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

$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: from 1790 for US, from 1978 for Europe

• esp@acenet (European Patent Office): worldwide search

• WIPO Patentscope: worldwide search

• Lens.org: excellent user interface

• Proprietary Database used by some TTOs. Total Patent Curtin University

• IP Awareness for PhD students conducted by LESANZ at another university in Perth

• Similar format covering types of IP protection, importance of protecting IP etc… Curtin Ignition Program

Understanding IP : Supporting Your Commercial Objectives

Albert Ferraloro – LESANZ National President Mark Pullen – LESANZ Vice President

Tuesday, 28th August 2018 Components of S&P 500 Market Value

Source: Ocean Tomo, LLC Patents Trade Marks Protect processes or how a Protect the names/ brands product works

Different IP Rights protect different forms of IP

Registered Designs Circuit Layout Rights Protect the visual Protect the design of the appearance of the printed circuit boards productas

Issue Patents Trade Secrets

Possible Term 20 years Duration of secret

Independent Protect against this - and often No protection against this – Discovery reverse engineering nor reverse engineering

Scope for Yes - possible No opportunity Publication

Enforcement Infringement Breach of confidence, contract, fiduciary duty etc

Scope of Can be broadened beyond Specific to particular secret Protection specific discovery PhD Retreat 2010

Case Studies and the importance of IP

Wednesday, 15 September 2010

Dr Andy Sierakowski Director Office of Industry and Innovation University of Western Australia

• CSIRO WLAN example – Persistence and IP litigation – Australian technology goes big! • Gatorade – How to make money from sweet & salty water – Strong trademark and marketing drives success • Gardasil - The HPV vaccine discovered by Ian Frazer & co-workers at UQ - An example of a licence that turned “big”. • Cochlear - Hearing improvement technology based on original research from Graeme Clark and co-workers at University of Melbourne - Now a leading Australian company

• Originally invented and patented by CSIRO (1992-1996) • Adopted into the IEEE standard known as 802.11 in 1999 • Many manufacturers had built the technology into their computers without paying licence fees • CSIRO claimed patent infringement-but not until 2005! • CSIRO won the test IP infringement case against two companies, Buffalo Technology Inc and Buffalo Inc in 2005 • The two companies appealed the decision and subsequently lost

3 CSIRO Importance of the patent system

Front Page of CSIRO’s WLAN patent

4 CSIRO Wireless Local Area Network (WLAN) Success includes Persistence and Fighting for your IP Rights! • It also means knowing you are “ahead” of the market with your technology and the market potential! • The courage to patent in national jurisdictions when no one wants your licences • A good measure of luck along the way-IP built into an IEEE standard and patents up-kept and proven valid in court • How much success? More than $200M in 2009 in back-dated IP recovery/licence fees and more to come. • It’s not over! Sony, Acer, and Levono are next and only 5 of the 10 world’s largest laptop suppliers have signed. • By 2013, over 1.5 billion laptops using CSIRO technology would have been sold

• Some myths and trends based on the US experience – last 20 years.

• What does the data show? AUTM 2016 Licensing Survey US University Big Wins

1 CSIRO Trend: Less focus on Making Money and more on Impact in the Marketplace • A clear realisation over the last 15 years that revenue cannot be the focus but only a side-product of public sector research technology transfer. Why? - Only a small percentage of invention disclosures, say, 5-10% will make money - Only about 1% will make over $1M - And blockbuster deals like NorthWestern uni are very rare results! - Anyway, the major benefit will be made by the industry partner licensing the technology. Why is that……..all about costs and risks! Trend: Less focus on Making Money and more on Impact in the Marketplace Stanford University technology transfer since 1970 and their statistics:

• Inventions disclosed about 10,000 • Patents issued about 5,000 • Licence agreements issued about 2,500 • Licences generating more than $1M about 77 • Licences that have generated over $100M only 3

Source: Bloomberg report, May 2016 Industry Engagement and Commercialisation • Some key activities are inter-related

• These lead to licences with Industry industry partner Research Contracts • Also lead to spin-off company formation

• These lead to more funding of research at • Lead to more the university Spin-out Licensing to research funding to support licensee • These are formed Companies Industry from industry research contracts How does a University better Engage with Industry?

