Intellectual Property Rights Policy

Preamble

In the course of their research and intellectual activity, academic staff of the University create new knowledge, or 'intellectual property', which is shared widely through publication, and the University does not normally claim any ownership of the copyright of research publications and creative works. In the course of their work, staff also create materials specifically for teaching purposes, and in some cases, inventions. In these cases, the University claims the intellectual property rights so that it can use the intellectual property, and explore its future potential, for the mutual benefit of the creator, his or her department and the University at large. This policy expresses these practices in detail, and particularly addresses the rights, responsibilities and protections that are associated with intellectual property.

In providing a framework for protection of IPR the University is aware that a simple "one size fits all" approach may not be applicable in all circumstances. In particular, the University acknowledges that issues concerning rights to the traditional intellectual property of Maori may not be adequately covered by this policy and will be the subject of ongoing policy development.

The University has an obligation under section 162 of the Education Act 1989 to advance, disseminate, and assist the application of knowledge. The University of Waikato Charter expresses the University's mission to combine the creation of knowledge (through research, scholarship and creative works), with the dissemination of knowledge (through teaching, publication and performance).

The University therefore has a responsibility to make new knowledge arising from the research and other intellectual activity of its staff and students available to the wider community . This may be in the form of publications, conference and other public presentations, and in some cases, through the commercial development of products, processes or ideas.  

The University also has a responsibility to operate in accordance with sound financial principles, and to increase its income from non-public sources. In some cases, commercial benefit can be derived from new knowledge generated in the course of the University's activities. Through WaikatoLink Limited, the University aims to explore such commercial opportunities, for the benefit of the institution as a whole, as well as individual researchers and departments.

In so doing, the University recognises that it is its staff, working both as individuals and in groups, and often in collaboration with students, who are the original creators of new knowledge. The generic term for new knowledge arising from research and other intellectual activity is "intellectual property" (IP). The individual creators of IP, and the University, as their employer, have certain rights in relation to the IP that must be protected. The purpose of this policy is firstly to make explicit how those IP rights (IPR) are derived, and secondly to indicate ways in which those IPR might be protected.

Queries relating to this policy and its interpretation should be addressed to the Deputy Vice-Chancellor.

PART A — GENERAL

(1) In this policy,

Intellectual property (IP) means knowledge and creations arising from intellectual activity; it includes literary, artistic and scientific works, performances, sound recordings, broadcasts, inventions, scientific discoveries and industrial designs

Intellectual property rights (IPR) means the exclusive rights for a prescribed time and within a prescribed region to control how the IP may be used and what others may do with it

Copyright is a particular type of IP that exists in original works that are recorded, in writing or otherwise, as explained in the University's Copyright Guidelines for Staff and Students

Invention means IP in new processes and products, however that IP is expressed

Inventive contribution means a creative or conceptual contribution to the development of an invention, without which the invention would not have been created

Normal duties means the duties defined in the relevant staff member's employment agreement with the University of Waikato

(2) The terms IP, copyright and associated terms are explained in more detail in appendix 1 to this policy.

(1) Authority to make decisions on behalf of the University under this policy rests with the Deputy Vice-Chancellor.

(2) Authority to approve variations to this policy on a case by case basis rests with the Deputy Vice-Chancellor.

PART B — IP CREATED BY STAFF

(1) The University reserves the right to assert ownership of all IPR associated with material created by staff in the course of their normal duties as University employees, specifically for teaching purposes, whether the material is created on the staff member's initiative or at the express direction of the University.

(2) The IPR claimed by the University under this section includes, without limitation, copyright in any:

• resource materials
• multimedia presentations (e.g. films, tapes, videos, CDs, DVDs etc)
• computer programs.

(3) If a staff member has prepared teaching material for external publication (e.g. as a text book), the University will normally waive its ownership of copyright in favour of the author(s) but may attach conditions to such waiver.

(4) The University normally grants to the creator of the IP covered by this section, a non-transferable, perpetual, royalty-free licence to use that IP for teaching purposes but may attach conditions to such grant.

