Research Commercialisation


The Office of Research & Innovation's Role in Commercialisation

The primary objective of the Research Commercialisation Office is to ensure that ECU secures attractive returns in the long term from the commercialisation of its valuable research outcomes and intellectual property. The commercialisation income can in turn be invested into further Research and Development.

The Commercialisation Services Offered:


ECU Research Commercialisation Process


Reporting Inventions
The Research Commercialisation process begins with a disclosure of an invention. This is accomplished by completing and submitting an Invention Disclosure Form. The Form provides information necessary for the Office of Research and Innovation to evaluate patentability, inventorship, market and commercial potential. This information is confidential and should be kept confidential by the inventor.

Under University policy, all potentially patentable inventions must be disclosed to the University. Potentially patentable inventions include any new or useful process, device or apparatus, article of manufacture, composition of matter (including chemical compounds, microorganisms, gene sequences), a sexually propagated plant, or related improvement to any of the foregoing, or a new use for a known material or device. Such inventions should be reported as soon as possible after conception of the idea to the Office of Research and Innovation

Assessment of Inventions

A preliminary evaluation of the Invention Disclosure, Form is made by the Research Commercialisation Office. Factors such as patentability, commercial potential, market, competitor analysis and patent rights of outside parties are considered in selecting cases to pursue further. The preliminary evaluation normally takes about 30 days. If the project is accepted, the appropriate IP strategy and timing to file is determined. There will be an assessment of the appropriate Commercialisation Strategy and depending on the strategy specific steps will be followed. If the project is rejected, no further action will be taken by Research Commercialisation Office. The main reason for a project/invention being rejected generally is that it did not meet the criteria for commercial potential.

Filing Patent Applications

If it is decided to proceed with filing a patent application, the Research Commercialisation Office works with the respective Faculties and coordinates the process, and a patent attorney is engaged to draft the patent application. In doing so, the inventor works closely with the attorney to complete the application. The completed patent application is submitted in the inventor's name to the Australian Patent Office. At the time of filing of the application, the inventor executes legal documents assigning the patent to the University.

Once an application is filed, the patent process is a negotiation with the patent examiner in the Australian Patent Office. Normally a series of communications is required. During this phase, the patent attorney, the Australian Patent Office and the inventor work together to respond to the examiner's requests (called "Office Actions") and to seek the broadest possible protection for the invention. In general, about a year elapses before the first substantive action is taken by the examiner on the newly filed patent application. The whole process normally takes at least two years.

Procedures for filing applications in foreign countries vary, and are very costly. The Research Commercialisation Office recommends filing foreign patent applications only when the cost is likely to be recovered from a licensee. If a publication has been made after an Australian patent application filing, a preliminary foreign filing date must be made within one year of the Australian filing date in order to preserve rights in other countries.

Commercialisation strategy

Choosing the right commercialisation strategy is critical and would take into account the nature of the technology itself, the industry it will be applied to and the objectives of the inventor. While the spin-out company has the maximum potential reward it also involves the most risk and involvement. Assignment/sale of the IP while is much lower risk and involvement does not provide as much of a return.



1. Contract Research or Development grants

A project may have good commercial potential but additional research may be recommended before the project is progressed to the 'Commercialisation stage'. The Research Commercialisation Office will work with the Researcher to either identify an Industry partner to apply for Developmental grants or to conduct contract research. An 'Opportunity Document' which is a non-confidential summary of the invention is created to assist in marketing the invention.

2. Assignment

Selling or assigning your technology could be a viable solution:

A key disadvantage to assigning the technology is that once sold, you will no longer have any influence in how the technology is used or commercialised. You may lose the right to use it yourself, even for research or teaching purposes unless it is part of the assignment agreement.

3. Licensing
Licensing a technology could be a viable solution if:

Although the licensing route helps share the risk associated with the commercialisation of a new technology, there is an early financial reward and less time and resource intensive for the inventor, it will generate substantially lower returns for the inventor than might be achieved if they commercialised it themselves.

The Research Commercialisation Office contacts appropriate companies to assess their interest in obtaining a license to the patent rights (often licensing occurs before the patent issues.) An 'Opportunity document/Information memorandum' which is a non-confidential summary of the invention is created to assist in marketing of the invention. The goals of marketing are to assess commercial interest in the invention and to find qualified licensee(s).

