guide for researchers

CONTRACT RESEARCH AND TECHNOLOGY TRANSFER

AT THE UNIVERSITY OF AUCKLAND

Guide for Researchers

The University’s research ecosystem includes:

• eight faculties, each representing a major area of

research and teaching

• over 50 research units, centres and institutes focused

on pioneering research, enabling cross-disciplinary and

cross-faculty research initiatives

• six inter-institutional Centres of Research Excellence

(CoREs) where researchers collaborate on commonly

agreed work programmes and build research capacity

and capabilities.

Our role is to connect those capabilities with business and

investors, government and the community around the

world. We encourage and support research and new ideas

to flow.

We work alongside researchers to identify and protect

discoveries with commercial potential, find business

partners, negotiate contracts and licence agreements and

we protect the University’s intellectual property portfolio.

UniServices’ role

FOR MORE INFORMATION:

w: www.uniservices.co.nz

t: +64 9 373 7522

UniServices is a wholly owned subsidiary of the

University of Auckland, established over 25 years ago.

This guide outlines how UniServices

supports the University of Auckland

in leveraging innovation and invention

through contract research and

technology transfer.

It covers the process from pre‑disclosure

and protection through to contracting,

licensing, commercialisation and

revenue in a Q&A format.

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“Working together, UniServices and the

University of Auckland contribute to

society by advancing knowledge that

improves people’s lives, wherever they live.

We are internationally recognised for the

development and commercialisation of

intellectual property based on our research

and creative works, and we strive to make a

positive difference in everything we do.”

Stuart McCutcheon, Vice-Chancellor,

the University of Auckland

Introduction

This guide takes you through the technology transfer

process, from University policies on commercialisation to

frequently asked questions.

UNISERVICES OFFERS:

• the all-important first assessment of your ideas across

commercial, societal, technical, and intellectual property

perspective, and ongoing assessment as we move to

commercialisation

• expert support through our commercialisation, contract

and business managers, and specialist patent attorneys.

In other words, the people with the expertise to take you

down the road to commercialisation

• access to government funding with the Pre-Seed

Accelerator Fund (PSAF). We invest 50/50 into this fund to

speed up the development of projects we believe to have

commercial application or will be funded by a commercial

client

• a collaborative commercialisation model. We work with

you, recognising that publishing findings and sharing

information is paramount for many researchers and that

these requirements may require deft manoeuvring to

remove conflict and deadline issues

• revenue-sharing with you and your departments to

enable you to continue working, and to encourage new

projects

• return of surpluses to the University to expand and

enhance your research capabilities.

We are offering you the opportunity to be part of that success.

Policies

The University of Auckland has three policies covering the

creation of intellectual property (IP) and commercialisation

activities:

• The University of Auckland Intellectual Property

Created by Staff and Students Policy -

http://tinyurl.com/m77fe6v

• The Policy on Outside Activities Undertaken

by Academic Staff -

http://tinyurl.com/n3vbvt6

• The University of Auckland Policy on Conflict of Interest

sets out the relevant considerations and processes to

follow in relation to a conflict of interest -

http://tinyurl.com/kolaov4

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Two key definitions

CONTRACT RESEARCH is research

completed under contract to a third

party outside the University.

TECHNOLOGY TRANSFER is the

licensing of technology to third parties

- an existing company or a start-up -

through a licence agreement.

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WHAT DO YOU GET FROM THE TECHNOLOGY

TRANSFER PROCESS?

• the satisfaction of giving the world something it didn’t

have before

• new knowledge and skills from the transfer process

• the opening up of new opportunities for your

own research

• a sense of personal fulfilment

• recognition and financial reward

• new funding for your department/centre

• the ability to meet the obligations of a research contract

• become attractive to research sponsors

• the creation of educational and employment

opportunities for students

• a company start-up.

HOW DO WE TRANSFER TECHNOLOGY?

We undertake research for a third party and/or grant a

license to a third party to use the University’s intellectual

property (IP) rights, sometimes for a particular field of use

and/or region of the world:

• the grant may be exclusive or non-exclusive

• the licensee may be an established company or a start-up

• licenses include terms requiring the licensee to meet

certain performance requirements and to make financial

payments to UniServices, including contract research

payments

• we distribute a share of these payments to researchers

• we distribute a further share to your department and/

or research centre to support for further research and

education

• we retain a portion to support the technology transfer

process and to invest in further technologies.

