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Easy Access IPImplementation at La Trobe University

La Trobe University EAIP Implementation

Executive summary

Easy Access Intellectual Property (EAIP) is an IP handling, management and knowledge delivery concept developed in the United Kingdom and brought to Australia around 3 years ago and the promulgation of the system and philosophy has been led by the CEO of the commercialisation company of University of NSW (UNSW Innovations). The system recognised that all IP generated in a University has inherent value but most is not worth investing time and money in protecting. The EAIP system includes a rigorous “triage” system of carefully determining potentially financially valuable IP and IP that requires patent protection for delivery. EAIP also recognises that science published in peer reviewed journals may not be usable or implementable by an independent business. The main feature that makes EAIP different from usual IP management processes is that IP deemed not to be worth protecting is made available at no cost.

This means that technologies that the University does not wish to protect are made visible and promoted by efficient web based publication. Businesses wishing to use these technologies mat access them by way of contacting the University Knowledge Transfer Office (KTO) and if they agree to five provisions can license it at no cost by way of a 1 page license agreement. The provisions for EAIP licensees are:

1. Demonstrate how they will create value for society and the economy.2. Acknowledge the University as the originator of the intellectual property.3. Report annually on the progress on the development of the Easy Access IP.4. Agree that if the IP is not exploited within three years, the licence will be revoked.5. Agree that there will be no limitations on the University’s use of the IP for its own research.

The benefits of the EAIP approach:

1. Knowledge and ideas are transferred to where they can be used by industry.2. The process and legal documentation is simple, rapid and easy for both industry and the University.3. The no cost delivery of IP encourages a relationship and potential funding of small projects to help

the industry implement and operationalise the IP.4. Industry that derives benefit from EAIP projects are likely to be repeat users and engage in long term

research relationships and linkage grant applications.5. It is an efficient process that is inherently agile, responsive and simple.6. EAIP allows the Innovation and Commercialisation Team to focus time and financial resources on

high value inventions and ideas.7. It is a highly visible way of the University delivering value to Australian business and displaying this

to funding agencies.8. Researchers can see the delivery and use of their research outputs.

Intellectual Property delivery

The development of knowledge is a core function of Universities. It may also be argued that it is a core responsibility to ensure that this knowledge is delivered to where it is best used in an accessible manner. These functions are best met when needs-based research is performed in cooperation with industry so that a relationship and a “path to use” exists as the knowledge is developed. The system of knowledge delivery is inherently complex and while Universities often see published research outcomes as being publically

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available and therefore usable, this is often impenetrable and therefore unusable by industry or is seen as having no competitive advantage because of the availability to all industry competitors.

All IP has inherent value, but only a small proportion has significant commercial value to the University. In Australia, the proportion of IP that merits staff time and financial investment in protection is between 5 and 10%. This inherently means that 90 to 95% of IP is usually ignored by the University Commercialisation Office and almost universally remains inaccessible to and unused by industry1.

Knowledge exchange model

The exchange of needs and knowledge between industry and Universities is complex in nature and can be difficult to manage. This difficulty often encourages a focus by the University on the financially valuable projects and lesser technologies are ignored and not delivered to where they could be used.

Figure 1 – Knowledge exchange system

EAIP uses a simple framework and web enabled technology to allow this knowledge to be made visible and usable to industry. Invention disclosure and Innovation and Commercialisation due diligence process

1 Note: for the purposes of this document, the words “industry” and “business” includes Government, Non-Government Organisations (NGOs) and other groups who can utilise University knowledge. of 14


Inventions and ideas are discovered at La Trobe University by conversations with researchers and the submission of formal invention disclosure documents. It is critical that the value assessment of inventions and ideas declared to the Innovation and Commercialisation team has a high level of integrity, so that high value projects are identified and managed appropriately for commercial delivery. The La Trobe due diligence method uses a 26 question matrix developed from a system in use at Stanford and similar to a question list used by Tel Aviv University. Attributes of the disclosed idea or invention are rated by the Innovation and Commercialisation team and the questions are weighted to deliver a final project value number. The projects are ranked using the final project value to inform the priorities of the Innovation and Commercialisation team. The system also delivers gap identification for the areas of a project that may need development to deliver a higher project number and therefore a higher potential for success.

