IP FAQs
These questions and answers have been compiled to assist you with common IP enquiries. Please click on each question for further information.
- What is “IP” or “intellectual property”?
- What does “commercialisation” mean in relation to IP?
- What happens if a student has an invention or a good idea (which might be an invention)?
- Why be an inventor?
- Is a supervisor automatically an inventor if a student invention is patented?
- How is a decision made on whether to patent or seek some other form of IP registration?
- An abstract written for a conference paper may include information on a potentially patentable invention. Will submission of the abstract be a problem for lodging a patent application?
- A group of higher degree students are about to give a seminar on their research work to an industry group. Will they be giving away their IP?
- Is it possible to put student’s artwork, generated during their studies, up on the School’s web site for promotional use?
- A PhD thesis may contain valuable IP that a student wishes to use further. As an example, a student may wish to write and publish a commercial book from research described in their thesis. How can the value of that book be protected if all the information is in the thesis? Would the university be entitled to a share of the proceeds of the book?
- If there is a patentable invention in a PhD thesis, will submitting the thesis to the university change the opportunity to patent?
- Will submission of an ethics approval document for a research project be a public disclosure of the work that will prevent protection of the Intellectual Property from the project?
- Why are laboratory notebooks so important for keeping records of research?
- What happens to IP when a staff member leaves their current employer?
- Notes
What is “IP” or “intellectual property”?
The terms IP and intellectual property are shorthand terms which refer to a range of rights in inventions, designs or other matter which results from the mind or intellectual effort. Not every idea is capable of legal protection however. IP or intellectual property rights which can be protected by the law in Australia include:
- patents (for new inventions for products or processes);
- trade marks (for brands including words, phrases, logos and pictures, to distinguish the goods and services of one trader from those of another. An example of a trade mark is often a University logo);
- designs (for the shape or appearance of an item);
- copyright (for original material in literary, artistic, dramatic or musical works, video, multimedia and computer programs);
- circuit layout rights;
- plant breeder's rights; and
- confidentiality/trade secrets including know-how and other confidential or proprietary information (this is usually protected through contract).
What does “commercialisation” mean in relation to IP?
In a University setting, commercialisation is about utilising University (staff and student) generated inventions to enable the most effective impact of the invention while generating sufficient income to cover costs and ideally contribute to ongoing research. In broad terms it means taking an invention from the lab and bringing it to the wider market.
The University has an interest in innovation for economic benefit to increase research levels and to encourage links with industry. It cannot fund protection of inventions which are unlikely to provide sufficient income to be commercially viable.
Intellectual Property Policies at most Universities in Australia recognise Inventors with a share of the profits from commercialisation of an invention, after commercialisation and patent costs are covered, in order to encourage innovation.
What happens if a student has an invention or a good idea (which might be an invention)?
In the first instance, a student should talk with their supervisor and/or Head of School for advice.
Under most Australian University IP Policies students generally own copyright in new material which they create arising from their studies. A student may also be entitled to be an inventor under a patent for inventions they create whilst studying however they may not be sole inventors. Supervisors, other staff and students may have contributed significantly to the invention and this needs to be established.
If a student works on a commercially funded project, IP rights will usually be assigned to the University at which they are studying in which case the student is an inventor but does not own the IP.
Why be an inventor?
In addition to a valuable addition to your resume, both staff and students may be granted a right to a share of the commercialisation profits generated by the invention, in accordance with the relevant University IP Policy. Commercialisation of inventions is generally more successful if the inventor is engaged in the process.
Is a supervisor automatically an inventor if a student invention is patented?
A university does not make the rules for who is an inventor. This is different to deciding who is an author on a paper.
The definition of who is an inventor is set by patent law and is outside the remit of the University. The inventor(s) must have contributed an inventive step to the invention. Task setting or supervision in itself is not enough to be an inventor. However it is not unusual for a supervisor to be a co-inventor on a patent.
