Draft – Intellectual Property Created by Staff and Students Policy

All staff members and students at the University, including visiting staff and visiting students.Rights and obligations under this policy that have accrued prior to termination will survive any termination of employment, enrolment or appointment at the University.

This policy seeks to establish how the intellectual property created by staff, members students, and visiting staff and students will be managed.

Objectives

1.2 The objectives of this policy are to:

a. State clearly the respective ownership rights of the University and its members in relation to intellectual property;

b. Preserve and enhance a climate of creativity, innovation, entrepreneurship and inventiveness among staff and students;

c. Foster an awareness of the importance of intellectual property among staff and students;

d. Assist in establishing appropriate mechanisms for the more effective translation of intellectual property into benefit for its members, its creators, and other rights holders and the community.

1.3 In giving effect to this policy the University acknowledges the need to be guided by the aims laid down in its mission statement and its obligations under the Education and Training Act 2020.

Particular regard is to be given to:

a) The University’s responsibility to acknowledge the principles of Te Tiriti o Waitangi;

b) The University’s role as a critic and conscience of society;

c) The maintenance of international standards of research and teaching;

d) The freedom of academic staff and students within the law to:

(i) question and test received wisdom;

(ii) put forward new ideas;

(iii) state controversial or unpopular opinions; and

(iv) engage in research.

1.4 Except as it may affect the rights and obligations of staff and students, this policy is not intended to govern dealings between the University and third parties concerning intellectual property.

1.5 The University reserves the right to enter into express agreements with individual staff or students relating to intellectual property. Such agreements may be at variance with this Policy.

1.6 This policy is to be administered and interpreted in accordance with the objectives and obligations set out in clauses 1.2 and 1.3.

Ownership issues - staff

2.1 Where staff members (including visiting staff) create any works other than an excluded copyright work:

i) in the course of their employment, appointment or engagement; and/or

ii) using University resources

the University will own the work and all intellectual property rights in and to that work. To the extent the University does not automatically own such works and intellectual property rights to them, the relevant staff member will hold such works and intellectual property rights on trust for the University, and the University may require its staff members to assign such works and intellectual property rights to the University, or Auckland UniServices Limited, unless those rights are abandoned under the provisions of clauses 6.4 and 6.5 of this policy, or as specified by the terms of a contract.

2.2 The University retains ownership of any physical object or tangible material embodying or incorporating its intellectual property rights, including any physical object or tangible material required to exploit or use excluded copyright work under clause 2.4.

2.3 Subject to the conditions set out in clauses 2.4 and 2.5, the University agrees that copyright in an excluded copyright work belongs in the first instance to the staff member or members who create it unless expressly and separately commissioned by the University independently of any employment agreement.

2.4 Where an excluded copyright work is produced in whole or in part in the course of a staff member’s employment or using University resources, the staff member grants the University a perpetual, non-exclusive, royalty free, worldwide, sublicensable, and irrevocable licence to exploit or use that work either itself or through other academic institutions provided that such exploitation or use:

a. is confined to the delivery of courses or programmes offered by the University, and

b. complies with the prescribed copying limit (except for instructional material for which the prescribed copying limit does not apply).

2.5 Staff wishing to enter into an agreement of assignment or licence with a third party in relation to any excluded copyright work are to notify the third party of the existence and extent of the University’s licence under clause 2.4.

2.6 Background intellectual property.

(a) Except as stated in 2.6 (b) below, nothing in this policy affects the ownership of any intellectual property rights that arose, or will arise, independently of the relevant staff member’s employment, appointment, or engagement with the University (background IP).

(b) Staff must not incorporate background IP, or any third-party IP, into any works arising under or in connection with a contract between the staff member and the University (including any Research Contract) without first obtaining the University’s prior written approval. Staff agree that any background IP incorporated into such work without the University’s approval will be owned by the University in accordance with clause 2.1.

2.7 Intellectual property emanating from Research Contracts.

The terms of the Research Contract will regulate ownership of IP created by Staff Members in the course of a Research Project that forms part of a Research Contract, as set out in Section 7 Research Contracts below.

