queensland university of technology cricos no. 00213j intellectual property for qut students dr...
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Queensland University of Technology
CRICOS No. 00213J
Intellectual Property for QUT students
Dr Paige MaguireDeputy Director, e-Grad School
CRICOS No. 00213Ja university for the worldrealR
• What is intellectual property and how
do you protect it?
• Who owns intellectual property?
• Commercialisation of IP
• Student assignments of IP
IPIP
CRICOS No. 00213Ja university for the worldrealR
What is Intellectual Property (IP)?• New ideas, discoveries, inventions, concepts. . . that are the
result of intellectual endeavour• IP is any right that results from ‘creations of the mind’• Doesn’t need to be a registered right to be IP• Doesn’t need to be “commercialisable” to be IP• Can be:
• Owned• Bought• Sold• Rented• Destroyed• Improved
. . . just like physical property
CRICOS No. 00213Ja university for the worldrealR
Defining IP
• IP can be defined as new creations or property of the mind/intellect
• Common misconception that there “is no IP” in research projects
• In the research context: IP = research outcomes, not necessary that they are patentable outcomes
• When discussing IP, most are actually referring to the methods to protect the IP or the rights that reside in the IP
IP = Creations of the Mind = Research Outcomes
CRICOS No. 00213Ja university for the worldrealR
What is the context of IP management at unis today?
• Australian Code of Responsible Conduct of Research requires institutions to maintain a policy that protects and manages IP
• QUT promulgates IP policy and protocols
• A global trend in managing publicly funded research IP better so as to demonstrate value to the community (USA, Austria, Germany, Denmark, Japan, India, Sth Africa, China, Sweden)
• Patents and res comm income to be counted on ERA
• Funders require it (eg industry funders, collaborators)
CRICOS No. 00213Ja university for the worldrealR
Who is involved in developing, managing or using QUT Research IP?
CRICOS No. 00213Ja university for the worldrealR
IP Rights (IPRs)
• Within a university, IPRs are legal rights (or monopolies) which give the owner/creator the exclusive right to:
• publish a journal article or text book
• perform an artistic work
• publish a survey instrument
• provide consulting advice
• develop teaching materials
• manage grant obligations
• seek new research funding based on prior work
• share information/material with external colleagues
• offer professional workshops
• commercialise research IP
CRICOS No. 00213Ja university for the worldrealR
Types of IPRs
Unregistered(green)
Registered(pink)
CRICOS No. 00213Ja university for the worldrealR
Unregistered IPRs
• Automatically exist upon the creation of the work
• Do not require formal legal protection or registration
• Are often exchanged/used in informal collaborations
• Go unchecked until formalisation of relationships is required
CRICOS No. 00213Ja university for the worldrealR
Copyright ©
• Protects the original expression of ideas, NOT the ideas themselves
• Right is automatically and free (i.e. no registration required)
• Protects original works of art, literature, music, films, broadcasts and software from unauthorised copying or use
– Student thesis– Publications
• Generally lasts life of the author plus 70 years* (depending on the type of material)
CRICOS No. 00213Ja university for the worldrealR
Copyright is a bundle of rights which allows the owner exclusive rights to:
CRICOS No. 00213Ja university for the worldrealR
Registered IPRs
• Patents are most relevant to university research context– Management of IP is crucial to this right– Maintaining patentability of IP (often a requirement)
• Trademarks often queried by researchers but rarely relevant to research
• Will discuss these in more detail
CRICOS No. 00213Ja university for the worldrealR
Trademarks
CRICOS No. 00213Ja university for the worldrealR
Trademarks