Q. No Assessment category Question Weighting1

Market analysis

Level of need versus current alternatives 32 Market value 33 No or low competition 24 No or low Innovation activity in the space 15

Solution advantages

Level of novelty 36 How much better vs. gold standard? 27 Appetite for adoption of this solution 18 Expected ease of adoption 19

IP Position

Patentability 310 How much white space2? 211 Potential for extension IP (platform tech) 112 Level of Protectability 113 Enforceable 114

Entrepreneurs / Inventors

Relevant experience 315 Gravitas 216 Chemistry together 117 Team skill mix 118

Development and commercialisation

Clarity of path to prototype/Beta system 219 Technical feasibility? (Likelihood of success) 220 Profitability (level of Margin) 221 Ease of compliance with regulatory bodies 222 Ease of procurement process 123

Transfer strengthInvestment required to commercialise 1

24 Speed to commercial handover 225 Number of potential suitors / partners 1

26 Subjective value Based on innovation and commercialisation knowledge and experience of Surveyor (max 20% extra weighting)

+20% of total

Table 1 – Due diligence assessment questions

EAIP current status

The current EAIP members list is:

2 ‘White space’ analysis identifies areas where patents may be pursued, or to formulate an appropriate strategy and identify a market that may be exploited, even in a crowded field.

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Australia Macquarie University University of New South Wales University of Technology Sydney University of Wollongong

Canada École de technologie supérieure University of Ottawa

Denmark University of Copenhagen

Sweden Linköping University Mid Sweden University

Switzerland CERN

United Kingdom King's College London Lancaster University Staffordshire University Swansea University University of Birmingham University of Bristol University of Exeter University of Glasgow University of Sussex

UNSW Innovations with EAIP

UNSW was the early adopter in EAIP and to date has licensed 25 technologies, has 17 EAIP agreements and signed 3 EAIP options in research agreements. Currently 60% of EAIP opportunities are licensed, showing a great uptake of projects once industry is aware of usable technologies. Six companies have been created with the business opportunity enabled by EAIP. Those UNSW Innovations companies are:

1. Pitney Pharmaceuticals2. Playconomics/Lionheart Studios3. Polymorph Group4. RSID5. Stesko6. Zedelef

In addition, two other companies are under consideration and 2 ARC Linkage Grants have derived from these agreements. Other indirect benefits reported by UNSW Innovations include:

Improved access to the NSW Government Technology Vouchers

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Relationships with industry start out positively due to 100% transparency The licensee usually wants to sustain and grow the relationship with the university These relationships lead to consultancy, research collaborations and other engagement The university’s knowledge is being disseminated and put to use Supports the local entrepreneur ecosystem The perceived value of the commercialisation office has increased within the academic community Increased number of new researcher engagements and increased quality of IP disclosures Increased public profile of the University through articles in both local and national press about the

initiative Differentiation from other universities with the public message that the University is an easy place to

do business An increased number of external engagements and enquiries that result in new research

collaborations and potentially high value deals moving forward

UNSW Innovations reports that researchers like the new approach, as it helps them to achieve their objectives of finding people interested in their work and new research partners with a minimum of paperwork. It also delivers increased researcher engagement with commercialisation. Initially at the University of NSW, some researchers objected to the initiative. However, the implementation of EAIP created an increase in invention disclosure forms being submitted by researchers, suggesting that the researchers are keen to see their IP delivered to where it can be used. The UNSW Innovations EAIP technology list is shown in Figure 2 below.

EAIP is operated under complete transparency using simplified template agreements. These template agreements are non-negotiable, but reasonable given the financial consideration requested from the license. The license is a 1-page agreement comprised of five key terms.

EAIP has been noticed by State and Federal Governments. Notably, the New South Wales Government Department of Trade and Investment supported an Easy Access IP pilot as one of their 2013 strategic priorities. The pilot measured the outcomes of making research outputs available to industry as no-cost licenses. EAIP technologies are listed in the institutions own website and the iBridge Innovation Network website (http://www.ibridgenetwork.org/community/Easyaccessip). Australian EAIP member Universities are in the process of finalising an Australian shared website that will list all technologies available from Australian members.

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http://www.ibridgenetwork.org/community/Easyaccessip


Figure 2 – UNSW Innovations EAIP technology list

EAIP Implementation at La Trobe University

EAIP is entirely consistent with advice from Julian Clark (Walter and Eliza Hall Institute for Medical Research) and Shlomo Nimrodi (RAMOT – Tel Aviv University).

EAIP is also entirely consistent with the La Trobe University IP Statute and IP policy. Minor changes only would be required to the current IP Procedure. There are no extra costs associated with implementing EAIP. It is simply a rearrangement of current Innovation and Commercialisation processes.

Some work to include the technology listing on La Trobe’s website would be required.

Risks in implementing EAIP

The only significant identifiable risk with the implementation and use of EAIP is the potential to miss “blockbuster” inventions that are placed into EAIP instead of being commercialised by usual methods. This risk is low and mitigated with a well-crafted and diligently applied due diligence and triage system.

Next steps

1. La Trobe University signs a 1 page “code of use” Letter of Intent (attached). This agreement is not legally binding and makes La Trobe University a member of EAIP community and gives access to the EAIP website to list available technologies.

