Intellectual property in research projects
All research contracts should address the ownership of any intellectual property arising from the research project, to avoid uncertainty or disagreement.
The ownership of intellectual property by staff and students of the University is governed by the University’s Intellectual Property Statute [PDF 191KB] and Intellectual Property Policy. In research projects involving external parties, the University may be required to grant ownership or licences of intellectual property to another party, which can affect the rights of staff and students.
Intellectual property (IP) refers to a broad range of legal rights which can include:
- copyright – rights in literary, dramatic, artistic, musical works, films, broadcasts and sound recordings and performer’s rights (note ‘literary’ can include, for example, articles, reports, notes, books, software, databases)
- patent – right granted for a new, inventive and useful device, substance, method or process
- trademarks – logo, name
- registered designs – unique look, shape, style of products
- circuit layouts – computer chip or semi-conductor chip designs
- plant breeders rights – new varieties of plants
- confidential information – this may fall within intellectual property, depending on how it is defined in the contract.
In a research contract, IP rights are generally categorised into project intellectual property, background intellectual property and third party intellectual property. For student intellectual property, see: Student Involvement.
Project intellectual property
Depending on how it is defined in the contract, project intellectual property usually refers to IP rights created in the course of or arising from the project. It may be referred to as project IP, project material, contract IP or agreement IP.
Project IP may include, for example, documents, reports, notes, recordings or inventions. If the definition is broad, it might also extend to information or materials not usually considered IP (like data or physical materials). It is important to consider the scope of project IP before agreeing to assign or licence any rights to it.
The University generally seeks to own intellectual property rights it creates, but the appropriate arrangement will depend on the circumstances and what is acceptable to the University and the researcher. In some circumstances, another party may require ownership, or the parties may agree to own all IP jointly. Each party may also agree to own IP separately according to contributions made or in some form of agreed share.
Note if IP is jointly owned, this will require the consent of the co-owner to exercise rights in that copyright work. For patent rights, particular obligations of co-ownership should be dealt with in any agreement.
Background and third party intellectual property
Background IP will depend on how it is defined in the contract, but usually refers to intellectual property created prior to or independently of the project. It may be referred to as existing or pre-existing intellectual property.
Background IP may include IP of the University, IP from another project, or IP created or owned by another party. A research contract should make clear that background IP will not be assigned or transferred under the contract. If any rights are to be granted to another party, the University should also ensure all proposed uses are acceptable.
If any background IP will be used or supplied for a research project, the University must check it has sufficient rights to use the IP for that purpose. The University may be required to warrant that the background IP does not infringe any other party’s rights.
It is important to consider if any other party has contributed to the creation of any background IP. For example, a former employer or another University, a collaborator, other supervisors, staff, students or volunteers may have an interest in that IP if they assisted in its creation.
If the background IP is owned by a third party and not the University, then the University must ensure it has a sufficient licence to use that IP for the project. This licence will need to extend to any proposed uses or sublicences given to any other parties to the research contract.
A party will need a licence to use intellectual property it does not own. The scope of the licence will need to be agreed by the parties and can be restricted in any number of ways.
If the University does not own but wishes to use project material owned by another party, it will need to obtain a licence from the other party. This will depend on the willingness of the other party to grant it. Generally, a licence in the research contract for publication and for research, education and teaching purposes is sufficient for most academic uses, but individual requirements may differ.
If the University is asked to grant a licence to another party, it should consider the scope of that licence, whether any restrictions need to be imposed, and what effect this may have on the University’s intended use of the IP, for example the ability to grant any other licences (see below).
The University should also consider who will own any improvements made to IP that has been licensed to another party.
A licence may be exclusive or non-exclusive. If a licence is exclusive, the grantee will have exclusive use of that IP for the agreed purpose, and the owner will not be able to grant a licence to any other party for that purpose.
Exclusive licences will significantly restrict the use of IP and should only be considered in exceptional circumstances. This may be requested in the context of commercialisation (see Commercialisation) or required by a publisher when agreeing to publish research results (see Publication). If an exclusive licence can be restricted, for example by territory or purpose, this should be considered to avoid unnecessary limitation of the University’s rights.
Where an exclusive licence is granted to another party for a purpose, another licence cannot be granted. For example, a researcher may not be able to licence the work to a publisher for publication.
Similarly, if a non-exclusive licence has already been granted to a third party, an exclusive licence cannot be granted to another party. For example, if a licence has been granted to another party to publish any project results, the researcher may be unable to grant an exclusive licence to a prospective publisher.
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.