L3 Technology Transfer Flashcards

1
Q

What is a patent attorney?

A

you do not need a law degree to become a patent attorney. Patent attorneys are a specialist type of lawyer monitored by their own regulator, IPReg. The role of a patent attorney involves advising clients on those areas of law applicable to intellectual property.

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2
Q

Innovation Challenges at Universities

A

see onenote diagram

Challenge

  • Getting IP adopted and commercialised
  • Getting it out of university and into the hands of someone who can commercialise it
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3
Q

University Tech Transfer - Definition

A

Bridge the gap between research uni and commercial enterprises

Intellectual property form uni research => product or service for benefit of society

Reasons to bridge the gap:

  1. Impact
  2. Revenue
  3. Reputation of the uni
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4
Q

Tech Transfer Process at UoM - 4 steps

A
  1. invention disclosure
  2. assess
  3. protect
  4. commercialise
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5
Q

Invention Disclosure

A

Invention Disclosure Form (IDF) = collects info about a uni invention

Asks 3 key questions:

  1. problem
  2. solution
  3. funding and collaborators

Solving something that isn’t a real world problem, more of a scientific curiosity - not enough for commercialisation

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6
Q

Intellectual Property - Definition

A

Creations of the mind e.g. inventions, literary and artistic works, symbols, names, images used in commerce

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7
Q

IP Rights - Definition

A

Temporary monopoly rights given by a government allowing the right to exploit the IP

E.g.

  1. patents
  2. copyrights
  3. trademarks
  4. design rights
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8
Q

IP - Non-registered

A

See onenote diagram

  1. confidential info e.g. know how, trade secrets
  2. copyright
  3. trademarks
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9
Q

IP - Registered

A

See onenote diagram

  1. Patents
  2. registered designs
  3. domain names
  4. plant breeder rights
  5. business names
  6. trademarks
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10
Q

TT Process - Invention Assessment

A

Review key factors and consideration to determine whether an invention should be commercialised:

  1. ownership
  2. technical analysis
  3. IP analysis
  4. Market analysis
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11
Q

Ownership of the IP

A

see onenpte

Who created the invention, where do they work, who owns it?

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12
Q

Technical analysis

A

see onenote - see what stages uni is involved in

  1. what is the problem being investigated?
  2. what is the technology and how does it solve the problem?
  3. Stage of development (PoC/prototype)?
  4. Resources to further develop and/or commercialise the technology?
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13
Q

Technology Readiness Levels - NASA Example

A

see onenote

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14
Q

Intellectual property analysis

A

Is there any IP underpinning the disclosed technology which can be commercialised?

  1. patentable
  2. copyright/software
  3. other?
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15
Q

Market analysis

A

see onenote

  1. Market need
  2. competitive advantage
  3. market size/value
  4. commercialisation route e.g. license or spin-out company
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16
Q

Top 20 reasons start ups fail

A
  1. no market need
  2. ran out of cash
  3. not the right team
  4. gets outcompeted
  5. pricing/cost issues
17
Q

Commercialise university IP

A

See onenote diagram

License IP
- Provide access to IP to established companies or a new company can be started

18
Q

Licensed uni IP characteristics

A

see onenote

  1. IP remains owned by Uni
  2. Licensee responsible for developing and selling product
  3. Uni receives payments in consideration for grant of the license
  4. low risk and hands-off - cost of risk and development passed on to licensee
  5. lower potential overall return to licensor
19
Q

Commercialisation through spin-out

A

see onenote

Spin out = new company formed by uni to develop early stage (high risk) tech with greater value potential

  1. IP licensed into company
  2. Uni will have equity stake
  3. Business plans, experienced management and investment are required => set up can be resource intensive
  4. end objective is to “exit” the company => Uom received money by selling its shares
20
Q

Spin out vs Licensing - pros and cons

A

See onenote slides

21
Q

Commercialisation through staff start-up

A

Staff start-up = new company formed by staff (or students) to develop uni IP

  1. IP licensed into company on the basis of development and commercialisation plan agreed with the uni
  2. uni will often take equity stake (or equivalent)
  3. Business plans, experienced management and investment are required => set up can be resource intensive
  4. end objective is to “exit” the company => Uom received money by selling its shares
  5. uni receives money from shares and license fees and royalties
22
Q

TRaM - translating research at Melbourne

A

see onenote

Translation pathway for uni research

23
Q

Uniseed

A

Commercialisation fund for early stage companies

24
Q

IP Group partnership

A

Investment fund
first right to invest in UoM spin-outs

Group of 8 Aus + IP group

25
Q

Biocurate

A

Venture catalyst

Development Fund for early stage drug discovery opportunities

26
Q

Fibrotech Case Study

A

see onenote