Intellectual Property (IP) management policy

This policy is subject to change

Definitions

“Intellectual Property” means any intellectual property, whether or not registrable or protectable, including but not limited to inventions, designs, trademarks, copyright works including artistic or literary works (including computer programs), and plant varieties, that was created under a research project that is subject to the policy.

“Research Organisation (RO)” means any Tertiary Education Organisation (TEO), Public Research Organisation (PRO), independent research organisation (IRO), or any part of a TEO or PRO or IRO, carrying out research in New Zealand.

“Creator(s)” means all natural persons, including any staff or by agreement any student, at a Research Organisation who is the legal creator of the Intellectual Property, such as the actual deviser of an invention.

“Commercialising Creator(s)” means all the Creator(s) that are responsible for the commercialisation of the Intellectual Property.

“Non-Commercialising Creator(s)” means all the Creator(s) that are not responsible for the commercialisation of the Intellectual Property.

Rules relating to the management of IP

Application of rules

The policy distinguishes between the following two situations:

“Situation #1” where the Intellectual Property is created under a research project initiated and/or directed by the Creator(s); and

“Situation #2” where the Intellectual Property is created under a research project conducted under the direction of the Research Organisation.

The Minister of Science, Innovation and Technology or a person they delegate shall determine which situation applies to a research project. The Minister or their delegate may make this determination in relation to all research projects conducted at a Research Organisation or any part of a Research Organisation, or on a case-by-case basis (for example, for joint research projects involving more than one Research Organisation that are covered by both situations #1 and #2).

Guidance may be developed to assist the Minister (or their delegate) and revised from time to time. The presumption is that Intellectual Property generated at universities and other TEOs will normally fall under Situation #1 and Intellectual Property generated at PROs, independent research organisations, and specific university research institutes will normally fall under Situation #2.

Rules applying in situation #1

The following rules apply in situation #1.

When Creator(s) create Intellectual Property that could reasonably be expected to have commercial potential, the Creator(s) shall fully disclose the Intellectual Property to the Research Organisation without unreasonable delay and before any public disclosure of the Intellectual Property.

The Research Organisation may undertake or commission a commercial and/or novelty assessment or any other evaluation of the Intellectual Property. If so, the Research Organisation shall provide the Creator(s) with the assessment or evaluation of the Intellectual Property.

The Creator(s) shall, within 90 days from the date of disclosure or later than 90 days if a specific timeframe is agreed within the initial 90 days with the Research Organisation, agree among themselves on their respective participation in the commercialisation process and, with the agreement of all the Creator(s), whether each of them is a Commercialising Creator(s) or a Non-Commercialising Creator(s).

The Creator(s) and the Research Organisation shall, within 90 days from the date of disclosure or later than 90 days if a specific timeframe is agreed within the initial 90 days with the Research Organisation, seek to reach agreement on one of the following approaches to commercialisation of the Intellectual Property:

1. The Commercialising Creator(s) are responsible for commercialising the Intellectual Property without support from the Research Organisation;
2. The Commercialising Creator(s) are responsible for commercialising the Intellectual Property with support from the Research Organisation; or
3. The Research Organisation is responsible for commercialising the Intellectual Property.

If the approach at section 1 is agreed to by the Creator(s) and the Research Organisation, or if no agreement is reached between the Creator(s) and the Research Organisation:

• The Commercialising Creator(s) shall have the right to take responsibility for commercialising the Intellectual Property without support from the Research Organisation;
• The Creator(s) shall agree among themselves on the sharing of benefits from commercialising the Intellectual Property;
• The Research Organisation shall assign any rights to the Intellectual Property to the Commercialising Creator(s) without compensation;
• The Commercialising Creator(s) shall take full responsibility for any legal protection of the Intellectual Property;
• The Commercialising Creator(s) shall be responsible for paying any future costs of using any Research Organisation resources (e.g., equipment and facilities) on commercial terms and any past costs associated with legally protecting the Intellectual Property, including any costs incurred by the Research Organisation before ownership of the Intellectual Property was assigned to the Commercialising Creator(s); and

If the approach at section 2 is agreed to by the Creator(s) and the Research Organisation:

• The Creator(s) shall assign sole ownership of the Intellectual Property to the Research Organisation;
• The Creator(s) shall agree among themselves on the sharing of benefits from commercialising the Intellectual Property;
• The Research Organisation shall take full responsibility for any legal protection of the Intellectual Property, the costs of which shall be paid by the Creator(s) unless otherwise agreed between the Research Organisation and the Creator(s);
• On reaching an agreed commercialisation milestone, the Research Organisation shall assign sole ownership of the Intellectual Property back to the Commercialising Creator(s) or to a spinout company formed to commercialise the Intellectual Property; and

The Research Organisation shall provide the Commercialising Creator(s) with a reasonable amount of services to assist the Commercialising Creator(s) prepare the Intellectual Property for private sector investment. The services may include advice on protecting IP, market validation, making connections to potential investors, partners, licensees, etc.

