L3 Technology Transfer Flashcards
What is a patent attorney?
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.
Innovation Challenges at Universities
see onenote diagram
Challenge
- Getting IP adopted and commercialised
- Getting it out of university and into the hands of someone who can commercialise it
University Tech Transfer - Definition
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:
- Impact
- Revenue
- Reputation of the uni
Tech Transfer Process at UoM - 4 steps
- invention disclosure
- assess
- protect
- commercialise
Invention Disclosure
Invention Disclosure Form (IDF) = collects info about a uni invention
Asks 3 key questions:
- problem
- solution
- funding and collaborators
Solving something that isn’t a real world problem, more of a scientific curiosity - not enough for commercialisation
Intellectual Property - Definition
Creations of the mind e.g. inventions, literary and artistic works, symbols, names, images used in commerce
IP Rights - Definition
Temporary monopoly rights given by a government allowing the right to exploit the IP
E.g.
- patents
- copyrights
- trademarks
- design rights
IP - Non-registered
See onenote diagram
- confidential info e.g. know how, trade secrets
- copyright
- trademarks
IP - Registered
See onenote diagram
- Patents
- registered designs
- domain names
- plant breeder rights
- business names
- trademarks
TT Process - Invention Assessment
Review key factors and consideration to determine whether an invention should be commercialised:
- ownership
- technical analysis
- IP analysis
- Market analysis
Ownership of the IP
see onenpte
Who created the invention, where do they work, who owns it?
Technical analysis
see onenote - see what stages uni is involved in
- what is the problem being investigated?
- what is the technology and how does it solve the problem?
- Stage of development (PoC/prototype)?
- Resources to further develop and/or commercialise the technology?
Technology Readiness Levels - NASA Example
see onenote
Intellectual property analysis
Is there any IP underpinning the disclosed technology which can be commercialised?
- patentable
- copyright/software
- other?
Market analysis
see onenote
- Market need
- competitive advantage
- market size/value
- commercialisation route e.g. license or spin-out company
Top 20 reasons start ups fail
- no market need
- ran out of cash
- not the right team
- gets outcompeted
- pricing/cost issues
Commercialise university IP
See onenote diagram
License IP
- Provide access to IP to established companies or a new company can be started
Licensed uni IP characteristics
see onenote
- IP remains owned by Uni
- Licensee responsible for developing and selling product
- Uni receives payments in consideration for grant of the license
- low risk and hands-off - cost of risk and development passed on to licensee
- lower potential overall return to licensor
Commercialisation through spin-out
see onenote
Spin out = new company formed by uni to develop early stage (high risk) tech with greater value potential
- IP licensed into company
- Uni will have equity stake
- Business plans, experienced management and investment are required => set up can be resource intensive
- end objective is to “exit” the company => Uom received money by selling its shares
Spin out vs Licensing - pros and cons
See onenote slides
Commercialisation through staff start-up
Staff start-up = new company formed by staff (or students) to develop uni IP
- IP licensed into company on the basis of development and commercialisation plan agreed with the uni
- uni will often take equity stake (or equivalent)
- Business plans, experienced management and investment are required => set up can be resource intensive
- end objective is to “exit” the company => Uom received money by selling its shares
- uni receives money from shares and license fees and royalties
TRaM - translating research at Melbourne
see onenote
Translation pathway for uni research
Uniseed
Commercialisation fund for early stage companies
IP Group partnership
Investment fund
first right to invest in UoM spin-outs
Group of 8 Aus + IP group
Biocurate
Venture catalyst
Development Fund for early stage drug discovery opportunities
Fibrotech Case Study
see onenote
