Understand the technology transfer process
Understand the various steps in the process of technology commercialisation at the University of Melbourne.
Governed by the University of Melbourne Statute (13(6)), you have a duty to disclose to the University whenever you think you have made a new discovery or invention as soon as possible. It is crucial that you start this process before your discovery is published in a peer-reviewed journal, at academic conferences or publicised through any other means. IP disclosures also allow the University to check and fulfil any obligations to industry sponsors or other funding partners.
It is always a good idea to discuss your options with your faculty's Business Development Director (BDD) so that you are aware of the commercial potential of your research. The Technology Licensing team works closely with the Business Development team, so they can advise you about University policies and procedures and commercial questions relating to funding sources, marketability, industry partners, patents and other protection, and creating a start-up.
Tech transfer process
Summarised below are the various steps in the process of technology commercialisation. Note that some of these steps can occur in a different order or in parallel.
Your research may result in a new discovery or invention, and it is quite common for several researchers to have contributed to such a discovery. An invention is any useful process, machine, new chemical or biological entity, or any new or useful improvement of the same. We strongly recommend that you contact your faculty's BDD about your invention to discuss the IP disclosure, evaluation and protection processes.
- IP disclosure
Once submitted, the IP disclosure is assigned to a Technology Licensing Officer for review (with your input), patent searches and market and competition analyses. These investigations help to assess the invention's commercialisation potential and will guide your next steps to either focusing on licensing to an existing company or creating a new start-up company.
Protecting your invention is essential for many reasons, but is especially important to attract partners who want to license it. There are various ways to protect an invention, depending on the nature of the disclosed technology:
- Patents are the most common means of protection.
- Copyrights are generally used for creative works such as software, literary works, photographs or musical compositions.
- Plant Breeder's Rights (PBR) are used to protect new varieties of plants that are distinct, uniform and stable.
For most research-generated inventions, patents are often the most appropriate from of protection. The process begins with filing an application with IP Australia and potentially in the patent offices of other countries. A subcontracted patent attorney, chosen in consultation with you for their technical competence and prior experience, will file and prosecute your patent application. Your cooperation at this stage is essential.
It can be a time-consuming and expensive process, as patents take several years and tens of thousands of dollars to secure. As the invention may have further developments, it may be appropriate to extend protection with further patents (though this is usually undertaken with a suitable industry partner).
With your help, the Technology Licensing Officer will identify companies that have the expertise, resources and business networks to bring your technology to market. This will involve either partnering with an existing company or forming a start-up. As the inventor, your involvement at this stage can significantly improve the likelihood of success.
When we have successfully attracted a third party licensing partner, you will need a license agreement, which is a contract between the University and the partner where the University's rights to a technology are licensed in exchange for financial or other benefits. These agreements should not prevent you from continuing your research in the same field.
Post-deal management and revenue sharing
The licensing partner or business start-up will continue to advance the technology and engage in further developmental research, seeking regulatory approvals, sales and marketing, support, training and other activities. They will probably seek your expertise to guide these stages, and often some of the developmental research can be contracted back to your lab.
The University will receive milestones and/or royalties from the licensing partner, distributing it according to the University's IP policy: 40 per cent to the inventor(s), 40 per cent to your faculty and 20 per cent to the University.
- Conflict of interest