Queensland University of Technology CRICOS No. 00213J Intellectual Property for QUT students Dr Paige Maguire Deputy Director, e-Grad School

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


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


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


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)


Who is involved in developing, managing or using QUT Research IP?


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


Types of IPRs

Unregistered(green)

Registered(pink)


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


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)


Copyright is a bundle of rights which allows the owner exclusive rights to:


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


Trademarks


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


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


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


Notable inventions from universities


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


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


Not all patents are commercially savvy


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


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



do you protect it?




IPIPIPIP


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



do you protect it?




IPIP


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


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




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%



do you protect it?




IPIP


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


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


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


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]


Taxol®

The Technology:• Anticancer drug • Binds to skeleton of cells to prevent them from

dividing• Isolated from the bark of the Pacific Yew tree


Taxol®


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®


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


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

Documents

Queensland University of Technology CRICOS No. 00213J Intellectual Property for QUT students Dr Paige Maguire Deputy Director, e-Grad School