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Category Research
Type Policy
Approved by Council, 6 May 2025
Date Policy Took Effect 6 May 2025
Last approved revision 
Sponsor Deputy Vice-Chancellor (Research and Innovation)
Responsible officer Director, Research and Enterprise

Purpose

The University of Otago (University) supports innovative and impactful research, teaching and creative work by University Staff that results in the creation of IP. This Intellectual Property Rights and Commercialisation Policy (Policy) ensures fair distribution of the financial benefits derived from the commercialisation of IP created by University Staff, while fostering adherence to the University’s values, including its commitment to Te Tiriti o Waitangi.

Organisational scope

This Policy applies to all University employees and any student who has signed a Student Intellectual Property Agreement (but only in respect of the IP created by the student under that Student Intellectual Property Agreement).

Topical scope

The University of Otago acknowledges mātauranga Māori as a taonga whose authority and rights rest with its Originators – typically whānau, hapū, iwi, or Māori entities. All rights are, by default, reserved to the Originator. The University is not a Te Tiriti authority and does not assume any rights to mātauranga Māori unless explicitly granted through formal agreement. The University acknowledges that it is in possession of taonga and mātauranga Māori on an “in trust” basis, established through research relationships.

Where Māori University Staff are themselves rightful Originators, repositories of mātauranga Māori or kaitiaki, their rights are fully recognised and protected. University Staff who work with mātauranga Māori do not gain rights by association or possession alone. Any use of taonga or mātauranga Māori from known provenance must be done with clear consent and accountability to the appropriate Māori authority.

The University prohibits unauthorised use or assimilation of mātauranga Māori and is committed to remaining a safe and respectful space for its protection. This Policy aligns with, and remains subject to, any frameworks developed by recognised Māori authorities and subsequent policy relating to Māori IP (or mātauranga Māori) that the University Council may approve from time to time. The University encourages and supports the development of new mātauranga Māori particularly in collaboration with whānau, hapū, iwi and appropriate Māori entities.

Definitions

Commissioned Research Agreement
An agreement between the University and a third party where the University has been commissioned by the third party to create IP that will be exclusively owned by that third party.
Creator
Any University Staff responsible (either individually or jointly with others) for the creation of IP. The term Creator includes those entitled to be named as inventors for the purpose of patent applications and authors for the purpose of copyright law.
Instructional Materials
All versions, digital or otherwise, of information, documents and materials created by University Staff and used, or intended, specifically for the delivery of University courses including, but not limited to, course books, course guides and manuals, case studies, lecture notes, lecture slides, multimedia works (including podcast and webcasts), tutorial papers, model answers, examination materials and marking guides, computer-generated presentations and software.
Intellectual Property (IP)
Any creative output in which IPRs may arise (whether automatically or upon successful application) including, but not limited to:
  1. Literary works (including publications in respect of research results) and associated materials, whether physical, biological or other materials (including drafts, data sets and laboratory notebooks);
  2. instructional materials;
  3. other original literary, dramatic, musical or artistic works, sound recordings, films, broadcasts, typographical arrangements, multimedia works, photographs and drawings;
  4. symbols, brand names and images;
  5. databases, tables or compilations, computer software, preparatory material for a computer program, firmware, courseware, and related materials;
  6. inventions;
  7. designs including layout designs (topographies) of integrated circuits and mask works;
  8. plant varieties and related information;
  9. trade secrets; and
  10. know how, information and data associated with the above.
Intellectual Property Rights (IPRs)
Any proprietary rights to any form of IP (whether registered or unregistered) including, but not limited to, patents, rights to inventions, copyright and related rights, trade marks, trade names and domain names, rights to goodwill or to sue for passing off, rights in designs (including registered designs and unregistered design right), rights in computer software, database rights, plant breeders’ rights, utility models, rights in confidential information (including know how) and any other intellectual property rights, in each case whether registered or unregistered and including all applications (or rights to apply) for, and renewals or extensions of, such rights and all similar or equivalent rights or forms of protection in any part of the world.
Moral Rights
The moral rights conferred on authors and others under Part IV of the Copyright Act 1994 or equivalent provisions under the law of the place where such rights are sought to be enforced.
Otago Innovation
Otago Innovation Limited, a wholly-owned subsidiary of the University, established to commercialise the University’s IP.
Scholarly Work
Any article, book, musical composition, creative writing or like publication or any digital or electronic version of these works that contains material based on the creator’s scholarship, learning or research or is intended to disseminate knowledge or research to an academic, professional or public audience. The University considers films, artistic, dramatic, cinematographic and multimedia works in which copyright exists as well as performances of performing artists, sound recordings, broadcast and these to be “like publications” for the purposes of this definition.
University
The University of Otago and its wholly owned subsidiaries, including Otago Innovation Limited.
University Staff
For the purposes of this Policy, refers to:
  1. an individual who has a contract of employment with the University; and/or
  2. a student who has signed a Student Intellectual Property Agreement (but this Policy will only apply to such student in respect of the IP created by the student under that Student Intellectual Property Agreement).