Technology transfer - the nuts, bolts and IP

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HOW DO I WORK WITH UNISERVICES?

Contact us as soon as possible.

We can help you work through the options to best leverage

the commercial potential of your research, starting with an

initial assessment and working through the business case to

full commercialisation.

Our staff can advise on:

• marketability

• funding sources

• commercial partners

• patenting and other protection methods

• new business start-up considerations

• the University’s policies and procedures

• contracting considerations with companies and investors.

WHAT ARE THE TYPICAL STEPS IN THE PROCESS?

Research

Observations and experiments during research activities

often lead to new ideas, discoveries, technologies and

inventions. New ideas might include methods, designs,

machines, computer programs, algorithms, devices,

chemicals or medicines, biomarkers, or an improvement to

an existing technology.

By contrast, the definition of an invention is narrower. It is

any useful process, machine, composition of matter, or any

new or useful improvement, that has one or more inventive

steps and is non obvious to those “skilled in the art”.

However, for this guide, both are handled similarly and we

will refer to both technologies and inventions as ideas.

Pre‑disclosure

The sooner you call us, the sooner we can help you maximise

your discovery for your benefit and protect your work.

Idea disclosure

This is where you give us written notice of a discovery using

‘idea disclosure’. It’s the first step in the formal technology

transfer process and should fully document your idea so we

can evaluate and assess commercialisation options.

Use our electronic idea disclosure form:

http://tinyurl.com/m5yvlac

All disclosures are confidential.

Assessment

We partner you with a Commercialisation Manager

and IP Advisor to review your disclosure and discuss

commercialisation potential. This assessment may include

conducting patent searches, market analysis and any

competitive ideas.

This evaluation process guides our strategy to license to an

existing company or create a new business start-up.

Protection

Where appropriate, we seek formal protection for an idea,

most commonly through patent protection. This can

encourage third party interest in commercialisation. Patent

protection begins with the filing of a patent application.

This is not a fast process; it can require several years and

significant amount of money to see the patent through to

being granted. However, the first steps are easy and we take

care of the whole process.

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Where patent protection isn’t available, we may need to rely

on a design registration, copyright or trademark.

Two points to note:

1. UniServices manages over half of all patents filed by

Universities in New Zealand. That’s expertise you can

access.

2. We pay all the costs associated with IP protection.

Marketing

With your involvement, your UniServices Commercialisation

Manager will identify candidate companies with the expertise,

resources, and business networks to bring your idea to

market and/or develop a contract research opportunity

with a company. This may involve an existing company or

forming a start-up company. Your active involvement can

dramatically enhance this process.

Option A: Existing business relationship

In some cases the idea is best commercialised by licensing it to

a company already active in the relevant market. Alternatively,

the license could be included in a research contract with a

company. In both cases, your Commercialisation Manager

will identify potential licensees and work to identify mutual

interests, goals and plans to fully commercialise this idea or

seek the best research contract option for you.

Option B: Form a start‑up

If the creation of a new business start-up is the best

commercialisation path, we will work with you to plan, create

the company and find investors, directors and management

as required.

Licensing

A license agreement is a contract between UniServices

and a third party. Here, we license our rights to an idea

(without relinquishing ownership) for financial and other

benefits. Licenses can be used with both existing and start-

up companies. Sometimes we use an option agreement

to enable a third party to evaluate the technology and its

market potential for a limited time before licensing.

Commercialisation

Where a new technology is licensed, the licensee company

continues to advance the technology and invests to

develop it into a product or service. This may entail further

development, regulatory approvals, sales and marketing,

support, training, and other activities.

Revenue

You, your department or centre and UniServices share

the licence revenue. We use our share to fund additional

commercialisation activities.

The commercialisation process is shown graphically on the

next page.

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The commercialisation process

UNISERVICESTHE UNIVERSITY

OF AUCKLAND

Academic

ResearchContract

Research

Research

Funding

Royalties

IPO / Equity

Licensing

Spin Out

Publishing

REVENUE

Technology

Disclosure

Assessment

Protection

Marketing

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HOW LONG DOES THE TECHNOLOGY

TRANSFER PROCESS TAKE?

