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Chapter 6: Intellectual property6.2 Intellectual property and postgraduate research candidates6.2.1 Copyright6.2.1.1 Copyright in a thesisThe Monash University Statutes relating to Intellectual Property establish the students in most cases retain copyright in their research and thesis, unless otherwise agreed. The doctoral program conducted at Monash requires that students grant the University a non-exclusive licence to publish their thesis online in the ARROW open-access research repository once the examination process is completed. Monash secures this licence agreement through the Thesis Contributor Agreement form, which is completed and provided to Monash Research Graduate School when your thesis copies are submitted for final examination. The licence granted to Monash is not an assignment of copyright: it is similar to a grant of permission provided by you, as copyright holder in the thesis. Other researchers, including supervisors, wishing to publish a paper using data or content from your thesis will, likewise, need to seek your permission, or obtain a licence from you. Students will be required to assign ownership of intellectual property created from their research (but not copyright in their thesis) to Monash where the research produces a patent worthy discovery to which Monash made a special contribution. Similarly Monash will require the assignment of intellectual property when background intellectual property belonging to Monash or the student's supervisor has been used in the research, or when the research is part of a project funded by a third party and they retain intellectual property in the results of the research through an agreement with Monash. 6.2.1.2 Using the copyright of others in the thesis / third party copyrightUpon submission of the thesis for examination candidates are required to sign a Thesis Contributor Agreement form. Through this form, which serves as the publishing agreement between the student and the University, the student provides certain warranties for the University, indicating that
The Thesis Contributor Agreement form is to be accompanied by a Copyright Clearance form which lists all significant third-party content within the thesis, indicates whether permission has been secured or not, includes copyright holder contact details and or reasons for permission not being obtained (ie too costly, permisison refused, copyright owner didn't reply, etc). Consequently, candidates need to ensure that they make all reasonable attempts during their candidature to obtain permission in writing and in advance of submission or completion, for any significant third-party copyright content that they intend to reproduce within their thesis. Permissions should be sought and obtained as early as possible, during the process of researching and preparing the thesis. Early consideration must also be given to the likely cost of obtaining some or all permissions for the third-party materials intended for inclusion within the thesis. Significant third-party copyright material is, in effect, any content not of the candidate's own creation, and may include:
Adaptions and transcriptions of third-party content Permission is also required in cases where third-party content is adapted for use within the thesis: for example, translations of foreign languages; alterations or additions made to designs, maps, images or photos. Similarly transcriptions made by the candidate from certain types of audio-visual materials, whether published or not, will require permission from the original creator/copyright-holder, producer or broadcaster, as the latter will retain copyright in the original audio-visual recording. Typically this might include transcripts made of ‘published’ or broadcast materials like TV or radio programs, from DVDs, CDs, webcasts or podcasts; and may include such unpublished materials as recordings of languages, interviews, songs, stories, wildlife, etc as held in library or archival collections or as retained by other organisations (medical or scientific research centres). In some cases, third-party content may already come with a licence from the copyright holder which permits publication for non-commercial purposes or adaptation of the work for non-commercial purposes (eg CreativeCommons licensed content, GNU-GPL software or other ‘open content’ licensed materials). Candidates are advised to check any licences made available with third-party content (eg software, image collections, online collections of documents or data, etc) and be aware of the licence limitations or restrictions. It is essential that permissions are obtained in writing and are retained by the students, with copies supplied to the University as or if requested. Permission is NOT assumed to be granted if
Copyright holders may also refuse to grant permission or may charge a fee. Third-party content which is, of itself, infringing content (unauthorised content from the Internet for example) must not be included within the thesis. The request for permission should include all information about how the work will be used, especially its ultimate publication by Monash (or publication by any other involved research body or industry partner). At the very least any permission request should state that “permission is requested for online publication of the third-party material as the thesis will be published in the Monash ARROW research repository where research papers are made available to the public for free”. Further detailed advice is available to students and supervisors from the MRGS in the TIPs sheet ‘Seeking Permissions’ and from the copyright website at http://www.copyright.monash.edu.au/ This site also provides some templates or form letters to assist students and supervisors in the task of seeking permission. Specific advice about permissions and the use of copyright works can also be obtained directly from the University’s Copyright Adviser (University.Copyright@lib.monash.edu.au). 6.2.1.3 Moral rights of the originators of copyrightScrupulous attention must be given to naming the author and citing the source of material such as diagrams, graphs, photographs and quotes which have been reproduced or quoted in the thesis. Failure to do so will infringe the rights of the copyright owner under the moral rights provisions in the Copyright Act. An author has the right to be acknowledged as the author of their work (and thereby prevent others from making false claims of authorship of the work). This right also protects authors from being named the creator of an unauthorised version of the work. An author may also object to a derogatory alteration of the work; for example, distortion, display in an inappropriate setting etc, or any treatment which may affect the author’s honour and reputation. In other words: a student must always provide appropriate and accurate acknowledgement for any third-party works referred to or actually reproduced in their research and their thesis and should exercise care when altering a third-party work, being mindful as to the potential impact on the original author’s reputation. 6.2.2 Authorship and publication6.2.2.1 AuthorshipSee s5 & 6 (Publication & Authorship) of the Australian code for the responsible conduct of research (joint NHMRC/ARC/Universities Australia).