Well kept notes of meetings and properly kept bound laboratory note books can be very useful in determining disputed inventorship.
How is a decision made on whether to patent or seek some other form of IP registration?
The first question is whether there is something that could and should be patented. It may be something that is better covered by a design registration or it may not need to be formally registered at all, such as with copyright. Sometimes what appears to be a great idea may not even be able to be protected.
Is the invention novel, useful and likely to have commercial potential? A quick search in the literature, in patent databases and even on Google will give a good idea of how unique an invention is.
Disclosure of an invention outside of the University will severely limit patentability.
If an invention satisfies these criteria then it may be patentable. Consideration is required to balance the urgency of publication and potential public good of a speedy publication vs achieving an impact in society through commercialisation of the invention and capturing the commercial benefits for the University and yourself.
IP Policy often encourages staff to protect appropriate IP, so a decision in collaboration with line management is advised.
An abstract written for a conference paper may include information on a potentially patentable invention. Will submission of the abstract be a problem for lodging a patent application?
Sending in an abstract to any conference or public seminar is considered a “public disclosure” which should be avoided if there is a possibility of patenting an invention. In the first instance contact your University technology transfer office which is usually available for advice on the options. These may vary from small changes in the abstract to an urgent provisional patent filing.
A group of higher degree students are about to give a seminar on their research work to an industry group. Will they be giving away their IP?
Higher degree students at Australian universities generally own their IP. Disclosure to the public, whether industry or not, will affect their opportunities to protect IP.
If potentially protectable (commercial) topics cannot be reasonably left out of the talk, then non-disclosure agreements (NDAs) need to be signed by the industry people. This is not an unusual situation and should not provide a problem. A university technology transfer office can generally provide the NDA paperwork. It is preferable to give as much notice as possible to set up the paperwork.
Is it possible to put student’s artwork, generated during their studies, up on the School’s web site for promotional use?
Yes it can be done. Because a student owns the copyright in the artwork this must be freely and voluntarily assigned or licensed to the University. Simple agreement documents for this can be formulated by a technology transfer office.
A PhD thesis may contain valuable IP that a student wishes to use further. As an example, a student may wish to write and publish a commercial book from research described in their thesis. How can the value of that book be protected if all the information is in the thesis? Would the university be entitled to a share of the proceeds of the book?
As a general rule, a student owns the copyright in their thesis.
Thesis content can be protected by restricting access to a thesis when it is lodged with the library.
As the student is the owner of the copyright and thesis content, the University would not normally expect to benefit from sales of a book written from the thesis. An exception might be if the student asked for & received commercialisation help with producing the book.
If there is a patentable invention in a PhD thesis, will submitting the thesis to the university change the opportunity to patent?
Access to a thesis may be restricted when submitting. The highest level of restriction should be chosen. In doing this, no public disclosure occurs when the thesis is submitted and the IP is not affected. It is important to talk to the PhD supervisor about who is examining the thesis and whether there are appropriate agreements in place with the examiners. Whether there may be additional inventors should also be discussed.
Will submission of an ethics approval document for a research project be a public disclosure of the work that will prevent protection of the Intellectual Property from the project?
Members who sit on ethics approval committees would generally sign an agreement which includes a confidentiality clause, so this should not constitute public disclosure or affect the project IP.
Why are laboratory notebooks so important for keeping records of research?
A properly completed laboratory notebook can be invaluable in proving inventorship and the date on which inventions were made. This is very important if anyone disputes ownership or the contribution to an inventive step.
What happens to IP when a staff member leaves their current employer?
Any assigned IP remains under assignment to the University where the IP was created. Any royalties due under the assignment will still be paid unless otherwise agreed.
Note
All IP matters are subject to federal legislation, state legislation and University policy.
If you are a member of UWS staff or studying at UWS and have any doubts or questions it is important to contact UWS Innovation who will assist and raise matters with the Office of the University Legal Counsel where appropriate.
