IP Management and Investment

Legal & Commercial Context

 

The University of Western Sydney (UWS) is a statutory body established by an Act of the New South Wales Parliament which provides for the constitution and functions of the University including those guidelines that apply to the conduct of commercial activities. Governments in Australia require formal reporting on the governance and management of university commercial activities due to the high levels of federal government funding. They are particularly concerned to ensure that there is no taxpayer subsidisation of such activities and that they are consistent with the general principles of competitive neutrality required of all government-funded entities. Adherence with the guidelines is assured by formal auditing of the University annual financial statements by the Office of the State Auditor-General.

Like all universities, UWS engages in a variety of commercial activities. These include the management of a small number of not-for-profit enterprises which effectively provide the non-core functions of the University; the provision of diverse consulting services to business partners; commercial access to state of the art technology and facilities; research partnerships; and joint commercialisation of new technologies and research innovations, to name a few. In all these activities, the University is the legal entity for contractual purposes. University Schools and Research Centres, for example, have no status under Australian law and therefore cannot legally contract, purchase equipment in their own name, or independently engage staff.

In the case of joint commercialisation and other approaches to the exploitation of university-generated intellectual property, the University and research staff inventors may create spin off companies with variable shareholdings consistent with IP management policies and financial investment. The University cannot directly contract with its own employees, nor can it take a shareholding in a company whose prime purpose is to channel funding for IP development prior to commercialisation.

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UWS Intellectual Property Policy and Management

 

UWS Innovation & Consulting (I&C) is the unit within the University responsible for the management of intellectual property generated by both staff and students of the University.

UWS policy designates:

“The law generally provides that where someone creates new Intellectual Property in the course of or incidental to their employment, such Intellectual Property belongs to the employer rather than the employee.”

According to this clause, academics who are inventors are required to assign ownership of IP to UWS. Students of the University, while having ownership of their own IP, are generally requested to assign their rights to UWS in a commercially-focused project as a condition of working on that project.

 
To maintain the integrity of the IP there is an obligation under the policy for staff and students to maintain confidentiality in respect of the intellectual property during the notification, disclosure and evaluation periods.

In return for assigning IP rights to UWS, inventors, be they staff or students, will share in the net profit from any commercialisation as outlined in the University’s IP Policy.

As the assignee of the Intellectual Property, only UWS enters into contractual agreements with third parties in respect of any IP generated within University and that may be in shared ownership or in a licensing arrangement.

UWS I&C has established an IP Review Panel to operate within the University to manage investment and protection of IP arising within the University. This Panel advises on investment in pre-patent development and has funds to initiate patenting activities. Investment in patenting activities would be made only where there is a realistic expectation of recovery of those patent costs based on expert advice from patent attorneys, technical and industry experts.

UWS welcomes investment in the development of University-generated IP and encourages business relationships which can support future commercialisation. For further information, contact  UWS Innovation & Consulting.

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