Supervisors should be consulted about the conventions that normally apply in a specific area of research. According to the Vancouver Protocol, the following are minimum requirements for authorship.
According to these guidelines, participation solely on the basis of being head or supervisor of a research group, or provision/acquisition of funding or collection of data does not normally justify a person being named as author. An author's role in a research output must be sufficient for that person to take public responsibility for at least that part of the output in that person's area of expertise. No person who is an author, consistent with this definition, shall be included or excluded as an author without their permission in writing. The term "editor" should be applied only to a person who has played a significant role in the intellectual shaping of the publication. Due recognition of all contributions is part of proper research process, that is all those who have contributed to the research facilities or materials such as research assistants and technical writers. Where they are to be acknowledged, their written permission must be obtained. However, honorary authorship (where a person is listed as an author when they have not participated any substantial way) is unacceptable. A supervisor is likely to have participated in conceiving, executing or interpreting some or all of the work. Under these circumstances the supervisor may become a co-author. In some disciplines however, for example in the humanities, sole authorship is more the norm. Above all, if a paper is to be prepared for publication it is important that the matter of authorship is discussed at the outset between all those who may claim to be named as an author. Authorship of a research output is a matter that should be discussed between researchers (eg supervisors and their students) at an early stage in a research project and reviewed whenever there are changes in participation. 6.2.2.2 Co or multi authoringWhere there is more than one author, that is where it is a conjointly authored work, one co-author should be nominated by mutual agreement as the executive author of the paper. He/she is then responsible for obtaining written or electronic acknowledgment of authorship of papers, conference abstracts or similar publications. There are forms that will need to be completed (for example, in the case of A1 books – authored, B1 book chapters; C1 journal articles; E1 conference publications) for the annual DEWAR research publication collection exercise. Supervisors will be able to advise on the paperwork required. See www.monash.edu.au/resgrant/publications/ All authors of a conjointly authored work must certify their authorship is in accordance with the discipline’s standards and practices. Where the research is published, including electronically, all co-authors of a publication must acknowledge their authorship in writing, at least in the minimum acceptable definition above. A signed statement of authorship must specify that the signatories are the only authors according to this definition. It must state that the signatories have seen the version of the paper submitted for publication. The written acknowledgment of authorship must be placed on file in the department or unit of the executive author at the time of submission of the research output for publication and must remain in safe keeping in that department. If, for any reason, one or more co-authors are unavailable or otherwise unable to sign the statement of authorship, the head of department or unit may sign on their behalf, noting the reason for their unavailability. The authors must ensure that others who have contributed to the work are recognised in the research output. Courtesy demands that individuals and organisations providing facilities should also be acknowledged. These guidelines apply equally to web-based publications. 6.2.2.3 Publication of multiple papers on the same materialPublication of more than one paper arising out of the same set(s) of data is normally not acceptable, unless there is appropriate cross referencing in the papers. This needs to be understood in terms of the nature of the discipline however, because where research involves analysis of existing data sets, such as population census, it might be expected that multiple publications may arise. Essentially an author who submits a substantially similar paper to more than one publisher must disclose this fact to the relevant publishers upon submission. 6.2.2.4 Publication in professional journals and the public mediaIf work is accepted for publication, copyright in the work will normally be assigned to the journal or book publisher. This means that the author’s copyright is transferred to the publisher and ceases to be owned by the author. Normally research findings should be reported in relevant professional journals, that is to an audience of researchers who are expert in the field, before being reported in the broader media. Where research has not first been exposed to expert peer review, there is an obligation to explain the status of the research, and the professional scrutiny to which it will be exposed in due course. 