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IP

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by

Joanne Boag

on 28 April 2016

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Transcript of IP

Patents
Used to protect how something works/functions

Monopoly in exchange for publication

Limited in scope

Limited in geography – no world-wide patent

Limited in duration - generally about 20 years
Trade Marks
Used to distinguish the goods and services of one trader from those of another 

May be renewed every 10 years

Know how
Confidential Information
Registered Designs
Circuit Layouts
Plant Breeder’s Rights

IP
What is IP?
Copyright
"Australian research institutions will make every reasonable effort to gain benefit for Australia from IP. This may involve for example protection or making the IP publicly available in a timely manner."
"...intangible property that attracts rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields."
National Principles of Intellectual Property Management for Publicly Funded Research
"creations of the mind"
World Intellectual Property Office
National Principles of Intellectual Property Management for Publicly Funded Research
Automatic (no registration required)

Generally lasts 70 years from the year of the author's death or from the year of first
publication after the author's death

Authorship
TRavel Environment & Kids - Dr Gina Trapp
Involved cross-sectional survey of over 3,600 school children and parents across 29 schools

Developed a user-friendly MS Access based software application in collaboration with Database Manager

Distributed via software licence agreement for nominal fee
Originates from the Child Health Promotion Research Centre (CHPRC) at ECU

Based on 11 major research projects conducted since 1999

First resource published in 2004 Friendly Schools and Families

Friendly Schools Plus incorporates evidence from research projects conducted from 2004 to 2012

The knowledge in this work embodies traditional knowledge of the Nyoongar community. It was created with the consent of the custodians of the community. Dealing with any part of this knowledge for any purpose that has not been authorised by the custodians or their representative may breach customary laws and may also breach copyright and moral rights under the Copyright Act 1968 (Cth). For enquiries regarding permitted reproduction of any part of these publications, contact Dr Michael Wright.

The traditional knowledge/traditional cultural expression rights and the Indigenous communal moral rights over such aspects always remain with the Nyoongar people.
Commercialisation and Legal Office
James Dromey Joanne Boag Lishia Singh Jonathon Morrison
Phoebe Macleod Amandine Philippart De Foy

Tangible research materials
Novel
Non-obvious
Useful
Does this research have commercial potential?
Is this research translatable into a benefit to society?
Is there a protectable IP position?
No
Yes
Yes
No
Is this research ready to partner?
Can a partner be identified?
Yes
Yes
Partnered
Yes!
Further work required
No
Activities
is this a product or service?
would someone pay for it?
why? value proposition
clinical need?
consumer need?
business model?
market?
competition?
pathway to market?
Activities
is this a product or service?
clinical need?
consumer need?
translation plan?
marketing plan?
competition?
Activities
IP type
IP landscape/'prior art' search
draft patent specification
file patent application(s)
patent examination
renewals
freedom to operate
Activities
dependent on type of technology
feedback from potential partners
Activities
development plan
business case
regulatory advice
identify sources of funding
funding applications
MTAs
CDAs
collaboration agreements
identification and protection of of further IP
Activities
market analysis
pathway to market
list of target partners
approach
non-confidential two-page summary
non-confidential 'pitch deck'
CDAs
Activities
market research
term sheets
MTAs
due diligence
license agreements
shareholders agreements
Legal
TBC

Grant
Grant
Grant
Grant
Grant
Examination/Prosecution
3-8 yrs
National Phase Filing
~ 30 mths
Renewals
20 yrs +/-
Provisional filing
Day 0
PCT filing
12 mths
Publication
18 mths
'Invention' disclosure
Projects
~400
Tx
11
Dx
12
Digital
24
Devices
5
Partnered
20
On Market
13
The Pipeline
Full transcript