The technology transfer process

1. Research

Observations and experiments during research activities often lead to discoveries and inventions. An invention is any useful process, machine, composition of matter (e.g., a chemical or biological compound), or any new or useful improvement of the same. Often, multiple researchers – including trainees and research staff – may have contributed to an invention and may be inventors. Commercial Development & Industry Partnerships (CDIP) provides advice on commercially-relevant questions and research topics.

2. Make contact early

Contact CDIP early, before public disclosure, to discuss inventions and seek guidance with respect to the disclosure, evaluation and protection processes described below. PLEASE DO NOT PUBLICLY DISCLOSE YOUR INVENTION BEFORE PATENT FILING.

3. Disclose your invention

The written notice of invention to CDIP begins the formal technology transfer process. The Record of Invention is a confidential document, and should fully describe the new aspects of your invention, including the critical solution it provides and its advantages and benefits over current technologies.

4. Review of your invention

CDIP will review the invention disclosure, conduct patent searches (if applicable), and analyse the market and competitor technologies to assess the invention’s commercialisation potential. The University's IP Committee will then approve patent expenditure, and this assessment process will guide the commercialisation strategy – for example, to license exclusively or non-exclusively, or to license the invention in different fields of use.

5. Protect you patent

Patent protection, a common legal protection method, begins with the filing of a provisional patent application with the patent office and, when appropriate, foreign patent offices. Other commonly used forms of intellectual property protection include copyright and trademark. Unique biological materials and software can often be successfully licensed without formal intellectual property protection.

The patent protection process

Year

Activity

Start

Provisional patent application filed in Australia; 'priority date' established.

1

Conversion of PCT application; only at this stage more data can be added to the invention to strengthen it

1.5

PCT patent specification published with search report

2.5

National phase entry; selection of important markets for the invention; expensive stage; licensee ideally on-board to commercialise the invention

Between 3 and 5

Patent examiner report received; patent attorney works with researchers and CDIP to discuss responses to patent examiners. This process is iterative until the patent application is granted

5

Patent application is hopefully granted; issue fees, validation fees in countries in Europe and annual renewal fees payable.

6. Obtain seed funding

CDIP offers a CDIP Fund to strengthen patent applications by funding the construction of prototypes or further testing of inventions, including animal model testing for medical related inventions. This office also assists in accessing other funding sources for intellectual property and personnel development.

7. Conduct due diligence and marketing

CDIP broadly markets all technologies to appropriate companies that could be interested in commercialising the particular invention. With the inventor's involvement, CDIP will create a marketing overview of the technology, and identify, investigate and contact candidate companies (potential licensees) that have the expertise, resources, and business networks to bring the technology to market. This may involve partnering with an existing company or guiding the formation of a start-up company. The active involvement of the researchers can dramatically enhance this process. CDIP offers an Industry Engagement Fund to subsidise the travel of researchers to meet with potential licensees.

8. Initiate best vehicle for commercialisation

If the invention will best be commercialised by one or more existing companies CDIP will seek the potential licensees and work to identify mutual interests, goals and plans to fully commercialise the technology. If creation of a new business start-up has been chosen as the optimal commercialisation path, CDIP will work with local accelerators and incubators to assist the founders in planning, creating and finding funding for the start-up.

9. Negotiate and finalise license agreement and pursue further funding

CDIP negotiates and executes a license agreement. This agreement is a contract between the University and a company in which certain University rights to a technology are granted to a company in return for financial and other benefits. The license agreement may have different structures, depending on the maturity of the company. Commercialisation of intellectual property usually requires ongoing researcher support to the licensee, which may result in contract research projects for the University. CDIP also promotes the research expertise of the university to the licensees to further develop the invention, in order to attract funding for the researchers. This office is also responsible for negotiating the research agreement, which often offers an option to the partner companies to license the research outputs. Commercial Development & Industry Partnerships also provides advice on ARC Linkage grant and NHMRC Development grant applications and processes.

10. Manage

Most university inventions are very early stage and require further research and development efforts. The licensee company typically makes significant business investments of time and funding to commercialise the product or service. This step may entail regulatory approvals, sales and marketing, support, training, and other activities. CDIP is responsible for ensuring that the licensees are disseminating the knowledge of the University in the widest way possible, through the tracking of performance milestones and commercialisation plans.

11. Collect and distribute revenue

Revenues received by the University from licensees are collected by CDIP and distributed according to the University's IP rule to inventors, departments, and schools to fund additional research and education. Revenues include both licensing fees and royalty, as well as money received from selling of equity from licensees in consideration for granting the license.