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Research Commercialisation and IP | Swinburne University | Melbourne

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Research Commercialisation and

IP
In our global knowledge economy, exploitation of Intellectual Property (IP) rights
provides a crucial competitive advantage for businesses and nations. This is
underpinned by a fundamental shift in the value of core business assets, from
tangibles (such as factories and equipment) to intangibles (including human and
intellectual capital).

What is IP?
IP is a legal concept that refers to “creations of the mind: inventions, literary and
artistic works, designs and symbols means and images used in commerce”
(World Intellectual Property Organisation).
The law relating to IP is complex, but an introductory training module /ntel/ectual
Property and Research is now available online through ELMO. There is no direct
link to take you to the new program, so to enrol you will need to follow a few
simple steps:
1. Log into ELMO - using your login credentials, access the ELMO Portal
2. Find the module - using the ‘Learning’ tab near the top of the page on the
grey ribbon, access the Course Catalogue.
3. Enrol in the module - browse through the catalogue to find the module
Intellectual Property and Research and enrol.
4. Access the content - Click on ‘My Learning’ underneath the grey ribbon
(next to Course Catalogue). Select the module and follow the links.

5. Completion - upon successful completion of the module, you will receive
an email from ELMO with a certificate link
Open the boxes below to find out more about IP at Swinburne.

Our approach to IP
Swinburne’s vision is to be a world class University creating social and
economic impact through science, technology and innovation. We have
developed an IP policy that supports this vision, by ensuring that we:
encourage an environment in which teaching, learning and research
will flourish


balance private and public interests in access and use of Intellectual
Property and protection of the rights of originators
maximize the benefits of publicly funded research to Australia
provide generous incentives to staff and students for the creation of
valuable IP and new ventures and partnerships - by sharing the
benefits of commercialisation.
IP is relevant to all researchers, regardless of career stage. Swinburne's
processes for securing protection of new IP and appropiately exploiting it
are set out below.

IP Policy
Swinburne’s IP Policy framework is set out in the following documents that
are available on the public facing website:
Governance and Administration Statute (2016)
Intellectual Property Regulations (201 7)*
People, Culture and Integrity Policy (covering IP, copyright and
trademarks)
For Swinburne staff there are two further documents:

Copyright Guidelines
Invention Disclosure Form 

These policies and guidelines are for compliance with the National Principles
of Intellectual Property Management for Publicly Funded Research

The Swinburne IP Committee provides strategic oversight of policy
development and implementation.
Charter of the IP committee
IP Committee

IP Procedure
STEP 1: Anyone who believes they may have created a novel and inventive
idea should fill out an Invention Disclosure Form (listed above).

STEP 2: The IP team will assess the idea outlined in the disclosure form. It
will take up to 12 weeks to make a final decision around next steps to
manage the IP relating to the submitted idea, and may require additional
information to be provided by the inventor(s).

The following questions will be considered in deciding whether to initiate
protection or follow alternate courses of action:
the objects of the University;
the nature of the intellectual property and the extent of patent or other
protection that is desirable;
whether the securing of patent or other protection is likely to assist in
the development and commercial exploitation of an invention;
whether it is desirable for the University to maintain an interest in the
quality and technical efficiency of production through the licensing of
patents; and
the likely commercial returns to the University, taking into
consideration the distribution principles.
STEP 3: The IP team will work with the inventors to follow the appropriate
course of action to optimally and appropriately protect and exploit the idea.

Ownership of IP
Academic and Professional staff: Swinburne owns all the IP created by
academic and professional staff members in the course of their
employment.
Students: Swinburne does not own any IP created by undergraduate /
coursework students. From 2018, all commencing higher-degree-byresearch (HDR) students assign (at enrolment) any IP created during their

agreed research program to Swinburne:
with the exception of Copyright in the student's thesis and on the
condition that
if Swinburne does not choose to commercialise in accordance with
Swinburne IP Regulations , the IP will be assigned back to the student
upon request


the HDR student will be entitled (as an Originator) to share in the net

returns to Swinburne from commercialisation of the IP created by the
student (See below)

Collaborative research projects: ownership of IP from collaborative research
projects will be set out in the provisions of an appropiate commercial
agreement.
A note on Copyright: Swinburne disclaims ownership of Copyright in
Scholarly Works (ie works created by staff as part of their research and
scholarship for the sole purpose of publication) but retains a licence to use
those works for educational, teaching and research purposes.

Revenue sharing - staff incentives
Swinburne’s /P Regulations : provide incentives for staff and students to get
involved in creating and commercialising valuable IP:
All simple royalty streams and licence fees (after recovery of direct
costs) will be split 50:50 between the staff/student Originators and the
University.
“Originators” will also share in distributions of equity in new companies
received by the University, where the equity is allocated in return for
assignments of IP. These distributions will be considered case-by-case,
but again the starting point is a 50:50 split.

IP in collaborative projects
Broadly, Swinburne’s approach in negotiating Collaborative Research
Agreements will be:
All parties will retain ownership of their Background IP (ie IP developed
independently of the project).
Swinburne is responsible for ensuring that appropriate agreements are
in place with everyone involved in project (staff, students, contractors
etc) to capture ownership of the project IP.

In particular when an HDR student is involved in a partner project, it is
very important for the student's supervisor to clarify and document the
student's role and responsibilities, including confirmation that the
student assigns any new IP created to Swinburne.
If a partner pays for the full cost of a research project, that partner
may own any new IP created from the research, but if so,
Swinburne will seek a licence for teaching and (non-commercial)

research purposes.
Where both Swinburne and partner/s make contributions to a
project, the ownership and licence arrangements will be
negotiated on a case-by-case basis.
Where Swinburne has borne the full cost of a research project it
will claim full ownership of the IP, but that IP will be available for
commercialisation (eg by licencing or assignment or by creating a
spin-out company).
In some cases (eg when a staff member has created IP before joining the
University) Swinburne may execute a Notice to confirm that it will make no
claim to that IP.
If a staff member has a separate relationship with a research partner, the
staff member may need to develop a Conflict of Interest management plan.

Using the Information above answer the following question in a few coherent sentences:

           Outline Swinburne IP Procedure, according to Swinburne Research, commercialization, and IP guideline.