Policy in Relation to
Bayside Health Employee-Created Intellectual Property, and Contracts
Entered into by Bayside Health with Third Parties
Preamble
Implementation
Policy
and Guidelines on Intellectual Property
1.0 Interpretation and Basic Terminology
2.0 Awareness
3.0 Ownership
4.0 Risk
5.0 Policy on Income from Intellectual Property
6.0 Protecting Intellectual Property
7.0 Naming of Inventors/Interested Parties
8.0 Administration
9.0 Breach of this Policy
Schedule 1: Confidential Information
Schedule 2: Laboratory Book Maintenance
Policy
Schedule 3: Bayside Health Intellectual
Property Committee
The
Alfred is one of Victoria’s most reputable teaching hospitals. It also
has a number of key research linkages, particularly with Monash
University, the Baker Medical Research Institute and the Macfarlane Burnet
Institute for Medical Research and Public Health. A key tenet of The Alfred’s research
mission is to ensure that its research excellence is manifested in better
healthcare outcomes, as well as wealth creation for Bayside Health and its
staff to continue its cycle of appropriate investment in key research
areas. While less developed than at The Alfred, research and development
activities at CGMC and SDMH are strongly encouraged.
To
ensure that this vision can be met and enhanced, it is imperative that the
“intellectual property” of Bayside Health in
the form of its research outputs, be captured and utilised for the benefit
of Bayside Health and its staff, the latter being the
ultimate creators of this intellectual property.
With
the formation of the Alfred Medical Research and Education Precinct (AMREP)
and Bayside Health’s desire to ensure appropriate management and
commercialisation of its intellectual property, it has developed this
policy and management guidelines for intellectual property created by
Bayside Health staff.
It is similarly important
for entrepreneurial
research activity to be encouraged across Bayside Health’s sites,
within the bounds of appropriate corporate governance.
Implementation
-
This policy relates to all Bayside Health staff as defined
in the policy.
-
This policy is overseen by the Bayside Health
Intellectual Property Committee.
-
This policy will be brought to the attention of all existing
Bayside Health staff. Any new Bayside Health staff will be advised of this
policy prior to commencement of their employment.
This
policy relates to existing and future Intellectual Property as well as any
contractual arrangement which is to be entered into by or on behalf of
Bayside Health relating to existing and/or future
Intellectual Property.
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Bayside Health Policy
and Guidelines on Intellectual Property
Purpose of Document
This document explains Intellectual Property, how it
may advantage you and your department and your obligations to Bayside
Health. Bayside Health recognises the value of the research conducted on
its premises, or by staff, students, visiting scientists and visiting
medical officers using its facilities or services.
1.0
Interpretation and Basic Terminology
“Intellectual
Property” refers to all kinds of Intellectual Property including but
not limited to patents and applications, know-how, confidential
information and trade secrets, computer programs or graphics, source codes
or the like, registered designs, copyright, circuit layout rights,
trademarks, and applications for registration of trademarks and any
contractual rights which may exist in relation to any innovation or work. However,
it should be noted that the application of this policy is fundamentally
designed to deal with commercially viable outputs from individuals.
“Bayside
Health Staff/ Employee”
means any individual who is employed directly by Bayside Health; is
indirectly employed through Bayside Health such as on grant funds
administered by Bayside Health; is jointly appointed by Bayside Health and
one or more third parties (“Joint Bayside Health Employee”);
utilises the facilities of the Bayside Health either
by way inter alia of clinical or research application (“Visiting
Employee”); or any student who uses the facilities of Bayside Health as
part of their research activities (“Bayside Health Students”).
“The
Alfred” means The Alfred, a member of Bayside Health.
“Caulfield
General Medical Centre” means Caulfield General Medical Centre, a
member of Bayside Health.
“Sandringham
& District Memorial Hospital” means Sandringham & District
Memorial Hospital, a member of Bayside Health.
“Bayside
Health Intellectual Property Committee”
means the committee established by Bayside Health for administration and
commercialisation of Intellectual Property.
“Bayside Health” means the legal entity of which
The Alfred, Caulfield General Medical Centre and Sandringham &
District Memorial Hospital are a part.
“Innovation”
means any process, invention, design, artistic or literary work (or other
copyright work), information, know-how, reagents or the like with
potential commercial application.
“IP
Contracts” refers to any contract written or oral proposed to be
entered by Bayside Health where
future or existing intellectual property rights of Bayside Health are
proposed to be transferred and/or encumbered by any third party.
“Confidential
Information” means the Confidential Information referred to in Schedule
1.