Protecting your idea and finding the right licensing partner

may take some time, but it’s work we do on your behalf to

enable you to keep working. It depends on:

• the nature of the idea

• the development stage of the idea

• the market for the idea

• competing ideas

• the amount of work needed to bring a new concept to

market-ready status

• the resources and willingness of the licensees and the

researchers.

HOW CAN I HELP IN THIS PROCESS?

Contact us when you have a new idea with potential

commercial or research value:

• call UniServices at + 64 9 373 7522 (main line) or the

appropriate Commercialisation Manager:

http://www.uniservices.co.nz/contact

• complete and submit the UniServices Idea Disclosure

Form:


remember:

- this must be done before any public disclosure of

your idea

- you must submit it so we have enough time to file a

patent application before publicly disclosing your idea

or publishing a manuscript. We prefer to complete this

step before you submit the manuscript for publication

• respond to UniServices and outside patent counsel

requests

- while some aspects of the patent and licensing process

will require significant participation on your part, we

always look to minimise interruptions to your research

• keep us informed of upcoming publications or interactions

with companies related to your intellectual property.

WHAT SHOULD I DO BEFORE

MEETING UNISERVICES?

Keep it secret. That’s the simplest way to give us the best

possible opportunity to commercialise your idea. Tell us

before you tell anyone else.

We can advise whether a patent application is the best option

to protect the idea. Talking with people outside UniServices

or the university can jeopardise gaining patent rights and,

therefore, the opportunity to successfully commercialise

your idea. Please, talk to us first.

Where a patent application has not been filed, we will give

you a non-disclosure or confidentiality agreement for the

party to sign before you describe your idea to third parties

outside the University.

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WHAT IS AN IDEA DISCLOSURE?

An idea disclosure - also called a technology disclosure - is

a simple document that describes your idea.

Please ensure you note the date of any upcoming publication

or other public disclosure describing the idea so they can be

included in the assessment process.

Start here, with our online idea disclosure form:


This is confidential between you and UniServices. Your

assigned Commercialisation Manager will contact you to

discuss the idea and its potential commercial applications.

WHY SHOULD I SUBMIT AN IDEA DISCLOSURE?

It starts the process that could lead to commercialisation

and this might involving protection and gaining outside

development partners.

If you used external funds for your research, your funding

contract may set out a specific process for dealing with any

arising idea. UniServices can assist you with managing any

of these issues.

HOW DO I KNOW IF MY DISCOVERY IS AN

INVENTION? SHOULD I BE SUBMITTING AN IDEA

DISCLOSURE?

If you think you can solve a significant problem, add value

or offer something new - submit the form, if only for your

own protection.

Even if you’re doubtful, still contact us. We can advise you

on your options.

Idea disclosure

WHEN SHOULD I COMPLETE AN

IDEA DISCLOSURE?

Complete the form the moment you think you have

discovered something unique with possible commercial

value. Do this before presenting your discovery through

publications, poster sessions, conferences, press releases,

or other communications. Public disclosure of a new idea

outside UniServices means it may no longer be patentable.

SHOULD I LIST VISITING SCIENTISTS

ON MY IDEA DISCLOSURE?

Mention all contributors to the ideas leading to a discovery,

even if they are not University of Auckland employees.

UniServices, along with legal advisors, will determine the

rights of such persons and institutions. You should discuss

all working relationships (preferably before they begin) with

us to understand the implications for any subsequent ideas.

HOW DO I SUBMIT AN IDEA DISCLOSURE?

Download and complete the form at:


Each week we assign disclosures to a Commercialisation

Manager. Alternately, call us on + 64 9 3737 522 (main line)

or contact the appropriate Commercialisation Manager

directly:

http://www.uniservices.co.nz/contact

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Assessment of an idea disclosure

HOW DOES UNISERVICES ASSESS

IDEA DISCLOSURES?

Commercialisation Managers and IP Advisors work together

to examine each idea disclosure to review:

• the opportunity to leverage the idea for a research

contract with a client

• the novelty of the idea

• competing ideas

• protectability and marketability of potential products or

services

• relationship to related intellectual property (IP). IP is the

product of the human creative process. It may be a new

idea, concept, knowledge, technology or a brand and

may be protected under the patent, trademark and/or

copyright laws

• size and growth potential of the relevant market

• amount of time and money required for further

development

• pre-existing rights associated with the intellectual property

• potential competition from other products or ideas.