2. Change Innovation and Commercialisation processes to fully implement the EAIP triage system.3. Seek legal agreement with standard license agreement.4. Create the internal and external EAIP communication documents. These can be rapidly created

based on UNSW Innovation documents.5. Set up technology listing ability on La Trobe’s website.6. Innovation and Commercialisation will collect currently available technologies currently recorded on

the Inteum database and list EAIP suitable projects on the shared technology listing websites.

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Addendum 1 – EAIP classification check list

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Addendum 2 – EAIP Informed Consent

Easy Access Intellectual Property (EAIP)

Informed Consent

EAIP is a system that recognises that all IP generated in a University has inherent value. A proportion of IP does not have sufficient commercial value to return the investment in formal commercialisation and in particular, the high costs of patent protection. Generally, these technologies will not be commercialised, nor will they be translated to use by industry, but rather be published and made publically available. EAIP takes an additional step beyond publication and promotes technologies made available by the University to Industry.

This means that technologies that the University does not wish to commercialise by conventional means may be made available, visible and promoted by efficient web based publication. Businesses wishing to use these technologies may license and utilise these technologies by way of a simple EAIP license. This license allows the industry partner to use the technology and protects the ability of the inventor to continue to work on the technology and publish research findings.

EAIP uses a simple framework and web enabled technology to allow this knowledge to be made visible and usable to industry. The following are the benefits EAIP provides:

Knowledge and ideas are transferred to where they can be used by industry. The process and legal documentation is simple, rapid and easy for researchers, industry and the

University. The no cost delivery of IP encourages a relationship between Researchers and Industry and may lead to

the funding of translation projects to help the industry implement and operationalise the IP. Industry that derives benefit from EAIP projects are likely to be repeat users and engage in long term

research relationships and linkage grant applications. It is an efficient process that is inherently agile, responsive and simple. It is a highly visible way of researchers and the University delivering value to Australian businesses and

displaying this to funding agencies. It helps build track record.

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Technology: [insert EAIP description title]

The Innovation and Commercialisation Office of La Trobe University has evaluated the Technology described above and considers it unlikely to produce commercial proceeds and hence suitable to be published as Easy Access IP (EAIP). For the avoidance of doubt, other than as set out below, this form does not alter the existing rights of any party in the Technology.

I, [insert name], am an inventor or other creator of the Technology described above. I have read and understood this form and consent to La Trobe University listing the Technology described above as Easy Access IP on the University’s EAIP website. I understand that listing the Technology as EAIP may enable other third party users to further use and develop the Technology from that date. I understand my name may or may not be listed by the University on the EAIP website in relation to the Technology.

.......................................................................... ..........................................................................Name of Researcher / Inventor (print) Signature of Researcher / Inventor

.......................................................................... ..........................................................................Name of Witness (print)

..........................................................................Date

Signature of Witness

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Addendum 3 – EAIP Letter of Intent

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Addendum 4 – EAIP Listing documentation proforma

Name of Technology (e.g. A new tool to measure the photoluminescence of Solar Cells)

Sub title: (e.g. Quality control for producing higher efficiency solar cells)

The Technology is available under licence at no cost

Technology Description: (eg Highly contaminated or defect-rich silicon such as Thin Film or at grain boundaries in multicrystalline silicon, has very short minority carrier lifetimes of often less than 1 μs. Up until now accurate measurement of the silicon quality with commonly-used techniques has been a challenge as they are limited to longer lifetimes and larger probing areas. Often results are beyond the speed and sensitivity of the typically-used detectors and electronics making quality control difficult. La Trobe researchers have developed a new multi-function Photoluminescence tool that provides the flexibility required to accurately test difficult samples and regions of particular interest).

Key Benefits:Eg

Time resolved measurement, minority carrier lifetime of 1 ns to beyond 1 ms High light sensitivity and a wide dynamic range. Useful over a range of wavelengths with high resolution. Focus on small spots on the test sample of less than 40 µm in diameter. Temperature control of the sample during testing.

Applications Eg

Quality control and Lifetime Testing of multi-crystalline or thin film cells. Detailed testing for regions of interest within cells (e.g. grain boundaries). Quality control of other semiconductor devices.

The Opportunity This technology is available for free as an Easy Access Licence to companies and individuals.

Click here for a PDF print version of this technology information

For more information contact the Project Manager:Name of project managerTitle of project managerInnovation and CommercialisationRef: TEC2015/001T: +61 3 9479 xxxx l M: +61 4xx xxx xxx E: [email protected]

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Addendum 5 – License agreement (Note: The below document is a sample only. La Trobe is working towards creating its own template and will adapt it as applicable to La Trobe’s own requirements.)

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