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2.0
Awareness
2.1
It is important that all relevant persons have an
understanding of Intellectual Property. The relevant people include all
Bayside Health Staff
including the administrative staff who would administer any matters
related to Intellectual Property.
2.2
It is the policy of Bayside Health that
all Bayside Health Staff, students and other visitors who may
in some way be connected with research, development or administration of
Intellectual Property rights, should have a sound understanding of how
Intellectual Property rights may be created.
2.2.1
Having become aware that Intellectual Property has been created
Bayside Health staff
will need to consider how benefits may be obtained. They will need to
avoid acts or omissions which may jeopardise Intellectual Property rights.
2.3
Upon first arrival at Bayside Health, the particular
Bayside Health Staff/Employee will be advised of this
policy.
2.4
Where a Bayside Health Staff
member is a Joint Bayside Health Employee,
Visiting Employee and/or Bayside Health Student, or where the research is
a collaborative venture with another organisation which may or may not be
providing funding, the Bayside Health Staff
member should as soon as possible notify the Secretary of the Bayside
Health Intellectual
Property Committee to enable appropriate contractual negotiation with the
third party to be enacted. Such negotiations will establish contractual
agreement on the terms and conditions of sharing the costs and benefits of
potential commercialisation of Intellectual Property between Bayside
Health and collaborating organisations. Examples would be joint Bayside
Health and
University appointments and collaborative research projects between
Bayside Health Staff
and organisations which supply research funding. If at all possible such
persons or their proposed supervisors should notify the Secretary of the
Bayside Health Intellectual
Property Committee prior to commencement of employment.
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3.0
Ownership
3.1
Where Intellectual Property is created during the
course of a Bayside Health Staff
member’s employment or as a result of use of resources, facilities or
funds provided by Bayside Health, those Intellectual Property rights
belong to and are owned by Bayside Health.
3.2
Prior to commencement of work which may result in the
creation of Intellectual Property, the Bayside Health Staff
member must ensure that they have the explicit approval of their
supervisor that such work is relevant and within the terms of their
employment. Where such approval is refused, the Bayside Health Staff
member is not eligible to receive any potential benefits of
commercialisation of such Intellectual Property.
3.3
With the exception of any agreement entered into as
per Clause 2.4 by Bayside Health with
the third party with whom a Bayside Health Staff
member has an affiliation (as in the case of a Joint Bayside Health Employee,
Visiting Employee or Bayside Health Student),
all of the Intellectual Property generated by such Bayside Health Staff
during the course of their employment by Bayside Health will belong to
Bayside Health. All Bayside Health Staff
and any other persons considered relevant by the Bayside Health Intellectual
Property Committee shall be required to execute, as a condition of
employment/secondment/attendance or use of Bayside Health facilities
or funds, an appropriate agreement to the effect that all Intellectual
Property rights are to be owned by Bayside Health. Bayside
Health may
also require of any of Bayside Health Staff
that upon reasonable request they will confirm Bayside Health’s
ownership of any Intellectual Property that was created by them during the
course of their employment by Bayside Health.
3.4
It is Bayside Health’s sole province to deal with
Intellectual Property rights. Any application for patents or other
protection and the entering into and negotiation of Intellectual Property
contracts will be undertaken by the Bayside Health Intellectual
Property Committee at its discretion, but in consultation with the
relevant Bayside Health Staff.
Without
the written consent of the Bayside Health Chief
Executive, acting on the advice of the Bayside Health Intellectual
Property Committee, there should be no discussion of Innovations with
third parties.
3.5
If the Bayside Health Intellectual Property Committee decides on
behalf of the Bayside Health Board that it does not wish to provide funds
for the protection and/or commercialisation of Intellectual Property it
shall, if requested by the relevant Bayside Health Staff member, provide
the relevant Bayside Health Staff member with a forty-five (45) day first
right to negotiate the terms under which Bayside Health will assign this
Intellectual Property to them, taking into account all costs to Bayside
Health to the date of the assignment, and subject to the costs and any
taxes of such transfer being met by the Bayside Health Staff member. If no
patents have been filed and no other costs incurred, in respect of such
Intellectual Property when the Bayside Health Intellectual Property
Committee decides not to proceed, such assignment shall be free of charge
to the inventor. However, in the situation where Bayside Health has
incurred associated costs this assignment may include provisions for
Bayside Health to receive a proportion of any income or consideration
generated by such Intellectual Property. If such rights are assigned,
conditions of the assignment will be subject to an ongoing right for
Bayside Health to use the Innovation in-house at no cost to Bayside
Health. In addition, the Bayside Health Staff member will provide the
Bayside Health Intellectual Property Committee with a report on a six
monthly basis of the status of such Intellectual Property. In the event of
the Bayside Health Staff member indicating in such a report, that they are
not proceeding with protection and/or commercialisation of the
Intellectual Property, the Bayside Health Staff member and the
Intellectual Property Committee should meet to negotiate a reassignment of
the Intellectual Property rights.
