Part 4. Sharing of net commercialisation revenues
9. Procedure where there may be potential for commercialisation
1. An originator or a person who has an interest in University intellectual property or research intellectual property assigned under an HDR Student IP Agreement which appears to have potential commercial value must notify the Intellectual Property Officer of—
a. the existence of that intellectual property; and
b. any developments in respect of that intellectual property.
2. After receiving a notification, the Intellectual Property Officer must, within 12 weeks, decide whether to initiate protection of the intellectual property.
3. If the Intellectual Property Officer requires additional information, he or she may—
a. request the person to provide additional information; and
b. by notice to the person, extend the period for decision to enable the additional information to be considered.
10. Consideration by the Intellectual Property Officer
1. In considering a notification under regulation 9, the Intellectual Property Officer must consider—
a. the objects of the University;
b. the nature of the intellectual property and the extent of patent or other protection that is desirable;
c. whether the securing of patent or other protection is likely to assist in the development and commercial exploitation of an invention;
d. whether it is desirable for the University to maintain an interest in the quality and technical efficiency of production through the licensing of patents; and
e. the likely commercial returns to the University, taking into consideration the distribution principles.
2. In considering a notification under regulation 9, the Intellectual Property Officer—
a. must consult, in confidence, with the originator; and
b. may consult, in confidence, with other relevant parties.
11. Commercialisation plan
If the Intellectual Property Officer decides to initiate protection of intellectual property, the University must, within 12 months, develop a commercialisation plan.
12. Distribution of revenue
1. If the University derives financial return from commercialised intellectual property the distribution of the proceeds must take into account the distribution principles, subject to—
a. subregulations (2) and (3); and
b. the terms of any agreement between the University and relevant originators.
2. If the commercialisation of intellectual property involves establishing or participating in a limited company—
a. the originators are not entitled to share further in any financial returns or net revenues arising from the University’s equity interest or the commercialisation of the intellectual property;
b. the transfer, issue or allocation of shares in the company to the originators must occur at the time of establishment of the company or as soon as possible thereafter, at the election of the originators, subject to the originators indemnifying the University against any tax liabilities arising from the transfer, issue or allocation of the shares to the originators;
c. if the originators do not take up shares in the company, the University may take action as it considers appropriate in relation to the structure, management and operation of the company, including disposal of shares or closure of the company.
3. If the University takes action under subregulation (2)(c) and disposes of shares in the company, it must account to the originator for any net benefit from the disposal of the originator’s equity entitlement, based on the distribution ratio set out in subregulation (1).
4. The University may, upon receiving a request in writing from an originator to do so, vary the distribution of net revenues or equity ratios to reduce the revenue or equity received by the originator and increase the revenue or equity received by the University.
5. If there is more than one originator in respect of a particular item of intellectual property, they must determine how shares of net revenue or equity are to be distributed among them and inform the University of their decision in the form required by the University.
6. For the purposes of this regulation—
net revenues means revenue after deducting all costs relating to commercial development, protection and marketing.
13. Assignment if IP not protected or commercialised
The University must, on request by the originator, provide a written assignment of the intellectual property to the originator if—
a. the Intellectual Property Officer decides under regulation 9 not to initiate protection of the intellectual property;
b. the University decides, under an HDR Student IP Agreement, not to initiate protection of the intellectual property; or
c. the University, or an appropriate partner, does not proceed with commercialisation under the commercialisation plan developed under regulation 11.
Note: Swinburne Ventures Limited is an appropriate partner.