Key Commercialisation Issues

• Keeping your idea confidential
• When to publish
• Maintaining a Lab book
• Transferring materials in and out

1. Keeping your idea confidential

Keeping information confidential is important if you wish to protect your IP — either as a trade secret or in the form of a patent. It is particularly important in the early stages of research where commercial potential may not yet be apparent. The act of disclosing information associated with your research (and hence invention) to colleagues outside the University (conferences being a common example) may void subsequent attempts to impose a patent on the IP.

Since April 2002, Australia has allowed the application of a ‘grace period’ which under certain conditions will not prevent a valid patent from being granted. IP Australia provide useful information on the ‘grace period’. A complete patent application must be lodged however, within 12 months of disclosure. Relying on ‘grace period’ provisions is complicated particularly because a large number of countries do not support such provisions (filing in Europe for example may be invalidated). The ANU does not advocate use of the ‘grace period’ as general intellectual property protection strategy.

The best way to protect yourself and the University is to avoid disclosure to external parties (which include colleagues from other institutions and any representatives from industry). In situations where you wish to discuss your research and ideas with such parties you should seek to use a confidentiality agreement. The Office of Commercialisation can provide you with a standard University confidentiality agreement and instruct you on its use. Using this agreement will protect you and the University against undue disclosure avoiding later complications.

2. Publication

Scholarly publication and commercialisation need not be mutually exclusive activities. Issues typically arise when researchers have published their work before realising its commercial significance. Pursuing subsequent protection may then need to rely on the ‘grace period’ as discussed in Point 1 above. If ‘grace period’ provisions are not applicable then commercialisation of your work may not be possible.

If you feel your research work may have commercial potential, then it is best to discuss it with the Office of Commercialisation before submitting a publication (to a conference or journal). Remember, even the act of submitting a publication to a conference review board or journal editor is considered disclosure. If the Office of Commercialisation determines that the research has commercial potential then they will ask you to submit a Record of Invention form. A Business Development Manager will then evaluate your work in more detail.

If the University then decides to pursue commercialisation it will lodge a patent application (provisional or complete depending on the circumstances). Once the patent application has been lodged (with the relevant patent office), you are free to publish (provided the research covered in your publication aligns with that outlined in the patent application).

In most cases, it takes time to determine the commercial potential of research work. As such, it is good practice to discuss your research with the Office of Commercialisation well in advance of intended publication.

3. Maintaining your Lab book

The United States is unique in its approach to the granting of patent rights. A patent is granted to the “first to invent” as opposed to the common (and Australian approach) “first to file”. As such the onus is on the inventor to prove that they were in fact the person to derive the invention. Should problems arise, a researcher’s lab book is admissible in court as proof of the “first to invent”. There are however, specific guidelines to ensure the validity of your lab book as a complete legal document proving your right ( and the University’s) to a patent. IP Australia publish good practice guidelines on maintaining lab books.

4. Transferring materials—Using a Material Transfer Agreement

Before sending research material (reagents, cell lines or nanotubes for example) to an organisation outside the University, a contract to govern the rights (and hence associated use) of the material should be put in place. Such a contract is known as a Material Transfer Agreement (MTA) and can be completed in coordination with the Office of Commercialisation.

MTAs can be put in place for the transfer of materials between the ANU and other academic institutions or industry. The ANU also commonly receives MTAs from other academic institutions wishing to transfer materials to ANU staff (typically for research purposes).

In all cases where a MTA is involved, researchers should consult with the Office of Commercialisation. MTAs typically involve issues associated with: confidentiality (which may affect publication), definition of the material (original versus modifications and derivatives), loss of control (forfeit of future intellectual property rights) and conflicts with existing agreements.