Intellectual property

What is intellectual property?

Intellectual property is, in a nutshell, what your mind or intellect creates. This property is protected at law by what are known as intellectual property rights. Intellectual property rights protect not the ideas themselves but rather what comes into existence as a result of those ideas, for example, an invention, original design or logo, a literary item, computer program, film or music.

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What is copyright?

Any data, literary, musical or artistic work which you create is property which belongs to you unless you assign or license it to someone else. Copyright is automatic which means you do not have to register it or take any action to protect it. Copyright does not protect ideas. Usually copyright created for the purposes of employment will be deemed to be assigned or belong to the employer. The Copyright Act also provides that authors have a right to attribution. This is referred to as a moral right and means that even if you assign or give your copyright away you must be acknowledged as the creator of the work.

See copyright and research students.

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What is a patent?

A patent is a right granted for any new device, substance, method or process. It is a monopoly granted for 20 years. In order to protect a patent you must apply to have it protected. By taking out a patent you prevent others from using it and by so doing you retain an exclusive right to exploit it. Secrecy is paramount as inventions in the public domain cannot be patented. Patenting is very expensive and most students prefer to assign their rights to the University or alternatively are required under some circumstances to assign, allowing for the University to fund the patenting process.  If a patent is commercialised and yields an income, the University has a statement on patent revenue distribution which sets out how much inventors receive.

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What is a trademark?

This can be a letter or word or picture, even a colour, sound or shape, which is associated with a particular product or company giving it a distinct identity identifiable from other companies or products. A trademark registration is initially valid for 10 years from the date of filing the application. Trademarks are separate from company names or business names.

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What is a design?

This is the appearance of a thing or product - a shape, configuration, pattern or ornamentation. A design denotes the unique property of a product and as such must be new and distinctive. Designs may be registered although registration will only extend to the appearance of the item not its function. Registration is valid for 10 years. (The function can be protected by taking out a patent). Circuit layouts and plant breeder's rights are similar to designs but dealt with under specific legislation

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What is confidential information?

Trade secrets, know how, commercial information, business plans, technical knowledge are not strictly speaking intellectual property but confidential information which is information that is protected by the common law principle of confidentiality. An example is the secret recipe used to make KFC. Before a patent can be registered it is considered to be a trade secret.

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What is authorship and joint authorship?

Section 10(1) of the Copyright Act 1968 defines" work of joint ownership" as:

'... a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors.'

Monash University has an authorship policy and procedures. Essentially "Authorship must be based upon a substantial contribution and responsibility for at least one, and usually more than one, of the following activities:

  • Conception and design of the project;
  • Analysis and interpretation of research data;
  • Drafting significant parts of the work or critically revising it so as to contribute to the interpretation."

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Monash University IP governence

Who owns the intellectual property I create during the course of my research degree?

The university has regulations governing the ownership of the intellectual property (IP) you create during the course of your degree.  The university argues that when you enroll, you automatically agree to abide by these regulations.  In 2014 there was a significant change to the way in which the university handles student-generated IP.  The changes focus on the conditions under which the university will require you to assign your IP to the university.

For IP created prior to 28 May 2014 the triggers giving rise to an obligation for a student to assign their IP to the university are proscribed under Statute 11.2:
2.2.1  a patent worthy discovery or invention in respect of the creation of which the university has made a specific contribution of funding, resources, facilities or apparatus;
2.2.2 intellectual property, other than copyright in a thesis, in respect of which -
(a)   intellectual property owned by the university has been utilised;
(b)   the university has stipulated that the intellectual property first mentioned in this paragraph must be assigned to the university; and
(c)  the university's stipulation has been made prior to the use of the university owned intellectual property;

For IP created after 28 May 2014 the trigger giving rise to an obligation for a student to assign their IP to the university is prescribed under Part 5 of the Monash University (Vice-Chancellor) Regulations:
A student who participates in a collaborative research activity must: (a)  assign to the University … any intellectual property that he or she creates during his or her enrolment, excluding copyright in his or her thesis; …and applies when the student’s IP is generated from collaborative research activity.

What is collaborative research activity?

Good question. “Collaborative research activity” has a very wide meaning: 

A collaborative research activity involves all research activity that is collaborative as this term is ordinarily understood. This includes:

  • Where the research is undertaken by more than one person;
  • Where an agreement obliges the University to assign or licence IP arising from the research;
  • Where the research is based on a concept or proposal or developed by another person or in collaboration with another person;
  • Where the University provides or procures additional resources for the research, that are not commonly available.

Who owns copyright in my thesis?

The university regulations state that in most cases students “retain copyright in their thesis, unless otherwise agreed”.  The university does not usually make any claim to copyright in a thesis. However if a thesis is by publication and the papers are published, it is the usual practice of journals to acquire the copyright.

What is the MPA’s position on the new IP regulations?

The MPA worked closely with the university in developing the old regulations in 1994 and we were confident that these regulations were fair and reasonable to students while also protecting the interests of the university.  We spent the subsequent 20 years successfully protecting students’ IP rights. We lobbied vigorously against the introduction of the new IP regulations in 2014 but unfortunately were unsuccessful.  Our submissions to the university on this matter can be found in our publications section.

The MPA’s view on the meaning of collaborative research activity is that the collaboration must be specific to the IP under discussion. Notwithstanding that the university may provide specific facilities or services or contribute to the research task by way of idea or concept, if such contributions do not amount to a contribution to the actual IP in question then the university has no legal basis for insisting that students assign their IP.

Helpful links

Current university IP regulations, see Monash University (Vice-Chancellor) Regulations

Section 6.1 of the Doctoral Handbook on Forms of IP

Section 6.2 of the Doctoral Handbook on Copyright

Australian Code for the Responsible Conduct of Research

The Australian Government IP web page is an excellent source of information.

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What is a deed of assignment?

As mentioned above at Monash University students own their intellectual property. As property students can give their rights away or in some circumstances are required to do so. This is called "assignment". Assignment must be agreed to in writing and the University has a number of template documents called "deeds of assignment".

Under a deed of assignment the student is usually required to totally divest their intellectual property rights. It is therefore a good idea to obtain independent advice in respect to the deed prior to signing. MPA can provide advice at no cost to the student. Otherwise students are free to obtain external legal advice at any time.

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Commercialisation at Monash University

This is the process involving exploitation of an invention. It concerns an evaluation of the technical aspects of the invention and market factors. Each faculty at Monash University has a Business Development Manager. This is part of the Monash Industry Engagement & Commercialisation Section located in Building 75 G32, Students who need more information about the patenting process or an opinion as to the viability of their invention are advised in the first instance, to contact the business development manager in their faculty. Only an outline of their invention needs to be disclosed during discussions so that secrecy is assured. Students are encouraged to contact MPA at any stage.

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Common intellectual property scenarios

  • Assignment
  • Licensing
  • Collaborative Research and Development
  • Transfer of Intellectual Property into joint venture or “spin off”

The MPA can provide more specific information in relation to the above upon request.

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Concerned about authorship?

MPA Advocate Contact Details

The best way to contact one of our Advocates is by via email. For those postgraduates located off-campus or studying via distance education, advice can be provided by email, and supported by phone calls (funded by the MPA).

ADVOCATE FOR CLAYTON, PARKVILLE, PENINSULA, BERWICK, MMC AND GIPPSLAND

Sunshine Kamaloni sunshine.kamaloni@monash.edu

Benoit Tasse
benoit.tasse@monash.edu

ADVOCATE FOR CAULFIELD, AMREP AND LAW CHAMBERS

Robert Rybicki robert.rybicki@monash.edu