Intellectual property disclosure
Understand the duty to disclose intellectual property and find out how to disclose your inventions or discoveries
All UoM researchers have an obligation to disclose all new intellectual property to the University via their Business Development team members. You need to do so whenever you have discovered or created something unique that might have commercial value, solve a significant problem, or could be made into a product or service by an industry partner. Please do this well before presenting the discovery through publications, poster sessions, conferences, press releases, or other communications – ideally several months before doing so, at the draft manuscript stage – and before talking to any external parties, especially prospective investors.
When you disclose your intellectual property to the University, it starts a process that could lead to the commercialisation of your discovery or creation. This may involve initiating the IP protection process for your invention and working to identify outside development partners. If industry or government funds were used for your research, you might have obligations and reporting requirements to the funding party.
It’s not always clear if a creation or discovery represents intellectual property. To find out whether you have intellectual property that can be further developed, talk with your Business Development team member and they will help assess your intellectual property. The questions in relation to your intellectual property explored at this stage include:
- Impact potential: Why is it new and clever - why hasn't it been done before?
- Market opportunity: Does it solve a real-world problem with end-user benefits?
- IP position: What is the nature of the intellectual property? Has it been published or disclosed?
- Development stage: Do you have supporting data or proof-of-concept?
- Ownership and rights: Source of funding for the creation of the intellectual property? Any collaborators?
Any net revenue obtained by the University from commercialisation of intellectual property is shared with the creators.
Intellectual Property Disclosure
An Intellectual Property Disclosure is a written description of your discovery, creation or development that you provide to the University’s Technology Licensing Service (TLS) team. The Intellectual Property Disclosure will describe the IP in detail, along with comparisons with alternative or competing solutions. It will list all collaborating sources of support that might be relevant to the ownership of the IP. It will include all necessary information for TLS to determine the intellectual property’s ownership and commercialisation potential; and with your input to begin pursuing protection, marketing, and commercialisation activities, if the decision is made to do so. The Intellectual Property Disclosure will be treated as confidential.
Submitting an Intellectual Property Disclosure
An invention disclosure can be submitted by completing the IP Disclosure Form.
Submission of an IP Disclosure Form starts the formal technology commercialisation process. Upon receipt of an IP Disclosure form, the Intellectual Property and Licenses (IPL) Manager will:
- Check the form to ensure completeness of the submission;
- Email all listed University contributors to the Invention to notify them of the disclosure and to ensure that they are satisfied with the content and accuracy of the submission; and
- Ask the Manager, Technology Licensing Services (TLS) to conduct a formal assessment of the disclosure.
The assessment process will guide the University's strategy on whether to focus on licensing to an existing company or creating a new business start-up.
Is a grant application detrimental to patenting?
Grant reviewers for publicly-funded grant providers in Australia (such as the ARC and NHMRC) are under an obligation to maintain confidentiality and not make the details of the application public. However, reviewers for other funding bodies might not have the same obligations, and this might impact patentability. In addition, successful grants might be advertised online, so check what information in the grant application might become public.