Talk:IP Statute From LegalOfficeWiki 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  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 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  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. Retrieved from "http://legalwiki.anu.edu.au/index.php/Talk:IP_Statute" This page was last modified on 1 April 2009, at 23:11.