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Introduction to draft Intellectual Property Statute
[alternative title] Knowledge Dissemination and Intellectual Property Statute



Contents
     1 Introduction to draft Intellectual Property Statute
            1.1 Overall Scheme of the Statute
            1.2 Legal Effect
     2 THE AUSTRALIAN NATIONAL UNIVERSITY INTELLECTUAL PROPERTY
     STATUTE 2009: Explanatory Memorandum
            2.1 PART 1
                  2.1.1 Section 1 Name of Statute
                  2.1.2 Section 2 Commencement
                  2.1.3 Section 3 Object
            2.2 PART 2
                  2.2.1 Section 4 Dissemination of Knowledge
                  2.2.2 Section 5 Controlled Contract Terms
                  2.2.3 Section 6 Terms of Publication: Open Access
                  2.2.4 Section 7 Duties in Relation to Recording and Disclosing New Knowledge
            2.3 PART 3
                  2.3.1 Section 8 Intellectual Property Created by Employees
                  2.3.2 Section 9 Intellectual Property Created by Visitors
                  2.3.3 Section 10 Post Graduate Student Intellectual Property
                  2.3.4 Section 11 Background Intellectual Property
                  2.3.5 Section 12 Commercialisation and Protection of Intellectual Property by
                  the University
                  2.3.6 Section 13 Benefits of Commercialisation
                  2.3.7 Section 14 Sharing of Benefits Where There are Joint Creators of
                  Intellectual Property
                  2.3.8 Section 15 Assignment to Members Creating Intellectual Property
                  2.3.9 Section 16 University Intellectual Property and Third Party Interests
            2.4 PART 4 ACADEMIC LICENSING
                  2.4.1 Section 17 Academic Licence to Creating Members
                  2.4.2 Section 18 "Open Access" Licensing By Member
            2.5 PART 5 GENERAL
                  2.5.1 Section 19 Moral Rights
                  2.5.2 Section 20 Rights and Obligations of Joint Creators
                  2.5.3 Section 21 Basis and Effect of Statute
                  2.5.4 Section 22 Rules
                  2.5.5 Section 23 Interpretation
     3 Notes and References


Overall Scheme of the Statute
In considering the question of the protection and ownership of intellectual property within a
university context (and particularly the ANU context), a reasonable starting point is to ask what the
purpose of such property rights or privileges [1] may be.
The answer to this question is connected with the basic object of the University of creating and
disseminating knowledge through its teaching and research (an object set out in section 5(1) of the
Australian National University Act).

The mere holding of property rights or privileges in intellectual property does not guarantee, or even
necessarily promote this fundamental objective. We might start therefore by considering how
intellectual property rights or privileges may be placed within the context of this broader university
mission.

Addressing these fundamental questions of purpose explicitly, assists in ensuring any new Statute
does not impose on the University models that either do not fit well, or actually hinder, its scholarly
purpose. Within this broad framework the current draft of the Statute seeks to do a number of things:

      (a) explore and define the obligation of “members” of the University[2] in contributing to and
      support the creation and dissemination of knowledge;
      (b) create a scheme of intellectual property rights or privileges, but for the purpose of ensuring
      that new knowledge (or innovation) which emerges from scholarly endeavours at the
      University is effectively disseminated for the benefit of society;
      (c) establish an academic licensing scheme which ensures originators of scholarly materials
      are able to use and benefit from those materials as they are now, and which promotes the
      greater availability of those mateirals.

Where research at the University that may have a commercial value gives rise to intellectual property
which is vested in the University and which the University decides to commercialise, the originators
of that the intellectual property are provided with an entitlement to both shape the nature of and
share in the benefits of commercialisation. Although generally promoting “dissemination for the
benefit of society”, the Statute does not seek to mandate any particular “dissemination pathway”.
Dissemination pathways include public seminars and conference presentations, journal or other
publications, consultancy or commercialisation. Commercial pathways are particularly suited to
situations where external investment is required to further develop knowledge for a practical
application. The Statute also seeks to give scholars who create intellectual property a primary voice
in the determination of how it is best disseminated. An option available to scholars is to seek an
assignment to them of the intellectual property they create, so that they can commercialise it
themselves.

In many cases the development of new knowledge within the University will involve participation of
employees, visitors and post-graduate students of the University. In order to prevent a situation
arising where the dissemination of that knowledge is hindered, the University is able to acquire
intellectual property of post-graduate students and visitors, in which event those students/visitors
will be entitled to share in the benefits of commercialisation.

