining how the objectives to commercialise IP and publish research outcomes are to be reconciled and accommodated. Where research is undertaken in collaboration with, or under contract to, an industry partner, the contracts may determine, or set limits on, how and when publication and IP protection may proceed.

The Plan will be developed in consultation with the relevant researcher(s), students and supervisors and, as appropriate, Deans, Associate Deans (Research) and/or Directors of UTS Research Centres and Institutes. Where appropriate, existing or potential industry partners will be consulted in the development of the Commercialisation Plan.

The Commercialisation Plan will make provisions for monitoring and review over the lifetime of UTS's involvement in the commercialisation of the IP.

UTS researchers are obliged to provide information to the Commercialisation Manager where this is necessary for the development of the Plans.

Where students are involved in the disclosed IP, the Plan should ensure that IP protection does not result in undue delay in submission of research theses to examination. It should indicate whether or not potential examiners may or will be required to sign a Confidentiality Agreement.

Where co-authorship and co-invention are involved, the Plan should represent an agreed strategy for co-operation amongst the researchers, authors and IP creators. Assessments, expert opinion and advice may be sought from external sources and UTS as required. A copy of the final Plan will be held by RIO.

The signatories to the Plan are:

• IP creators (researchers, students, supervisors) to indicate that they are in agreement with the Plan;
• the Dean or Institute Director, or his/her nominee, to indicate their endorsement; and
• the DVC(R) to approve the Plan.

4.8 Stage 4 – University approval of commercial activities

Under the UTS Council's Directives for UTS Commercial Activities, the following research commercialisation pathways are defined as commercial activities:

• licence agreements;
• start-up company;
• joint ventures; and
• Co-operative Research Centres.

The University's participation in these activities requires approval, as set out in Council's Directives for UTS Commercial Activities (2005).

4.9 Stage 5 – Execution of Commercialisation Plan

With the appropriate approvals in place, the Commercialisation Manager will implement the Commercialisation Plan. UTS will not normally commercialise IP directly by producing and selling products. The University to decide whether, and through which channels, to register IP. The three stages of a patent application correspond to escalating patent costs and the University may commit to applying for a Provisional Patent, but may need to secure external funding to go to PCT and National phase patents. In deciding whether or not a PCT or National Patent application will be made, the funding options will be identified. These may include an industry partner who will fund, or co-fund, the cost of the application. Normally, if external funding is not available the University is unlikely to make an application.

4.10 Stage 6 – Ongoing Monitoring and Review, and Exit Strategies

4.10.1 Ongoing monitoring and review of commercialisation activities

Provisions for monitoring and review over the lifetime of UTS's involvement in the commercialisation of the IP are set out in the Commercialisation Plan. This includes reporting against milestones and/or performance indicators identified in the Plan, by the DVC(R) and/or Commercial Activities Committee, or in relevant contracts and agreements. The Commercialisation Plan will include an exit strategy. From time to time, the University will review its involvement and may decide to:

• maintain commercialisation support;
• accelerate that support;
• defer that support;
• contribute no further support; or
• exit the project.

4.10.2 A decision not to pursue IP commercialisation

Notwithstanding the provisions of the Commercialisation Plan, the University may determine not to proceed with commercialisation of IP at any point and if this is the case, the process set out in section 4.6.1 will be followed.

4.10.3 Execution of exit strategy

The Commercialisation Plan will include an exit strategy which may be triggered by the University. The approval of the Commercial Activities Committee (CAC) or Council is required for the execution of the exit strategy.

4.11 Distribution of net commercialisation revenues

If the University commercialises any Intellectual Property, it will distribute a share of net commercialisation revenues to creators/inventors that have a recognised interest in the Intellectual Property that has earned that revenue.

Net commercialisation revenues will be distributed in the following manner:

• one third to be shared among all the creators/inventors (both staff members and students);
• one third to the creator's/inventor's faculty or institute (distributed pro rata to two or more
• faculties or institutes as the case may be) for use as the Dean of the Faculty or Director of the Institute determines following consultation with staff and in line with the strategic objectives of the faculty or institute, but with the expectation that it will be used to foster research; and
• one third to the University for its general purposes, with the expectation that it will be first used to foster research and research commercialisation and support the University's Intellectual Property portfolio.

Under exceptional circumstances, and on the recommendation of the DVC(R), the University may alter the ratio of distribution of revenues.

4.11.1 Calculation of Net Commercialisation Revenue

Net commercialisation revenue available for distribution to creators/inventors is the gross commercialisation revenue received from the IP they have created, less commercialisation expenses. Commercialisation expenses does not include the indirect and overhead costs associated with research funding through grants and contracts. The DVC(R) will determine whether a particular revenue is a commercialisation revenue available for distribution to inventors.

4.11.2 Calculation of Net Commercialisation Revenue

Commercialisation expenses include but are not limited to:

• patenting expenses;
• legal expenses incurred on the project;
• external professionals expenses incurred on the project;
• accountants' expenses for financial modelling;
• valuers' expenses;
• other consultants' expenses (commercialisation consultants, negotiators, and so on);
• travel and accommodation expenses incurred on the project by any person (whether staff member, or an external professional);
• taxation paid by the University, if any; and;
• assigned costs by RIO for UTS Commercialisation expenses.

RIO will determine whether a particular expense is a commercialisation expense.

