This is the stage where Melbourne University typically first gets involved with a technology. In some cases inventors contact us directly, in others we approach inventors who we believe have commercially attractive technology. In either case, there are three elements of this stage: Invention Disclosure Review, Technology Assessment, and IP/Patent Assessment and Management.
1. Invention Disclosure Review
Inventors are required by the University to file an Invention Disclosure Form. This is an important part of the process for a number of reasons:
- It enables the University to record the creation of intellectual property and provides information to assist it determine the legal title and any third party claims to intellectual property rights associated with the invention, including the rights of researchers. (Information on the University’s IP policies).
- It enables researchers to access the University’s support processes for commercialisation, so that the commercial potential of the invention can be assessed, and appropriate measures can be taken to protect and, where possible, exploit the intellectual property commercially.
- The disclosure process is also vital for monitoring the University’s compliance with the terms under which it receives funding, and will assist the University in its reporting of knowledge creation and protection activities, which can in turn help the University in attracting further funding for research from a range of sources.
The University has an Invention Disclosure process - once an invention disclosure is filed with the University, it is passed to Melbourne Ventures for assessment.
2. Technology Assessment
Experience from technology transfer offices around the world is that a small number of technologies account for the bulk of a University’s success in commercialisation. Therefore, at an early stage in the process Melbourne Ventures undertakes a review of the technology to determine whether it is likely to succeed commercially. This assessment follows a rigorous process, and involves evaluation along eight dimensions:
- Research
- Pre-Disclosure
- IP Disclosure
- Assessment
- Protection
- Marketing
- Form a Start Up
7a. Identifying an Existing Company
7b. Licensing and Assignment - Commercialiation
- Revenue
More details of the sorts of questions asked under each heading can be found in pages 6 and 7 of the Inventor's Guide (PDF file)
3. IP/Patent Assessment and Management
Intellectual Property is the cornerstone of technology transfer, and therefore should be managed carefully. Biotechnology Australia have produced an excellent handbook (1.5Mb Acrobat file) which outlines some of the key issues – even though it is targeted at biotechnology it is also applicable to non-life sciences. Another valuable resource is IP Australia’s The Patents Guide (992Kb Acrobat file), which outlines important practices to support quality IP management.
With most University-developed technology, the primary means of protecting Intellectual Property will be by filing for a patent. A patent is an important document, as it gives you the right to stop anyone else from using your technology for a period of up to 20 years. However, it should be remembered that patents are not free: the total cost of filing a patent in many countries around the world can easily rise to more than $50-100,000 over a period of a few years. Therefore it is important to think of patents as an investment, and in turn to think about how you can realise a return on that investment. Filing for a patent and then not pursuing a commercial deal is like buying an investment property and then not renting it out or eventually selling it.
This guide gives a good overview of the patent processes, including details of how patent offices will look at your application. If you have particular questions about what should go into a patent, please contact Melbourne Ventures. Melbourne Ventures can help with advice on patenting strategies, identifying suitable patent attorneys, and facilitating the drafting process.