2.4 IP ownership

IP is an asset. Its owner has legal rights to exploit its value. Joint ownership is common.

Legally, IP owners are the ‘applicants’ listed on registered IP protection.

IP may be assigned to a new owner, by being sold or legally given away, or IP rights may be licensed, in which case ownership is unaltered. Licensing is like renting a house: the tenant has user rights but doesn’t own the house. ‘Clean’ IP ownership is clear and uncomplicated, which is highly desirable for commercialisation of the IP. Unfortunately, the ownership of IP created in universities is often ‘unclean’, i.e. there are multiple owners, particularly if the IP arises from R&D involving several organisations or funding sources.

IP Creators

Identifying potential IP owners depends on defining the IP creators, which depends on defining the IP precisely. The IP may be highly specific or small compared with the R&D project from which it arose. If so, not all the researchers, organisations and funding sources involved with the R&D project may have created the IP.

The following people are not necessarily creators:

  • researchers and assistants who directly helped the creator/s to develop, but not create, the IP. Some universities call such people ‘contributors’.
  • authors of publications or conference presentations describing the IP, and
  • inventors originally listed on patent applications that have since been significantly amended when examined for granting.

Determining  ownership

Having identified the IP and its creators, the next ownership issues are: Who employed the creator/s? Who funded their R&D? What organisations participated in the R&D?

You’ll find answers to these questions in employment contracts, university IP policy, R&D funding contracts and R&D collaboration contracts. Later, commercialisation agreements usually alter original ownerships.

The ownership of each IP item must be individually assessed. But there are ownership trends in Australian universities:

  • percentage of profits. The university asserts full ownership or, if external funding or collaborating organisations are involved, at least part ownership. To confirm this, researchers are usually expected to execute a formal assignment of their IP ownership to the university. In most cases, this assignment simply confirms the IP ownership situation that is created through their employment contract with the university.  
  • When a student creates IP in collaboration with a university staff member (e.g. their supervisor), the IP is usually jointly owned by the university and the student. If so, the university may request that the student assigns the IP to the university, so that the university can fulfil contractual obligations with any R&D funders and collaborators. The student will usually share in any commercial returns.

Students not employed by the university or funded by university funders and/or collaborators, who create their IP without assistance from university staff, usually own their IP. Through the university’s entrepreneurship hub/incubator – they can gain access to advice, resources, networks and opportunities, and will still share in any commercial returns.

Quick quiz – Q1: A person employed as a researcher at a university probably does not own any IP that they create there. True or false?

CORRECT: Noting probably in the question. With the TTO‘s help, the researcher should check their employment contract, any other contracts relating to the R&D from which the IP arose, and university IP policy documents. Even if the researcher doesn’t own the IP they created, he/she will usually share in any profit from commercialisation of the IP
INCORRECT: Try again.

Quick quiz – Q2: An unemployed undergraduate student probably owns all or part of any IP that they create at a university. True or false?

CORRECT: Noting probably in the question. With the TTO’s help, the student should check any contracts they signed relating to the R&D from which the IP arose, and university IP policy documents. If the IP was created with others, joint ownership is likely
INCORRECT: Try again.

Quick quiz – Q3: If a university licenses its IP to an organisation, that organisation may then sell the IP to others. True or false?

INCORRECT: Try again
CORRECT: With a licence, the organisation has rights to use the IP, but the organisation doesn’t own the IP and so can’t sell it to someone else.

Quick quiz – Q4: You file a patent application on 3rd March for IP created by your R&D group. Then a colleague in your group tells you they disclosed the IP at a public conference on 2nd March. The disclosure is prior art that rules out patenting the IP. True or false?

CORRECT: because the IP disclosure pre-dates your patent application’s filing. The date that you became aware of the disclosure is irrelevant, and so is the fact that it was your own R&D group that made the disclosure
INCORRECT: Try again.