6.2.2.5 Listing of authorshipThe supervisor should be consulted about the standard practices that apply in a specific research discipline, including the order in which authors should be listed in a conjointly authored work. 6.2.2.6 Publication and sources of financial supportPublications must include information on the sources of financial support for the conduct of the research, both as a courtesy and to ensure there is no conflict of interest in relation to the funding source. Financial sponsorship that carries an embargo on such naming of a sponsor should be avoided. 6.2.2.7 Restrictions on publicationWhen research is funded under an agreement with an external party it is likely that the agreement will contain restrictions on publishing. This is quite common in the case of scholarship agreements with an external sponsor. A decision must be made whether or not to accept the scholarship, if such restrictions are found to be duly onerous. Normally the Research Graduate School Committee will not allow publications to be delayed beyond 12 months (See 6.2.6.2 – 6.2.6.5 below). 6.2.2.8 Higher Education Research Data Collection (HERDC) SpecificationsThere are forms that need to be completed so that the University can record the paper in the research publication data collection it forwards to DEWAR each year. Supervisors will be able to advise on the paperwork required. See http://monash.edu.au/resgrant/publications 6.2.3 Transfer or assignment of intellectual property to the University6.2.3.1 Retention of copyrightCopyright of the thesis is retained by the postgraduate researcher. The University requires most doctoral candidates to licence Monash to publish the thesis online in the ARROW open-access research repository. Research candidates enrolled in PhD (Visual Arts); PhD (Music Composition); PhD (Creative Writing); professional doctorates; Staff PhDs; MD (Unsupervised); PhD candidates undertaking study under a Cotutelle arrangement; MPhil and research masters degrees are exempt. The licence granted to Monash is non-exclusive so students are free to publish their thesis (in part or in whole) with an external publisher (eg within a conference proceedings or in a journal or as a book). In such cases the University will cease to provide open access to the full-text thesis online when requested by the publisher or author. The University will retain the right to supply the thesis, in whole or in part, in accordance with section 51 of the Copyright Act, to researchers requesting the thesis for their own personal research or study. 6.2.3.2 Assignment and licensing6.2.3.2.1 Assignment“Assignment” is the transfer, by deed or agreement, of all intellectual property (IP) arising in a particular work or invention. The most commonly assigned forms of IP are copyright in literary works and rights in patentable inventions. It is also possible to assign rights in future IP (IP that has not yet been created) .This is usually done as part of an agreement under which a sponsor provides funding for a research project. Journal articles Conference paper Publisher However, journals, conference bodies and publishers are increasingly prepared to accept a licence to publish a work rather than a full assignment. 6.2.3.2.2 LicensingLicensing allows, for example, the licensee to publish the work as a book or in a particular issue of a journal or in conference proceedings while the author retains ownership of the copyright. The purposes for which the work may be used are mutually agreed upon in the licence agreement. The licence may be either exclusive or non-exclusive. For example, a licence to publish a book would be exclusive in respect to the first edition. If the publisher wanted to publish a second edition, it would be necessary to renegotiate the licence. When a licence is non-exclusive, the IP owner may grant more than one licence at the same time, for example a licence to use patented technology or to use a data base. In some scholarship agreements with outside sponsors the University retains ownership of the intellectual property generated by the joint project (excluding the copyright in your thesis) and grants the external partner an exclusive or non-exclusive right to use the work. The University requires most doctoral candidates to grant Monash a non-exclusive licence to publish the thesis online in the ARROW open-access research repository (Art and design candidates excepted). This licence is executed through the completion of the Thesis Contributor Agreement form at the time when students submit their thesis for examination. 6.2.3.2.3 Three conditions requiring transfer of intellectual property to the universityIn accordance with ss 2.2 of the intellectual property regulations there are only three circumstances under which intellectual property will be required to be assigned to the University:
6.2.3.2.4 Review of intellectual property matters at the commencement of candidatureCandidates and their supervisors are required to sign an intellectual property form at the time of first enrolment. (This form will be included in the documentation supplied to candidates prior to enrolment.) This is not a legal document; rather, the purpose of this form is to:
