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International Technology Transfer Convention 2014

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International Technology Transfer Convention 2014 IP Awareness in Secondary and Tertiary Education- an Australian Perspective Zhuhai, Novemberr 06, 2019 Dr Andy Sierakowski, Former Chair, KCA and Chair International Committee ITTN Beijing INTRODUCTION : • My background: – Academic beginnings – Private sector – University technology transfer – KCA – Current role ITTN International Committee – who are we and what do we do? • Global advisory network to ITTN • Work closely with the ITTN Secretariat to promote international technology transfer between China and other countries • Conduct IP awareness and technology transfer training in China. • APEC projects in IP technology transfer in the Region. Published Technology Commercialization Handbook in APEC Economies, 2019, as a training aid. • More than 140 influential leaders from overseas international technology transfer organizations This talk: • Will focus largely on IP awareness and training as it relates to tertiary sector/ university technology transfer and IP commercialization • University of Western Australia, 2001-2014 and more recently on IP awareness training conducted in China on ITTN programs Some key Groups involved in IP Awareness training in Australia • IP Australia (Australian Federal Government agency that manages and registers various forms of IP protection) See www.ipaustralia.gov.au/ • Knowledge Commercialisation Australasia(a public-sector focussed organisation focussing on technology transfer) See https://techtransfer.org.au/ • Licensing Executives of Australia and New Zealand or LESANZ (the local chapter of LES) See https://www.lesanz.org.au/ • Miscellaneous entities maybe linked to industry bodies such as IP Awareness Foundation See https://www.teachermagazine.com.au/authors/ip- awareness-foundation Griffith James Cook QUT bluebox QUT Commercial Services USQ UniQuest ANSTO CSIRO gemaker IP Pragmatics Macquarie Newcastle DST Group Curtin UoW UniSA Ventures UNSW UWA LaTrobe Monash Swinburne UTas The University of Melbourne KCA Members Auckland KiwiNet Australian Public Sector Technology Transfer has a strong Base • Long established (CSIRO, 1926; UNSW, 1958) • KCA, public sector technology transfer organisation was established in 1976 • Some good successes (CSIRO, WiFi; Uniquest, Gardasil; UM, Cochlear; Uni of Sydney, Resmed) • Recent strong focus on industry-university research and collaboration (annual $1.6B market) University technology transfer - what’s the challenge? Intellectual Property Development Latent IP Real IP • Research publications • Granted patents and know how • Licences • Patent applications • Products/ services • Software programs • Trademarks • Publications/Copyright • PBR’s • Equipment access • Know-how • Requires investment • Develop and convert through industry engagement • Increases in value • Increases in “impact” UWA’s Research Profile • In 2015 UWA was ranked 87 in the Academic Ranking of World Universities (ARWU), released by Shanghai Jiao Tong University. • The ARWU ranked UWA 25th in Life Sciences (the highest of any field ranking in Australia). • In the 2012 Excellence in Research for Australia Initiative, run by the Australian Research Council, all of UWA’s Research was classified as ‘world class’ or above. • It is the aim of the University to undertake internationally appreciated teaching and research for the benefit and welfare of our communities. Commercialisation at UWA… The ownership and management of intellectual property at UWA is governed by the UWA Intellectual Property Policy. This includes a duty to disclose the… creation of any impactful Intellectual Property, including any potentially patentable invention. UWA abides by the National Principles of IP Management for Publicly Funded Research Commercialisation at UWA… <10 <5 <10 40 $250 <$2M M FREE WORKSHOP – DEVELOPING COMMERCIALISATION SKILLS Club Capricorn Resort and Conference Centre, Yanchep, 15-16 September 2010 The Office of Industry and Innovation (OII) at UWA is accepting enrolments for its PhD Retreat. The workshop will feature both UWA and external presenters and has the support of both the Deputy Vice-Chancellor (Research) and the Dean of Postgraduate Studies. This Retreat is targeted for UWA Postgraduate Research Students PROGRAM CONTENT The workshop will be structured into discrete ‘modules’ which will be either classroom style or work group style. Specific modules along the following lines will be presented in an interactive manner: • UWA’s IP Policies on Research Commercialisation • IP Protection – What is it and Why is it Important? • Importance of ‘Identifying the Opportunity’ • Development of Business Plan • Sources of Finance • Break out sessions on ‘What’s the Commercial Potential of my Research?’ • Case Study Presentations The registration form and detailed information regarding this workshop can be found on the OII website www.oii.uwa.edu.au Objectives of PhD Retreat Workshop Importance of research to economic and societal development Understanding of intellectual property – types, requirements, rights that IP gives you UWA IP policies and regulations including IP ownership and inventor-ship Technology transfer and commercialisation @ UWA – policies, processes, challenges and benefits Introduce basic skills to assist with identifying and commercialising IP OII objective: awareness of IP as it relates to your research and commercial potential Program Day 1 Day 2 Introduction Introduction Research & Technology Transfer & Case studies Commercialization Doing a deal Intellectual Property Todd Shand, Wrays Project scoping Research @ UWA Project presentations Prof Robyn Owens Wrap up PhD project introductions The Funding Cycle Larry Lopez Case Study / Project Forms Introduction Definition of Intellectual Property (IP) • Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. Key Types of IP and its Protection • Copyright • Trademark • Plant breeder rights • Industrial designs • Patents • Trade secrets • Know-how IP Ownership Basics • Successful technology commercialization cannot occur unless the commercializing entity owns or has the legal rights to commercialize the IP. • IP ownership will be defined by the relevant IP policies and regulations at the government and institutional level. Plant Breeder Rights • Plant Breeder Rights (PBR) are exclusive commercial rights for a registered variety of plant. These rights are another form of intellectual property (IP), like patents, trade marks and designs and are also registered nationally through the appropriate IP organization. • The usual protection period is 20-25 years • In some cases such as GM varieties, the IP protection can include a patent as well as the PBR • As with other forms of IP protection, the creator is advised to seek professional IP advice Patents • The most common form of IP protection in public sector technology transfer and commercialization • A specialized area that the technology transfer office (TTO) will usually use external patent attorneys for guidance. • This guidance may include meetings with inventors to establish “inventor-ship”, patent searches for prior art, discussions on filing strategies etc.. • The costs of managing a patent portfolio is always an important consideration for a TTO • TTO must monitor its patents regularly and check for any infringements by others and prosecute any infringers by litigation Introduction to Patents • What is a patent . Requirements for a patent . Publishing and patenting . Inventor-ship • The patenting process and costs • Extending your literature search to patents What is a Patent? An Example: Patentability is easily “Spoilt”: The invention loses novelty by: • Publication (e.g. in a scientific journal - including on-line) • Presentation to a public forum (e.g. at a conference) • Presentation to non-staff (e.g. students) • Commercial sale of the invention (even if covered by a NDA) Measures to protect novelty: • Obtain a non-disclosure agreement before disclosure to a third party • File a provisional patent prior to disclosure/publication • File a provisional patent prior to any commercial sale of product that includes (or was manufactured with) your invention Patent Application Timeline and Costs 30 months: National Phase (filing costs) 0 12 months $5k $10-12k Australia $2k Provisional PCT USA $6k Europe $18k Canada $5k Re-File Provisional 18 Months: Singapore $6k $500 PCT application … unless you have is published (For each Japan $17k published or disclosed jurisdiction) in the meantime! 16 Months: Int. Search Report Examination Rejection Appeal Renewal Expiry: 20 years after PCT has been filed Grant Patent Cooperation Treaty (PCT) Member States as of Feb 2013: Source: www.wipo.int Encourage Patent Searching by Faculty and Postgraduate Students Why? 1. Prior art searches to assess novelty & inventive step 2. Widen their academic literature search. Literature vs. Patent Search: Searching Academic Literature Searching Patents By keyword By keyword By author By Inventor Citations: Who is citing well known Citations: Who is citing a key & important papers? patent? By organisation By Assignee (organisation) that lodges the patent In Journals related to the topic By Patent Classification (International & US) What are International Patent Classifications (IPC)? • IPCs are a comprehensive subject classification system applied to all patents by the patent-issuing authorities. • There are some 70,000 IPC codes Patent Search Resources • Google Patents: Very easy to use; Coverage:
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