Chapter 6: Intellectual property

6.2 Intellectual property and graduate research candidates

6.2.1 Copyright

6.2.1.1 Copyright in a thesis

The Monash University Statutes relating to Intellectual Property establish that candidates in most cases retain copyright in their research and thesis, unless otherwise agreed.

Research master's candidates are exempted from submitting an electronic thesis (Please refer to Section 7.5.4.1 of this Handbook). In addition to the four bound hard copies, candidates may submit, to the Library, an electronic copy of their thesis—an eThesis—for archiving and preservation purposes. The basic bibliographical details (author, thesis title and abstract) are made available online through the Monash University Research Repository, administered through the Library.

Once the examination process is completed, candidates are also encouraged to publish their thesis, online and in full text, through the Research Repository, thereby making their thesis available to the world-wide research and scholarly community.

Candidates choosing to publish in the Research Repository grant Monash University a non-exclusive licence to publish their thesis online in the repository. The University secures this licence agreement through the Library Release/Thesis Contributor Agreement form, which is completed and provided to the Monash University Institute of Graduate Research (MIGR) Office.

The licence granted to the University is not an assignment of copyright: it is similar to a grant of permission provided by you, as copyright holder of 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.

As the licence granted to Monash University is non-exclusive, candidates are free to publish their thesis (in part or in whole) with an external publisher (e.g. 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 candidate/author.

Subject to the embargo, offered through the Library Release/Thesis Contributor Agreement form the University retains the right to supply a candidate’s thesis, whether published or unpublished, in whole or in part, to other researchers requesting the thesis for their own personal research or study, in accordance with the Copyright Act.

For information about placing a thesis under an embargo please refer below to Section 6.2.6.5 "Confidentiality and thesis copy placed in library: choosing to embargo a thesis".

6.2.1.2 Using the copyright of others in the thesis/third party copyright

Candidates intending to publish their thesis as an eThesis 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 ultimately include within the final version of 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:

• Any type of textual material whether published or not, including archival records, collections of unpublished materials such as letters, diaries or manuscripts; text excepts from books, articles, posters or other published matter; text from websites or other electronic documents; software code; tables containing text; collections or samples of data; surveys, questionnaires or interview scripts; screenplays, plays, poems, song lyrics. Note: if the amount of text reproduced is less than one percent of the total words in the original work from which it is copied, then this amount may not require any permission, given that it is likely to be seen as an insubstantial amount.
• Any type of visual content (images, maps, figures, diagrams, flow-charts, tables, photographs, graphs, graphic designs, logos, artworks)
• Any type of audio-visual or interactive content which is then displayed and/or transcribed into the thesis (computer games, DVDs, CDs, CD-ROMs, films, programs recorded from TV and radio; content downloaded from interactive devices such as mobile phones, computers or games consoles)

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 (e.g. 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 (e.g. 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, with copies supplied to the University as or if requested. Summary details about permission obtained or outstanding can be provided to the University on the eThesis Clearance Form.
Permission is NOT assumed to be granted if:

• the person granting permission does not have the authority to do so
• the copyright holder cannot be found; or
• if the copyright holder does not reply to a request.

Copyright holders may also refuse to grant permission or may charge a fee.
Third-party content which is, of itself, infringing content (e.g. unauthorised content from the internet) must not be included within the thesis.
The request for permission should include all information about how the work will be used, especially where or how it will be published (i.e. ‘in hard-copy volume’, ‘in an electronic journal’, on the University’s open access repository website, etc.) and by whom (i.e. by Monash University or by another organisation or publishing enterprise).
Further detailed advice is available to candidates and supervisors from MIGR in the TIPs sheet ‘seeking copyright permissions’ and from the copyright website. This site also provides some templates or form letters to assist candidates 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.

6.2.1.3 Moral rights of the originators of copyright

Scrupulous 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 candidate 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 publication

6.2.2.1 Introduction

Authorship matters apply to candidates when they participate in the creation of any research outputs or publications that arise from their research conducted during candidature. These may be in addition to a traditional thesis or may form part of a thesis based on published or unpublished papers. (Section 7.1.3 of the Handbook outlines the provisions for thesis by publication.)

The general rules for authorship at Monash University are stated in the Monash University Research Outputs and Authorship Policy (‘Authorship Policy’). Sections 4 and 5 of the Australian Code for the Responsible Conduct of Research (joint NHMRC/ARC/Universities Australia publication) outline all researchers’ responsibilities in relation to publication and authorship. In some cases these general provisions may be supplemented by discipline-specific conventions which chiefly relate to author order. Supervisors should be consulted about the conventions that may apply in a specific area of research.

6.2.2.2 Determining authorship

According to the Monash Authorship Policy the term ‘author’ for the purpose of authorship and publication is defined as the creator (single or joint) of any research output (i.e. the publicly available outcome of research), who has made a substantial intellectual contribution to its creation. Research outputs may be journal articles, books, book chapters and approved equivalents.
Authorship must be based upon a substantial contribution and responsibility for at least one, and usually more than one, of the following activities:

• conception and design of the project;
• analysis and interpretation of research data;
• drafting of significant parts of the work or critically revising it so as to contribute to the interpretation.