• Can be registered ® or not registered TM• Generally not relevant in the university knowledge transfer context• Branding affixed to a product or service (or person)• Important assets for companies• Searchable databases• Registered in separate jurisdictions (countries) that goods are sold
in
CRICOS No. 00213Ja university for the worldrealR
Patents
• Grants the owner an exclusive right to benefit from its invention in exchange for teaching the public something new
– eg. method of manufacture, device, composition of matter, practical application of a computer process
• Exclusive right to exploit (make / hire / sell / use / import)
• Bargain with the government:
– Full public disclosure of the invention
– Right to exclude others from commercially using the invention for a period of 20-25 years
• Basis for suing infringers
CRICOS No. 00213Ja university for the worldrealR
Selection of PCT applications: •(WO 03/075530) SYSTEM AND METHOD FOR PROVIDING SECURE MESSAGE SIGNATURE STATUS AND TRUST STATUS INDICATION•(WO 03/005203) SYSTEM AND METHOD OF OBJECT-ORIENTED PERSISTENCE•(WO 00/69069) DIFFERENTIAL SURFACE ACOUSTIC WAVE FILTER HAVING BALANCED OUTPUTS•(WO 00/01028) DUAL EMBEDDED ANTENNA FOR AN RF DATA COMMUNICATIONS DEVICE•(WO 99/63709) SYSTEM AND METHOD FOR PUSHING INFORMATION FROM A HOST SYSTEM TO A MOBILE DATA COMMUNICATION DEVICE
PCT Application: •(WO 94/28902) PYRAZOLOPYRIMIDINONES FOR THE TREATMENT OF IMPOTENCE
PATENTS: Well known patented inventions
CRICOS No. 00213Ja university for the worldrealR
Notable inventions from universities
CRICOS No. 00213Ja university for the worldrealR
Patents• Three criteria for a granted patent
– It must be novel – no one can have already done or thought of or used it before = must not be publically known (anywhere)
– It must be non-obviousness – cannot be obvious to someone else in your field
– It must have commercial utility. i.e. it must be ‘useful’ – can’t be unachievable e.g. time machine flux capacitor
• Patentable material (examples)– New product, new result, new combination– Method/process, machine, molecule, compound, kit, widget, or
improvement
CRICOS No. 00213Ja university for the worldrealR
Typical patent process & costs
$0
$50,000
$100,000
$150,000
$200,000
ProvisionalApplication
PCTApplication
NationalPhase Entry
Examination Renewals
Months
0 12 30
Patent granted
Cumulative cost
Defence>$1m
CRICOS No. 00213Ja university for the worldrealR
Not all patents are commercially savvy
CRICOS No. 00213Ja university for the worldrealR
Effect of Disclosure
• Prior disclosure may prevent patent protection– Be careful who you tell outside of the University until the
provisional application is lodged – In some cases, wait until the full application is made– Use confidentiality agreements or material transfer agreements
• Patenting and publishing are not mutually exclusive
• Seek advice – especially before presenting at conferences or submitting manuscripts
CRICOS No. 00213Ja university for the worldrealR
Open Access
• Relatively new
• Provides rights to use IP for free
• Users must attribute original author
• Mostly free use of material
• But are sometimes conditions on use:
– That they are not used for commercial purposes
– No derivatives to made
– Make their use available to others
• Most common for copyright (written work, software, e-repositories, journals)
• Not relevant to some areas of research, not well understood
• Common terms: creative commons licence, open source code, GPL
CRICOS No. 00213Ja university for the worldrealR
• What is intellectual property and how
do you protect it?
• Who owns intellectual property?
• Commercialisation of IP
• Student assignments of IP
IPIPIPIP
CRICOS No. 00213Ja university for the worldrealR
Ownership of IP
• Employer’s own the IP created by an employee in the course of employment
• Student’s IP (e.g. results, thesis) is owned by the student– Solely– Jointly owned by student and University
• IP can be assigned or “given” to another. (e.g. for commercialisation)
• Where joint ownership, one party cannot assign or license without the consent of the other
CRICOS No. 00213Ja university for the worldrealR
• What is intellectual property and how
do you protect it?
• Who owns intellectual property?
