Frequently Asked Questions

I have an idea!

1. I have an idea with some commercial potential. What do I do now?

In the first instance you should contact us in the Office of Commercialisation. If indeed the idea does sound like it has commercial potential, then we will encourage you to complete and submit a record of invention form. Once we have the form we can undertake a more thorough investigation of the commercial potential of the idea and the most likely protection and commercialization route. This usually takes from 30 to 60 days depending on the complexity of the idea.

If the University decides to proceed then we may pursue patent protection (depending on the best route to market for the idea). Before this occurs however, it is important to determine your status at the University. You should refer to FAQ 2 and FAQ 3 below for more information.

2. I am a staff member. Who owns my idea?

In accordance with the current ANU IP Policy, all intellectual property created by any staff member in the course of their employment is owned by the University. Exemptions to this are outlined in clause 4 of the policy (and includes copyright in course materials, journal articles and conference papers).

As such any intellectual property protection is obtained in the name of the University (with attribution to the inventors as appropriate).

3. I am a student. Who owns my idea?

In accordance with the current ANU IP Policy, all intellectual property created by any student in the course of their study is owned by the student themselves. The student is thus free to pursue protection and exploitation of the intellectual property without any constraint from the University.

Students should recognise though that most IP they develop is likely to have involved their supervisor and other colleagues and therefore will be jointly owned with the University.

Should the student wish to make use of the Office of Commercialisation resources and expertise, then they will need to assign their intellectual property to the University and lodge a record of invention form as outlined in FAQ 1 above.

4. Should I patent my invention?

Patenting is an effective means of protecting your idea or invention. It also makes the marketing, sale and transfer of the idea much easier. On the other hand, the cost to patent and then maintain the patent is large. An international patent (Australia, US, Japan and some EU countries) can cost anywhere between $350,000 to $500,000 over the life of the patent (usually around 20 years). Moreover, it typically takes anywhere from 10 to 12 years to secure full protection in all these countries.

Consequently, the patenting decision should not be taken lightly. The ANU will not embark on the patenting process unless:

• there is a clear business case, or
• protection is required to support ongoing major research

The evaluation of your idea by the Office of Commercialisation is thus important in determining whether to pursue patenting as the cornerstone of a commercial strategy. The Office of Commercialisation will regularly lodge an Australian provisional patent in situations where it is difficult to accurately determine market interest. The 12 month protection afforded by a provisional application allows time to further develop the idea and to also engage likely commercial partners.

In any case you should ensure that you speak to the Office of Commercialisation if you feel your idea has commercial potential before disclosing to an external party. This will avoid future complexity if we decide to pursue patent protection.

5. How do I apply for a patent?

Where a commercialisation strategy calls for patent protection, then the Office of Commercialisation will work in conjunction with its designated patent attorney and the inventor(s) to lodge a patent. Patents are typically lodged under the name of the University with associated staff listed as the inventor(s).

6. Who pays for the patent?

A provisional patent application is typically paid for by the Department or School to which the inventor(s) belong. Complete applications are subsequently paid for by the Deputy Vice Chancellor.

7. What do you mean by the patenting process?

The patenting process encompasses a number of stages which include drafting, lodgement, assessment and response. The amount of time and the cost required to complete the patenting process depend on where you commence the process (provisional or complete application) and the countries in which you want to seek protection — for example Australia, US, Europe, Japan or China.

Confidentiality & Publishing

8. Can I talk about my research?

Talking about your research to other people is dependent on whether the discussions are confidential and whether the IP is protected. You are able to discuss your work with other ANU staff as we are all staff ar bound by confidentiality, although students may not be. In cases where you think your research may have commercial potential and you want to discuss aspects of it with people external to the ANU, then the following guidelines apply:

1. Patent protection (provisional or otherwise) in place — you are free to discuss your research provided the details of which are covered within the lodged patent application(s).
2. No patent protection (provisional or otherwise) in place — you should ensure that the external party has signed a confidentiality agreement before discussing any of your work. In the absence of such an agreement you are compromising your potential to seek patent protection should commercialisation proceed. The Office of Commercialisation should be contacted before proceeding with any such disclosure to arrange an appropriate confidentiality agreement.

9. When should I use a formal confidentiality agreement?

A formal written confidentiality agreement should be used wherever the information must remain confidential, for example in instances where:

1. you feel your research work may have commercial potential (if you are not sure you should discuss this with the Office of Commercialisation),
2. you want to discuss this work with people external to the ANU (academic, industry, government or otherwise), and
3. you do not have any existing protection against undue disclosure (a patent which covers the work you want to discuss or an exist confidentiality agreement with the same people covering the same area of research).

It is important to use a confidentiality agreement in such circumstances, so as not to jeopardise future commercialisation possibilities.

10. Somebody from the industry contacted me. What do I do?

Discussions associated with the development of a relationship with an industry partner (research or otherwise) will probably involve the exchange of confidential information. This can include laboratory data, methods of production, design of specialised equipment and potential markets and marketing information.

We recommend that before entering into serious discussions about a relationship with another party, a mutually binding confidentiality agreement is signed by all parties (see FAQ 8 and FAQ 9). Apart from protecting you and the other party against undue disclosure, such an agreement ensures professionalism and establishes the basis of an ongoing relationship. It is always more difficult to negotiate an agreement after a relationship has been established and information has been exchanged.

