Data, Contract & IP management

Macquarie asks candidates to assign IP to the University because:

• Nearly all universities in Australia are to some degree funded by the Commonwealth Government. It is a condition of this Commonwealth funding that universities abide by the National Principles of Intellectual Property Management for Publicly Funded Research, which charge each university with protecting its IP.
• All universities have individual Intellectual Property Policies, which describe how their intellectual property is protected, exploited, and how any benefits arising from this are to be shared.
• Since 1989, direct government funding of universities has declined. Increasingly, universities have needed to seek funding from external sources. This means entering contracts with these sources. Universities aim to protect not only the interests of themselves but also their staff and students.
• Under Common Law, IP generated by employees during their duties belongs to the employer. This does not hold for students, as with students there is usually not an employer-employee relationship with the University. It is, therefore, necessary for universities to ask students to assign any IP they may generate during the course of their candidature/studies.
• Protection and/or exploitation of IP is a very costly enterprise. Full patent coverage worldwide is of the order of $500,000, with continuing annual fees. Taking a basic research idea from its initial conception to market can be 100x the cost of the basic research, and this consequently often runs into millions of dollars. The result is that neither the individual researcher nor the University can afford to do this alone. External capital investment is always needed.
• Trying to get investment in research ideas in Australia is a difficult and competitive business. Inexperienced students and staff easily fall victim to the commercial reality of astute business concerns. The University manages the process on behalf of the researchers, providing expertise.
• Where commercial exploitation is successful, the University not only attempts to recover its developmental costs but also claims a share in the benefits. However, under the University's Intellectual Property Policy, the inventors receive as a minimum half of such benefits.

Responsibilities of the candidate's supervisor

The candidate’s supervisor must be aware of the University’s policies surrounding IP and its protection. It is their responsibility to be aware of any potential value in the IP developed by their candidate and bring this to the attention of the University by way of the Deputy Vice-Chancellor (Research) through established procedures such as an invention disclosure form.

Because the candidate will have assigned IP to the University, the supervisor is the University’s “on the spot” representative, who is in the best position to the candidate and the University of appropriate action.

Confidential research

There are other occasions where research results need to be kept confidential, such as when the research is the subject of a contract entered into by the University. Supervisors need to be aware of such contracts and their terms.

The University takes every care to ensure that contracts it that involves students protects the interests of those students, including their absolute right to have their theses lodged with the University Library upon award of their degree.

Commercialisation issues

Where commercialisation is an issue, the University has measures to withhold such lodgement (which constitutes publication), in order to allow protection of the IP involved.

As with authorship of academic publications, supervisors are expected to fully acknowledge any input by research students into an invention disclosure made in the supervisors' names. Failure to do so may constitute misconduct. Where such acknowledgements are made, it is important for the supervisor and each student involved in the invention to agree on the respective contributions (both practical and intellectual) of the invention and report this at the time of the invention disclosure.

Under University Policy, every commencing Higher Degree Research (HDR) Student is required to assign to the University the rights to intellectual property developed by the Student during her/his period of candidature.

The University has an obligation to fully inform a student of:

• the nature of the University Policy on Student Intellectual Property (IP) Assignment
• the reasons the University finds it necessary to impose this Policy
• the alternative courses of action open to the student should there be an impasse over the assignment process.

Currently, procedures are as follows:

1. Each enrolling student is sent or provided with a copy of the "Enrolment Information for HDR Students" brochure. Students, therefore, have immediate access to the Assignment Agreement itself and the accompanying "Plain English" explanatory notes document, which sets out the reasons for, and benefits arising from, the assignment.
2. Most HDR students enrol on a specific day. They are presented with an enrolment form, which they must sign and return on the day. The IP Assignment Agreement is attached to the enrolment form. Students are asked to sign the Assignment Agreement and return it with their completed enrolment forms. Students unable to attend the University on the specified enrolment day for whatever reason will have their enrolment completed on another date. They will normally complete their Assignment Agreement at the same time.
3. Whenever completed enrolment forms are received by the Office of Higher Degree Research Training and Partnerships (OHDRTP), appropriate data is transferred to AMIS (the University's Student Information System), and the enrolment forms themselves are then placed on respective student record files. Assignment Agreements received concurrently are placed on file at the same time as the enrolment forms. The OHDRTP maintains a register of completed Assignment Agreements.

Where a student makes an objection to signing the Assignment Agreement, staff in the HDRO explain what options are open to them. They are told:

• they may seek independent legal advice,
• they might be directed to the Research Office
• they can write to the Deputy Vice-Chancellor (Research) seeking a waiver of the requirement to sign an Assignment Agreement as a condition of enrolment (Note: the University never waives its rights to intellectual property).

If they are referred to the Research Office, the Officer responsible for contracts will try to answer any questions the student might have, and, failing that, will help her/him make an appropriate appointment with the Deputy Vice-Chancellor (Research).

Should a student seek a waiver, she/he is asked to put her/his objections in writing to the Deputy Vice-Chancellor (Research), and justify the request. The Deputy Vice-Chancellor will then determine if this justification is considered adequate.

Where the request for waiver is associated with a student project which is commercially sensitive, or where it might compromise the University's rights, or where justification of waiver is considered inadequate, there are three possible courses, either:

• the student agrees to sign the Assignment Agreement
• negotiation between the Student and the Deputy Vice-Chancellor (Research), which may involve the Student's supervisor(s), and which may conclude with the student being offered an alternative project which is not commercially sensitive
• the student enters into a mediation process.

The following is the case to be put to those students who have doubts about signing the Assignment Agreement, and the procedures to be followed in such situations.

The University is very concerned that the current process of requiring students to assign their intellectual property as a condition of enrolment not be interpreted as constituting duress or undue influence.

The legal definitions of Duress and Undue Influence are as follows:

“Duress is a threat or act that overcomes someone's free will. Anyone who makes a contract under duress is entitled to void it and be free of its obligations, but in order to release him from the contract, duress must be shown to have overcome his mind and will. However, annoyance and persuasion do not constitute duress.

Undue influence per se is an equity remedy and involves the "unconscientious use by one person of power possessed by him over another in order to induce the other to enter a contract. There are two distinct situations where the doctrine of undue influence is applied : (1) where a special relationship of confidence exists and one party has abused his position of trust and confidence acting for his own interests; and (2) where one exerts unfair mental pressure over another.”

The situation where students are asked to sign an Assignment Agreement is more likely to fall under the undue influence doctrine than the duress doctrine, but the crux of the matter is whether a Student considered he/she had no choice but to sign the Agreement.

Of relevance to this are the following three points.

1. Firstly, the student has choice over which University at which to enrol. Macquarie does not have a monopoly over enrolments for a higher degree. Note: Macquarie is not unique in asking students to assign their intellectual property, and it is considered "normal" that students might be asked to do so at whatever university they decide to enrol.
2. Secondly, imposition of a particular condition upon the enrolment would have to be shown to be unreasonable. Most contracts have associated conditions, and an implied (if not explicit) condition of enrolment is that students are bound by University Policy, Codes of Conduct, etc.
3. Thirdly, the student is given an informed choice over signing the Agreement - the procedures described in this paper are intended to show that there is a process whereby a Student may seek information, may negotiate with the University (via the Deputy Vice-Chancellor (Research)), to either seek a waiver or an alternative project which the University would not find contentious. Note that this third point uses the words "informed choice". The procedures described in this paper are intended to show the lengths to which the University is prepared to go to fully inform the Student.