This assessment may also include consideration of whether

the IP can be the basis for a new business start-up.

IF I BELIEVE THAT ALL IP SHOULD BE LICENSED

NON-EXCLUSIVELY TO ALL POTENTIAL USERS

FOR THE PUBLIC GOOD, WILL UNISERVICES

HONOUR MY REQUEST?

Your Commercialisation Manager will work with you to

develop the appropriate strategy for your idea.

Some ideas lend themselves to non-exclusive licensing,

such as licensing to multiple third parties. Others will only

reach the marketplace, and therefore the public, if licensed

on an exclusive basis.

We will try to accommodate your wishes, but we

are required to determine the most appropriate

commercialisation strategy.

HOW DO WE DECIDE WHETHER TO

COMMERCIALISE WITH A TRADITIONAL OR

OPEN SOURCE LICENSE FOR SOFTWARE?

We support university software developers who choose to

license their programs through open source mechanisms.

We retain the right to distribute the program freely and

ensure open sourcing is consistent with obligations to third

parties, such as sponsors.

Please contact us for advice on appropriate notices to put

on your open-sourced software, as there are many different

varieties of open sourcing.

DO YOU EVER REASSIGN AN IDEA

TO A RESEARCHER?

If we decide not to pursue patent protection/active

marketing, we may transfer commercialisation rights back

to a researcher.

In such cases, and only where any commercialisation

revenues are received, the researcher(s) must repay (out of

any commercialisation revenue they may receive) the costs

incurred by UniServices in the development, patenting or

marketing of the idea

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Commercialisation

WHAT HAPPENS DURING COMMERCIALISATION?

Most licensees continue to develop an idea to enhance

it, reduce risk, prove reliability and satisfy the market

requirements for adoption by customers. This can involve:

• additional testing

• prototyping for manufacturability

• durability and integrity

• development to improve performance and other

characteristics.

We often create documentation for training, installation and

marketing during this phase.

Benchmarking tests are often required to demonstrate the

product/service advantages and to position the product in

the market.

WHAT IS MY ROLE DURING

COMMERCIALISATION?

Your role can vary depending on:

• your interest in involvement

• the interest of the licensee in using your services for

various assignments

• any sponsored contract research related to the license or

any personal agreements.

WHAT WILL HAPPEN TO MY IDEA IF THE

START-UP COMPANY OR LICENSEE IS

UNSUCCESSFUL? CAN WE LICENSE THE

IDEA LICENSED TO ANOTHER ENTITY?

Licenses typically include performance milestones that

can result in termination if they are not met. This allows for

subsequent licensing to another business.

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Contract research

We manage all aspects of contracting and can help to deliver

both excellent research and contract requirements.

Commercial clients’ expectations are often very different

from public good grant funders. They are expecting service

and outputs equivalent to any other business-to-business

transaction. They may have a strong commercial view and

timeline that differs strongly from your work experience at

the university.

WHAT CONSTITUTES CONTRACT RESEARCH?

Commercial engagements include:

• testing and certification services

• academic consultancy

• summer projects/short-term student projects

• Masters and PhD projects

• contract research

• company co-location

• R&D partnerships

• service delivery contracts for education, social development

and public health.

WHAT SERVICES DO YOU OFFER?

Our services include:

• links to other research collaborators (external and internal)

• voice of market - links to industry, sector knowledge

and drivers

• client introductions and liaisons

• help industry and clients understand the value of academic

research and services

• find and access targeted funding opportunities

(government and industry-specific)

• navigating the tricky conversations (IP, contract

negotiations and pricing)

• managing commercial and contractual risk.

HOW LONG WILL THE CONTRACT PROCESS TAKE?

Each contract is different. Our aim is to move the process

along as quickly as possible while balancing the need for

speed with the need to meet everyone’s expectations and

requirements.

WHAT CONTRACT RESEARCH SERVICES

DO YOU PROVIDE?

In providing contracting services, we:

• document agreed expectations to avoid misunderstandings

• manage and insure against risk

• protect the rights and interests of the University, the

principle investigator or PI (this is you, the researcher) and

students

• determine what happens when things go wrong

• manage scope changes and variations to contracts.