4.11.3 Equity

As a general rule, the University will hold the shares in any start-up company. Distribution of benefits to creators and inventors will be undertaken in accordance with the IP Policy and this Directive (this section 4.9). Benefits to be distributed include dividend income and proceeds from the sale of shares. No distribution is due to creators and inventors just by virtue of the University owning shares in a company.

5. Authorities and accountabilities

The Deputy Vice-Chancellor (Research) is responsible for the implementation of this Directive including providing education to the University community about its operation.

The Deputy Vice-Chancellor (Research) or nominee is responsible for authorising corrective action to rectify breaches of the Directive and must report any activities that may involve corrupt conduct, maladministration or serious and substantial waste of public funds to the Vice-Chancellor or the Director, Internal Audit as appropriate.

Breaches of the Directive will be dealt with in accordance with the relevant Enterprise Agreement, the Rules of the University relating to staff discipline and the Code of Conduct.

The Deputy Vice-Chancellor (Research) is responsible for reporting to Council, via the Commercial Activities Committee, on IP arrangements which are UTS commercial activities under Council's Directives for UTS Commercial Activities (2005).

6. Specification of related UTS and other relevant documentation

Related External Policies/Guidelines

Copyright Act 1968 (Cth)

Trade Marks Act 1995 (Cth)

Patents Act 1990 (Cth)

Designs Act 2003 (Cth)

Circuit Layouts Act 1989 (Cth)

Plant Breeder's Rights Act 1994 (Cth)

AVCC Universities and their Students: Principles for the provisions of Education by Australian Universities

National Principles of Intellectual Property Management for Publicly Funded Research, 2001

Related Internal Policies/Guidelines

Intellectual Property Policy

Risk Management Policy

Council's Directives for UTS Commercial Activities

Staff Code of Conduct

Contract of Employment

Enterprise Bargaining Agreement

Outside Work Policy and Vice-Chancellor's Directive

Vice-Chancellor's Directive on University Consulting

Policy on Handling Staff Grievances

Supervisor Guidelines on Handling Staff Grievances

Policy on Handling Student Complaints

Procedures for Managers Handling Student Complaints

7. Approval and revisions tables

7.1 Approval

7.2 Revision/modification history

Appendix 1. Research commercialisation committee

Membership

• Director of the Research and Innovation Office, who chairs the committee;
• up to two academic staff, appointed by the Deputy Vice-Chancellor (Research).

A Commercialisation Manager, appointed by the RIO Director, will serve as Executive Officer.

The Research Commercialisation Committee may seek advice, including from external experts, on specific projects or issues, as determined by the Chair of the Committee.

Terms of Reference

The Committee will advise the Deputy Vice-Chancellor (Research) on:

• Intellectual Property Policy, Directives, implementation and breaches;
• education of staff and students in relation to the University's Intellectual Property Policy, Directives and implementation;
• specific commercialisation projects, on which its advice is requested by the RIO Director or DVC(R) on such matters as:
  • IP ownership and relative contribution of researchers to IP creation;
  • Commercialisation Plans and IP management;
  • proposed changes to approved licensing arrangements;
  • possible dilution of equity, IPO listings and exit strategies in start-up companies in
• which the University holds equity; and any other matters referred to it by the Deputy Vice-Chancellor (Research).

Appendix 2. Background Intellectual Property (BIP) Statement

A BIP statement is a description of the intellectual property you bring with you to the project. It is the know-how, knowledge, experience and understanding you already possess. The BIP statement helps define the start point of the project by disclosing what it is you already have and are providing to undertake in the research. Normally a brief paragraph or two is sufficient. Some researchers include a list of relevant publications or description of work and experience they have previously undertaken. It is up to you how detailed you would like this to be.

The BIP is distinct from the Project IP. Project IP is all intellectual property that is created during the course of the project.

SAMPLE BACKGROUND INTELLECTUAL PROPERTY STATEMENT (BIP)

The existing intellectual property brought to the project by Simon SCHNAPP, Kate CRAKEL and Peter POPP of UTS is as follows:

1. knowledge of the application of a specific technique in a specific field in relation to certain classes of plants;
2. experience in interpreting certain kinds of impacts on certain classes of plants;
3. the design of this type of chambers for exposing certain classes of plants to certain kinds of effects and the methods for interpreting data collected with the chambers;
4. the design, use and interpretation of data from the use of this technique;
5. knowledge of certain kinds of processes in plants and how certain kinds of effects may impact on those; and
6. knowledge of the existing literature in this specific field or these fields.

Their Background Intellectual Property includes all their writings notes and articles including but not limited to books, journal articles, conference papers and work in progress. Some relevant research papers are listed.

SCHNAPP, CRAKEL & POPP (1998) Impact of this on that. Plant Bulletin. 36: 429-436.

POPP, SCHNAPP & CRAKEL (2002) A novel in situ technique for monitoring the impact of this on that. Plant Bulletin. 45: 100-106.

CRAKEL & POPP (2003) Short-term impact and recovery of photosynthesis after this impact. Plant Science. 76: 1-15.

SCHNAPP & POPP (2003) In situ impact of that on the photosynthesis of this plant. Plant Science Bulletin. 46: 1395-1407.

POPP (2004) Variations in sensitivity to copper and zinc amongst three isolated populations of certain plants. Journal of Experimental Work. 302: 63-83.