In exchange for providing these services, the Research Organisation may take a 5 to 10% equity share, the amount to be agreed with the Commercialising Creator(s), in any spinout company formed to commercialise the Intellectual Property or an equivalent net revenue share where an equity share is not appropriate. This requirement will be implemented via non-binding guidelines on the terms of engagement between the Creator(s) and the Research Organisation.

In exchange for providing more than a reasonable amount of services and with the agreement of the Commercialising Creator(s), the Research Organisation may take a greater equity share or net revenue share. For example, by the Research Organisation making a direct financial investment into a spinout company formed to commercialise the Intellectual Property or providing financial support to cover external costs.

If the approach at section 3 is agreed to by the Creator(s) and the Research Organisation:

• The Research Organisation shall have the right to take responsibility for commercialising the Intellectual Property without the Creator(s) but must consult the Creator(s) before making any significant decisions regarding commercialising the Intellectual Property;
• The Creator(s) shall assign sole ownership of the Intellectual Property to the Research Organisation; and
• The Research Organisation shall agree with the Creator(s) terms of access to the Intellectual Property for commercial purposes and the sharing of benefits from commercialisation and the Research Organisation shall also compensate the Creator(s) for any involvement in commercialising the Intellectual Property.

The flow diagram below illustrates the rules in situation #1.

Rules applying in situation #2

The following rules apply in situation #2.

When Creator(s) create Intellectual Property that could reasonably be expected to have commercial potential, the Creator(s) shall fully disclose the Intellectual Property to the Research Organisation without unreasonable delay and before any public disclosure of the Intellectual Property.

The Creator(s) shall assign sole ownership of the Intellectual Property to the Research Organisation.

The Research Organisation shall take full responsibility for any legal protection of the Intellectual Property.

The Research Organisation shall have the first option to commercialise the Intellectual Property. If the Research Organisation elects to exercise this option, the Research Organisation shall consult the Creator(s):

• On the choice of commercialisation strategy; For example, whether to license the use of the Intellectual Property or form a spinout company to commercialise the Intellectual Property. And,
• If the Research Organisation decides to commercialise the Intellectual Property via a spinout company, on whether the Creator(s) wish to participate in the spinout company.

If the Research Organisation elects not to exercise its option to commercialise the Intellectual Property within a reasonable period, the Research Organisation shall give the Creator(s) an option to commercialise the Intellectual Property. If any of the Creator(s) elect to exercise that option, the following rules apply:

• The Research Organisation shall take full responsibility for any legal protection of the Intellectual Property, the costs of which shall be paid by the Commercialising Creator(s);
• The Commercialising Creator(s) shall agree with the Research Organisation terms of access to the Intellectual Property for commercial purposes and the sharing of benefits from commercialisation of the Intellectual Property with the Research Organisation, including reimbursement of any costs the Research Organisation has already incurred in legally protecting the Intellectual Property;
• Upon request from the Commercialising Creator(s), the Research Organisation shall provide the Commercialising Creator(s) with a reasonable amount of commercialisation services to assist the Commercialising Creators(s) prepare the Intellectual Property for private sector investment. In exchange for providing the services, the Research Organisation may take a 5 to 10% equity share, the amount to be agreed with the Commercialising Creator(s), in any spinout company formed to commercialise the Intellectual Property or an equivalent net revenue share where an equity share is not appropriate; and

On reaching an appropriate commercialisation milestone (or earlier by mutual agreement), the Research Organisation shall assign sole ownership of the Intellectual Property back to the Commercialising Creator(s) or to a spinout company formed to commercialise the Intellectual Property, subject to granting the Research Organisation a non-exclusive, royal-free licence to use the Intellectual Property for research purposes.

Rules applying in both situations #1 and #2

The following rules apply in situation #1 and in situation #2.

The Research Organisation shall have a non-exclusive right to use the Intellectual Property for research and teaching purposes, without cost and in perpetuity.

The rules specified under this policy do not affect the existing ownership of mātauranga Māori. Research organisations are expected to have adequate policies or plans in place to support the responsible management of mātauranga Māori, and to apply them where relevant. Any use of mātauranga Māori should be subject to agreed terms with relevant contributors, including where appropriate, provisions for access, protection, and benefit sharing.

The party responsibility for commercialising the IP will be required to report to the New Zealand Government on the outcomes of commercialising IP.

Flow diagram of situation 1