Topic 1: Intellectual Property (IP) in a university context
Introduction
Intellectual property (IP) is proprietary knowledge which is the outcome of research or creative effort – it is the property of your mind or intellect. Internationally, governments have recognised that economic incentives propel research, and have therefore legislated to create rights for protecting an inventor’s IP. In this way inventors are encouraged to disclose their IP, benefiting them and society as well.
IP is the exclusive property of the owner. It is an asset which, like any other property, can be bought, sold, licensed (rented), or destroyed. IP can give businesses a competitive edge in the market place – often becoming the basis of a large industry.
Managing IP is often complex, requiring the skills and experience of patent attorneys, commercial managers, and other specialists to plan the best strategy for protecting and realising its value.
As a researcher, you generate knowledge which is likely to have IP implications. It is important to understand the opportunities, together with your rights and obligations and those of your university, in relation to these research outputs. IP is often a key tool as part of the process of translating research outputs from a university context into successful products and services used broadly in society.
Learning outcomes
After completing this module you should be able to:
- Define and differentiate the types of intellectual property
- Describe the nature of IP management
- Delineate the ways to protect IP on a daily basis
- Identify potential IP in research
- Outline the way to structure a research project to generate IP with commercial potential
- Comprehend the issues relating to intellectual property ownership for employees and students.
Topic content
The concept of intellectual property is first defined, and then the means to legally protect IP both in Australia and overseas is outlined. We look at how IP with commercial potential is identified and evaluated, as well as the steps researchers can take to structure a research program with the aim of generating commercially valuable IP. The topic concludes with an overview of key issues researchers and universities face in managing their IP – such as ownership, the costs associated with IP protection, and ways in which IP should be protected.
Follow the links below for more detailed information on IP and its management within a research context.
1.1 Types of Intellectual Property
1.2 Protecting IP internationally
1.3 Identifying IP with commercial potential
1.4 Key issues in IP management
Activities
Complete these activities after you have worked through the subtopics.
(If you have not already done so, please familiarise yourself with the core case study scenario via the link in the heading above.)
Now read this additional information about the case study.
The region inhabited by the Basin’s Indigenous community is home to many unique native plant species which form the basis of the group’s diet as well as their traditional medicines.
Recently, the state government employed botanist Dr John Arbor to undertake a survey of the native flora growing in these lands. As part of the survey, Dr Arbor spoke with the community to learn how the plants were used. One particular plant, Enchylaena metasi, interested Dr Arbor as it appeared to be an effective topical treatment for skin warts.
With almost half of the pharmaceutical drugs available today derived from natural products,* Dr Arbor believed that Enchylaena metasi had the potential to become a new wart treatment. However, he had neither the expertise nor the funding to undertake the necessary research.
*[Butler, M. S. (2005) Natural products to drugs: natural product derived compounds in clinical trials. Natural Product Reports, 22: 162–195; Newman, D. J., Cragg, G. M. and Snader, K. M. (2003) Natural products as sources of new drugs over the period 1981–2002. Journal of Natural Products, 66(7):1022–37].
After completing the state government survey, Dr Arbor was approached by Medicus Pharmaceuticals Pty Ltd. The company had identified Enchylaena metasi as the source of potential anti-cancer compounds and wanted to know if the Indigenous community had any traditional anti-cancer uses for the plant. Medicus expressed an interest to Dr Arbor in being involved in early-stage research programs which exploited the medicinal properties of native flora for use in cancer treatment.
Dr Arbor’s ability to investigate Enchylaena metasi was further complicated by his ability to legally access the plant. While under the terms of his contract with the state government Dr Arbor held a permit to collect plant samples for conservation assessment, his permit did not allow for research outside the field of conservation assessment.
Dr Arbor identified that a state university had several world-renowned plant biotechnologists who could perform the required research with adequate funding. Medicus was willing to fund the research providing they were given a share of the IP.
Your university has agreed to enter a research contract. The university’s commercialisation office will be responsible for putting in place the respective legal agreements as well as protecting the generated IP.
Dr Arbor’s ability to undertake research on Enchylaena metasi and commercialise any outcomes depend on resolving several intellectual property protection issues.
Questions for reflection
1. How will Dr Arbor formalise obtaining the plant material?
If Dr Arbor is still an employee of the state government, then any access to the plant material would be through an agreement between the government and the Murray Darling Management Trust (MDMT), which would cover access to and testing of the materials and set out terms about who would own IP rights and who would benefit if those rights were commercialised. If Dr Arbor is acting in an independent capacity, then he would have to arrange such an agreement on his own with MDMT. The access to materials may also be covered by state or other restrictions on collecting native plant species.