The University does not assert ownership of copyright of research publications (e.g. books, journal articles, conference papers) and creative works (e.g. art work, musical scores and recordings, computer programs), unless

(a)  the IP has been created specifically for teaching purposes (in which case section 3 applies); or

(b)  the IP has been created under an externally-funded research contract which provides that the University owns such IP.

Ownership of IPR associated with an externally-funded research contract is usually determined by the terms of the relevant contract . In the absence of any such provision the ownership of such IPR will be determined in accordance with the provisions of this policy.

The University asserts ownership of all IPR in respect of inventions made or created by staff in the course of their normal duties.

When a staff member has clearly identified that an invention or any other IP created in the course of his or her normal duties may have potential for commercialisation, he or she must report this to the relevant Chairperson and Dean, and the Dean must, as soon as possible, notify the IP Manager of WaikatoLink Limited. Likewise, when the IP Manager of WaikatoLink has reason to believe that an invention or any other IP created in the course of a staff member's normal duties may have potential for commercialisation he or she must, as soon as possible, report this to the staff member's Chairperson and Dean.

(1)  WaikatoLink Limited, which is a company wholly-owned by the University, is responsible, in consultation with the University, for the commercialisation of IP and the protection of the associated IPR.

(2) As soon as it is made aware of the potential to commercialise IP, WaikatoLink Ltd will with all due expedition carry out a feasibility study of its potential value and discuss any commercialisation plans with the creator(s) of the IP.

(3) Feasibility studies conducted under subsection (2) above will take account of any pre-existing contractual arrangements that may apply in relation to externally funded research or research conducted under collaborative arrangements with other organisations.

(4) Decisions about the commercialisation of IP and the release of confidential information relating to it are the responsibility of WaikatoLink Limited, which may request the formal transfer to it of all registrable IP (patents, trade marks and registered designs) owned by the University.

(5) All information relating to the protection and commercialisation of University IP must be treated as confidential until it is released by WaikatoLink Limited.

(1) The University has developed policies that allow creators of IP to share in any income arising from its commercialisation. Policies and mechanisms for the sharing of such income are set down in the University's Policy on Sharing of Benefits from Commercialisation of Intellectual Property , which is provided as appendix 2 to this policy.

(2) The University seeks reimbursement for any legal costs or expenses incurred by it in relation to the research leading to the commercialisation of IP and in relation to the protection of IPR.

IPR derived from privately undertaken activities (i.e. unrelated to a staff member's normal duties and without using University time or resources) belongs to the staff member concerned.

PART C — IP CREATED BY STUDENTS

(1)  IP created by a student in the course of his or her study or research at the University is the property of the student unless:

(a) it has been legally transferred to another party with the informed agreement of the student; or

(b) it involves inventive contributions from University staff members; or

(c) it incorporates existing IP belonging to the University or a third party .

(2)  Where subsection (1)(b) or (1)(c) applies, the University (or third party) shares ownership rights and will seek an agreement with the student which is fair to all parties.

(3) A student who wishes to carry out research under an externally-funded research contract, or use existing IP belonging to the University or another party, may be requested to assign his or her IPR to the University or another party (sponsor) prior to, and as a condition of, commencing work on the research.

(4) Before requesting the student to assign his or her IPR under subsection (3), the University will provide the student with an explanation of the reasons for the assignment and will advise the student to seek independent advice regarding the assignment.

(5) The University will not enter into a contract that prejudices the assessment of a student's academic performance or a student's ownership of copyright in a dissertation, thesis or other assessable work.

(6) Where students have assigned their IPR with respect to inventions or other potentially commercialisable IP to the University, they have the same rights and responsibilities as set out in sections 6-9 for staff.

PART D — IP CREATED BY VISITING RESEARCHERS

Visiting researchers, whether or not they are paid by the University of Waikato , normally make use of the University's IP, facilities and resources during their visit. They will have the same rights and responsibilities as staff with respect to IPR, but the University recognises that the visiting researcher's employer may also be entitled to a share of the rights to any new IP created by the visiting researcher during his or her time at the University of Waikato .

Appendix 1 - What is Intellectual Property? (.pdf file)

Appendix 2 - Policy on Sharing Benefits on Commercialisation of Intellectual Property (.pdf file)