• Commercialisation of IP
• Student assignments of IP
IPIP
CRICOS No. 00213Ja university for the worldrealR
Commercialisation Process
Staff and Students
QUT
bluebox
Commercial Partner
IP Assignment
Right to commercialise
License
Develop IP
Commercialisation:•Due diligence•Patenting•Packaging / structuring•Fund raising•Negotiation•Company formation
Funding agreements
CRICOS No. 00213Ja university for the worldrealR
Commercialisation Income
• QUT staff are entitled to a share of the commercialisation income as creators
• Students who assign IP are treated as staff re: entitlements
• QUT practice to split net income 1/3 to creators, 1/3 to faculty, 1/3 to University
• Formalisation of practice occurs via splits letter at time of patenting / commercialisation
CRICOS No. 00213Ja university for the worldrealR
Commercialisation Income
Commercialisation Income
Commercialisation costs deducted
Creators Faculty QUT
•Excl research funding•E.g. license fees, royalties, upfront payment, income from sale of shares
•E.g. patent expenses, legal fees
•Determined at law•Conducted by qualified patent attorney
•Merely following instructions is not sufficient
33.3% 33.3% 33.3%
CRICOS No. 00213Ja university for the worldrealR
• What is intellectual property and how
do you protect it?
• Who owns intellectual property?
• Commercialisation of IP
• Student assignments of IP
IPIP
CRICOS No. 00213Ja university for the worldrealR
Why do students assign?• Before commencing:
– Project will be funded by a commercial/industry funder requiring IP rights– Project has been identified as having commercialisation/commercial potential
• During candidature:– Student jointly develops new IP which has commercialisation potential
Incentives in return:– Financial
• Payment of patent and legal expenses• Share of income (as per QUT employees)• Limit personal risk – warranties often required, war chests etc
– Access to expertise or funding• Experience in commercialisation• Key industry contacts and funding
– Ease of commercialisation• Joint owners cannot assign/license without the other’s consent
CRICOS No. 00213Ja university for the worldrealR
Student Assignment
• Student IP protocol is there to guide you so you don’t feel pressured
• OCS manages the process
• Students encouraged to seek independent advice
• It is a choice
• Not mandatory but it may change your project choices
• Confidentiality obligation does not impede thesis examination
• Publications not prevented but may need to follow a timing plan
• Students retain copyright of thesis
• Ask questions now or at the time
CRICOS No. 00213Ja university for the worldrealR
Some interesting examples...
Developed by students for studentsNo patents originally, more know how, TM, branding, dataOriginally restricted to Harvard and Ivy leaguesThen to other unisNow a social phenomenon
Developed by a Mexican chemistry student and his supervisorCreated an oral form of progesterone in 1951Patent Groundbreaking birth control
CRICOS No. 00213Ja university for the worldrealR
Thanks and Questions?
• Want to know more or learn added skills that employers look for in Research Grads?
• eGrad School offers short online flexible courses in professional skills for all HDRs• Free • No assessment• Includes:• Research Commercialisation, Project Management, Entrepreneurship,
Leadership and Communication, Public Policy, Global Sustainability• For more information:
www.egradschool.com.au or email [email protected]
CRICOS No. 00213Ja university for the worldrealR
Taxol®
The Technology:• Anticancer drug • Binds to skeleton of cells to prevent them from
dividing• Isolated from the bark of the Pacific Yew tree
CRICOS No. 00213Ja university for the worldrealR
Taxol®
CRICOS No. 00213Ja university for the worldrealR
The opportunity:• Drug action already published BUT • Sourced from bark of a tree which was endangeredSO…The patent:• FSU chemists found a way to synthesise taxol• Patent claims method for preparation• US 5,136,060
Taxol®
CRICOS No. 00213Ja university for the worldrealR
Taxol®
The Deal:• Process of manufacture was exclusively
licensed to BMS• Royalties peaked in 2000 at US$ 66.5 million /
annum• Decreasing now due to generic competitors• FSU Taxol money has helped finance 40
endowed research chairs and a US$24 million research centre
CRICOS No. 00213Ja university for the worldrealR
Gatorade
• Marketed in 1973, market is now US$2.2 billion• UFlorida has received over US$80 million (20%)• Never patented – a trade secret and branding