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Request to Assign IP Rights to Third Party Procedure

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Purpose

(1) To provide clear instructions on how IP Rights (title or other) can be assigned to another entity (third party) and the criteria that will be taken into consideration when assessing the request to assign those IP Rights. (Refer to the ‘Transfer of IP to Third Parties’ heading within the Intellectual Property Policy.)

Scope

(2) This Procedure (Request to Assign IP Rights to Third Party Procedure) applies to all University Members.

Section 1 - Policy

(3) Refer to the Intellectual Property Policy.

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Section 2 - Procedures

Responsibilities and Required Actions

(4) This Procedure requires actions by the following:

  1. University employee; and
  2. Director, Commercialisation and Innovation.

(5) The steps and / or actions that must be undertaken include:

  1. written case submitted to Office of Commercialisation and Innovation;
  2. assessment of application;
  3. approve or reject with reasons for decision; and
  4. advise Third Party of outcome.

University Employee

(6) Advise the Office of Commercialisation and Innovation in writing.

(7) Criteria for approving third party ownership of IP include but are not necessarily limited to:

  1. substantial strategic value to the University in doing so;
  2. well outside University core research capability;
  3. Third Party has substantial pre-existing IP which is likely to provide a Freedom to Operate issue for the IP offered or likely to be developed by the University;
  4. IP has little value in its current form, requiring substantial funding to render it investment ready and the prospects of the University securing that funding are low;
  5. the net cost of protecting the IP will exceed the estimated revenue that the University will receive from the commercial exploitation of the IP;
  6. the Third Party agrees to transfer title, i.e. trade IP it owns of equal value to the University IP;
  7. IP will be difficult or considered unethical to protect, e.g. a surgical procedure;
  8. as a conversion from a licence on the achievement of agreed commercial performance milestones;
  9. IP is developed while staff member is on an approved Outside Studies Program (OSP) in industry;
  10. Third Party pays full commercial charge-out rates for the development of the Intellectual Property;
    1. commercial rates are those charge out fees approved as such by the Vice-President, People and Services having due regard to the full cost to the University of providing the research;
    2. commercial rates can legitimately be discounted in the case of bona fide non cash alternates such as:
      1. the right to publish in high impact journals without veto; or
      2. the transfer of valuable equipment to the University at below market value which will add value to University research activities on an ongoing basis.

Director, Commercialisation and Innovation

(8) Assess and consider application.

(9) Approve or reject with reason why.

(10) Advise Third Party of outcome.

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Section 3 - Guidelines

(11) Nil.

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Section 4 - Definitions

(12) Commonly defined terms are located in the University Glossary. Definitions specific to this Procedure are contained in the accompanying Intellectual Property Policy.