Fundamental to the dissemination of knowledge is its publication. The emergence of new
technologies make it possible for the University, either alone or in cooperation with others, to
publish knowledge through the internet and other communication vehicles. Scholarly works created
within the University are required to be made available for publicly accessible repositories so that
the knowledge does not become inaccessible due to its incorporation in subscriber only databases.
The adoption of this practice also has the effect of reducing the burden on the University of paying
third parties for access to material created within the University itself. This model is coupled with an
'opt out' scheme allowing members to request that a work not be placed in open access, if this may,
for instance, affect publication through other vehicles.

It will be noted that clause 4.3 of the Statute refers to ‘applicable codes of conduct and policies’.
Examples of these are the ANU Policy: Responsible Practice of Research and the NHMRC National
Statement of Ethical Conduct in Human Research. Issues of academic freedom and academic
responsibility are connected with the process of creation of knowledge, however it is not appropriate
to ‘freeze’ these concepts in statutory form, as they are continually evolving concepts that develop
over time through consultation within academic communities and with the general public. It is not
the intent of this Statute to place limitations on academic freedom or academic responsibility.

Legal Effect

An important issue (as evidenced by the recent court decisions) is to consider the manner in which
the University exercises legal rights or privileges to ownership of IP by force of subsidiary
legislation. In this respect careful consideration will be required of each proposed section. At a
general level, the entire Statute supports and is ancillary to the University’s function of the
advancement and dissemination of knowledge through research and teaching and is therefore framed
in those terms. (Section 5(1)) The Statute is founded on the general power of the University to do all
things “necessary or convenient” “for or in connection with” its functions, (Section 6 (1)) or which
are incidental to any of its powers, which include power:

      to commercially develop any discovery, invention or property (section 6(2)(b));
      to employ staff (section 6(2)(k));

It is also founded on the powers of the Council to make Statutes in general (section 50(1)) and its
powers:

      specifically concerning the employment of staff or appointees to positions of responsibility
      within the university, including the terms and conditions under which they are
      employed/appointed (section 50(2)(j) and (k));
      persons who are regarded as academic staff for the purposes of the Act (section 50(2)(d)),
      persons who are regarded as students for the purposes of the Act (section 50(2)(e)),
      the admission and enrolment of students (section 50(2)(l)),
      the control and investment of the property of the University (section 50(2)(y)); and
      the management, good government and discipline of the University (section 50(2)(a)).

Many of the provisions are stated at a high level of generality and will therefore require
implementing policies or rules.

Implementation of the Statute will require review of standard terms for new employment contracts /
terms of admission as student/terms of appointment as visitor, which explicitly reproduce the
substantive rights asserted by the University in this Statute. Such instruments can operate
independently of the provisions of the Statute.

THE AUSTRALIAN NATIONAL UNIVERSITY
INTELLECTUAL PROPERTY STATUTE 2009: Explanatory
Memorandum
The purpose of this Statute is to support the University’s function of advancement and transmission
of knowledge by undertaking research and teaching (section 5 (1) (a) of the Australian National
University Act (“the Act”)) and the commercial development of any discovery or invention arising
from research carried out at the University or utilising the property of the University (see section 6
(2)(b)). Accordingly this Statute elaborates principles regarding the dissemination of knowledge and
the determination of rights and obligations in respect of intellectual property.

The Statutes has five Parts.

Part 1 includes the purposes of the Statute.

Part 2 sets out provisions which foster the creation and dissemination of knowledge.

Part 3 sets out provisions determining ownership of intellectual property generated in connection
with the University and providing for benefit sharing.

Part 4 provides a regime of academic licensing of intellectual property.

Part 5 sets out provisions regarding moral rights, the effect of the Statute, powers to make rules, and
interpretation provisions.

PART 1

Section 1 Name of Statute

This section sets out the name of the Statute.

Section 2 Commencement

This section provides that the Statute commences when made.

Section 3 Object

This section sets out the objects of the Statute.

PART 2

Section 4 Dissemination of Knowledge

This Section sets out general principles concerning the creation and dissemination of knowledge.
The meaning of knowledge is defined broadly to capture knowledge “of” matters, knowledge of
“how” to achieve particular results, as well as creations and discoveries. This definition seeks to
encompass the breadth of outcomes which arise in the higher learning context. The section sets out
the role of Members in the dissemination of knowledge by means of teaching, research or
publication. It provides an obligation to conform with applicable codes of conduct and policies and
envisages that dissemination can occur through commercialisation.