2.8 Appointment of staff members at another Institution.

It is the responsibility of each Staff Member who holds an honorary or other academic or research appointment at another institution (Host Institution) to bring to the attention of the Host Institution, including its IP Management Office (IPMO), his/her/their obligations in terms of this Policy, prior to the tenure at the Host Institution. To the extent that the Host Institution’s IP Policy makes a claim on IP created by the Staff Member pursuant to such appointment, the Staff Member shall ensure that the Host Institution negotiates a suitable IP arrangement with the University.

Ownership issues - students

3.1 Students (including visiting students) do not relinquish their intellectual property rights by enrolling in a programme of study offered by or on behalf of the University.

3.2 The University may require students to assign their intellectual property rights to itself or a third party as a condition of participation in a particular research project or exercise. In such cases the student shall be given an explanation of the need for such assignment and an opportunity to seek independent legal advice.

3.3 The terms of the Research Contract shall regulate the ownership of IP created by a Student in the course of such Research Contract, as set out in Section 7 Research Contracts.

3.4 The University agrees that students are to be the first owners of copyright in their theses, dissertations and other assessable work.

Mātauranga Māori and Taonga Species

4.1 Staff that are planning to create or develop works that (i) use or incorporate mātauranga Māori or Taonga, and (ii) are intended for commercialisation, should take appropriate steps to ensure that the proposed use will uphold Māori interests and values. These steps may include consulting with faculty Kaiārahi or other pou (suitably qualified people) with knowledge of mātauranga Māori, tikanga Māori, te ao Māori and Taonga. For the avoidance of doubt, this clause does not apply to excluded copyright works.

4.2 Issues arising in connection with clause 4.1 may be raised with the Pro Vice-Chancellor Māori or their nominee, who should provide advice on issues taking into account the University’s broader obligations and interests, including those under the Education and Training Act 2020.

Moral rights

5.1 The University acknowledges the moral rights which the law confers on staff, students and visiting staff and students.

5.2 The University accepts that the creators of excluded copyright works are to have their full moral rights as first owners of copyright in such works.

5.3 The University will not require staff, students nor visiting staff and students to waive their moral rights as a condition of employment, funding or attendance, but this does not prevent such staff or students from choosing to do so on a case-by-case basis.

Identification and notification

6.1 When staff or students (including visiting staff and students) create intellectual property to which the University has any claim in law or in terms of this policy and which, in the creators’ view, offers possibilities for commercial development, the creators shall promptly make that fact known to Auckland UniServices Limited as the University’s IPMO.

6.2 Whenever disclosure is made under clause 6.1, the University may require the staff or students concerned to provide further details of the intellectual property in question including:

a. the date upon which the intellectual property was created;

b. the identity of any person or persons who contributed to the creation of the intellectual property;

c. the details of any pre-existing intellectual property which was used in creating the intellectual property;

d. whether any person other than the creator claims any entitlement or interest in the intellectual property;

e. the details of any University facilities or resources used to create the intellectual property;

f. the details of any likely existing or potential use for, or commercial exploitation of, the intellectual property;

g. any financial or other interest in a third party which might affect the commercial exploitation of the University’s intellectual property;

h. the details of all expenditure made, and its source, in relation to the creation of the intellectual property;

i. connections to Mātauranga Māori, Wai262, indigenous flora or fauna (including microorganisms), or specifically to Māori people, culture and/or related data;

j. disclose details of materials used, source of any funding conditions or requirements of any funder, and

k. details of any Open-Source materials, including software, plugins or the like, and any details of the licenses related to those materials.

6.3 Staff and students should keep a copy of the details of all Open-Source materials, including the date of download, details of any licensing requirements, if any, copyright or creative commons details.

6.4 Within 120 days of first being notified of the existence of intellectual property, or within 120 days of receiving any additional information requested under the provisions of clause 6.2, whichever is the later, the University, shall:

a. make a decision as to whether it wishes to continue to investigate, invest or develop the intellectual property, and

b. advise the creator of the intellectual property of UniServices continued interest in the intellectual property.