3.6
Where a written work to which this policy applies (not
being a computer program) is created solely for the purpose of publication
in a professional or learned journal, or by form of a text book or other
academic constitution, Bayside Health must assign copyright in that
literary work to the person who created that literary work, or to the
publisher, as is deemed.
3.7
Any assignment of copyright under the preceding
paragraph must be on condition that:
(a)
Bayside Health has an automatic, non-exclusive, royalty-free and
irrevocable licence to reproduce, publish, disseminate or otherwise use
the literary work for Bayside Health’s own purposes; and
(b)
Bayside Health has the right to recover from the
creator of popular and/or commercial written work any costs incurred by
Bayside Health in providing funding, salary, resources, facilities,
apparatus or supervision for the creation of the literary work.
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4.0
Risk
4.1
Development and protection of Intellectual Property
involves an element of risk. The cost of obtaining legal advice, searches
and advice from patent attorneys, as well as patent application fees
themselves, must be considered. This consideration will be the province of
the Bayside Health Intellectual
Property Committee according to the terms of delegations to it by the
Board.
4.2
Bayside Health reserves
its rights to determine whether particular Intellectual Property should be
pursued and developed or whether protection such as patents should be
obtained. Bayside Health may at any time seek external advice
concerning any of these matters.
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5.0
Policy on Income from Intellectual Property
5.1
Where Bayside Health manages
to successfully commercialise Intellectual Property, income or other
consideration will be derived. Bayside Health will
incur costs during the process of such commercialisation. Any income or
consideration to be shared by Bayside Health will
be based on net income derived from the Intellectual Property.
Income
derived from the commercialisation of Intellectual Property will be
distributed net of the following costs:
5.1.1
Costs associated with the commercialisation and protection of the
Innovation or the Intellectual Property which costs shall include, but not
be limited to:
(a)
All costs of protecting the Intellectual Property if
any, including all legal costs, costs of obtaining or applying for
patents, registered designs or any other form of Intellectual Property
protection; costs of enforcing or defending any patents, copyright,
registered design or any other form of Intellectual Property.
(b)
Legal costs of entering into any Intellectual Property
contract or other commercial agreement and/or advising on any matter
concerning the Intellectual Property; and
(c)
Any tax, duty, excise or impost including stamp duty
on any agreement which may be payable by Bayside Health in relation to
research and/or any tax on income derived from the Intellectual Property.
5.1.2 The balance of the income or consideration remaining after the
payment of the amounts referred to under 5.1.1 above shall be disbursed as
follows:
(a)
One-half to the relevant Bayside
Health Staff;
(b)
One-quarter to the Department(s) within Bayside Health in
which the relevant Bayside Health Staff
were employed at the time of making the invention;
(c)
One-quarter to Bayside Health.
5.2
If there is more than one Bayside Health Staff
member involved in the creation of such Intellectual Property, the 50 per
cent of proceeds shall be divided amongst Bayside Health Staff
named as inventors in accordance with the independent patent attorney’s
report described in clause 7.
5.3
It is also recognised that Intellectual Property may
be commercialised through “start-up” companies. In such cases Bayside
Health Staff
may, with the approval of the Bayside Health Intellectual
Property Committee, own equity in such start-up companies in addition to
their entitlements under this section.
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6.0
Protecting Intellectual Property
6.1
Bayside Health Staff
must comply with any guidelines issued by the Bayside Health Intellectual
Property Committee, to ensure that Intellectual Property rights are
protected.
6.2
Bayside Health understands
the desire and the need within the medical and scientific communities to
publish findings and results and to discuss matters with colleagues in the
interests of medical advancement. However, it recognises that it can be
extremely easy to lose the ability to obtain patent or other Intellectual
Property protection. This may occur with the premature publication, public
announcement or report in the media, seminar, conference or other
communication. It may also be lost by approaching commercial interests too
early. Accordingly, any and all proposed publications or communications
regarding Innovations (i.e. with potential commercial application) by
Bayside Health Staff
must be provided to the Secretary of the Bayside Health Intellectual
Property Committee prior to their submission or undertakings. The
Secretary will advise the submitting party within twenty-one (21) days or
longer as may reasonably be required by the Secretary should independent
advice be required, of any Intellectual Property implications. Bayside
Health will
not unreasonably withhold permission to publish or communicate new
information and will prohibit or defer publication only so long as such
publication provides a significant threat to protection of the
Intellectual Property or future exploitation of it. In addition, Bayside
Health is
committed to making application for Intellectual Property protection as
soon as is practically possible for any worthwhile Innovation.
