Policy
Intellectual Property
1. Purpose
This policy covers the management (including disclosure and declaration) of all of AgResearch's
Intellectual Property Rights and the Intellectual Property Rights of third parties to which
AgResearch has access.
2. Introduction
2.1 Preamble
AgResearch’s mission as defined in our Statement of Core Purpose, is
“to enhance the value,
productivity and profitability of New Zealand’s pastoral, agri-food and agri-technology sector
value chains to contribute to economic growth and beneficial environmental and social outcomes
for New Zealand.”
Furthermore, as a Crown-owned company, it is expected that AgResearch will operate as a
sustainable business. In order to achieve this AgResearch must appropriately manage and
transfer the intellectual assets it creates in ways that ensure optimal benefit to New Zealand as
well as benefit and impact for its stakeholders and maintaining its global standing and leadership
position in its research.
2.2 AgResearch Mission and Obligations
AgResearch will fulfil its purpose through the provision of research, technology and knowledge in
partnership with key stakeholders, including industry.
In order to accelerate adoption of innovation, AgResearch uses a range of technology transfer
pathways. These include a mix of partnering, providing contract research and development
services, executing licensing deals with industry, or (if necessary) forming new ventures to deliver
impacts. Refer to the Appendix to this policy for examples as to how AgResearch manages
Intellectual Property Rights in practice.
AgResearch’s approach to Intellectual Property Rights’ commercialisation is to select
commercialisation pathways that:
•
Are easy for end-users to work with;
•
Transfer knowledge into the ‘best hands’ as quickly as possible; and
•
Comply with AgResearch’s legal obligations.
The approach to commercialisation and dissemination of knowledge varies given the many and
varied types of Intellectual Property Rights which are generated, accessed and used across
AgResearch. The most effective method of managing them to achieve maximum impact will vary
on a case-by-case basis. In some instances the best impact may be through widespread public
release via publication or in conjunction with an industry body (e.g. Beef and Lamb New Zealand
or DairyNZ). In other instances considerable investment (after the research and development
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
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Policy
Intellectual Property
phase is complete) is required to commercialise a new technology. Commercialising companies
will require a return to justify that investment and therefore find it essential that the core
technology be protected through patents or other Intellectual Property Rights, and that
commercialisation companies have rights to for some period to enable them to make a
commercial return on their investment. AgResearch will therefore on a case-by-case basis
protect Intellectual Property Rights appropriately to ensure that commercialisation is attractive
to its partners.
AgResearch will consider each case (technology or Intellectual Property Right) on its merits
and select the most appropriate method of technology transfer to achieve optimum impact.
The Intellectual Property Rights may be packaged and protected as required (such as know-
how, trade secret, copyright, patent, plant variety rights or defensive publication to prevent
others from patenting) and delivered through a variety of methods which may include
combinations of conference papers, publications, farmer field days, forums, people exchanges
and collaborations, media communications as well as through licensing, spin-outs and the
sale or exchange of rights.
AgResearch seeks to manage its Intellectual Property Rights strategically and protecting them
in the first instance preserves all future options including making them freely or widely available.
Protection of these Intellectual Property Rights also supports the achievement of impact and
benefit. This may include protecting Intellectual Property Rights to facilitate follow-on investment
in development and adoption, or protecting Intellectual Property Rights that may be used as a
platform to encourage collaboration or to obtain access to other peoples’ important Intellectual
Property Rights.
While achieving impact through knowledge transfer is a key goal, where the knowledge and
technology has a market application and is expected to generate commercial returns, an
equitable return from the commercial exploitation of Intellectual Property Rights should be
expected. This is important in enabling AgResearch to operate as a sustainable business and
to continue to provide capability and expertise to support the pastoral sector.
AgResearch will maintain its Intellectual Property Rights portfolio through active management
according to international best practice. AgResearch will retain the services of reputable patent
attorneys as required to create a portfolio of beneficial and valuable Intellectual Property Rights.
In structuring Intellectual Property Rights ownership and access arrangements as part of such
collaborations and relationships, there is a need to be conscious that in some circumstances
legal protection may be obtained for an Invention that has potential applications in a wide
range of fields and industries, often significantly beyond the scope of the particular field,
problem or application area of the research itself. In structuring these arrangements it will
generally seek to ensure that AgResearch and our partners can harness the value of such
broad or platform technologies in other application areas.
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
Page 2 of 8
Policy
Intellectual Property
3. Definitions
•
Commercialisation Group includes
:
Commercialisation Manager;
Intellectual Property and Investments Advisor;
Business Analyst; and
Project Analyst.
•
Intellectual property Rights means the outcomes of intellectual activity and effort for
which various rights and protections may be conferred by statute, contract or common
law. It includes any invention, discovery, or creation, which may be protected by way of
trademark, patent, design, copyright, trade secret, permit, and plant variety right
(whether registrable or unregistrable) and all applications, drafts and workings relating
to these rights.
