Commercialisation Revenue Protocol

[Print-friendly version]

Refer to MOPP D3.1 for information on QUT's Intellectual Property Policy.

1. Introduction

1.1 What this document is about

This document sets out QUT’s Protocol in relation to the distribution of Net Commercialisation Revenue to Contributors.  It provides guidance to staff and students about the framework at QUT for making such distributions.

This Protocol complements QUT’s Intellectual Property Policy.

1.2  Administration of Protocol 

The administrator of this Protocol is the Deputy Vice Chancellor (Research and Commercialisation), who may, in the Deputy Vice Chancellor (Research and Commercialisation)’s discretion amend:

• this Protocol; and
• the accompanying Explanatory Memorandum,

provided any such amendment is not inconsistent with QUT’s Intellectual Property Policy.

1.3  Implementation of Protocol

The manager of this Protocol, with responsibility for its day to day implementation is qutbluebox Pty Limited (“bluebox”).

2. Distributions

2.1 Arranged in accordance with Policy

bluebox will arrange for the distribution of Net Commercialisation Revenues (excluding revenues received from the commercialisation of teaching materials) to Contributors, Contributors’ faculties, divisions or institutes and bluebox in accordance with QUT’s Intellectual Property Policy.

2.2 General position

As a general rule, the distribution of Net Commercialisation Revenue will be:

• one third to all the Contributors between them;
• one third to the Contributors’ faculty or institute; and
• one third to bluebox.

In exceptional circumstances, QUT has the discretion to increase the amount available for distribution among all the Contributors above one third, to a maximum of one half.

2.3 Exercise of discretion

The discretion to increase distributions to particular Contributor(s) will be exercised by the Deputy Vice Chancellor (Research and Commercialisation) and the Deputy Vice Chancellor (Academic) upon recommendation of bluebox, who will consider, amongst other relevant matters:

• the extent to which the Contributors(s) have complied with the expectations upon the staff and students contained in the Commercialisation Protocol;
• the agreement by the contributor(s) to contribute to the commercialisation process beyond the expectations upon the Contributor(s) contained in the Commercialisation Protocol;
• an assessment by bluebox as to the need and desirability for the Contributor(s) to continue to be involved in the commercialisation process;
• The third party desires or requirements that the Contributor(s) remain involved in the commercialisation process; and
• the adherence by the contributor(s) to arrangements requiring the Contributor(s)’ continued involvement in the commercialisation process, if any.

2.4 Making the determination

It follows that the discretion to increase distributions to any particular Contributor:

• can not be prematurely exercised at the time of, for example, lodging a patent application; and
• can only be most appropriately exercised, after the criteria in paragraph 2.3 can be assessed.

In these exceptional cases, the distribution of net commercialisation revenue shall be:

• up to one half among the contributor(s);
• of the remainder:
• one half to the contributors’ faculty, division or institute for its use as the Executive Dean, Head of Division or Institute Director determines, subject to the approval of the Vice-Chancellor; and
• one half to qutbluebox.

3. Determination of Individual Contributions

3.1 Individual allocation

As provided in the IP Policy, persons who qualify as Contributors, and not just the Creators, may share in the Net Commercialisation Revenue distribution.

3.2 By agreement

Where there is more than one Contributor, generally, the Contributors will determine amongst themselves their respective proportionate contributions.  This group determination will remain subject to assessment by the Deputy Vice-Chancellor (Research and Commercialisation).

If there is disagreement among the potential contributors on:

• who qualifies as a Contributor; or
• the respective proportionate contributions of the Contributors,

this will fall for assessment and determination by the Deputy Vice-Chancellor (Research and Commercialisation).

3.3 Assessment

The distribution allocation between the Contributors (whether agreed or not by the Contributors) shall be assessed and determined by the Deputy Vice-Chancellor (Research and Commercialisation) upon recommendation of bluebox. In making this recommendation bluebox will consult with the Contributors and may involve other experts including patent attorneys to determine significant contributions. The assessment is conducted for equity purposes.

3.4 In the case of dispute

If following a determination by the Deputy Vice-Chancellor (Research and Commercialisation) there remains disagreement on:

1. who qualifies as a Contributor; or
2. the respective proportionate contributions of the Contributors,
3. this will be determined in accordance with the dispute resolution procedure in the IP Policy.

4. Alternative to Distribution

4.1 Equity holding

In exceptional circumstances equity for Contributors in a start up company will be considered by the Deputy Vice-Chancellor (Research and Commercialisation) on a case by case basis upon recommendation by bluebox. Where Contributors have participated by way of equity, the Contributors will not be entitled to share in any Net Commercialisation Revenue received by QUT or bluebox from its investment in the start up company. Contributors will need to consider the taxation impact, if any, upon them of receiving and holding equity. Similarly, QUT will need to consider the fringe benefits tax impact, if any, upon it, and conflict of interest issues and other commercial issues.

4.2 Calculation of holding

In cases where Contributors may personally hold shares, the number of shares to be held between the Contributors will be determined in accordance with the same principles that operate in relation to the distribution of net commercialisation revenues, that is:

1. consider the “gross” number of shares available in accordance with the terms of the particular transaction;
2. consider the commercialisation expenses that would have been deducted from revenue to arrive at a “net”;
3. calculate the Contributors’ entitlement to this number of shares, being between one third and one half;
4. convert this to a number of shares; and
5. arrive at the “net” number of shares to be available to Contributors.

4.3 Personal equity – the ultimate determination

Whether Contributors may on a particular occasion hold shares personally, will be determined by the Deputy Vice-Chancellor (Research and Commercialisation) upon recommendation by bluebox, who will consider the taxation implications to QUT or bluebox, if any, conflict of interest and other factors in considering whether to implement this.