What is intellectual property?
Intellectual property, or IP, is a tangible representation of intellect and creativity that may be protected. There are many different forms on IP, including copyright, trademarks, patents, trade secrets, registered designs, know-how, plant-breeder’s rights, circuit layouts, domain names, confidential information, and more.
How can IP be protected?
Copyright is a form of IP that protects the expression of a creative idea that is fixed in a tangible form. Copyright is a legal means of protecting an author’s work. It is a type of IP that provides exclusive publication, distribution and usage rights for the author. Many different types of content can be protected by copyright including literary (e.g. books, poems, research papers), artistic (e.g. artwork, photographs), and dramatic (e.g. plays, poems) works, film (e.g. YouTube videos) or sound recordings, as well as website design and other online content (Table 3).
The law of copyright in Australia is contained in the Copyright Act 1968 (Cth). This law is complex and anyone with copyright problems should seek legal advice. Despite this complexity there are a number of basic rules that provide a general understanding of the operation of the act:
- No registration is required – a work is automatically covered when it is created. Copyright in published works lasts for the life of the author, plus 70 years.
- Copyright protects the expression of the ideas not the ideas themselves – does not protect ideas or information.
- Copyright is a form of property – copyright confers certain rights (right to reproduce, publish or communicate) exclusively to the owner of the copyright.
Table 3: What is protectable by copyright?
|Description||Protectable by Copyright?|
Literary works: books & poems
|Computer software: source & object code||✓|
|Music: notes, words & sound recordings||✓|
|Plays: dances & pantomimes||✓|
|Art: paintings, graphics & sculptures||✓|
|Video: YouTube, motion pictures & other films||✓|
|Some online content & website design||✓|
|Ideas or concepts||X|
|Listings without originality||X|
|Public domain information||X|
A patent is a form of IP that gives its owner the legal right to exclude others from making, using, selling and importing an invention for a limited period of years, in exchange for publishing an enabling public disclosure of the invention. A patent lasts for up to 20 years from the filing date of the application (or up to 25 years for pharmaceutical substances). There are three major requirements for patentability – novelty, usefulness and non-obviousness. Secondary requirements include adequate written description, enablement and best mode. Novelty: the invention must be different from all known inventions, products and published ideas. Usefulness: the invention must work and have a practical application or utility. Non-obviousness: the invention cannot be an obvious or a logical extension of known ideas or inventions. Enablement: the patent application must fully enable someone to make and use the invention. Some patentable versus unpatentable scenarios are discussed below and highlighted in Table 4.
- Inventions such as novel chemical compounds for which no useful purposes have been found, are unpatentable due to a lack of utility.
- A new technology will not be novel if the invention was patented, published, or known to the public before the technology under evaluation was invented (date of invention is the date the patent application was filed).
- Even if an invention is novel, it may not be patentable if it is too similar to the prior art, a situation known as obviousness. When an invention is one that is in a very crowded field of research and is not a ground-breaking innovation (but instead a small advancement or minor improvement over the prior art) the likelihood of an obviousness objection greatly increases.
- A new appreciation (e.g. discovery) of the properties of a composition or a process is not patentable. For example, discovering the mechanism by which something works is not patentable if the process or composition was known and the result of the process or effect of the composition were already known.
Table 4: What is patentable?
|Description||Able to be patented?|
|Engineering: new instruments, machinery, manufacturing techniques, process improvements, nanotechnology, circuits, sensors and micro-devices||✓|
|Agriculture: new grain and food processing processes, plant varieties, precision equipment, devices and nutrition||✓|
|Biotechnology: novel genetic promotors or markers, gene transfer methods, expression vectors and microorganisms||✓|
|Chemistry: new compounds, drugs, drug targets, drug design, coatings, additives, metals, polymers and fuel cells||✓|
|Software: novel methods and processes in computer programs, operating systems, networking, data mining and storage, security and supercomputing||✓|
|Human beings and biological processes for their creation||X|
|Discovery, scientific theory, laws of nature or mathematical methods (pure algorithms)||X|
|Scheme, rule or method for performing a mental task||X|
|Medical/veterinary procedures and methods||X|
|Software/business methods that are not technical||X|
|Perpetual motion machines (are not a proven design)||X|
|Inventions that are contrary to law||X|
What are the benefits of patenting?
Patents are a tool that help maximise the commercial value of an invention and make an invention more attractive to industry. Industry partners need to put significant amounts of time, money and other resources into the further development of an invention, and want to ensure a reasonable return on investment via exclusive rights to exploit the invention for a period of time.
A trade secret is a type of IP that consists of information not generally known or reasonable ascertainable by others which can be used by a business and gives that business an opportunity to obtain an advantage over competitors or customers. Such information can include recipes, drawings, algorithms, compound calculations, deduction know-how, quality-control procedures, maintenance know-how, financial information, customer lists, price information, negative know-how, client information, customer preferences, buyer contacts, market strategies, blueprints, etc. To meet the definition of a trade secret three criteria must be met: (i) not generally known to the relevant business circles or to the public, (ii) confers some sort of economic benefit to its owner, and (iii) must have been subject to reasonable steps by rightful holder of the information to keep it secret.
