Intellectual Property guide for CRC Reef researchers
What is Intellectual Property?
What is copyright?
The CRC Reef Task Agreement - and IP
IP and students
To get a copy of your Task Agreement
CRCReef IP Committee
If you have an idea for a patent or invention
Who to contact about IP and contracts in your organisation
More information and resources
What is Intellectual Property?
Intellectual Property is the term that is generally used to describe rights to the tangible or intangible items that result from intellectual activity. These include computer programs, photographs, video footage, designs, written material (protected by copyright) and inventions (which may or may not be patentable).
There is no law that protects Intellectual Property in general. Only the rights to ‘patents’, ‘designs’, ‘trademarks’, ‘plant varieties’, ‘copyright’ and ‘circuit layout rights’ are protected by Australian law. ‘Copyright’ and ‘circuit layout rights’ are automatic in Australia, i.e. the creator does not need to register to have the rights to the IP. The rights to ‘patents’, ‘designs’, ‘trademarks’ and ‘plant varieties’ are not automatic and need to be applied for or registered by the creator.
Intellectual Property rights give the owner some measure of exclusive control over items resulting from their subject matter. IP rights can be assigned (sold) or licensed (hired). Licences can be exclusive (only the single licensee can exploit) or non-exclusive (any licensee can do so). Licences may be limited by geography or purpose. Therefore, the owning of an IP right can give a commercial advantage to the owner, and so provide incentive to invest money in activities involving that IP in return for being given control of it.
The commercial value of IP, prior to its formal protection, depends on it being kept confidential. In general, once the information with potential for commercialisation has been disclosed, it is longer valuable. Public disclosure of an invention prevents patenting in most of the world (although there is a 12 month period of ‘grace’ in Australia, the United States and Japan). Public disclosure includes publishing in an academic paper, in an unpublished report or on a student poster at a conference.
Ownership of IP depends on factors such as the employment relationship. In general, where an employee creates something during their employment, the employer owns the IP. IP rights have time limitations so that after a certain period (which varies with the type of IP), the exclusive right expires.
What is copyright?
The owner of copyright of a work has the exclusive right to ‘copy’ that work e.g by publishing, reproducing or adapting it, or to license someone else to do so. Copyright does not protect ideas – stealing ideas without attribution is plagiarism and is wrong ethically but is not illegal. In some circumstances, such as academic pursuits, there can be serious consequences for committing plagiarism.
Copyright protects written material, photographs, musical and dramatic works, videos, computer programs and compilations such as databases and directories. In general, the life of copyright is 70 years (after the death of the creator). Copyright is automatic in Australia so that the creator does not need to apply for it to own it.
A person who creates a work will usually own copyright in the work. However, the employer will own copyright of a work if it is created by an employee during their employment. This does not apply to independent contractors or freelance workers. Journalists also retain copyright regardless of employment. Academic institutions (including James Cook University and The University of Queensland) usually waive their copyright for research publications and teaching materials, except for work that was commissioned by the University or funded by a third party such as CRC Reef Research Centre (see guidelines from James Cook University; and from The University of Queensland).
Although they are part of the copyright scheme, moral rights are personal to the author/creator. They can be waived but not traded. They include the right of attribution (i.e. work should be attributed to the author) and the right of integrity (i.e. that one’s work is not to be treated in a derogatory manner or altered without one’s knowledge).
CRC Reef Task Agreement – and IP
When CRC Reef agrees to fund a research task, the institution that employs the researcher (the research provider e.g. James Cook University, Australian Institute of Marine Science), signs the CRC Reef Task Agreement on behalf of that researcher.
The CRC Reef Task Agreement assigns ownership of all IP from contracted projects to CRC Reef Research Centre Ltd. In essence, CRC Reef owns – or controls – any IP that is created in a CRC Reef Task or Project. This is normal for CRCs and the Australian Government regards it as part of the process of encouraging commercialisation of IP arising from CRCs.
Under the CRC Reef Task Agreement, IP “means any invention, discovery or new process whether patentable or not, patent, copyright (including the copyright in any report, study, paper, film and video footage, photograph, computer image and the like), trade mark, design, semi-conductor or circuit board layout, plant variety rights, trade, business or company names, or other property rights or any other rights to the registration of such rights, or confidential information, whether created in Australia or elsewhere.”
‘Project IP’ is defined as “any IP created, resulting from or arising as a direct result of the Research Provider carrying out the Project, and includes Valuable Information.” CRC Reef owns all Project IP.
‘Valuable Information’ means “any information relating to or arising from the Project that can be protected by registration as a form of intellectual property; or is confidential information (including but not limited to ideas, discoveries, know-how, software, drawings, diagrams, scientific formulae and methods, procedures, standards and specifications) but excluding information that is publicly available; becomes publicly available subsequent to the execution of this Agreement, without breeching this Agreement; was obtained by a third party without breech by that person of any obligation of confidence concerning confidential information; was already in the possession of one Party (as evidenced by written records) when provided by or on behalf of the other Party prior to this Agreement; or a Party by law is obliged to disclose.” CRC Reef controls the process of protecting and commercialising Valuable Information, but is obligated to consult with the research institution.