6.3
Any person who believes that Intellectual Property may
have been or may in the future be created must as soon as possible report
this to the Bayside Health Intellectual
Property Committee setting out the basis for this belief, and the Bayside
Health Intellectual
Property Committee will address such issues at its next meeting.
6.4
It is important that the owner of Intellectual
Property protects such Intellectual Property against unauthorised use. As
part of such protection it is necessary to ensure that the Intellectual
Property rights claimed are valid and/or have priority over any competing
patent claims. As such, it is necessary to ensure that the research data
generated is recorded in accordance with the necessary procedures to
enable it to be entered into evidence at the necessary time. It is a
condition of this policy that all Bayside Health Staff
will follow the guidelines for the keeping and maintenance of research
data and records published from time to time by the Secretary of the
Bayside Health Intellectual
Property Committee. The current guidelines are attached as Schedule 2
to this document.
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7.0
Naming of Inventors/Interested Parties
Within
sixty (60) days of the Bayside Health Intellectual
Property Committee determining to proceed with the protection of an
Innovation or Intellectual Property, the Secretary of the Bayside Health Intellectual
Property Committee shall facilitate a meeting of all Bayside Health Staff
and former staff claiming an interest in the Innovation/Intellectual
Property where in front of an independent patent attorney all such Bayside
Health Staff
and former staff shall have the ability to put their case for inventorship.
Such independent patent attorney will examine any and or all claims and
within thirty (30) days of such meeting shall issue a formal opinion
outlining the inventors to be named and if justified in his/her opinion
the contribution of each inventor to the invention. Such opinion shall be
binding on Bayside Health and
Bayside Health Staff.
The costs of obtaining such opinion shall be borne by the Bayside Health Intellectual
Property Committee.
8.0
Administration
Bayside
Health shall
establish the Bayside Health Intellectual
Property Committee to advise Bayside Health’s Chief Executive on all
matters related to Intellectual Property and implement and administer
Bayside Health’s policies and procedures related to it.
Schedule
3
sets out the Terms of Reference for this committee.
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9.0
Breach of this Policy
9.1
Any breach of any provision of this policy by any
Bayside Health Staff is to be brought to the attention of
the Bayside Health Intellectual
Property Committee.
9.2
The Bayside Health Intellectual
Property Committee may, at its discretion, inform itself of the
circumstances of the breach.
9.3
The Bayside Health Intellectual
Property Committee may, at its discretion, recommend that Bayside Health invoke
disciplinary proceedings against the Bayside Health Staff
member in relation to the breach.
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Schedule 1
Confidential Information
Preamble
Bayside
Health has a policy that any Intellectual Property, including any
confidential information created by its staff in the course of their
employment, shall be owned by it, and to ensure that the commercial value
of such Intellectual Property is not lost, requires that all Bayside
Health Staff members are aware of their obligations in relation to
Confidential Information.
During
the course of his or her employment by Bayside Health, the Bayside Health
Employee may make, create or have access to information or data which has
commercial potential including but not limited to such things as data
within laboratory note books, samples, reagents, reports and the like and
which Bayside Health requires to be kept Confidential (“Confidential
Information”) and, as a reasonable condition of their employment by
Bayside Health must keep the Confidential Information, confidential in
accordance with the following terms and conditions.
Terms and
Conditions
1.
Obligations of confidentiality
1.1
The Bayside Health Employee will maintain the
confidentiality of the Confidential Information and use the Confidential
Information only for the purposes of their continuing employment by
Bayside Health.
1.2
The Bayside Health Employee:
(a)
will not disclose the Confidential Information to any
person to make use of or take advantage of the Confidential Information
for any purpose other than as specifically permitted by this Policy;
(b)
will take all steps necessary to ensure that the
Confidential Information is kept confidential;
(c)
will not copy the Confidential Information or permit
the copying of the Confidential Information in any form other than as
permitted by this Policy;
(d)
upon request will return the Confidential Information
to Bayside Health together with any copies of the Confidential
Information;
(e)
will not make use of the Confidential Information in
any manner so as to obtain any benefit, right or privilege for itself or
for any other person that would not have been available but for it having
access to the Confidential Information; and
(f)
will not publish or present data without express
consent of Bayside Health.
2.
Permitted disclosure
2.1
Subject to clause 2.2, The Bayside Health Employee may
disclose the Confidential Information to any officer, employee or agent of
Bayside Health who has a specific need for access to the Confidential
Information.