Regular intellectual property seminars will be arranged to assist students and their supervisors with these matters. Candidates are strongly urged to seek independent advice on intellectual property matters, especially in relation to assignment. In the preliminary planning stages of research, it may not be immediately evident whether the candidate will be required to relinquish intellectual property or not. Where the situation is not clear, the supervisor and student are asked to indicate this on the form. It may be similarly unclear as to how much or what types of third-party content may eventually be reproduced in a thesis. The expectation is, nonetheless, that some will inevitably be included, and so early consideration of copyright permission and planning for these in terms of management and anticipated costs, should be ongoing from this early stage in candidature. The attention of supervisors and their students is also drawn to the 'Code of practice for the supervision of doctoral and research masters candidates’ in chapter 5 of this handbook which outlines the University's attitude to intellectual property ownership and authorship. 6.2.3.2.5 Deed of assignmentThis is a short document for assignment or transfer of any rights that might be acquired in any intellectual property which may be created during candidature. A candidate will be asked to sign the appropriate Deed of Assignment. Where applicable to the candidate's proposed research, the Deed of Assignment must be completed prior to research commencing. The original document should be retained by the academic unit and a copy attached to the intellectual property form that the candidate submits to the Monash Research Graduate School upon enrolment. 6.2.4 PatentsUnder Monash University’s intellectual property legislation the University will own a patentable invention or discovery made by a staff member in the course of his/her duties of employment. A candidate’s research is frequently a small part of a larger project being undertaken by the supervisor or a team of staff researchers in which case the candidate will be required to assign his/her rights in the patent to the University. Although the patent will be granted to the University, the candidate and the staff researchers will still be acknowledged as the inventors. The inventors will also be paid a percentage of any revenue received by the University from commercialisation of the patent. Under the University Council’s Statement on Patent Revenue Distribution, money will be paid to the individual inventors in accordance with the shares they have agreed upon. The percentage share will be based on each inventor’s contribution to the invention/discovery. General principles of distribution under the Statement are as follows:
Patent protection has to be applied for. By registering an invention or discovery under the Patents Act others are prevented from using anything contained in the patent specification (or description of the features of the invention) for up to 20 years. This is an expensive process: an Australian patent will cost approximately $8,000, while European / UK / Japanese and US patents will cost in the order of $25,000 per country. This is another reason why inventors have been prepared to assign patents to the university which is then responsible for finding a partner to cover the costs of patenting and commercialisation. 6.2.5 Background intellectual propertyThis refers to intellectual property already in existence which is owned by the University/the supervisor/ a third party and which is provided to the candidate for the purposes of undertaking research. Concern has been expressed about the potential for candidates to acquire ownership of intellectual property which the supervisor contributes to the student’s research. If the intellectual property has been produced in the course of employment and is not copyright, it is likely to belong to the university rather than the supervisor. Where a candidate intends to utilise significant university-owned intellectual property, the supervisor should ensure the student executes an agreement to assign intellectual property (other than copyright in the thesis) to the University. However, a supervisor’s contribution is more frequently by way of ideas. These ideas are usually the outcome of the supervisor’s own research which will have often been undertaken over a period of years with support from a variety of funding bodies. It should be understood that there is no intellectual property in ideas, unless the information is conveyed to the student under formal confidentiality arrangements. Where an idea has been reduced to a material form, for example a diagram, the supervisor should ensure that he/she is acknowledged as the author of the work in the student’s thesis. Background IP is valuable and must be protected. If it belongs to the University or the supervisor, it will have been created with prior funding grants. If the IP is owned by an industry partner, it will have commercial value. There will also be circumstances where background IP might be owned by the Crown, for example, a government department. Background IP is sometimes provided by the candidate’s employer. In this situation, the candidate would be well advised not to commence the project until he/she has entered into a satisfactory written arrangement with the employer regarding ownership of the outcomes of the research. The ’Code of Practice for the Supervision of Doctoral and Research Masters Candidates’, also states that a postgraduate’s research cannot be unduly influenced by commercial factors. If the limits placed on the research are considered to be too onerous, for example, in relation to publication of the work, an alternative project may be considered (see Section 6.2.6.1 on general considerations, below). 