Allocating the Rights in Intellectual Property in Australian Universities: An Overview of Current Practices
| Author | Ann L Monotti |
| DOI | 10.22145/flr.27.3.4 |
| Published date | 01 September 1999 |
| Date | 01 September 1999 |
| Subject Matter | Article |
ALLOCATING
THE
RIGHTS
IN
INTELLECTUAL
PROPERTY
IN
AUSTRALIAN UNIVERSITIES:
AN
OVERVIEW
OF
CURRENT PRACTICES
Ann
L
Monotti*
INTRODUCTION
"Universities
occupy
a
central
position
in a
national innovation system"
1
and.
the
benefits
of
their
research
extend
to
having
better
educated
students,
developing
a
body
of
knowledge
and
effective
transfer
of
that
knowledge
to
users.
This
knowledge
may
generate
intellectual
property
with,
not
only
educational
and
research
value
for
the
university
itself,
but
also
commercial
or
applied
potential.
Australian
universities
recognise
the
need
to
protect,
allocate
and
exploit these
intellectual
property
rights
and
have
policies or
statutes
2
that
govern
the
management
of
their intellectual
property
resources.
They
face
at
least three
challenges in the
process.
The
first
is
to
formulate
a
policy
that
clarifies
ownership
and
limits
misunderstandings
between
the
originators
of
intellectual
property
and
the
university3
Establishing
the
appropriate
mix
of
rights
is
fundamental
to
the
success
of
their
intellectual
property
management
programs
and
their
reputation.
If
they
claim
too
much, the originators
may
produce
an
inferior
product
or
seek
employment
or
studies
elsewhere.
If
they are too
generous
and
considerate
of
originators'
rights,
they
may
fail
to
provide adequate
protection
for
both
university
interests
and
those
of
the
wider
community.
The
second challenge
is
to
disseminate
the
terms
of
the
policy
effectively
within
the
university.
The
third
is
to
recognise
the
value
of
innovation
to
the
national
economy
and
to
exploit any
intellectual
property
consistently with
the
universities'
role.
4
,LLB
(Hons)
LLM
(Melb).
Senior
Lecturer,
Faculty
of
Law,
Monash
University.
The
author
thanks
Professor
Sam
Ricketson
for his
comments
on
an
earlier
draft
of
this
article.
The
article
represents
some
results
of
a
study funded
by
a
Monash
Research
Fund
Grant
and
a
two
year
ARC
Large
Grant.
The
Chief
investigators
are
Professor
Sam Ricketson,
Associate
Professor
Sue McNicol
and
the
author.
1
Industry
Commission,
Research
and
Development
(1995)
vol
1,
at
C3.2.
2
When
I
use
the
term
"intellectual
property
policy"
or
"policy"
throughout
the
article
it
is
to
be read
as
encompassing
either
an
intellectual
property
policy
or
statute.
3
University
of
New
South
Wales, Report
of
Working
Party
on
Intellectual Property:
a
Discussion
Paper
(1996).
4
Any
examination
of
the approaches
that
universities
take
to
commercial
exploitation
of
intellectual
property
is
outside
the
scope
of
this
paper.
See
S
Ricketson,
"Universities
and
Federal
Law
Review
This article's
primary
aim
is
to
compare
allocation
of
rights
in
university
intellectual
property
with
the
expectations
of
academic
originators.
This
requires
some
preliminary
discussion
of
the
legal
nature
of
rights
in
intellectual
property.
I
then
present
an
overview
of
some
objectives
that underlie
policies before
examining
one
in
detail,
namely,
the
distribution
of
rights
among
academic
originators
and
the
university.
Next,
I
evaluate
this
allocation
of
rights
and
draw
on
results
of
a
written
survey
for
assistance.
This
survey
was
sent
to
randomly
selected
members
of
academic
staff
5
across
all
faculties
in
all
campuses
6
of
Monash
University.
In
total,
I
sent
704
members
of
academic
staff
surveys'
in
September
1997.
1
received
3728
completed
surveys,
yielding
a
response
rate
of
53
per
cent.
9
Conclusions
can
be
drawn
only
about
those
academics who
answered the survey,
but
these
do
represent
over
half
the
university
academic
staff.
Finally,
I
consider
the
factors
that
undermine
the
effective
operation
of
the
policies.
In
an
earlier
Federal
Law
Review
article,
10
I
explored
issues concerning
ownership
of
copyright
in
traditional
scholarly
works
but
expressly
refrained
from
any
analysis
or
discussion
of
other
forms
of
intellectual
property.
The
focus
of
this
article
is
upon
distribution
of
rights
generally,
and
the
discussion
of
copyright
updates
and
expands
upon
the
material
presented
in
the earlier
work.
The
validity
of
university
claims,
the
power
of
a
university
to
alter
statutory
vesting
of
copyright
and
the
special
position
of
students
have
been
discussed
in
prior
publications.
1
1
ALLOCATING
THE
RIGHTS
-
THE
LEGAL
BACKGROUND
All
creative
products
of
academic staff may
be
within
the
scope
of
one
or
more
of
the
principal
forms
of
intellectual
property
protection:
patents
for
inventions,
trade
marks,
designs,
copyright,
circuit
layouts,
plant
breeders'
rights
and
confidential
information.
........................................................................................................................................................................................................
their
Exploitation
of
Intellectual
Property"
(1996)
8
Bond
LR 32
for
an
analysis
of
the
issues
that
arise.
5
From
an
original
sample
of
1500
records,
which
was
selected
from
the
31
March
1997
DEETYA
file,
704
records
of
academics with
FTE
of
5
or
greater
and
currently employed
at
Monash University were
selected.
6
Clayton,
Gippsland,
Parkville,
Peninsula,
Caulfield
and
Berwick.
