Intellectual Property

While EAIP will be the University's preferred approach for the majority of Western Sydney University inventions, we will still protect and commercialise some IP as before. In offering our IP to selected partners for free, we plan to increase the take-up of our IP, accelerate the development of the invention, and encourage new collaborations and research engagement opportunities with industry partners.

It is a pre-condition of any agreement that the partner demonstrate the social and economic benefit that will occur as a result of the license and their progress against that plan will be monitored annually. There will of course also be a strong incentive for the partner to remain engaged with the University for the ongoing development of the IP given the inventor is necessarily the field leading expert in relation to the technology.

EAIP is essentially a risk-free development opportunity for business. EAIP means that Western Sydney University will become a partner of choice for industry; an open, progressive institution with whom they choose to conduct research.

Upon the creation or identification of any new IP, researchers are still asked to liaise with Business Services as early as possible and complete an invention disclosure form. Business Services will work with researchers to prepare a detailed profile of the technology, its pathway to market and ultimate commercial potential. In consultation with the researchers, a recommendation will then be made to the relevant Dean or Institute Director and the Pro Vice-Chancellor (Research) as to the appropriate model for the development and exploitation of the invention.

The terms IP and Intellectual Property 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. Intellectual property rights which can be protected by the law in Australia include:

• Patents (opens in a new window), for any device, substance, method or process that is new, inventive and useful;
• Trademarks (opens in a new window), for a letter, number, word, phrase, sound, smell, shape, logo, picture and/or aspect of packaging to distinguish goods and services (e.g. Western Sydney University logo)
• Designs (opens in a new window), for an unique shape, configuration, pattern or ornamentation of a product
• Plant breeder's rights (opens in a new window), for new varieties of plants that are distinct, uniform and stable
• Copyright (opens in a new window), a free and automatic protection for the original expression of ideas (but not the ideas themselves), e.g. books, films, music, sound recordings, newspapers, magazines, artwork, typographical arrangements, databases, media broadcasts, computer programs, compositions of other people's work such as academic journals or CD compilations
• Circuit layout rights (opens in a new window), for original layout designs for integrated circuits and computer chips
• Confidentiality/trade secrets (opens in a new window), including know-how and other confidential or proprietary information, most often protected through agreements

Creating IP does not necessarily mean that the inventor owns the rights to it. To own the IP rights, it needs to be protected. In Australia, IP Australia (opens in a new window) administers and maintains patents, trademarks, designs and plant breeder's rights.

At Western Sydney University, 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.

In most instances, inventors will be entitled to a 40% share of net profits from commercialisation, in accordance with the IP Policy.

In the first instance, a student should talk with their supervisor and/or Head of School for advice.

Students generally own copyright in new material which they create arising from their studies. Students 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, in which case the student is an inventor but does not own the IP.

In addition to a valuable addition to your résumé, 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.

The 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.

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.

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 us for advice on the options. These may vary from small changes in the abstract to an urgent provisional patent filing.

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. Research Services can generally provide the NDA paperwork. It is preferable to give as much notice as possible to set up the paperwork.

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 Research Services.

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 and received commercialisation help with producing the book.

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.

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.

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.

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.

A confidentiality agreement (CA), also called a confidential disclosure agreement (CDA), non-disclosure agreement (NDA), proprietary information agreement (PIA) or secrecy agreement (SA), is a legal contract between at least two parties (e.g. employees, business partners, business associates, research academics) that outlines confidential material, knowledge, trade secrets or non-public information that the parties wish to share with one another for certain purposes, but wish to restrict access to or by third parties. It is a contract through which the parties agree not to disclose information covered by the agreement.

CAs can be mutual, meaning both parties are restricted in their use of the materials provided, or they can restrict the use of material by a single party (unilateral).

Students at Western Sydney University generally retain ownership of intellectual property they create in the course of their study at Western Sydney University. In certain circumstances, students may be asked to assign their IP rights to the university, e.g. when working on a research project funded by an industry partner. In return, students will receive the same IP benefits as Western Sydney University employees. If students decline to assign their IP, they are offered alternative research projects to work on. At all times, students can obtain independent legal advice if they are uncertain of their rights relating to IP ownership. In all cases, students will retain ownership of copyright in their theses.

Inventors need to be mindful of public disclosure, as it can lead to loss of patent rights, particularly if the disclosure is "enabling", i.e. the disclosure provides enough information for a person "of ordinary skill in the art" to practice the invention.

A public disclosure is any non-confidential communication of an idea or invention. Disclosure may be in the form of conventional academic printed and online publications, abstracts, master's theses, PhD dissertations, presentations, poster sessions, proceedings, seminars, information posted online, emails, letters or proposals. Inventions can be discussed under a confidentiality agreement.

Activities that do not constitute public disclosure of an invention include meetings only attended by Western Sydney University employees or confidential submissions for publications prior to acceptance and publication.

Certain jurisdictions, including Australia, the United States, Japan and Canada, have grace periods (opens in a new window) of one form or another. The grace period allows for public disclosure of an invention (under certain conditions) without affecting the validity of a subsequent patent application. However, many countries, including most European countries, require "absolute" novelty, thus grace periods do not apply. It is always best practice to determine whether a patent application should be filed before any public disclosure is made.