Intellectual Property (IP) and Commercialisation

On Thursday 28 August I attended a staff forum on Intellectual Property (IP) and Commercialisation held at Cumberland Campus. I thought I’d share some notes since this is an area which will become increasingly important as universities strive to secure funding in ever more ingenious ways.

• The talk was delivered by a representative of Sydnovate, a commercial arm of the University of Sydney. Sydnovate’s mission is to “ensure that technologies, innovations and expertise from the University of Sydney will be used to develop successful products for the benefit of the public” (of course there is also an economic incentive!) Find out more about Sydnovate at http://www.usyd.edu.au/sydnovate/index.html
• A patent is needed for a product to be commercialised. If you own a patent, you can prevent other parties from using your product or can dictate the terms under which the product can be used (for instance via licensing agreements). Patents are often necessary to attract the investment needed to develop a product (companies are usually reluctant to invest in products that are not protected from competition).
• Something is patentable if it is (a) new, (b) useful, and (c) non-obvious. ‘New’ means that the idea or invention has not been previously disclosed in the public domain. The speaker strongly urged academics not to publish an article detailing their invention / innovation until they had approached Sydnovate and discussed it with them first, since publishing in a journal constitutes disclosure. ‘Non-obvious’ means that you can’t simply make a trivial modification to an existing product or technology; the change has to be significantly different to anything that has been conceived previously.
• Why bother negotiating a patent? (a) your product could help society, (b) you and your research team will receive recognition / glory (speaker’s words), and (c) you can earn big bucks depending on the product.
• Most patentable products developed by researchers in the health sciences field are types of medical devices as opposed to pharmaceutical drugs etc.
• Sydnovate can assist researchers in the following ways: (a) in deciding whether an innovation could be developed into a patentable product, (b) in preparing the patent, (c) in finding suitable licensees and in negotiating the terms of use etc.
• There is a Sydnovate fund available to researchers who have preliminary results associated with an innovation they’ve developed, but need more funding to verify whether their innovation has commercial potential.

Responses from the audience:

• There obviously exists a tension between the desire to publish and the need to keep innovations undisclosed in order to secure a patent. The whole ethos of academia is centred on the dissemination of knowledge after all…
• Many of the innovations developed by health sciences academics are improvements to processes (such as treatments for certain conditions or changes to accepted clinical practice) rather than the establishment of new products. The former are harder to patent and are therefore not as commercially viable. A workaround is if you somehow inexorably tie a new product to a new way of doing something.
• Some academics seemed to fear that the push towards commercialising Intellectual Property could inadvertently force research to be centred on economic imperatives rather than social imperatives. i.e. researchers would investigate areas which had commercial potential rather than investigate areas which had the capacity to improve the lives of many people, but lacked the capacity to generate significant revenue for themselves or their institutions.

I'd be interested to hear your thoughts on the issue... Have you ever developed an innovation that could be patentable? Do you think there is a danger on focussing too much on the commercial viability of research output?

Cheers, Kate