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					The University of Melbourne Melbourne Research Office

Guidelines relating to Student Intellectual Property
(Approved by Academic Board, Meeting 4/03, 25 September 2003)

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1.1

Introduction
The University‟s Intellectual Property Statute 14.1 – Intellectual Property – introduced significant changes to the way intellectual property created by the University‟s academic staff is to be owned and commercialised.1 The policy provides for ownership of any form of IP to be vested in the creating academic member, subject to one exception and certain compliance conditions. Through this policy and related administrative changes the University is seeking to enhance knowledge creation and transfer by increasing the rewards to creators to develop, protect and exploit IP for the benefit of Australia. With one exception, intellectual property developed by students is not affected by the Statute. The sole exception is where the student‟s research is related to a third party agreement with the University which governs the ownership of, and rights, to intellectual property. In such cases it is essential that the student is notified as early as possible of the terms of any such agreement (eg a research grant, sponsorship or collaborative research agreement), and gives informed consent to any signing over of rights they might otherwise expect prior to commencing work on the project. Students should seek independent advice about their rights (see section 4). Students should be aware that IP developed in the course of employment by the University, for example, as a tutor or lecturer, would be covered by the University's IP statute, and that, with due acknowledgement, the University can exploit such IP for its own educational purposes [see Section 14.1.5 (1) (a) of the Intellectual Property Statute].

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2.1

Protecting Student Interests
Many students make a major contribution to University research and scholarship. The University wishes to foster an environment that promotes and rewards the creativity of all researchers, academics and students alike. A student at Melbourne automatically owns any intellectual property they create pursuant to their studies unless IP ownership is governed in some way by a third party agreement. Students working on team-based projects, on collaborative projects with their supervisors or on ongoing programs in large research centres, such as CRCs, need however to be aware of the IP rights and responsibilities of all those involved. In many cases, considerable intellectual input from the supervisor has already been placed in developing a grant application before a research project commences. Although the University has no employment-based right to ownership of the work of a student, it does not necessarily mean that a student is the owner of all work relating to the research project at hand when there has been contribution from others to the project. In such cases the rights associated with joint contribution need to be respected. Further, the University wishes to ensure that it can, with due acknowledgment and having regard to integrity of authorship, use IP for its own teaching and non-commercial research purposes.

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For the full text of the Statute, see http://www.unimelb.edu.au/ExecServ/Statutes/s141.html

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Staff and students should ensure that IP matters are discussed and agreements well documented. Understandings and agreements reached will vary according to the particular circumstances. There are for example clear differences in the way IP is managed in different disciplines. The way in which a student carries out research may affect ownership of resulting intellectual property. In terms of the requirements of the Intellectual Property Statute related to third party or „specified‟ agreements, a good deal of the research carried out by students is not affected by such agreements; it is „unfettered‟ research in the sense that it is research which does not carry with it obligations to a particular external party. Students are however increasingly involved in research which is tied to contractual obligations. Such obligations arise in relation to other universities, government and industry. Most of this research is no longer „unfettered‟ research. In many cases the terms of those contracts affect staff and student IP. In some cases there are research contracts between the University and other organisations in which University staff have an affiliation or financial involvement. These situations must be managed in strict accordance with the Code of Conduct for Research (University Regulation 17.1.R8) provisions relating to Conflict of Interest.2 Examples of conflicts of interest in research include where a researcher or a body in which he or she has an affiliation or financial involvement may benefit directly or indirectly from the use of University resources.3 A particularly sensitive scenario relates to students being involved in contract research for “spinout” companies which have been created by University personnel to develop intellectual property owned, licensed or assigned to those personnel. The potential conflicts of interest that arise where the student‟s supervisor may be a Director of the “spinout” or have a financial interest in the spinout must be declared and carefully managed in accordance with the Code of Conduct for Research. In these situations, the student must be supervised by two or more supervisors, at least one of whom is not involved with the company. Consideration should be given to whether it is appropriate for the “spinout” to provide some funding to support the students, e.g. a travel or conference grant. All Heads of Department, Directors of Centres, project leaders and student supervisors (and especially those with an affiliation or financial interest in the organisation funding the research) should take special care with the issue of intellectual property management at all times, and especially (a) when deciding whether a particular project is suitable for student participation, (b) during initial discussions with students (and prospective students) and (c) when managing projects in which students are involved. The following are considered to be essential safeguards for externally funded or collaborative research projects involving students4: 1. Industry and government sometimes require broad and lengthy restrictions on publication of the results of a project. Such restrictions are often incompatible with student involvement. A limited embargo on publication may be acceptable, and then only so as to allow consideration of commercial potential and the pursuit of statutory protection such as a patent. The student should be allowed to seek consent to publication within any embargo period, with consent not to be unreasonably withheld. Protection of the student's right to publish is of paramount importance.

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See http://www.unimelb.edu.au/ExecServ/Statutes/r171r8.htm For further resources on the issue of Conflict of Interest, see http://www.unimelb.edu.au/research/admin/res.conduct/coi.html 4 This section draws in part on advice provided by the University of Queensland to its researchers (http://www.uq.edu.au/hupp)

