If a research project might result in commercially valuable intellectual property, the University should consider issues of commercialisation before entering the research contract, to help avoid any uncertainty or disagreement with another party later on.
Commercialisation, or ‘exploitation’, generally includes use for financial or commercial gain, but can be defined differently in a contract. The University’s Intellectual Property Statute [PDF 191KB] defines commercial exploitation more specifically as ‘the application, publication, development, use, assignment, licensing, sub-licensing, franchising, exploitation, sale or other utilisation of Intellectual Property for the purpose of generating financial or other commercial gains’.
Ownership and restrictions
The University has obligations to staff and students regarding any proceeds of commercial exploitation. This is governed by the Intellectual Property Statute [PDF 191KB] and Intellectual Property Policy. If ownership or rights to intellectual property are granted to an external party, the University will need to consider any restrictions this imposes on the University’s commercial rights and whether these are appropriate.
Different commercial arrangements are possible. For example, one party may own the intellectual property and grant commercialisation rights to another party, subject to an agreed share in any proceeds. Alternatively, the parties may agree to share or divide rights based on an agreed formula. If there are a number of parties, it might be suitable for one party to administer the commercialisation process on behalf of the others, and distribute any proceeds.
If restrictions on the University’s commercial rights are proposed, some issues to consider include:
- if the ownership and licensing arrangements are clear are appropriate
- any confidentiality restrictions and if they reasonable (e.g. for seeking patent protection)
- any obligation to notify another party of commercially valuable IP
- if any associated timeframes are appropriate
- if rights to background intellectual property are affected (including improvements to this)
- any limitation on publication, including the ability to offer an exclusive licence.
If you have any queries, please contact Legal Services for advice on 9479 2495.
This article provides general information only. It is not a complete or definitive statement of the law on the subject matter. Formal legal advice should be sought in relation to particular matters.