• Making itself more attractive to do business with. Easy Access IP and simpler licence agreements • Encourage researchers to interact and engage with industry and include that in career promotion • Hold “Open Days” to demonstrate their R&D capabilities with external companies • A pro-active technology transfer and industry engagement office. Relationship of a university’s patent applications to Negotiated Research Contracts with Industry

$16,000,000 Research Contracts resulting from Patents Over one Decade

$14,000,000

$12,000,000

$10,000,000

$8,000,000

$6,000,000

$4,000,000

$2,000,000

$0 #1 #2 #3 #4 #5 #6 #7 #8 #9 #10 #11 #12 #13 #14 ASSESSMENT

WHAT HAPPENS IF THE TECHNOLOGY IS AHEAD OF THE MARKET? • In some cases of a very novel and “disruptive” technology can be ahead of the market

• This will be very hard to assess as it will get a high score for technology and novelty assessment but very low for market fit!

• Remember the example of the CSIRO Wi Fi story IP PROTECTION A. To protect or not to protect?

• Assuming your technology and market assessments are good and the technology is novel, you must decide how best to protect it • This will depend on the type of technology you have and your broad plan to commercialize it • For example, a new software program including its source code is best kept as confidential “know-how” or trade secret rather than patenting it. Remember the Coca-Cola story! • An important question as it may devalue the commercialization with future partners if the wrong decision is taken! IP PROTECTION B. Patenting Costs and Related Issues

• Obtaining granted patents in multiple jurisdictions is very expensive. (We covered this in Part A in this talk). • A university have limited funds for patenting costs and will need to set “rules” that the researchers understand and follow • For example, it may mean that the university will require the licensee or start up company to bear the costs of national patent filings • In any successful commercialization, the TTO will usually recover their patent costs before monies are provided to inventors TECHNOLOGY VALUATION

Broadly, there are three methodologies to determine the valuation:

 Historical Cost base – you can determine how much the research has cost and ask for that to be recovered PLUS x% on top  Comparables- you examine various databases or company filed records to compare your technology against known deals by industry and market segment  NPV- you look forward using nett present value of money calculations with appropriate discount rates to value your technology

PROBLEM? Both these last two require a more mature and proven technology which is rarely the case with early stage university technologies Pathfinder Fund- Global Impact

THE OFFICE OF INDUSTRY AND INNOVATION Secondary Education and IP Awareness

• IP Awareness is a Key function of IP Australia • IP Australia www.ipaustralia.gov.au includes IP awareness under its charter. Viz:

IP Australia will facilitate access to the domestic and international Programme 1.2: intellectual property Education, Awareness Purpose 3: Access and system and promote and International promotion understanding of their Engagement value among its stakeholders in line with Australia’s interests Secondary Education and IP Australia Awareness Modules

Age group: 12-16 Subject: Creative Arts Classroom unit Overview During the eighteenth century there was an Industrial Revolution - the work normally done by muscle power was increasingly done by machines. There were several countries in which this Industrial Revolution might have occurred - Belgium, France, Germany, the United States, even China. Secondary Education and IP Australia Awareness Modules

• Some examples of modules targeting students junior high school include:

-What is the meaning of the Aboriginal flag? -Investigating air

• Modules targeting more senior high school students:

-How vital is a trade-mark in marketing? -Genetically modified crops- yes or no? -An Australian inventions timeframe Modules come with teacher guides and instruction sheets Secondary Education and IP Awareness Foundation • The Intellectual Property Awareness Foundation(IPAF) is a not-for-profit industry initiative that promotes the value of creativity by raising awareness, understanding and appreciation of copyright and the impact of piracy on the film and television industries, through research, consumer awareness campaigns and educational programs and resources for Australian schools. IPAF undertakes 3 key ongoing activities: • Creates consumer campaigns promoting the importance of paying for film and TV content and reminding consumers about the thousands of Australians who depend on the creative economy for their livelihood. • Undertakes independent annual research into the online attitudes and behaviour of Australians in order to inform the debate about film/TV theft and to raise awareness of the issue and the facts. • Develops and distributes education resources and lesson plans to primary and secondary schools to stimulate classroom discussion about copyright and promote the value of good digital citizenship online. IPAF’s education and awareness campaigns rely on messaging aimed to motivate a change in attitudes and behaviour to reduce public demand for illegal copies of film and television programs. Secondary Education and IP Australia Awareness Foundation • This group ( funded by TV, film industry) is concerned with the level of “piracy” through the illegal downloading of copyright content particularly by young people.

• Most of their research on why young people “pirate” and related submissions seem to have been in the period 2008- 2015

• Rebranded in 2016 - Australia's peak body for the promotion of copyright, creative rights and piracy research has been rebranded as Creative Content Australia. Unclear how active in this space today. Thank you Views ofPP Dr Andy Sierakowski WeChat ID: AndySiera [email protected]