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2. Industry and government will usually require that confidential information or trade secrets, which they introduce to the project, be kept confidential for long periods, or even indefinitely. If that is the case, consideration needs to be given to the impact that this would have on publication by the student. 3. Whatever the restrictions sought in respect of publication, no embargo is permissible with respect to assessment of the student's work. That is to say, the University will not agree to a party placing restrictions on the timing of the assessment or the inclusion of information or material, even if it supplied that information or material. A party can require the examiners of the student's work to sign undertakings to observe confidentiality in respect of confidential information/trade secrets. A request to view the thesis prior to submission to examiners for the purpose of assessing the need for undertakings of confidentiality is permissible, provided this review is completed in not more than one month. Under no circumstances can there be any implication that a third party can require the thesis to be altered for the purpose of examination. 4. Students retain ownership of the copyright in their theses. Accordingly, the student will control reproduction of the text. However, this should not be confused with ownership of the underlying intellectual property that may be referred to in the thesis. Copyright does not mean that, for example, a reference to a patented process amounts to a right to use the process; that right belongs to the owner of the patent and the owner's licensees. 5. Care must be taken to ensure that there is sufficient flexibility built into any arrangement with a sponsor in order to allow the student to complete his/her postgraduate studies, notwithstanding that the sponsor's goals may no longer be achievable. In other words, termination provisions should not prejudice the student. An assessment of the termination provisions should be made to determine whether the project is one in which it would be more appropriate to involve research assistants rather than students, or whether the department is in a position to provide for completion of the project if the termination provisions are acted upon by the sponsor and termination is through no fault of the student. 6. University policy on restricted access to a thesis is that in rare cases, the Academic Registrar may, after consultation with the President of the Board, direct that any thesis or work deposited be withheld from access to library users, or placed on restricted access, for a specific time. 7. Application may be made through the School of Graduate Studies in the first instance, for a thesis to be placed on restricted access in the Baillieu Library and the relevant departmental library where: (a) the thesis contains material which could have legal repercussions if published; or (b) the thesis contains material for which the author intends to apply for patent protection or there are other possible commercial benefits which would be prejudiced were the thesis to be made public immediately after acceptance; or (c) there are other exceptional circumstances and restricted access would not result in subverting the important academic principle of open access to research material.

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Restricted access is normally approved for up to one year in the first instance. Restriction for further periods may be approved on a further application.5 8. Where research higher degree students will be working on a project involving specific IP considerations related to external sponsorship or other types of third party agreement such as research agreements with “spinout” companies, it is critical that these be discussed between students and prospective supervisors. Heads of Department, Centre Directors or Associate Deans (Research/Graduate Studies) may need to be involved in such discussions. 9. So that they are not placed in a position of personal liability, wherever possible students should not be a party, in their own right, to a specified agreement. If a student is asked to sign an agreement, most typically a confidentiality agreement, they should first discuss the matter with their supervisor who should then consult the Melbourne Research and Innovation Office. There are exceptions to this preferred approach which include CRC scholarship agreements, where the University is a party to the same agreement and has given its prior endorsement to the terms of that agreement. 10. Where a student is already working on a project where it is proposed that the project IP be licensed, assigned or sold to establish a „spinout‟ company, the student must be involved in any such discussions and decision and their rights and interests protected. A student involved in such a situation should seek independent advice about his or her rights (see section 4). 2.8 It will be appropriate in many circumstances to involve the sponsor or external collaborator in discussions about the impact on a project of student involvement. That involvement may well be a critical feature of the project, well understood and accepted. On occasions however projects, including IP regimes, may need modification to accommodate students. In other instances it may be decided that a project is unsuitable for a student. It is the responsibility of the head of the research project, in conjunction with the student‟s supervisor(s) or the Head of Department in relation to “spinout” companies, to ensure that before the student is allowed to participate in the research project or sign any Student Researcher Deed: (a) that the student is provided with an explanation of the nature of any third party agreement, given a copy of that agreement (or portions thereof if certain sections of the agreement are confidential), and be able to raise any questions or concerns; (b) that the student is advised, prior to commencing any work on the project that they are required to assign his or her intellectual property rights in accordance with the Student Researcher Deed (available from Research Innovation and Development Group, Melbourne Research and Innovation Office); (c) that the student is advised that they may seek advice from the Melbourne Research and Innovation Office about the Deed or related agreements; (d) that the student is advised that he or she should seek independent advice about his or her own rights (this can be arranged through the Student Union or the University of Melbourne Postgraduate Association, UMPA, see www.umpa.unimelb.edu.au).

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See School of Graduate Studies PhD Handbook (http://www.unimelb.edu.au/research/sgs)

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Assignment of a student‟s intellectual property rights must not be a condition of enrolment in the University.

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3.1

Research Integrity
UMPA has advised that some of the students‟ concerns about IP relate to situations where students feel that their role in publications is not being appropriately recognized or where they feel their ideas are otherwise being used without due recognition. These are not so much matters of IP management as they are questions of ethical conduct. The University‟s Code of Conduct for Research sets out the obligations on all researchers to uphold the highest standards of integrity in research, and includes provisions on publication, recognition of contribution and complaints handling.6

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4.1

Sources of Further Advice or Assistance
The Melbourne Research and Innovation Office ensures that principal investigators and heads of department are aware and agree to the conditions of any R&D contract or grant prior to recommending that it be signed on behalf of the University by the Deputy Vice-Chancellor (Research). MRIO offers specialist advice on contractual arrangements and IP management, and has developed a Student Researcher Deed for all cases where students are required to formally assign their IP to the University pursuant to third party agreements. MRIO is able to provide information and advice to staff and students. See http://www.research.unimelb.edu.au/ridg/ip. Students should seek independent advice about his or her rights (this can be arranged through the Student Union or the University of Melbourne Postgraduate Association, UMPA, see www.umpa.unimelb.edu.au).

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4.3 In the case of projects funded by an organisation in which the student‟s supervisor has an affiliation or financial interest in the organisation funding the research, if the Student Union Legal Service recommends that the student obtain external legal advice, the reasonable cost of such advice must be met by the funding body, e.g. the “spinout” company.
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See http://www.unimelb.edu.au/ExecServ/Statutes/r171r8.html

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