Section 5 Controlled Contract Terms

This Section prevents the conclusion of contracts (except on the authority of the Vice Chancellor)
which have the effect of unreasonably restraining the dissemination of new knowledge or which may
enable an external party to control the academic output of scholars of the University.
Section 6 Terms of Publication: Open Access

This Section provides for the fostering of Open Access to scholarly works (including new software)
through deposit into publicly available repositories, and controls the entry into contracts which may
prevent scholarly works being made publicly available. The Section is based on an "opt out" model.

Section 7 Duties in Relation to Recording and Disclosing New Knowledge

This Section provides for the duty of members [3] to record intellectual property and to disclose it to
the University.

PART 3

This Part provides for the ownership, licensing and benefit sharing in respect of intellectual property.
In order to foster the creation of new knowledge and in exercise of the University’s powers in
respect of discoveries and inventions, the University either owns or is entitled to own intellectual
property created in connection with the University. For the same purposes, Members may receive
personal benefit pursuant to this Statute and may have intellectual property they have created with
the resources of the University, assigned to them.

Section 8 Intellectual Property Created by Employees

This section sets out the University’s title in respect of intellectual property created by staff.

Section 9 Intellectual Property Created by Visitors

This section sets out mechanisms for acquisition of intellectual property of visitors by the University,
benefit sharing with visitors and requirements for consultation and entry into individual
arrangements with visitors.

Section 10 Post Graduate Student Intellectual Property

This section sets out the University’s power to acquire intellectual property created by post graduate
students, benefit sharing where such intellectual property is acquired, consultation mechanisms and
mechanisms for entry into individual arrangements.

Section 11 Background Intellectual Property

This section provides for obligations of disclosure in respect of background intellectual property and
requirements in respect of use of background intellectual property in connection with work at the
University.

Section 12 Commercialisation and Protection of Intellectual Property by the University

This section outlines a general procedure for a proposal to be advanced to the University for the
protection or commercialisation of intellectual property, and the processes adopted by the University
in respect of such proposals.

Section 13 Benefits of Commercialisation

This section provides for the sharing of commercial benefits arising from intellectual property with
the members who participated in its creation.

Section 14 Sharing of Benefits Where There are Joint Creators of Intellectual Property

This section provides for the sharing of benefits between originators of intellectual property, where
there is more than one originator.

Section 15 Assignment to Members Creating Intellectual Property

This section provides a mechanism for intellectual property to be assigned back to the member who
created it and specifies terms applicable to such assignment.

Section 16 University Intellectual Property and Third Party Interests

This section specifies a duty not to act in a manner that would breach any term of a research or
commercialisation contract and to protect intellectual property subject of commercialisation from
disclosure. It provides for arrangements to facilitate the dissemination of intellectual property where
a University employee is engaged in research at another public research institution.

PART 4 ACADEMIC LICENSING

Section 17 Academic Licence to Creating Members

This section provides a licence to the creators of intellectual property to undertake non-commercial
research, teaching and publication in respect of intellectual property they have generated. Creators
are not required to account to the University in respect of any financial benefit they receive in
exercising the licence.

Section 18 "Open Access" Licensing By Member

This section, in respect of copyright matter, grants the creating member a licence to grant an open
access or open source licence in respect of the matter.

PART 5 GENERAL

Section 19 Moral Rights

This section provides that the Statute does not affect the moral rights of an author and that the
University, subject to the contrary determination of the Deputy Vice Chancellor, may not enter into
certain contracts having the effect of requiring a waiver of moral rights.

Section 20 Rights and Obligations of Joint Creators

This section specifies how the Statute is to be applied where new knowledge or intellectual property
is jointly created by more than one member.

Section 21 Basis and Effect of Statute

This section sets out the basis on which the Statute is adopted.

Section 22 Rules
This section provides for the making of rules pursuant to the Statute.

Section 23 Interpretation

This section provides for the interpretation of the Statute.

Notes and References
  1. ↑ The reference to ‘privilege’ in this context is intended to highlight that IP rights are not
     fundamental or intrinsic in the manner of say human rights. Rather intellectual property rights
     are functional and temporary: they are accorded by society to inventors and their organizations
     as a means of promoting the rapid diffusion of new innovation to society. This reciprocity is a
     central issue in developing an IP framework.
  2. ↑ Or more correctly the members of the scholarly community associated with the University.
  3. ↑ Members are defined to include employees, students and visitors.

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      This page was last modified on 1 April 2009, at 23:11.

				
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