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

CRICOS No J a university for the world real R What is intellectual property and how do you protect it? Who owns intellectual property? Commercialisation of IP Student assignments of IP IP

CRICOS No J a university for the world real R 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 J a university for the world real R 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 J a university for the world real R 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 J a university for the world real R Who is involved in developing, managing or using QUT Research IP?

CRICOS No J a university for the world real R 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 J a university for the world real R Types of IPRs Intellectual Property Rights Patents Trademarks Registered Designs PBRs Trade Secrets Copyright CLRs Non- Registered Trademarks Unregistered (green) Registered (pink)

CRICOS No J a university for the world real R 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 J a university for the world real R 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 J a university for the world real R Copyright is a bundle of rights which allows the owner exclusive rights to: Copyright Copy or reproduce work or subject matter Publish Perform in public Communicate work/subject matter in public Make an adaptation Rent articles containing © e.g. CDs Prevent importation of infringing works Assign (sell) or licence these rights

CRICOS No J a university for the world real R 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 J a university for the world real R Trademarks

CRICOS No J a university for the world real R 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 J a university for the world real R 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 years Basis for suing infringers

CRICOS No J a university for the world real R Selection of PCT applications:(WO 03/075530) SYSTEM AND METHOD FOR PROVIDING SECURE MESSAGE SIGNATURE STATUS AND TRUST STATUS INDICATIONWO 03/ (WO 03/005203) SYSTEM AND METHOD OF OBJECT-ORIENTED PERSISTENCEWO 03/ (WO 00/69069) DIFFERENTIAL SURFACE ACOUSTIC WAVE FILTER HAVING BALANCED OUTPUTSWO 00/69069 (WO 00/01028) DUAL EMBEDDED ANTENNA FOR AN RF DATA COMMUNICATIONS DEVICEWO 00/01028 (WO 99/63709) SYSTEM AND METHOD FOR PUSHING INFORMATION FROM A HOST SYSTEM TO A MOBILE DATA COMMUNICATION DEVICEWO 99/63709 PCT Application:(WO 94/28902) PYRAZOLOPYRI MIDINONES FOR THE TREATMENT OF IMPOTENCE WO 94/28902 PATENTS: Well known patented inventions

CRICOS No J a university for the world real R Notable inventions from universities

CRICOS No J a university for the world real R 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 J a university for the world real R Typical patent process & costs $0 $50,000 $100,000 $150,000 $200,000 Provisional Application PCT Application National Phase Entry ExaminationRenewals Months Patent granted Cumulative cost Defence >$1m

CRICOS No J a university for the world real R Not all patents are commercially savvy

CRICOS No J a university for the world real R 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 J a university for the world real R 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 J a university for the world real R What is intellectual property and how do you protect it? Who owns intellectual property? Commercialisation of IP Student assignments of IP IP IP

CRICOS No J a university for the world real R 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 J a university for the world real R What is intellectual property and how do you protect it? Who owns intellectual property? Commercialisation of IP Student assignments of IP IP

CRICOS No J a university for the world real R 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 J a university for the world real R 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 J a university for the world real R Commercialisation Income Commercialisation costs deducted Creators FacultyQUT 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%

CRICOS No J a university for the world real R What is intellectual property and how do you protect it? Who owns intellectual property? Commercialisation of IP Student assignments of IP IP

CRICOS No J a university for the world real R 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 J a university for the world real R Student Assignment Student IP protocol is there to guide you so you don’t feel pressuredStudent IP protocol 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 J a university for the world real R Some interesting examples... Developed by students for students No patents originally, more know how, TM, branding, data Originally restricted to Harvard and Ivy leagues Then to other unis Now a social phenomenon Developed by a Mexican chemistry student and his supervisor Created an oral form of progesterone in 1951 Patent Groundbreaking birth control

CRICOS No J a university for the world real R 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: or

CRICOS No J a university for the world real R 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 J a university for the world real R Taxol ®

CRICOS No J a university for the world real R The opportunity: Drug action already published BUT Sourced from bark of a tree which was endangered SO… The patent: FSU chemists found a way to synthesise taxol Patent claims method for preparation US 5,136,060 Taxol ®

CRICOS No J a university for the world real R 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 J a university for the world real R 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