2.2
If permitted by the Chief Executive of Bayside Health
or his/her delegate, the Bayside Health Employee may copy the Confidential
Information, but must:
Keep
a record of all copies and make that record available on request;
Take
all precautions to ensure that the copies are protected from unauthorised
access or damage; and
Ensure
that the copies are returned or, in the case of copies stored or
reproduced other than in a physical form, expunged at the earlier of:
A
request being made by Bayside Health; or
Upon
completion of the Confidentiality period described in Clause 4.
2.3
Obligations of confidentiality do not extend to
information that:
Is
public knowledge, other than as a result of a breach of this Policy;
Is
already known to the time of disclosure (including trade secrets and
inventions not disclosed in existing patent applications);
Is
obtained by the Bayside Health Employee from a third party who is not a
Bayside Health Employee and who has a lawful right to disclose it;
The
Bayside Health Employee is required by law to disclose; or
Is
being or later is independently developed by the Bayside Health Employee
without use of or resort to the Confidential Information and this can be
proven by written records.
3.
Term
The
terms and conditions regarding Confidential Information will continue to
be of effect for the period ending three years from the date upon which
the employment of the Bayside Health Employee with Bayside Health ceases.
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Schedule 2
Laboratory Book Maintenance Policy
Schedule 3
Bayside Health Intellectual Property Committee
Purpose and
Function
The
Bayside Health Intellectual Property Committee will advise the Bayside
Health Chief Executive on all matters related to Intellectual Property and
implement and administer Bayside Health’s policies and procedures
related to it.
The
Bayside Health Intellectual Property Committee, through the Secretary or
other Committee member(s), will oversee all discussion and negotiation
between Bayside Health Staff and other relevant persons and Bayside
Health, regarding Intellectual Property unless the Chief Executive or
Board determines otherwise. The Bayside Health Intellectual Property
Committee will be responsible for developing the initial processes and
maintenance of appropriate mechanisms for establishing and implementing
this policy.
The
composition and terms of reference of the Committee will be reviewed
annually and amendments recommended to the Board.
Composition
-
Chief Executive, Bayside Health – Chair
-
Research Business Manager – Alfred Research &
Ethics Unit – Secretary
-
General Manager, The Alfred (or nominee)
-
General Manager, Caulfield General Medical Centre (or
nominee)
-
General Manager, Sandringham & District Memorial
Hospital (or nominee)
-
Director, Research Strategy, The Alfred
-
2 senior researchers, nominated annually by the Chief
Executive
-
An independent person being a registered Australian
patent attorney and who has direct experience in commercialisation and/or
licensing of intellectual property in the medical research field,
nominated annually by the Chief Executive
Terms of
Reference
On
behalf of the Board of Directors of Bayside Health:
-
To oversee and periodically review the Bayside Health
Intellectual Property Policy and its implementation;
-
To advise
the Chief Executive on all matters pertaining to the management of the
Intellectual Property of Bayside Health including, but not limited to its
identification, protection and commercialisation;
-
To direct education programs to disseminate
information about Intellectual Property and its protection, throughout the
organisation;
-
To oversee interaction between Bayside Health Staff
and commercial organisations, patent attorneys and legal advisers,
regarding Intellectual Property;
-
To ensure the appropriate negotiation of all
Intellectual Property contracts, through the Committee Secretary and / or
other appropriate Committee members;
-
To advise the Bayside Health Board as to the uses of
commercialisation income received by Bayside Health;
-
To participate in a dispute resolution process which
can be referred for advice to The Alfred Medical Research Council.
Operations
-
The Research Business Manager, Alfred Research &
Ethics Unit (Secretary of the Committee), will act as the first point of
contact for Bayside Health Staff and non-employees who wish to bring an
Intellectual Property issue to the attention of Bayside Health in
accordance with this Policy.
-
The Director, Research Strategy and the Research
Business Manager will arrange for the review of publications reporting
Innovations (i.e. with potential commercial application) arising from
Bayside Health prior to submission to the Committee.
-
The Director, Research Strategy and the Research
Business Manager will assist Bayside Health Staff members with any issues
relating to Intellectual Property, and provide guidance, help and
information.
-
Records of Bayside Health’s Intellectual Property
will be maintained in the Alfred Research & Ethics Unit.
Reports
to
The
Committee will report to the Bayside Health Board annually or as required,
via the Chief Executive.
Meetings
The
Committee will meet as required and may invite any number of non-members
to attend.
External
Assistance
The
Committee may within its delegated authority and at the expense of Bayside
Health, seek independent external advice on any matter placed before it.
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Policy
dated: October 2001
URL:http://www.alfredresearch.org/research/ip.htm
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