•
Invention means any invention, improvement, modification, process, formula, model,
prototype, sketch, design, drawing, plan, software or other work or material that any
person, alone or with others, may make, devise, develop, contribute to or discover.
•
Matauranga Maori means a body of knowledge, innovations and practises generated
within Maori communities which can be disseminated in various forms, including but not
limited to, oral, written, and electronic.
4. References
This policy should be read in conjunction with the following:
• Delegations Policy
• Security Policy
• Intellectual Property Best Practice
• Strategic Plan
• Intellectual Property Process for
• Trade Mark Guide to Use
Patenting
• AgResearch’s Branding Strategy
• Licensing Discussion Checklist
• Royalty Incentive Scheme Policy
• Licensing Terms Sheet
• Trade Secret Best Practice
• Patenting Checklist
• Patenting Guide to Inventorship
5. Statement of Policy
5.1 Responsibility
All directors, officers, employees, contractors, students and visiting researchers shall comply
with this policy.
Administration of this policy shall be the responsibility of the Partnerships & Programmes
Director.
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
Page 3 of 8
Policy
Intellectual Property
5.2 Delegations
Please refer to the Delegations Policy for information on decision-making in relation to Intellectual
Property Rights.
6. Statement of Principles
This section sets out the principles of this policy and clarification and application designed to
assist with the application of these principles.
Principle
Clarification and Application
AgResearch aims to strategically A key driver for creating protectable Intellectual
manage its Intellectual Property Rights Property Rights will be to enhance the transfer of the
to achieve maximum benefit for New underlying technology to our partners in a way that
Zealand and optimal impact for its maximises the outcomes for AgResearch’s identified
partners and industries, and will strive impact areas and complies with AgResearch’s legal
to select the most appropriate method obligations.
of management of Intellectual Property
Rights to achieve this on a case by case The AgResearch Intellectual Property Rights portfolio will
basis.
be managed by the Commercialisation Group, specifically
the Commercialisation Manager and Intellectual Property
and Investments Advisor, in accordance with the
Intellectual Property Best Practice and other related
documents (see the references section above).
A central database will be used to record and manage
all Intellectual Property Rights owned by AgResearch.
The database shall be administered by the Intellectual
Property and Investments Advisor.
An audit of practices required by this Policy will be
undertaken as required.
AgResearch aims to obtain statutory AgResearch shall allocate an annual Intellectual
protection for its Intellectual Property Property Rights portfolio budget.
Rights.
AgResearch will invest in the application for, and
prosecution and maintenance of, statutory protection for
Intellectual Property Rights that meet its investment criteria
or where it is contractually obliged to do so, in accordance
with Intellectual Property Best Practice and Patenting
Process Best Practice.
A key component of investment criteria in to the protection
of IP, is that prior to completion, entry into Patent
Cooperation Treaty (PCT) or National Phase stage, the
relevant Intellectual Property Rights must have technology
transfer arrangements documented or have external
funding linked to the technology subject to protection.
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
Page 2 of 8
Policy
Intellectual Property
Principle
Clarification and Application
All final applications for statutory protection of any
Intellectual Property Rights owned by AgResearch will be
approved in line with the Delegations Policy, the
Intellectual Property Best Practice and Patenting Process
Best Practice.
Reputable intellectual property lawyers with requisite
experience shall be used for all applications for protection
of Intellectual Property Rights.
AgResearch intends to make informed All confidential information of AgResearch or third parties
and principled decisions around the shall be retained confidential, unless release is approved
disclosure of confidential information.
in accordance with the Intellectual Property Best Practice
and Trade Secret Best Practice.
Public disclosures of information pertaining to research,
technology development and associated Intellectual
Property Rights, including publications in refereed
journals, series or books, conference papers or abstracts,
research monographs or books, media releases, scientific
or technical reports, or other forms of information
disclosure, shall require approval in accordance with the
Intellectual Property Best Practice and Trade Secret Best
Practice.
AgResearch aims to respect the Treaty AgResearch will have regard to the Treaty of Waitangi and
of Waitangi and all relevant government relevant government policies and international protocols
policies and international protocols, in making decisions about Intellectual Property Rights in
including respecting the IP rights of accordance with this Policy.
others, in managing its intellectual
assets.
When dealing with intellectual property that includes
matauranga Maori, and in the context of the WAI262
claim report, the principles of the Treaty of Waitangi will
be applied.
Any intellectual property based wholly or partly on
matauranga Maori must be assessed by AgResearch's
Kaiurungi Ahuwhenua Maori or his or her nominee, who will
advise the Commercialisation Group on the ownership,
appropriate use and protection of matauranga Maori, and
any benefit sharing arrangement that is justified.