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WHAT ARE THE BENEFITS TO WORKING

WITH UNISERVICES?

When it comes to managing the process, we offer you four

major benefits:

1. Contractual and legal matters. These include:

• liability

• warranties

• indemnities (no personal risk)

• insurance

• disputes

• termination clauses and provisions.

2. Day-to-day admin, including:

• pricing the work

• project costs

• invoices

• payments

• removing/mitigating conflicts of interest

• purchasing travel

• paying sub-contractors

• travel and company insurance.

3. Overheads at significantly lower costs than most individual

(or private consultancy) tax rates.

4. You have full and authorised use of your University of

Auckland facilities.

WHAT TYPES OF CONTRACTS ARE COVERED?

We provide assistance on various contracts, including:

• research agreements

• services agreements

• Institute of Professional Engineers New Zealand (IPENZ)

consultancy agreements

• student research project agreements

• inter-university subcontracts for Ministry of Business,

Innovation and Employment (MBIE), Health Research

Council (HRC) and Marsden sub-contracts.

WHAT IS THE CONTRACT RESEARCH PROCESS?

1. Identifying the scope: What is going to be delivered

(deliverables) and reported on, by when and by who

(outcomes).

2. Ensuring we cost and price the contract correctly:

• how much will the scope cost?

• what is the price (value) to the client?

3. What Intellectual Property is each party contributing and

who has access or ownership of any new Intellectual

Property.

4. Who has the right to publish and what are the restrictions.

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Contract research

Why undertake commercial research?

It provides money to fund research.

Government funding for basic research is reducing

and becoming harder to get. For example, access to

some grants funding (MBIE and Callaghan Innovation)

relies on established commercial relationships.

Commercial projects can provide the resources for Masters

and PhD students you might not otherwise be able to access

and they can offer opportunities for future employment.

It validates your idea and sets it on a commercial pathway.

Publicity and exposure can enhance the reputation of your research

and group/department. Again, this can lead to future opportunities

for funding, employment and further research projects.

Commercial projects often enable multi-faculty research,

offering new opportunities for further collaborative research.

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WHAT IS A LICENCE?

A license is permission granted by the owner of IP allowing

another party to act under all or some of the owner’s rights,

usually under a written license agreement.

WHAT IS A LICENCE AGREEMENT?

Typically, in written form, these describe the rights and

responsibilities related to the use and exploitation of IP.

UniServices’ licence agreements usually stipulate that the

licensee must diligently seek to bring the UniServices IP into

commercial use.

The agreement also seeks to provide a reasonable return to

UniServices.

HOW DO YOU CHOOSE A BUSINESS

TO BE A LICENSEE?

We choose licensees based on their ability to commercialise

the idea for the benefit of the public.

Sometimes, an established business with experience in

similar technologies and markets is the best choice. In other

cases, the focus and intensity of a start-up company is a

better option.

WHAT CAN I EXPECT TO GAIN

IF MY IP IS LICENSED?

You can expect a number of benefits including:

• further funding. We provide a share of any financial return

from a license provided to the researcher(s) and their

department or institute

• new and enhanced relationships with businesses that can

boost your teaching, research and consulting

• the satisfaction of knowing your ideas are deployed for

public benefit.

WHAT IS THE RELATIONSHIP BETWEEN

A RESEARCHER AND A LICENSEE, AND HOW

MUCH OF MY TIME WILL IT REQUIRE?

Most licensees need some active assistance from the

researcher for commercialisation efforts. This can range

from infrequent, informal contacts to a more formal

consulting relationship.

Working with a new business start-up can require

substantially more time, depending on your role with the

company and your continuing role within the university.

The University’s conflict of interest policies govern your

participation with a start-up.

WHAT OTHER TYPES OF AGREEMENTS

AND CONSIDERATIONS APPLY TO

TECHNOLOGY TRANSFER?

1. Non‑Disclosure Agreements (NDAs) are often used to

protect the confidentiality of an idea during evaluation by

potential licensees.

NDAs also protect proprietary information from third

parties you need to review as part of your research or

evaluation of research opportunities.