CRC Reef owns all copyright associated with Tasks including everything that is written as part of undertaking a CRC Reef project; all photographs and video that are taken; and all data sets that are compiled. Copyright materials should only be used outside of CRC Reef activities with the permission of CRC Reef.
Therefore, researchers who are funded through CRC Reef are not the owners of copyright (which is normally the case for any researcher employed by a research provider). In theory, researchers can only publish results with the permission of CRC Reef (or their employer) and cannot assign copyright to scientific journals when they publish (because they are not owners of the copyright). However, CRC Reef is keen to ensure that results of research are made available and encourages researchers to publish, especially given that the majority of work funded by CRC Reef is likely to have a strong public good component. You should report any planned publications at annual and half-yearly reviews so that CRC Reef can determine whether it may waive copyright. In all publications, affiliation with CRC Reef or acknowledgment of funding from CRC Reef (where the research was mainly funded by other sources) is required, and copies of any publications must be sent to CRC Reef.
CRC Reef recognises that there are some tasks which it supports where all of the costs are not provided by CRC Reef, and/or where researchers bring valuable background IP to the task (i.e. IP that existed before the task started). In these cases, a sharing arrangement for benefits arising from IP created during the task can be developed between CRC Reef and the research provider.
Researchers should seek advice before publishing results if it is possible that publication could result in disclosure of IP and prevent the possibility of commercial benefit from the work. CRC Reef would expect to work with the inventor and their institution in progressing that commercialisation.
* Tasks with commercial potential will be identified by the Task Review Committee when they are first approved for funding by CRC Reef, and the decision will be reviewed regularly. Publications from tasks with commercial potential should be discussed with your Program Leader or with CRC Reef management, who will work in partnership with their institution to evaluate commercial aspects.
Student IP
Postgraduate students are not employees of their university and usually own the IP they generate. However, under the terms of the Task Agreement between CRC Reef and a university, CRC Reef owns all project IP generated by the university (ie. by its employees and students). The university therefore needs to have an agreement with a student under which the student assigns their IP to the university, and that IP is then brought within the scope of CRC Reef's Task Agreement. The student agreement also includes the publication vetting requirements that apply to other project participants.
For students more familiar with granting schemes such as the Australian Research Council (ARC) Discovery scheme, where there are no external claims on IP or publication vetting, this requirement may seem unusual. However, this type of assignment of student IP is typical of other forms of funding, e.g. where the university collaborates with an industry partner under an ARC Linkage grant, or is funded by GBRMPA, a government department or a company to undertake contract research.
CRC Reef does not claim ownership of copyright in a student's thesis but may use material in the thesis in a patent application. If publication of the thesis (which would normally include public display in the a university library) puts commercialisation of the research outcomes at risk, the thesis may be examined under conditions of confidence and be kept in restricted access in the university library for a period necessary to protect IP.
To get a copy of your Task Agreement
You receive a copy of your Task Agreement when CRC Reef notifies you of the acceptance of your task. If you have not received a copy of your Task Agreement, contact Ms Dawn Cuskelly, CRC Reef by phone on 07 4729 8400 or by email on dawn.cuskelly@crcreef.com.
If you have an idea for an invention or patent
If you would like to discuss an idea for a patent or invention you should talk to your Program Leader who will instigate discussions with CRC Reef about possible commercialisation.
CRC Reef IP Committee
CRC Reef has an advisory committee to help with IP issues. The committee is: Dr Russell Reichelt (CRC Reef), Ms Sonia Riding (AIMS), Mr Jasper Taylor (JCU), Ms Fiona Macdonald (GBRMPA) and Dr Peter Isdale (IMBcom Pty Ltd).
Who to contact about IP and contracts within CRC Reef member organisations
CRC Reef Research Centre
Dr Russell Reichelt, CEO
Tel: 07 4729 8400. Email: russell.reichelt@crcreef.com
Australian Institute of Marine Science
Ms Sonia Riding, Commercialisation Officer.
Tel: 07 4753 4146. Email: s.riding@aims.gov.au
Queensland Department of Primary Industries & Fisheries
Mr David Ham, Research and Development Strategy, Industry Development
Tel: 07 3238 3407 Mobile: 0423 783 099 Email: david.ham@dpi.qld.gov.au
James Cook University
Mr Jasper Taylor, Manager, Technology Transfer, Research Innovation and Development Office. Tel: 07 4781 4422. Email: jasper.taylor@jcu.edu.au
The University of Queensland
Mr Brent Weston, research contracts solicitor.
Tel: 07 3365 4585 Email: b.weston@research.uq.edu.au
Mr Sean Mullen, research contracts associate solicitor.
Tel: 07 3365 6120 Email: s.mullen@research.uq.edu.au
Manager for Innovation and Commercial Development (MICD)
Tel: 07 3365 3357
More information and resources
Copyright
Registrable IP (and particularly Patents)
Commercialisation
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