6.5 Failure to decide and notify in terms of clause 6.4 shall be treated as an abandonment by the University of its rights in the intellectual property in question. To avoid doubt, nothing in the clause 6 affects the perpetual licence rights the University has under clause 2.4 to excluded copyright works.

Research contracts

7.1 Authority.

Staff Members, Students and Visitors shall not have the right to enter into a Research Contract with external parties on behalf of the University, except in accordance with relevant delegated authorities.

7.2. The University or its designated agents has exclusive rights to enter into Research Contracts on behalf of the University.

7.3. Ownership and rights to use.

Subject to any provisions in law to the contrary, ownership and rights to use shall be agreed upon with the external party. The contract will give consideration to rights and process for background IP, foreground IP, co-owned IP, Serendipitous IP, research and teaching and investment and commercialisation rights.

Protection, commercialisation, and investment

8.1 The decision whether or not to invest in and develop its rights to intellectual property lies with the University, not individual staff or students. The University undertakes to consult with creators as to the appropriate mode of commercialisation.

8.2 Staff and students (including visiting staff and students) must not do any of the following things in relation to the University’s intellectual property:

a. Apply for the grant of a patent or other registrable intellectual property right; or

b. Enter into any contracts, discussions, or negotiations with third parties without the permission of the University; or

c. Knowingly act in any way which is inconsistent with the University’s intellectual property rights or which diminishes or lessens the value of those rights.

8.3 Staff or students (including visiting staff and students) who create intellectual property to which clause 8.1 relates shall provide the University with all reasonable assistance in its exploitation or development including:

a. Providing information when required;

b. Executing specified documents;

c. Participating in appropriate marketing or promotional activities.

8.4 Where staff or students (including visiting staff and students) are unwilling or unable to execute documents as provided in clause 8.3 above, the University shall be deemed to have an irrevocable authority to execute on their behalf any document which is consistent with the objectives of this policy.

8.5 The University will share the net benefits of commercialisation with the creator on an agreed case by case basis.

8.6 For further information refer to:

a. the Deed of Assignment of Intellectual Property between the University of Auckland and Auckland UniServices Limited,

b. The UniServices Investment Policy, and

c. The University of Auckland Statement of Investment and Operating Principles.

Publication and information exchange

9.1 In accordance with its obligation to protect and enhance academic freedom, the University acknowledges the right of staff and students to:

a) Exchange information with colleagues in other academic and research institutions;

b) Present and publish the results of their research and scholarly endeavours in a full and timely way.

9.2 Where such exchange, presentation or publication may diminish the value of or opportunity to exploit the contained intellectual property, staff and students must notify the University of their intention to disclose this information. The University may in particular cases, and for a limited period, require staff and students to:

a. Inform the recipients of information relating to the Intellectual Property or the physical material embodying it that they:

i) may only use the information or material for stated purposes;

ii) may not further disclose the information (or transmit the material) without the consent of the University.

b. Suspend publication or presentation of all or part of particular research outcomes for as long as may be reasonably necessary for the University to complete the successful commercialisation of those outcomes or comply with the University’s pre-existing obligations to third parties. In normal circumstances such a period would not be expected to exceed twelve months and staff and students would usually be informed of the need to restrict publication or disclosure before they embark on the research in question. Agreements with third parties containing such restrictions must first be submitted to the Deputy Vice-Chancellor (Research) for approval;

c. In the case of research in fulfilment of a contract, the terms of the contract related to publication shall apply.

9.3 The University may designate certain confidential information as a Trade Secret owned by the University, or Restricted Information. In that event, all Creators will be obligated to maintain secrecy of the Trade Secret and to follow the direction for management of the Trade Secret by Auckland UniServices Limited.

9.4 The Deputy Vice Chancellor (Research) as data governor for research data shall be responsible for designation of Restricted Information.

9.5 The University will take all steps necessary to ensure that the protection and/or commercialisation of Intellectual Property consistent with the provisions of clause 9.2 does not unreasonably delay the conferment of a degree or other academic qualification on the creator of the intellectual property.