We enter into NDAs for UniServices proprietary

information shared with anyone outside UniServices.

2. Material Transfer Agreements (MTAs) are used for

incoming and outgoing materials at the university.

UniServices or the Research Office administer them.

These agreements describe the terms under which

University of Auckland’s researchers and outside

researchers may share materials, typically only for

research or evaluation purposes.

Materials used without a proper MTA can endanger IP rights.

Licence agreements

16

3. Inter‑Institutional Agreements describe the terms under

which two or more institutions (e.g., two universities) will

collaborate to assess, protect, market, license, and share

in the revenues received from licensing jointly owned IP.

4. Option Agreements or Option Clauses within research

agreements describe the conditions under which

UniServices preserves the opportunity for a third party to

negotiate a licence for IP.

A Sponsored Research Agreement to corporate research

sponsors at UniServices often includes option clauses.

We enter into option agreements with potential licensees

wishing to evaluate the idea prior to entering into a full

license agreement.

5. Contract Research Agreements describe the terms

under which sponsors provide research support to the

University of Auckland and UniServices. UniServices

negotiates these agreements.

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Marketing to find a licensee/contract research partner

HOW DOES UNISERVICES MARKET MY IDEA

AND RESEARCH?

Commercialisation Managers use many sources and

strategies to identify potential licensees and market ideas.

The two most useful strategies are relationships and

marketing.

The existing relationships that you hold, or that we have,

can be useful in marketing ideas or contract research.

Market research can help identify prospective licensees,

while faculty publications and presentations are often

excellent marketing tools.

We also examine other complementary ideas and

agreements to see whether we can leverage their approach

or experience.

HOW DO YOU FIND MOST LICENSEES

AND RESEARCH PARTNERS?

Research and consulting relationships are often a valuable

source of licensees. Studies have shown that the researcher

knew 70 per cent of licensees.

We also identify licensees through our existing relationships

here and around the world.

We attempt to broaden these relationships through

contacts obtained from personal networking and from

website inquiries, market research, industry events and the

cultivation of existing licensing relationships.

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HOW LONG DOES IT TAKE TO FIND A

POTENTIAL LICENSEE OR PARTNER?

It can take anywhere from months to years to locate a

potential licensee, depending on the attractiveness of the

idea and the size and stage of development of the market.

This is where you can benefit from our expertise and our

experience.

We invest in projects with commercial potential or that

can generate significant contract research opportunities in

order to speed up their development.

We can access funding and can invest 50/50 into projects

alongside the government’s Pre-Seed Accelerator Fund

(PSAF). We can guide you through the PSAF application

process.

HOW CAN I ASSIST IN

MARKETING MY IDEA?

Your active involvement can dramatically improve the

chances of matching an idea to an outside company.

Your research and consulting relationships are often helpful

in both identifying potential licensees and champions

within companies.

Once we identify interested companies, you are the best

person to describe the details of the idea and its advantages.

We get the most successful technology transfer results when

the researcher and the licensing professional work together

as a team to market and promote use of the idea.

CAN THERE BE MORE THAN ONE LICENSEE?

Yes. An idea can have multiple licensees, either non-

exclusively to several companies or exclusively to several

companies, each only for a unique use or area.

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Considerations for a start-up

WHAT IS A START-UP AND WHY

CHOOSE TO CREATE ONE?

A start-up is a new business entity formed to commercialise

Intellectual Property.

It’s an alternative to licensing the IP to an established

business. We take this path when either the idea has no

current market or we believe a new company will make a

substantial profit.

A few key factors when considering a start-up company are:

• development risk - often large companies in established

industries are unwilling to take the risk for unproven ideas

that the start-up is developing

• development costs versus investment return - can the

investors in the start-up obtain their needed rates of

return?

• potential for multiple products or services from the same

idea - few companies survive on one product alone

• sufficiently large competitive advantage and target

market - what benefit does the idea provide over market

competitors?

• are potential revenues sufficient to sustain and grow a

company?

We can help evaluate these and other factors.

WHO DECIDES WHETHER TO FORM A START-UP?

Forming a start-up is a decision we make with you. We

can then help you to meet investors, consultants, and

entrepreneurs, and access our expertise to help you found

the company.