Content

  1. Ownership of IP

    1. IP created by University Staff
      1. Subject to the exceptions set out in section 1.2. of this Policy, the University owns all IP (and related IPRs) created by University Staff in the course of their employment duties or using University resources or in the case of students only, under the Student Intellectual Property Agreement.
    2. Waiver of Rights
      1. The University waives its right to ownership of:
        1. copyright in Instructional Materials; and
        2. copyright in scholarly works.
      2. Despite this, during their employment at the University, the Creator of the Instructional Materials will not, and will not permit any other person to, assign or license any of the Instructional Materials to any other institution providing educational or research services without the University’s consent.
    3. Exceptions to waiver
      1. The discretionary waiver under section 1.2. of this Policy does not extend to such works:
        1. specifically commissioned by the University; or
        2. that are subject to an overriding contractual obligation between the University and a third party.
    4. University rights to use Instructional Materials and Scholarly Works
      1. Creators of Instructional Materials and Scholarly Works grant a licence to the University to use Instructional Materials and Scholarly Works on the following terms:
        1. the University may use, adapt and/or reproduce any Instructional Materials or Scholarly Works for teaching, academic and research purposes (including archiving them in institutional repositories such as OUR Archive for Scholarly Works) or any other non-commercial purpose that may further the University’s mission;
        2. the licence granted to the University shall:
          1. permit use and reproduction of the relevant works (or part of the works) worldwide, in all formats (now known or yet to be devised);
          2. be royalty-free;
          3. be non-exclusive;
          4. be sub-licensable; and
          5. apply in perpetuity, on an irrevocable basis (subject to section 1.4(a)(iii) of this Policy); and
        3. where a publisher of a final version of an Instructional Materials or Scholarly Work in publishable form (“Published Work”) requires the copyright in the Published Work to be assigned to the publisher, the licence granted to the University with regard to the Published Work under sections 1.4(a)(i) and 1.4(a)(ii) of this Policy will immediately terminate.
    5. Moral rights
      1. Nothing in this Policy will require University Staff to waive any of their Moral Rights that they have or will have in any existing or future IP created in the circumstances set out at section 1.1 of this Policy. Where a Creator agrees to be involved in research activities as part of a project between the University and a third party, the Creator may be required to provide a written waiver in respect of the Creator’s Moral Rights in relation to certain works that may be created during the project prior to work commencing.
    6. IP created for or with third parties
      1. Ownership of IP that is created by University Staff for or with a third party shall be determined in accordance with the terms of the agreement executed between the University and the third party that governs the activity from which the IP was generated.
      2. University Staff who create IP under any Commissioned Research Agreement may share in the revenue received by the University under such Agreement as follows:
        1. the University will first recover all direct and indirect costs associated with the Commissioned Research Agreement, at the University’s then current specified commercial overhead rates. A surplus for the Commissioned Research Agreement will then be determined by deducting these direct and indirect costs from the revenue received by the University under the Commissioned Research Agreement (“Surplus”).
        2. at the end of the financial year of the University, the University will add together the Surplus of all Commissioned Research Agreements that a University Staff member was involved in either on their own or together with others (and after making any necessary pro rata adjustments where other University Staff are involved in the same Commissioned Research Agreement) (“Combined Staff Member Surplus”) and then make the following payments:
          1. as a first charge, the sum of $10,000 of the Combined Staff Member Surplus (or the full amount of the Combined Staff Member Surplus if it is less than the sum of $10,000) will be paid to the University Staff member’s personal research account; and
          2. then the balance of the Combined Staff Member Surplus will be distributed 50% to the University Staff member’s personal account (“Personal Share”), 25% to the University department(s) where the activities were undertaken, and 25% to the University; but
          3. if in the opinion of the University it is unethical or undesirable for the University Staff member to receive their Personal Share, their Personal Share will instead be transferred to their personal research account.