To claim authorship, a person must contribute to the intellectual shaping of a research output by participation in the activities listed above. No person who is an author shall be included or excluded as an author without their permission in writing.

According to these guidelines, being head or supervisor of a research group, the provision/acquisition of funding, or collection of data does not normally by itself justify a person being named as author. Honorary authorship (where a person is listed as an author when they have not participated in any substantial way) is unacceptable. 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.

In cases where a supervisor has contributed to any work arising from a candidate’s thesis in a way that meets the designated authorship criteria, the supervisor has the right to become a co-author of any such works when published. 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 (e.g. supervisors and their students) at an early stage in a research project and reviewed whenever there are changes in participation.

Due recognition of all contributions is part of proper research process, i.e. all those who have contributed to the research facilities or materials, such as research assistants, or to the production of the final research output, such as technical writers. Where they are to be acknowledged, their written permission must be obtained.  Courtesy demands that individuals and organisations providing facilities should also be acknowledged.

6.2.2.3 Co- or multi-authoring and record-keeping

Where 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. The executive author is then responsible for obtaining written or electronic acknowledgment of authorship of that work irrespective of the type of output

All authors of a conjointly authored work must acknowledge their authorship in writing, according to the minimum acceptable definition above (6.2.2.2). In addition they must certify that their authorship is in accordance with the discipline’s standards and practices.

The signed statement of authorship must specify that the signatories are the only authors according to this definition. It must also 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 academic unit of the executive author at the time of submission of the research output for publication and must remain in safe keeping in that unit.

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.

These record-keeping requirements are in addition to the declarations that a student must sign when submitting a thesis by publication.

These guidelines apply equally to web-based publications.

6.2.2.4 Publication of multiple research outputs on the same material

Publication of more than one research output arising out of the same set(s) of data is normally not acceptable, unless there is substantive new or different analysis and interpretation leading to new insights. Cross referencing in the research outputs may be appropriate in such cases. This needs to be understood in terms of the nature of the discipline: for example, where research involves analysis of existing data sets, such as a population census, it might be expected that multiple publications may arise. In some instances appropriate permissions may need to be obtained prior to publication.

An author who submits a substantially similar paper to more than one publisher must disclose this fact to the relevant publishers upon submission.

6.2.2.5 Publication in professional journals and the public media

If 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, i.e. 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.

6.2.2.6 Publication and sources of financial support

Publications 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 publication

When 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 would be considered unduly onerous. Normally, the Graduate Research 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) Specifications

All publications or research outputs authored by Monash University staff and/or students must be included in theAustralian Government’s annual publication collection. Supervisors will be able to advise in relation to the particular procedures that must be observed in the candidate’s academic unit to have research outputs included in the collection.

6.2.2.9 Attributing affiliation to Monash University in publication

In order that Monash University achievements and investment in research receive appropriate acknowledgement and contribute to all relevant measures of performance, Monash University must be attributed for research outputs where resources and/or facilities of Monash University have been used in the research leading to the output. All candidates enrolled at Monash University must attribute Monash University in any of their publications according to the guidelines outlined in the Authorship Procedures.

6.2.3 Transfer or assignment of intellectual property to the University

6.2.3.1 Retention of copyright

Copyright of the thesis is retained by the graduate research candidate. If the candidate wishes to submit an eThesis, Monash University encourages the candidate to licence the University to publish the thesis online in the Monash University Research Repository , which provides open access publication to the global research community. Please refer to Section 6.2.1.1 above.

6.2.3.2 Assignment and licensing

Candidates may be required to assign ownership of other types of intellectual property created from their research to Monash University as part of the terms of their enrolment in the graduate program.

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
When a journal accepts a paper for publication, the author is often required to assign copyright in the paper to the journal. For the author the benefit of publication is dissemination of the author’s ideas to the research community and peer review. The journal wants the safety of owning the IP to avoid legal problems, should the paper be published elsewhere.

Conference paper
If a paper is presented at a conference, the author might be asked to assign copyright in the paper to the conference organisers so they may publish the paper in the conference proceedings.

Publisher
When a publisher accepts a work, for example a thesis, for publication as a book, the author would be asked to sign a contract under which the publisher agrees to pay the author a royalty percentage in return for an assignment of copyright in the manuscript.
However, journals, conference bodies and publishers are increasingly prepared to accept a licence to publish a work rather than a full assignment.  

Licensing

Licensing 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 database. 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.

Three conditions requiring transfer of intellectual property to the University

In accordance with Section 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:

• Where special resources have been made available, such as a piece of equipment for the research AND a patent worthy discovery or invention arises from the work (see Section 6.2.4  below)
• Where background IP has been used, such as existing data owned by the University (see Section 6.2.5  below)
• Where funding for the research is provided under an agreement between the University and a third party, such as an external sponsor, and the agreement states that the outcomes of the research are to be owned in whole or in part by a person other than the candidate (see Section 6.2.6  below).