Administration and legal effect

10.1 Where there is any inconsistency between this policy and an employment agreement with staff, such agreements will prevail over the policy.

10.2 The University is free to waive or relinquish its intellectual property rights whether by agreement, contract or otherwise as circumstances may dictate.

10.3 This policy only relates to intellectual property which comes into existence after 30th December 2000.

10.4 The University acknowledges that disputes arising from the interpretation or application of this policy should as far as possible be settled without resort to litigation or other legal process. The University will consult with all interested parties as to how this may be achieved.

For the purposes of this document, the following definitions are used:

• Academic institution means any public or private sector organisation whether inside or outside New Zealand engaged in the provision or delivery of tertiary education and includes tertiary institutions established under the Education and Training Act 2020.
• Artistic work means an artistic work as defined by the Copyright Act 1994.
• Building means a building as defined by the Copyright Act 1994.
• Book includes sections in books.
• Copying means copying as defined in the Copyright Act 1994.
• Copyright work means those original works referred to in section 14 of the Copyright Act 1994 and further defined in section 2 of that statute or their equivalents under other applicable law and includes a work of joint authorship.
• Creator means any person who produces, invents, discovers, originates, develops or puts into practice any intellectual property and “create”, “created” and “creating” have corresponding meanings
• Dramatic work includes dramatic works as defined by the Copyright Act 1994.
• Excluded copyright work means:
  • monograph, journal article, book or conference paper whether first published in hard copy or in some other format, and
  • Except where expressly and separately commissioned by the University independently of any employment agreement:
    • A dramatic work;
    • The words of a song
    • A musical work;
    • Instructional material.
• Host institution means the organisation that provides an honorary or temporary position to a member of staff and a student at the University.
• Instructional material means any copyright work prepared specifically for the purpose of assisting teaching and learning.
• Intellectual Property means any discovery, innovation, invention, form, shape, sound, image, expression, technique or process which is the product of skill, effort or intellect and includes:
  • Copyright works and performances;
  • Patentable and potentially patentable subject matter and associated know-how;
  • Plant varieties and invented life forms;
  • Designs, registrable or otherwise;
  • Databases and other valuable or potentially valuable information, including research outcomes and records;
  • Material subject to an obligation of confidence;
  • Layout designs for integrated circuits;
  • Signs or insignia of origin, quality, reputation, or commercial connection;
  • Registered and unregistered trade marks and business names, and
  • Instructional material.
• IP Management Office (IPMO) means the entity appointed by the University of Auckland as the IPMO. At the date of this policy the IPMO is Auckland UniServices Limited.
• Intellectual property right or right to intellectual property means any claim, right or interest in intellectual property which is enforceable under the law of New Zealand or any other country, whether by contract or direct operation of law.
• Layout design means a layout design as defined in the Layout Designs Act 1994.
• Mātauranga Māori refers to Māori knowledge
• Member of the University includes staff members (whether permanent, temporary or part time), honorary staff, students (whether full time or part time), contractors, subcontractors, consultants, alumni, associates, business partners or official visitors or guests of members of the University or UniServices.
• Moral rights are the rights conferred on authors and others under Part IV of the Copyright Act 1994 or equivalent provisions under the law of the place where such rights are sought to be enforced.
• Musical work means a musical work as defined in the Copyright Act 1994.
• Open source means any software program whose source code is made available for use or modification as users or other developers see fit. Unlike proprietary software, open-source software is developed as a public, open collaboration and made available to the public
• Performance means a performance as defined in section 169 of the Copyright Act 1994 or other applicable law.
• Plant variety means a plant variety as defined in the Plant Variety Rights Act 2022.
• Prescribed copying limit means the terms and conditions on which a copyright work may be copied or accessed under a collective licensing agreement or where no such terms and conditions currently apply to the work, those laid down in Part III of the Copyright Act 1994.Public Record refers to a record created by a public office when carrying out its activities. The University is defined under the Public Records Act 2005 as a public office. A public record does not include a special collection or records created by the academic staff or students of a tertiary institution, unless the records have become part of that institution.
• Record refers to information created, received and maintained as evidence and information in pursuance of legal obligations or in the transaction of business. (ISO15489). Records may be in any format – electronic, email, databases, paper-based, spreadsheets, letters, agreements, photographs, plans etc. The content and context are important, not the medium.
• Research materials means any information concerning particular research activities recorded in a form capable of reproduction and includes notes, designs, drawings, memoranda and other writings
• Research outcome means the results and conclusions arrived at as the result of particular research activities and includes products, processes, experimental methods and supporting data.
• Restricted Information means research that may fall under Protective Security Requirements or information where there are significant penalties for breach of confidentiality as contained in the University’s Research Data Classification Standard
• Serendipitous IP means an invention made or discovered by chance rather than intent.
• Sign means sign as defined in the Trade Marks Act 2002.
• Staff member means a person engaged by the University on an employment agreement on a full or part-time basis.
• Student means any person other than a staff member enrolled for any course or qualification offered by or on behalf of the University.
• Third party means any person or organisation other than the University of Auckland or its members.
• Taonga means anything that is treasured by Māori, including tangible things (such as land, waters, plants, wildlife and cultural works) and intangible things (such as language, identity, and culture, including mātauranga Māori itself). Taonga can also include tangible products of mātauranga Māori, including traditional artistic and cultural expressions.
• Trade mark as defined in the Trade Marks Act 2002.
• Trade secret means confidential information not publicly available that has commercial value because of its confidential nature
• University means Waipapa Taumata Rau | University of Auckland and all subsidiary companies and entities owned by the University and includes:
  • Auckland UniServices Limited;
  • Such other person or organisation as may be specified from time to time by the Vice-Chancellor as being affiliated to the University for the purposes of this policy.
• University records refers to public records created by the University when carrying out its activities. Academic research materials, personal teaching materials and materials created by students are not public records, unless specifically designated as such. Research materials, personal teaching materials and materials created by students should, where appropriate, be managed in accordance with the University’s Research Code of Conduct Policy, Records Management Policy and Intellectual Property Created by Staff and Students Policy.
• University resources means information, money or property owned, provided or obtained by the University and includes:
  