2. Who could do the research and how might this be formalised?
The investigative research on Enchylaena metasi could be undertaken by a research group at a university. To formalise this agreement, Dr Arbor and Medicus Pharmaceuticals Pty Ltd will need to enter into a research contract with the university setting out what the different parties would contribute to the research and what rights they would each have to the results.
3. If a product was discovered during the research who would be the inventor?
The inventors (as opposed to the IP owners) are determined by patent law, and these are not necessarily those who did the most work on, or initiated the project. You should take advice from an experienced IP professional if it is not clear.
4. Who owns the intellectual property that might result from the research?
The legal owners of the IP will be specified by the terms of the research contract and any other related agreements that may have been entered into. In an ideal research contract there will be only one owner of the IP (e.g., the state university) as this simplifies the commercialisation process. However, in this case, several interested parties could retain a financial interest in the IP (e.g., Dr Arbor, Medicus, MDMT, the Indigenous community, and the university), although only one may be the legal owner.
When there is more than one owner of the IP, the ability to commercialise it can be compromised. Difficulties arise when it is not clear what rights each party possesses, and the parties opt for different commercialisation pathways or demand different terms in negotiations with commercialisation partners.
However in this particular case, the research contract is between Medicus and the university, and the research contract states (conveniently) that the university owns the IP. There would be an agreement with the company to test the plants. Because the university identifies the active compound they are the inventors AND the owners due to the research clause, unless there had been inputs from other parties. It is likely that neither MDMT, Dr Arbor, or the Indigenous community would be inventors or owners.
5. How could Medicus’s request be addressed?
Medicus have stated that they were willing to fund the research as long as they retain an interest in the IP. This could be addressed in the research contract by giving Medicus a “first look and option to license” right. That is, Medicus would have the right to be the first party to review the generated IP for a certain period and then, if it is interested, to take up an option to exclusively license the technology from the university. The terms of such a licence may be agreed upfront or negotiated at the time of taking the licence. Commercial organisations will often require certainty around their ability to access the results of such research, and broad understanding of the commercial terms that might be involved.
6. How could the IP be protected?
The IP could potentially be protected through a patent.
Case study commentary
This case study provides a valuable insight into the complexity of intellectual property and commercial rights ownership. It further demonstrates best practice principles of determining ownership prior to engaging in commercialisation activities. Through the mapping of the commercialisation process, and having an understanding of the associated legal, financial and business development activities, researchers should be well prepared to protect all IP interests. Seeking early input and professional advice from your respective university technology transfer or commercialisation office is essential.
Activity 2 – IP in your research project
If you believe your research may have commercial potential or be of interest to potential commercial partners, complete the following questions. You may still find it useful to reflect on your IP management even if you think your project does not have commercial application. Please make a note of your responses to these questions and bring them with you to the workshop.
- What is the name of your selected project?
- Describe the research project in one sentence.
- Identify and describe the IP in your research that may need protecting.
- Identify the researcher or researchers who came up with the idea for the IP. Are they different from those who actually carried out the practical work? (Was anyone else involved?)
- What form of protection is best suited to the IP?
- Have you been keeping a record of the research process? If so, how?
- Has the IP been previously disclosed beyond the research team?
If yes, note in which of the following:
- Published a paper
- Gave a talk to a conference, or a group with members of the audience from another institution
- Displayed in a poster
- Detailed the innovation to someone outside the research group without a confidentiality agreement
- Described on a website
- A collaborator has disclosed the IP by any of the above means
- Other (such as described in an annual report, a newspaper article, or other non-scientific publication).
- Who do you think owns the IP?
- What funding was used to develop the IP, and were there any conditions on IP in that funding agreement?
- Were materials obtained from another organisation under an agreement such as a material transfer agreement (MTA)?
Pursuing the topic further
Engaging with this material (and the material in other sections of the module under the same heading) is optional. However, if you wish to gain a deeper understanding of the topic you may find the following websites useful:
IP Australia: a federal government organisation providing legal information and registration material for trade marks, patents, designs, and intellectual property. http://www.ipaustralia.gov.au
United States Patent and Trademarks Office (USPTO): search American patents and trade marks.
http://www.uspto.gov
World Intellectual Property Organisation (WIPO): a variety of IP-related resources, including searching facilities for international patents.
http://www.wipo.int/portal/index.html.en
European Patent Office (EPO): access European patents and worldwide searching.
http://www.epo.org/searching/free/espacenet.html
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