Review of intellectual property matters at the commencement of candidature.

Candidates and their supervisors are required to sign an Intellectual Property and Confidentiality Declaration (Monash only) at the time of first enrolment. (This form will be included in the documentation supplied to candidates prior to enrolment.)

Intellectual property matters must be determined prior to enrolment and research commencing.

This is not a legal document; rather, the purpose of this form is to:

• draw attention to the concept of IP;
• develop in a candidate an awareness of the rights and responsibilities in relation to intellectual property;
• encourage discussion between supervisors and a candidate on IP; and
• provide a guide to the steps involved when someone other than the candidate has a claim to rights in the IP generated by the candidate. For example, this form can be used as a starting point for supervisors and research master’s candidates to consider how to approach obtaining copyright permission for any third-party works they might use in their thesis.

Regular IP seminars (Monash Only) will be arranged to assist candidates and their supervisors with these matters. Candidates are strongly urged to seek independent advice on IP 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 IP or not. Where the situation is not clear, the main supervisor and candidate 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 candidates is also drawn to the 'Code of practice for supervision of doctoral and research master’s candidates’ in Chapter 5 of this handbook which outlines the University's attitude to IP ownership and authorship.

Deed of assignment

This is a short document for assignment or transfer of any rights which might be acquired in any IP that may be created during candidature.
A candidate will be asked to sign the appropriate Deed of Assignment (Monash only).

Where applicable to the candidate's proposed research, the Deed of Assignment must be completed prior to enrolment and research commencing.

The original document is submitted with the Intellectual Property and Confidentiality Declaration that the candidate submits to the MIGR Office upon enrolment.

6.2.4 Patents

Under Monash University’s IP 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:

• The inventor shall receive 30% of net revenue or, where there is more than one inventor, the share of revenue shall be apportioned equitably;
• The share to be distributed to the inventor’s academic unit (or faculty in the case of a non-departmental faculty) shall not be less than 33 1/3 % of the net revenue received;
• The Vice-Chancellor’s Fund shall receive a distribution of 15% of the net revenue in each calendar year as a general contribution to University funds and patent-related administration costs;
• The balance (if any) of the net revenue shall go to the University as a whole, and whenever the Intellectual Property Committee considers the revenue to the University to be substantial, the Intellectual Property Committee shall recommend to the Vice-Chancellor an appropriate allocation to the University Research and Development Fund.

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 and costs are dependent on the type of patent required (see information on patents for more detail).. 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 property

This refers to IP 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 IP that a supervisor has contributed to the candidate’s research. If the IP has been produced in the course of employment and is not copyrighted, it is likely to belong to the University rather than a supervisor. Where a candidate intends to utilise significant University-owned IP, the supervisors should ensure the candidate executes an agreement to assign IP (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 IP in ideas, unless the information is conveyed to the candidate under formal confidentiality arrangements. Where an idea has been reduced to a material form, for example a diagram, a supervisor should ensure that he/she is acknowledged as the author of the work in the candidate’s thesis.

Background IP is valuable and must be protected. If it belongs to the University or a 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 supervision of doctoral and research master’s candidates’, also states that a graduate’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 below).

6.2.6 Collaborative research undertaken with a third party

6.2.6.1 General considerations

The University’s 'Code of practice for supervision of doctoral and research master’s 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 IP 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 Graduate Research Committee (GRC). As each candidate has both a right and a responsibility to promote intellectual enquiry and to disseminate knowledge through publication of their research, GRC 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 (e.g. 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 IP to the University (see Section 6.2.3.2 ‘Deed of assignment’ 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 graduate researcher. Further information is available from the MIGR Office.

6.2.6.2 Confidentiality agreements

Researchers and research candidates 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 material

In some circumstances where the research has been funded by others and which 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 the MIGR Office if such an arrangement is necessary.

6.2.6.4 Publication and confidential material

Similarly, a sponsor of the research may request that publication of findings be withheld, for example if a patent is pending. However, GRC has stipulated 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 the library: choosing to embargo a thesis

At the conclusion of the examination, one copy of the successful thesis is placed in the library and an electronic copy—eThesis—(if the candidate so chooses) is submitted to the Monash University Research Repository for archiving or publication online, depending on the options chosen by the candidate. Again there may be reasons why the thesis should not be immediately available for consultation. The candidate can request that the thesis be placed under an embargo which prevents 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.
For information about the embargo process see also Section 7.5.3 in Chapter 7 of this Handbook.
For copyright issues relating to eThesis submission, please refer to Section 7.5.4 of this Handbook.

6.2.7 Monash University intellectual property regulations and statute

The current statutes governing intellectual property at Monash University are in Chapter 11 of the University Calendar. Candidates may also refer to the Explanatory Memorandum for IP Statute and Regulations.

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