AgResearch acknowledges the
AgResearch supports the aims of NZGOAL(New Zealand
international movement towards
Government Open Access and Licensing) framework and
publication in open access journals and will have regard to the possibility of making copyright and
forums and where practicable will non-copyright works available on open terms when
support the stance of our funding making decisions related to Intellectual Property Rights.
bodies in relation to this.
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
Page 3 of 8
Policy
Intellectual Property
Principle
Clarification and Application
AgResearch supports a collaborative When developing Intellectual Property Rights in
approach to research, development collaboration with others, AgResearch will work with these
and commercialisation to create greater partners to identify the party that is best placed to manage
impact and to meet AgResearch’s the Intellectual Property Rights and develop the full scope
goals.
of the technology and its potential utilization.
AgResearch will be aware of the needs of its clients in
relation to the ownership of Intellectual Property Rights.
AgResearch seeks to ensure that Agreements that involve the development of Intellectual
dealings and agreements with other Property Rights with others will contain clear processes
parties appropriately preserve and around the protection and management of Intellectual
protect Intellectual Property Rights, and Property Rights.
provide a sound governance framework
for decision-making around Intellectual
Property Rights.
Where appropriate AgResearch will Agreements that involve the development of Intellectual
maintain freedom to operate/research Property Rights with other parties will contain terms
by retaining sufficient access to allowing AgResearch the appropriate freedom to operate
Intellectual Property Rights to enable and research.
the conduct of further research in
accordance with our Core Purpose.
Where Intellectual Property Rights are AgResearch will defend its Intellectual Property Rights
anticipated to generate commercial where it is commercially appropriate to do so in
returns, an equitable return from the accordance with the Intellectual Property Best Practice.
commercial exploitation of those
Intellectual Property Rights should be Collection of fees and royalties arising from the transfer or
expected.
licensing of AgResearch Intellectual Property Rights shall
be managed by the Commercialisation Group, specifically
the Intellectual Property and Investments Advisor.
Performance assessment procedures for staff will
recognise that, in certain cases, scientific publication
may not be possible or may be delayed in order to
protect Intellectual Property Rights.
Any transfer of Intellectual Property Rights shall be on a
fair and reasonable commercial basis. Commercial
return to AgResearch is important but secondary to the
primary impact objectives as detailed in the
AgResearch Statement of Corporate Intent.
AgResearch will enforce its Intellectual In the event that it becomes apparent that AgResearch
Property Rights and contractual rights Intellectual Property Rights are being infringed a
in a manner consistent with our Core
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
Page 4 of 8
Policy
Intellectual Property
Principle
Clarification and Application
Purpose and roles within the innovation notification should be made immediately to the
system.
Commercialisation Manager.
On a case by case basis, AgResearch will then enforce
its Intellectual Property Rights in a manner consistent
with its position as a CRI and the Intellectual Property
Best Practice.
Intellectual Property Rights developed All agreements with employees, contractors, students or
by employees, contractors, students or visiting researchers (
Staff) will state that all Intellectual
visiting researchers as a result of their Property Rights will be the property of AgResearch unless
engagement with AgResearch will be otherwise agreed in writing by the AgResearch Chief
owned by AgResearch.
Executive, and contain an obligation to assign such
Intellectual Property Rights to AgResearch on request.
A staff member who has identified that an invention, or any
other intellectual property, created in the course of his or
her normal duties, whether new or pre-existing, may have
the potential for commercialisation, must notify this to a
Science Group Leader, Sector Manager or the
Commercialisation Manager. The potential for
commercialisation may be identified by a person other than
the creator, whom will notify one or more of the
aforementioned people. The commercialisation manager,
will be responsible for the commercialisation process.
AgResearch science staff must keep approved logbooks
and records to record activities.
AgResearch will negotiate agreements with visiting
researchers conducting research at AgResearch
and for AgResearch researchers conducting
research at other institutions. The principle of such
agreements should be that Intellectual Property is
owned by the parties in proportion to the relative
value of each party’s contribution to the
development of the Intellectual Property including
consideration of pre-existing or background
Intellectual Property contributed, the quantum of
the inputs contributed, and the value or importance
of that intellectual property and those inputs to the
development of any new intellectual property.
An exit process and interview for Staff who leave
AgResearch will be held to ensure:
(a)
All Inventions or discoveries and Intellectual Property
Rights are fully recorded and transferred to
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
Page 5 of 8
Policy
Intellectual Property
Principle
Clarification and Application
AgResearch such that further activities can be
undertaken by AgResearch.
(b)
The Staff member is aware of Intellectual Property
Rights ownership and use, and confidentiality
obligations.
Policy Owner: Partnerships and Programmes Director
Last reviewed/updated: June 2017
Next scheduled review: June 2020
Approved by: Board (via ARC)
Page 6 of 8