Coordination of all licensing contacts serves the interest of both the inventor and ECU, and information provided by the inventor regarding potential licensees is important to this process. If a private company contacts an inventor directly, the inventor should refer the company to the Research Commercialisation Office. The University may permit evaluation of an invention by potential licensees prior to the issuance of a patent through use of a Non-Disclosure Agreement executed by both the University and the potential commercial partner.

When an appropriate commercial partner is identified by the Research Commercialisation Office, a license agreement is negotiated and executed on behalf of parties. Terms and conditions for licensing agreements vary, and are negotiated on a case-by-case basis. If a company needs time to evaluate an invention, an option agreement may be negotiated. An exclusive license may be granted in instances where all of the funding for the research was provided by one commercial sponsor, or when it is the best way to assure development of the invention. An exclusive license must provide for diligent development of the invention, and it usually includes a minimum annual payment. In the event that the licensee fails to meet the requirements of the license agreement, the agreement usually provides for termination or conversion to a non-exclusive license. The non-exclusive licenses can be granted with defined geographical rights and for a specific field of use or application, depending upon the licensee's business and the purpose of the agreement.

If an invention was conceived or reduced to practice in whole or in part under a research collaboration with an Australian Federal or State Government agency, the Australian and/or State Government also receives a royalty-free license for government use which is issued by the University.

Royalties

Royalty rates are negotiated as part of the license agreement. Rates depend on a variety of factors such as the value of the invention, the cost of commercialising the invention, and whether the license is exclusive or nonexclusive.

Proceeds from licensing income are shared between the inventor and the University pursuant to the University Patent Policy. When there are two or more inventors, each shares equally in the income unless the inventors agree on an alternative distribution. When a joint invention arises involving another institution, royalties are shared with that institution and/or its inventor.

4. Commercialisation via formation of a Spin-out Company

Creating a spin-out company to commercialise the technology holds the highest risk but can also lead to the highest potential reward. Forming a spin-out company would be viable if:

After the market scoping and business plan is developed, it is presented to the ECU Commercialisation Committee for endorsement. The Commercialisation Committee makes a recommendation to the Vice Chancellor to form a spin-out company. Once the proposal is endorsed by the Vice-Chancellor, the company is registered and the structure and complete legal and contractual documentation is set up, this includes the Board, equity holding, and number of shares. Venture as well as State and Federal funding is explored. Ongoing management will depend on the level of involvement by ECU staff and ECU equity position. The Research Commercialisation Office will require regular financial and management updates to be provided on a regular basis

Research Sponsor Rights

Contract and grant acknowledgments with sponsors supporting University research projects or transferring materials for research purposes often contain patent provisions. Those provisions establish the rights of the various parties in potentially patentable inventions that may be developed during performance of the research contract. The existing patent obligations of all parties need to be fully understood so as to avoid conflicting obligations in proposed new acknowledgments.

The level of sponsor support generally determines the extent of patent rights available to the sponsor. In order to obtain a first right to negotiate an exclusive license, an industrial funding sponsor must fund all the costs of the University research, including overhead costs and a pro-rata share of the principal investigator's salary.

Releasing Rights to Inventors

Where no overriding sponsor rights exist, patent rights may be released to the inventor when the University elects not to file a patent application or to commercialize an invention or when the equity of the situation clearly indicates such release should be given. Even if outside sponsorship is involved, the inventors may be able to obtain rights. The Research Commercialisation Office will assist the inventor in these procedures and in the procedures necessary for the inventor to obtain clear title from sponsoring federal agencies, if applicable.

Industry Liaison

Edith Cowan University is a progressive and innovative university that welcomes exchange and collaboration with colleagues in industry. Our corporate partners and friends are an important part of our extended intellectual community.

As part of the University's commitment to cultivating and maintaining its relationships with business, the Office of Research & Innovation works with industry partners in a timely and professional manner. If you are a company looking for a new idea to bring to the market, please contact our Project Manager Commercialisation. For an overview of available University technologies, details about our policies and procedures, or to discuss your needs, feel free to contact us or browse the Office of Research & Innovation website.