11. Can I both publish and commercialise my work at the same time?

There is a perception that publishing and commercialisation are mutually exclusive activities. This is not always the case, with commercialisation often resulting only in a need to delay publication. Depending on the commercialisation context in many cases you will need to wait until protection in the form of a patent has been sought. Provided the patent covers the work you wish to publish, you are free to send your manuscripts to journals and conferences as usual.

In some circumstances where patenting does not form part of the commercialisation strategy, then you may be required to keep your work confidential. In all cases, the Office of Commercialisation will seek to develop a strategy which meets to needs of both you the researcher and the commercialisation partner.

12. An external organisation has asked for some of my research material. What do I do?

Prior to sending any material of significant research or commercial importance to an external organisation, a Material Transfer Agreement (MTA) should be put in place. An MTA is a contract between the ANU and receiving organisation that governs what the latter can do with the material and any rights thereafter - such as rights to commercialise or otherwise pass on to third parties the original or derived material.

The Office of Commercialisation must be contacted before sending any material to an external organisation so that an MTA can be prepared, negotiated and executed.

Examples of materials which are commonly covered by MTAs include:

• chemicals
• mouse (or other animal) strains
• plasmids
• plants or seed

13. I have asked for some material from someone and they have sent me a Material Transfer Agreement. What do I do?

A Material Transfer Agreement can only be signed by the Deputy Vice-Chancellor. Contact the Office of Commercialisation, who following consultation can make a recommendation to the DVC to sign the MTA. Make sure that you are familiar with all details of the MTA, including your responsibilities to return or destroy material, your rights to forward the material (or its progeny) to third parties, and access to data produced through use of the material.

14. I have been asked to sign a confidentiality agreement. What should I do?

A confidentiality agreement constitutes a legal contract between the University and the party presenting the agreement. As such, the confidentiality agreement must be signed by an appropriate authority within the University, currently the Deputy Vice-Chancellor.

The Office of Commercialisation will discuss the confidentiality agreement, and associated obligations with you. Should the confidentiality agreement encompass terms which are unreasonable or unfair to the University, we will assist you in further negotiation with the sending party.

15. I am having a visitor to my research lab. Is there anything I need to do?

If the visitor is not an ANU staff member, then you may need to consider using a confidentiality agreement before discussing your research work and showing the visitor around your laboratory. FAQ 9 covers instances where a confidentiality agreement should be used and provides additional information.

16. I have a student working on a commercial project. What do I need to do?

It is important that prior to the student commencing work on the project, you sought out details relating to intellectual property ownership. In accordance with the ANU IP Policy all students are entitled to ownership of their intellectual property (additional details can be found in FAQ 3).

It is the responsibility of the supervisor or person in charge of the commercial project to explain to the student all requirements associated with participation in the project. This is particularly the case in projects where an assignment of IP on behalf of the student is required. The student must subsequently be given reasonable time, typically not less than 30 days to consider the situation. If the student should decline to participate (through an unwillingness to assign his/her IP), then the supervisor or person in charge of the project must assist the student in finding an alternative activity such that they are not academically disadvantaged. More information can be found in clause 5.3 of the ANU IP Policy.

You should contact the Office of Commercialisation to arrange a student IP assignment if necessary.

Commercialisation—how & what next?

17. What if I make further improvements on one of my patents?

This depends on where your patent(s) currently are in the application process (provisional, PCT, national). The Office of Commercialisation will always seek advice from its designated patent attorney as to the best way forward. In most cases, if the improvements are major and constitute a new field of use or make the previous patent claims obsolete, then a new patent application may need to be lodged.

18. Who negotiates the commercialisation of my work?

The Office of Commercialisation is responsible for negotiating the commercialisation of ANU’s research. The Office works in collaboration with researchers to develop appropriate commercialisation strategies based around the development of a business case which may precede licensing, sale or the development of a spin-off company. The researcher's participation in this process is critical to ensuring success as often they have contacts in companies who may be interested in the idea. Further, they are the technical experts when it comes to explaining the idea and answering questions about the details.

19. How can you determine whether my idea is marketable?

It is often very difficult to determine whether an idea (or invention) will be marketable, particularly in the early stages when deciding whether to proceed with commercialisation. The Office of Commercialisation looks at a number of factors when trying to make the ‘go / no-go’ commercialisation decision. In addition to the market for the idea, we also look at the idea itself, the people involved (i.e. you, the researcher), the business model and potential funding available.

20. What happens if the idea I helped to create is commercialised?

In the majority of cases, if your idea is successfully commercialised by the University, you will be entitled to a financial reward. In accordance with the current ANU IP Policy, the inventors receive a share of the financial benefits resulting from commercial exploitation. The details of the division of benefits are covered under clause 15 of the Policy.

21. If my innovation is licensed by a commercial entity, can I become actively involved in that company as a shareholder, board member, or active member of the management team?

The ANU has a number of relevant policies which govern the involvement of staff members in external commercial entities. The ANU IP Policy (specifically clause 14) sets out various provisions associated with shareholding (equity) and active board membership in spin-off and new commercial entities. Staff are not permitted to accept board positions without prior approval from the University Finance Committee.

Further, staff who have equity in such entities must ensure they comply with the ANU Conflict of Interest and Commitment guidelines and those that pertain to the 52 Day Rule. In particular, such staff are required to lodge an annual declaration detailing the work done on behalf of the company and University facilities used.