7
A
second
copy
of
the
questionnaire
was
sent
three
weeks
after
the
original
mailing.
8
Of
this
number,
44
were professors,
45
associate
professors,
13
readers,
104
senior
lecturers,
127
lecturers
and
33
assistant
lecturers.
Of
these,
177
were
humanities
based
and
189
were
science
based.
Six
respondents
did
not
disclose
their
level of
appointment
or
their
discipline.
9
With
372
respondents
the
95
per
cent
confidence
interval
for
the percentages given
is
within
+/- 5
per
cent.
10
A
Monotti,
"Ownership
of
Copyright
in
Traditional
Literary
Works
within
Universities"
(1994) 22
F
L
Rev
340.
1
A
Monotti,
"Who
Owns
my
Research
and
Teaching
Materials?
My
University
or
Me?"
(1997)
19
Syd
LR
425;
A
Monotti,
"Universities
and
the
Validity
of
their
Claims to
Student
Intellectual
Property
Rights"
(1998)
24
Mon
ULR
145;
A
Monotti, "Power
to
Modify
the
Vesting
of
Copyright
in
an
Employer:
Subsection
35(3)
of
the
Copyright
Act
1968
(Cth),
and
Australian
Universities"
[1997]
19
EIPR
715.
Volume
27
Allocating
the
Rights
in
Intellectual
Property
in
Australian
Universities
A
common
factor
is
the
initial
vesting
of
ownership
in
the
originator.
12
Subject
to
contract,
employees
own
any
intellectual
property
they
create
outside
the
course
of
employment.
However,
if
creation
is
in
the
performance
of
duties
of
employment
or
in
the
course
of
employment, then ownership
vests
instead
in
the
employer.
13
Consequently,
in
the
absence
of
an
agreement
that
alters
the
above
principles
for
vesting,
an
Australian
university
will
own
only intellectual
property
that
its
employed
staff
create
in
pursuance
of
duties
of
employment)
14
The
owner
of
all
forms
of
intellectual
property,
whether
the
university
or
the
academic, has
exclusive
rights
for
a
limited
period
of
time.
1 5
The exercise
of
one
or
more
of
those
rights
without
permission
infringes the
exclusive
rights
of
the owner.
Consequently,
it
is
likely
to
be
important
for
the
non-owner
to
be
given
permission
to
perform
some
of
these
rights
in
relation
to
the
intellectual
property.
16
This
may
be
through
a
specific
agreement'
7
in.
individual
circumstances. Alternatively,
it
may
be
through
the
vehicle
of
intellectual
property
statutes
and
policies.
According
to
my
Monash
survey,
the
most common
forms
of
intellectual
property
arising
from
research
are
copyright
works
and
other
subject
matter,
patentable
inventions
and
confidential information.
The
following
chart
sets
out
the responses
to
Q1
in
SECTION
A:
Research
&
Teaching:
"In
which
of
the
following
forms
do
you
produce
your
research
results
?
(Mark
all
that
apply)
"
12
A
Monotti,
"Who
Owns
my
Research
and
Teaching
Materials?
My
University or
Me?"
(1997)
19
Syd
LR 425
at
432-438
for
a
discussion
of
how
the
various
regimes
deal
with
original
ownership.
13
Plant
Breeder's
Rights
Act
1994
(Cth),
s
3(1)(c);
Designs
Act
1906
(Cth),
s
19(3);
Copyright
Act
1968
(Cth),
s 35(6)
(works);
Circuit
Layouts
Act
1989
(Cth),
s
16(2).
There
is
no
express
statutory
provision protecting
an employer's
right
to
an
invention
or
a
trade
mark
that
its
employee
creates. The
employer's
right
to
an
invention rests
upon
either
an
express
agreement
to
that
effect
with
the
employee
or
exists
because
of
the
application
of
the
general principles
of
employment
law. The
same
principles
would apply
in
respect
of
trade
marks.
A
Monotti,
above
n
12
at
432-438;
R
Dean,
The
Law
of
Trade
Secrets
(1990)
ch.
4;
J
McKeough
and
A
Stewart,
Intellectual
Property
in
Australia
(2nd
ed
1997)
at
13.1ff
and
19.12.
14
A
Monotti,
above
n
10.
15
Plant
Breeder's
Rights
Act
1994
(Cth),
s
11;
Copyright
Act
1968
(Cth),
s
31(1)
and
ss
85
and
86;
Circuit
Layouts
Act
1989
(Cth),
s
17(c)
and
s
8;
Patents
Act
1990
(Cth),
s
13(1)
and
Schedule
1;
Designs
Act
1906
(Cth),
ss
25
and
30;
'rade
Marks
Act
1995
(Cth),
s
20.
16
Leaving
aside confidential
information,
rights in
all
other
forms
of
intellectual
property are
personal property,
and
can
be
fragmented
in
any
number
of
ways,
either
by
assignment
or
licensing.
Technically,
if
confidential
information
is
not property,
there
is
nothing
to
assign.
Patents
Act
1990
(Cth),
s
13(2);
Designs
Act
1906
(Cth),
s
25C(1);
Plant
Breeder's Rights
Act
1994
(Cth),
s
20(1)
and
s
25(1);
Copyright
Act
1968
(Cth),
s
196(1);
Circuit
Layouts
Act
1989
(Cth), s
45(l);
Trade
Marks
Act
1995
(Cth),
s
21(1).
17
There
may
be
specific
agreements
for
the
production
of specific
teaching materials
in
multimedia
or
other
format.
They
are
also
common in
externally
funded
collaborative
research
and
development,
contract research
and
consultancy
arrangements.
Policy
terms
may
guide
the
negotiation
of
agreements
but
do
not
determine
the issues.
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