  • Pre-existing intellectual property rights vested in the University;
  • Other confidential information of the University;
  • Funds obtained by or through the University.
• Visiting staff is a person who is a staff member of another organisation and has been invited by the University to carry out teaching and/or research at the University
• Visiting student is a student who is enrolled at another tertiary education institution (their ‘home institution’) and has been approved by the University to undertake study and/or research at the University as part of a degree qualification at their home institution.
• Works means documents, prototypes, plans, drawings, diagrams, designs, technical information, circuit layouts, tools, sound recordings, video recordings, photographs, artistic or literary works, source code, object code, databases, tables, compilations, inventions, discoveries, and/or trade secrets.
• Work of fine art means an artistic work originally produced in single or limited editions and not intended for industrial application or use; but does not include:
  • a work of architecture being a building or a model or plan for a building; or
  • a means of storing, accessing or arranging an artistic work.
• Work of joint authorship means a work of joint authorship as defined in section 6 of the Copyright Act 1994.

Includes the following 

• IP Policy Guidelines (TBC)
• Open Access Policy
• Records Management Policy
• Research Charter for Aotearoa New Zealand (Royal Society)
  
• Research Code of Conduct Policy
• Research Data Management Policy and Guidance
• Research Data Classification Standard (ResearchHub)
  
• Research Data Retention  (ResearchHub)
  
• Taumata Teitei – Vision 2030 and Strategic Plan 2025 
• Trusted Research Guidance for Institutions and Researchers (PDF, 3.67MB) (Protective Security Environments NZ)
• Trusted Research – Protective Security Requirements Guide for Senior Leaders (Universities New Zealand)
• Deed of Assignment of Intellectual Property
• UniServices Investment Policy
• University of Auckland Statement of Investment Principles and Operations

Owner: Deputy Vice-Chancellor Operations & Registrar
Content manager: General Counsel
Approved by: Vice-Chancellor
Date approved: (TBC)
Review date: (TBC)