A trademark is a distinctive sign that helps the customer in identifying the source of a particular good or service. It can be in the form of text, word, numeral, phrase, symbol, design, signature, smell, shape, colour, sound, packaging, texture or combination of any of these elements. The value in a trademark resides in the creation of goodwill or a ‘known reputation’ for the owner of the trademark, for particular goods and/or services. In marketing terms, a trademark is the ‘face’ of a business used to advertise a product/service, and may be the most valuable asset held by a business. For example, the world’s most valuable trademark AMAZON, is valued at over $150.8 billion USD.
Table 5: What can be trademarked?
|Description||Able to be trademarked?|
|Stylised letter, word, name, signature or numeral||✓|
|Stylised device, brand, heading, label or ticket||✓|
|Stylised aspect of packaging||✓|
|Stylised shape, colour, sound or scent||✓|
|Or a combination of any of these things||✓|
|Those identical or deceptively similar to an existing trade mark, e.g. Kolgate (similar to Colgate)||X|
|Those that mislead the nature of the good/service that it is applied to, e.g. soft pillow (for firm pillows)||X|
|Those that are generic or descriptive of quality or the nature of the goods/service, e.g. sticky cellotape||X|
|Those consisting of a geographical location or surname, e.g. Sydney Pies or Smith’s Hair Salon||X|
|Those that consist of a representation of the arms, flag or seal of the Commonwealth, State or Territory||X|
|Those that are scandalous or against the law, e.g. racist or promoting an illegal substance||X|
|Those that use marks that are protected by legislation (e.g. Olympic ring)||X|
If creators generate IP, does the IP belong to them or to ANU?
This depends on their affiliation with the University. Below is a general summary regarding IP ownership. For full details refer to the ANU Intellectual Property Policy, Student Intellectual Property Procedure and IP Protection and Commercialisation Procedure. If creators have any questions regarding these policies they can go to ANU Legal, Human Resources Office, Innovation ANU and/or the ANUSA Office for clarification.
As a rule, ANU owns all IP created by staff during the course of their employment with the University (Table 6). In order for Innovation ANU to pursue IP protection and commercialisation, it is necessary for all creators, who are ANU staff, to sign a Confirmatory Assignment. This is an agreement used to document an earlier assignment, i.e. staff agreeing to the University owning the IP they generate during the course of their employment as stipulated in their employment contract.
In contrast, ANU does not claim ownership of IP created by students, so it is essential that creators are aware of and manage any student involvement on research projects with commercial potential/applications (Table 6).
Table 6: Ownership of IP at ANU – staff vs student
|IP position: Except for education materials and scholarly or creative works, the University owns all IP created by staff:
||IP position: The University does not assert ownership of IP created by students. The default position is that a student owns their IP.|
|IP means: Any and all industrial and IP rights (whether or not registered or registrable or having to undergo any other process for grant, registration or the like) including rights in respect of:
|Assignment: At the request of the University staff will:
||Assignment: Where a student wishes to participate, continue to participate, in any activity which is the subject of an agreement or activity involving the University and a third party (e.g. through an internship or externally funded scholarship or research activity) or is the subject of IP protection by the University, the University may require the student to consent to:
How to manage student IP?
In order for Innovation ANU to pursue IP protection and commercialisation, it is requested for all creators, who are ANU students, to sign a Student Assignment and Confidentiality Deed. This is an agreement wherein students assign the IP they create during the course of their studies over to the University. Where a student assigns IP to the University and the IP is commercialised by the University, the student will be deemed a creator for the purposes of the IP protection and commercialisation procedure. If an assignment cannot be obtained from a student creator, Innovation ANU is unable to progress the invention further.
If it is planned that a student will be involved in a project that is currently in the process of being commercialised, or a third party has rights to the IP that is being developed (e.g. under an industry funded research agreement) it is expected that an assignment of IP is obtained prior to the student commencing work on the project. Innovation ANU and College Research Offices are responsible for the management the student assignment process, but it is the responsibility of the supervisor to tell the student that this will be required and make the appropriate introductions. Students must be advised early of this requirement and if the student does not consent to assign over their IP they must be offered another project of equal merit. ANU (and its employees) are unable to provide students with legal advice. Students are strongly encouraged to seek independent advice regarding the management of their IP, for example through ANUSA’s (Australian National University Student’s Association) free legal services.
As supervisors are typically involved in the conception, mapping out, direction and execution of a student’s research project, it is rare for any subsequent inventions to have been solely created by the student. In these circumstances, usually the student builds upon pre-existing University IP, and the IP is jointly-owned (between ANU and the student). If it is determined that the IP is solely student owned, ANU does not then have the legal right to commercialise this IP and the student can pursue commercialisation opportunities independent of the University.