  2. IP disclosure and commercialisation options

    1. Disclosure
      1. If a Creator wishes to commercialise any University IP created by them, they must first complete and submit an Intellectual Property Disclosure Form to Otago Innovation. The Creator will then meet with Otago Innovation and Research and Enterprise to ensure all necessary information has been included in the Intellectual Property Disclosure Form and to discuss the available commercialisation and development options for the relevant IP.
      2. The Creator may select one of the two commercialisation options set out in section 2.2 of this Policy.
      3. The Creator will not make any public disclosure of the relevant IP including presentation of the IP at conferences or public meetings or through social media, discussion of the IP with family, friends and colleagues (unless such colleagues are part of the Creator’s research team, and are themselves bound by obligations of confidentiality), or documentation of the IP in grant applications (except where the recipients of the grant applications are bound by obligations of confidentiality with respect to the IP), until:
        1. adequate protection of the IP has been undertaken as such disclosure may compromise the protection of the IP; and
        2. the University is satisfied that there are no obligations to third parties that may prevent such disclosure.
    2. Commercialisation Options

      Option A: Commercialisation led by Otago Innovation

      1. Under Option A, Otago Innovation will manage all aspects of commercialisation of the IP, including assessing the commercial potential of the IP within 90 days of receipt of the Intellectual Property Disclosure Form, and to the extent necessary, subsequently securing protection of the IP at Otago Innovation’s own cost.
      2. If Otago Innovation believes there is potential to commercialise the IP, it will collaborate with the Creator to:
        1. produce a development plan, including milestones and go/no-go decision points; and
        2. enter into a formal agreement regarding the commercialisation of the IP by Otago Innovation.
      3. Net revenues arising from the commercialisation of the IP by Otago Innovation (as defined in the formal agreement between Otago Innovation and the Creator) will be distributed as follows:
        1. one-third to the Creator,
        2. one-third to the originating University department’s research committee (reserved for further research), and
        3. one-third to Otago Innovation.
      4. If Otago Innovation determines at any time there is no potential to commercialise the IP, the Creator may pursue Option B or continue to develop the IP at the University, with any subsequent improvements being the subject of a new disclosure to Otago Innovation.

      Option B: Commercialisation led by Creator

      1. Under Option B, the Creator will take sole responsibility for the commercialisation of the IP including paying for all protection and development costs.
      2. After the Creator has advised Otago Innovation that it wishes to commercialise the IP under Option B, Otago Innovation and the Creator will enter into an agreement that sets out amongst other things:
        1. whether the IP and IPRs will be licensed or assigned from Otago Innovation to the Creator (including by way of an option granted to the Creator for such licence or assignment);
        2. whether Otago Innovation will provide any commercialisation support on a fee-for-service basis; and
        3. the remuneration to be received by the University and Otago Innovation from the commercialisation of the IP by the Creator. The remuneration could be in any form agreed between Otago Innovation and the Creator, including cash or equity. The agreed remuneration will need to consider both the value of the University IP as well as any work already performed by Otago Innovation in relation to the commercialisation of the IP.
      3. The Creator will at all times conduct commercialisation activities outside of their university employment and without university resources unless formally agreed in writing with their department, Pro-Vice-Chancellor (Research and Innovation) and the Director, Research and Enterprise.

  3. Dispute resolution

    1. Process
      1. Parties to any dispute arising out of the application of this Policy are firstly encouraged to attempt to resolve the matter informally with the assistance of the appropriate office within the University. If no such resolution is reached, the matter may be referred to the Deputy Vice-Chancellor (Research and Innovation).
      2. The Deputy Vice-Chancellor (Research and Innovation) will only hear disputes that have been brought within one year of the complainant having had knowledge of the matter underlying the dispute.
      3. All material relevant to the dispute will be provided to the Deputy Vice-Chancellor (Research and Innovation) by all parties to the dispute, within fifteen (15) working days of the day on which the matter is referred to the Deputy Vice-Chancellor.
      4. The Deputy Vice-Chancellor (Research and Innovation) will invite comments by interested parties and will be free to consult with experts, if required. All information provided to experts by the Deputy Vice-Chancellor (Research and Innovation) will be treated as confidential by such experts. The Deputy Vice-Chancellor (Research and Innovation) will share the opinion of the experts with all interested parties and will invite them to comment within a fixed timeframe.
      5. The Deputy Vice-Chancellor (Research and Innovation) will promptly advise the parties in writing of their decision on the matter. Any decision by the Deputy Vice-Chancellor (Research and Innovation) under this section shall be final.
    2. Unreported IP
      1. Failure to disclose IP and unauthorised exploitation of University-owned IP may result in legal action by the University, cessation of payments under this Policy, and forfeiture of rights under this Policy.

Related policies, procedures and forms

Relevant legislation and agreements

Contact for further information

If you have any queries regarding the content of this policy or need further clarification, contact:

Director, Research and Enterprise
Email director.re@otago.ac.nz

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