Understand the technology transfer process
The process for technology commercialisation at the University of Melbourne
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.
Technology transfer process
The process of technology transfer and commercialisation is summarised in the steps below. These steps can vary in sequence and often occur in parallel. The University’s Technology Licensing Services (TLS) team is constantly refining and streamlining the process, to make it more efficient for creators and licensees. In addition, it is sometimes necessary to iterate through the process as you further refine the details of your intellectual property.
How can I help in this process?
The process of protecting the technology and finding the right licensing partner may take months—and often years—to complete. The amount of time will depend on the development stage of the technology, the market for the technology, competing technologies, the amount of work needed to bring a new concept to market-ready status, and the resources and willingness of the licensees and the creators.
- Contact your Business Development team member as soon as you believe you have created or discovered something unique with potential commercial value. The sooner you make this contact, the sooner the IP assessment and protection process can start, and the less likely it is that publications and other public disclosures of the IP will be delayed.
- Complete and submit the IP Disclosure Form. It is very important that this is done at least several months in advance of publicly disclosing your technology or submitting a manuscript for review and publication.
- To avoid risking your patent rights and possibly hindering the opportunity to market your intellectual property, contact your Business Development team member before holding any discussions about your creation with people outside the University community.
- Respond promptly to requests for information from RIC and their external patent attorney. While some aspects of the patent and licensing process may require significant participation on your part, we will strive to make efficient use of your valuable time.
- Keep TLS informed well in advance of upcoming publications or interactions with companies related to your intellectual property.
Observations and experiments during research activities often lead to discoveries and creation of intellectual property. The Pre-disclosure stage generally involves a discussion with your Business Development team member to better determine whether your research output should be the subject of an IP Disclosure. 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?
An early contact with your Business Development team member to discuss your intellectual property and to receive guidance on the disclosure, evaluation, and protection processes described below. The sooner in the discovery process you make this contact, the sooner the IP assessment and protection process can start, and the less likely it is that publications and other public disclosures of the IP will be delayed.
The notice of intellectual property creation to the University’s Technology Licensing Services team via a completed Intellectual Property Disclosure Form begins the formal technology commercialisation process. An Intellectual Property Disclosure remains a confidential document, and must fully document your intellectual property so that the options for commercialisation can be evaluated and pursued.
The period – typically several months long – in which the TLS team, with your help, reviews the Intellectual Property Disclosure, conducts patent searches (if applicable), and analyses the market and competitive technologies to determine the intellectual property’s commercialisation potential. The assessment process, which may lead to a broadening or refinement of the intellectual property, will guide the University’s strategy on whether to focus on licensing the technology to an existing company or creating a new staff start-up or University spin-out. It may also provide commercial insights for further research and development.
Following assessment of the technology, and if protection of the intellectual property is necessary for commercialisation, the process for intellectual property protection is then initiated. Patent protection, the legal protection method for inventions, begins with the filing of a provisional patent application with IP Australia and, when appropriate, foreign patent offices. Once a patent application has been filed, it will typically require several years and tens of thousands of dollars to obtain granted Australian and foreign patents. This is often done in conjunction with an industry partner that is supporting the development of the technology.
Development and marketing
With your involvement, the TLS team will identify candidate companies that have the expertise, resources, and business networks to bring the technology to market. This may involve partnering with an existing company or forming a staff start-up or University spin-out. Your active involvement will dramatically enhance this stage of the process. In some cases, TLS will conclude – with your input, and potentially with input from potential licensees – that further development of the technology is necessary before it’s ready to be licensed. In this case, TLS will provide advice on potential sources of funding for this development.
If an appropriate and interested existing company, or companies, are selected as a potential licensee, licensing specialists from the TLS team will work with potential licensees to develop the appropriate financial and diligence terms to fully commercialise the technology.
If creation of a new staff start-up or University spin-out business has been chosen as the preferred commercialisation path, TLS will assist the founders in planning, creating and finding funding for the start-up or spin-out.
A licence agreement is a contract between the University and a third party in which the University’s rights to a technology are licensed, without relinquishing ownership, for financial and other benefits. A licence agreement is used with both a new start-up business and with an established company.
An option agreement is sometimes used to enable a third party to evaluate the technology and its market potential for a limited time before making a decision about licensing. More about the terms of typical University license agreements are here. These agreements will not prevent you from continuing your research in the same field.
The licensee continues the advancement of the technology and makes other business investments to develop commercial products or services based on the technology. This step may entail further development, regulatory approvals, sales and marketing, training, and other activities. Your input and know-how, as the creator of the IP, are often needed at various stages, and further development work is often contracted back to your laboratory, resulting in valuable research funding and allowing new IP to be created.
Net revenue received by the University from licensees is distributed to creators’ faculties to fund further research and education; and to the creators, to encourage entrepreneurial endeavour and further participation in the technology transfer process. In summary, the net proceeds of commercialisation received by the University are distributed as follow: 40% to University IP creators, 40% to their Faculty or School, and 20% to the University.