Including visitors (a visiting fellow or student) in a project that is currently in the process of being commercialised needs to be carefully considered and managed. The University does not, as a matter of course, assert ownership of IP created by visitors. The employer of the visiting fellow will generally assert ownership and control of IP rights that result from the research conducted by their employee; or depending on where the student is from, the student may own their own IP or their IP may be owned by their home institution.
If the visitor has not yet arrived and creators are proposing including them in a project that they are seeking to commercialise, they should discuss this with Innovation ANU. At a minimum, appropriate confidentiality agreements should be put in place to prevent unintended disclosure. Other agreements that outline appropriate IP arrangements with their employer/host institution may also be required.
If the visitor has already arrived and has had a clear impact on the invention, then they must be named as a creator. Innovation ANU will work (with other relevant ANU areas) to determine the IP arrangements at the time the invention was created and, if required, enter into an agreement with the visitor’s employer/host institution to allow ANU the rights to commercialise the IP. In return for these rights, ANU will often have to offer compensation to the visitor’s employer/host institution.
- Visiting and Honorary Appointments (VaHA’s) eform
- Policy: Academic titles conferral: Honorary (clinical) staff member, visiting fellow, visitor and emeritus professor
Emeritus Professor and Honorary Appointee IP
Except for education materials and scholarly or creative works, the University owns all IP created by Emeritus Professors and Honorary Appointees (refer to ANU Intellectual Property Policy):
- In the course of their association with the University, or
- In the course of using funding, facilities or resources of the University, other than as a student, or
- In the conduct or creation of any works commissioned by the University by way of separate agreement, unless agreed otherwise, or which vests in the University at law
The University does not assert ownership of IP created by collaborators, i.e. any person who works jointly on a research activity or project who is not an employee of ANU. Innovation ANU strongly recommends that ANU researchers enter into some form of agreement prior to the commencement of a collaboration between researchers (University to University) or between researchers and industry (University to business). Putting an agreement in place is advantageous as it:
- Simplifies the ownership, management and protection of IP, and other interests
- Identifies the important issues in developing collaborations
- Deals with key issues before beginning the collaboration
- Serves as a legal document holding parties accountable to their commitments
- Outlines how the parties will agreed to share resources, such as finances, knowledge and people
- Specifies the intent of the parties to share data, research materials and facilities, and to publish research findings
The types of agreements that can be entered into have been outlined in Section 1. If a collaboration has already started, under an agreement, creators should review that agreement(s) to determine ownership rights associated with any IP that arises from the project. If a collaboration has already started, not under an agreement, Innovation ANU (with the help of other ANU areas) will retrospectively try to enter into an agreement with the collaborating party in order to (i) define the IP ownership spilt, (ii) identify which party will take the lead on commercialisation of that IP, and (iii) define the conditions under which this this is done. However, this is not best practice. Quicker outcomes can generally be achieved when IP ownership in a collaboration is agreed upon before any work/research takes place, and commercialisation of IP can be significantly hindered later on if the ownership and control and generated IP cannot be agreed upon after the work/research is done.
What are the implications of jointly-owned/created IP?
Joint ownership of IP can arise in two different ways: (i) an agreement may provision that IP will be owned jointly by the parties, and (ii) the parties may participate jointly in the creation of the IP. Unless joint owners of IP agree otherwise (in an agreement governing joint ownership rights), the law dictates that they have equal shares in the IP and sets to the default position outlined in Tables 7-9. When patents are jointly owned between the University and a company, there is an imbalance in the rights under Australian law because the company can use the patent IP to make products and sell them without sharing the benefits with the University. The University, which does not have the capacity to make and sell products itself is at a disadvantage as the University must assign or license the IP rights to a third party which requires the consent of the joint owner.
Table 7: Implications of joint IP ownership under Australian law
|Can a joint owner of IP exploit the IP without the consent of the other owner, and without accounting to the other owner(s) for any of the profits from doing so?||✓||X||X||X|
|Can a joint owner of IP assign its interest in the IP without the consent of the other owner(s)?||X||X||X||X|
|Can a joint owner of IP grant a license of that IP without the consent of the other owner(s)?||X||X||X||X|
Table 8: The impact of joint copyright ownership in multiple jurisdictions
|Question||Australia||United Kingdom||United States|
|Can a joint owner assign its share of IP without the consent of the other owner(s)?||X||✓||✓|
|Can a joint owner grant a license over the IP without the consent of the other owner(s)?||X||X||✓ and X*|
|Can a joint owner exploit (e.g. copy/reproduce) the IP without the consent of the other owner(s)?||X||X||✓|
*X - No, Non-X = Yes, but must account for rateable share of profit
Table 9: The impact of joint patent ownership in multiple jurisdictions
|Jurisdiction||Can a joint owner exploit without the consent of the other owner(s) and pay no royalty?||Can a joint owner assign their share without the consent of the other owner(s)?||Can a joint owner license their share without the consent of the other owner(s)?|
|France||✓||✓||✓ and X|
|Great Britain||✓||X||✓ and X|
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