6.2.6 Collaborative research undertaken with a third party6.2.6.1 General considerationsThe University’s ‘Code of Practice for the Supervision of Doctoral and Research Masters Candidates’ reminds supervisors that a candidate’s research program must not be unreasonably influenced by political, commercial or industrial factors. That is, a thesis examination may not be delayed by intellectual property issues. If a thesis contains commercially sensitive material, examiners will be required to sign a confidentiality agreement so that the examination may proceed without delay. Similarly, publication of findings arising from the thesis may not be delayed beyond the time frame set by the Research Graduate School Committee. As each candidate has both a right and a responsibility to promote intellectual enquiry and to disseminate knowledge through publication of their research, the Committee has ruled that publication should not be delayed beyond 12 months. If a candidate is considering becoming involved in a collaborative project, he or she should be fully informed by the supervisor, in writing, of any particular conditions that could either restrict disclosure or affect the extent to which communication with colleagues is possible (for example, publication) during the course of the work and on its completion. The advantages and disadvantages of being involved in an external collaboration where restrictions are likely to be imposed on the way the research is carried out and how the findings are reported, should be carefully considered. The candidate should then be in a position to make an informed decision regarding possible involvement in the program. While the candidate may sign a contractual agreement or deed with the University, THE CANDIDATE SHOULD NOT SIGN A CONTRACT DIRECTLY WITH THE SPONSOR. The University undertakes this responsibility on the candidate’s behalf. Normally, the candidate then completes a deed of assignment of intellectual property to the University (see Section 6.2.3.2.5 above). Supervisors are reminded that there is a template agreement available that may be useful when a scholarship contract between the University and an outside sponsor is to be negotiated for a project involving a postgraduate researcher. Further information is available from the Monash Research Graduate School. 6.2.6.2 Confidentiality agreementsResearchers and research students are often required to sign a confidentiality agreement, sometimes called a non-disclosure agreement. The agreement will contain a definition of the confidential information which one party (the discloser) wants to protect. The definition might range from a description of specific data which the discloser intends to provide to a more general definition designed to cover any confidential information which the receiver comes across while working at the discloser’s premises. Should the receiver fail to maintain confidentiality, the discloser would be able to take action for breach of agreement/confidence and, if successful, to recover damages. 6.2.6.3 Examination and confidential materialIn some circumstances where the research has been funded by others and may be commercially sensitive, the examiners of the thesis may be required to sign a confidentiality agreement prior to the thesis being sent to them for examination. Supervisors will need to contact MRGS if such an arrangement is necessary. 6.2.6.4 Publication and confidential materialSimilarly, a sponsor of the research may request that publication of findings be withheld, for example if a patent is pending. However, the Research Graduate School Committee has agreed that publication of findings arising from the thesis may not normally be delayed beyond 12 months. If a collaborative project is planned, it is important that the candidate is fully informed of restrictions before commencing the project. A publications clause will often contain a process for approving publications. For example, it will require that the candidate submit publications to someone employed by the funding party (identified by position title) and state a time period in which the company must either approve or reject a publication. If possible, there should also be an arrangement which permits the candidate to negotiate changes to the publication if approval has been withheld. 6.2.6.5 Confidentiality and thesis copy placed in libraryAt the conclusion of the examination, one copy of the successful thesis is placed in the library and an electronic copy is submitted to the library’s ARROW repository (art and design candidates excepted). Again there may be reasons why the thesis should not be immediately available to the general public. The candidate can request that the thesis be placed under an embargo which restricts access to the thesis for up to three years. During this time, no other person may use the thesis without the candidate’s written permission.
6.2.7 Monash University intellectual property regulations and statuteThe regulations and statute appear as Appendix C of this Handbook. |