We will then negotiate with a representative of the start-up

company (who should not be an employee of the University,

to avoid conflict of interest), to grant a license to the new

company. We advise you to gain an agreement regarding

your role with the start-up and have it reviewed by your

own legal advisor to ensure all personal ramifications -

including taxation and liabilities - are articulated and clearly

understood.

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Ownership of IP

WHO OWNS WHAT I CREATE?

The University of Auckland governs ownership of IP through:

• the University of Auckland Intellectual Property Created

by Staff and Students Policy:


• the Policy on Outside Activities Undertaken by

Academic Staff:

http://tinyurl.com/n3vbvt6

Ownership depends on your employment status as the

creator(s) of the idea and your use of UniServices or university

facilities. Considerations include:

• What is the source of the funds or resources used to

produce the idea?

• What was the employment status of the creators at the

time of creation?

• What terms of agreement relate to the creation of the IP?

WHO OWNS RIGHTS TO DISCOVERIES

MADE WHILE I AM CONSULTING?

The ownership of technologies made while consulting

for an outside company will depend on the terms of the

consulting contract. This is why it is so important to define

clearly the scope of work within consulting contracts and to

state clearly what happens to any new IP at the outset.

Contact our Operations Team who are available to help with

consulting and contract research agreements:

Contracts Operations Manager +64 9 373 7522

CAN A STUDENT CONTRIBUTE TO AN IDEA?

Yes. A student can even be the sole contributor or researcher.

The policy for ownership of an idea developed with or by

a student set out in the University of Auckland Intellectual

Property Created by Staff and Students Policy:


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Revenue distributions

HOW DO YOU DISTRIBUTE LICENSE REVENUES?

UniServices is responsible for managing the expenses

and revenues associated with idea agreements. We share

revenues from license fees, royalties and equity - minus any

unreimbursed patenting expenses - with the researcher(s)

and their department/institute. For purposes of revenue

distribution, we define researchers as named researchers

on patents or authors of copyrighted materials and any

other contributors specifically named in the Revenue

Sharing Agreement.

WHAT HAPPENS IF I RECEIVE EQUITY

FROM A COMPANY?

If you have/will receive equity directly from a licensee of

an idea, you will not usually also receive any of the equity

received by UniServices in connection with that license.

Equity includes shares, share options or warrants.

WHAT ARE THE TAX IMPLICATIONS OF ANY

REVENUES I RECEIVE FROM UNISERVICES?

License revenues or equity paid to researchers are generally

taxable. We recommend you consult a tax advisor for

specific advice.

HOW DO YOU DISTRIBUTE REVENUE IF THERE

ARE MULTIPLE RESEARCHERS AND/OR MULTIPLE

IDEAS IN A LICENSE?

We divide the researchers’ share of royalties among all

researchers (and any contributors) according to the sharing

arrangements set out in the relevant Revenue Sharing

Agreement.

HOW IS EQUITY FROM A LICENSE DISTRIBUTED?

We distribute the equity we receive under a license

agreement to researchers that are not receiving equity

directly from the licensee, in accordance with the Revenue

Sharing Agreement.

REINVESTMENTS AND RELATIONSHIPS

We reinvest revenue coming to UniServices entities into

additional research and education, fostering the next

generation of research, researchers and entrepreneurs.

Our new idea, transferred to industry, enhances industrial

competitiveness, brings new products and therapies to the

public, and creates economic development and new jobs

through our start-up companies.

The creation and deepening of company relationships

through these activities supports UniServices’ mission.

They result in additional research projects, broader

educational opportunities and collaborative investments,

and an enhanced ability to create, retain and share valuable

resources that contribute to our mission.

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Navigating conflict of interest

HOW DO THE UNIVERSITY AND UNISERVICES

DEFINE AND DEAL WITH CONFLICTS OF INTEREST?

The University of Auckland Policy on Conflict of Interest sets

out the relevant considerations and processes to follow in

relation to a conflict of interest. See:

http://tinyurl.com/kolaov4

WHAT KINDS OF ISSUES CONCERN CONFLICT

OF INTEREST REVIEWERS?

Examples include the appropriate and objective use of

research, the treatment and roles of students, supervision

of individuals working at both UniServices and a licensee

company, and conflict of commitment (i.e. your ability to

meet your UniServices obligations).

WHAT ARE EXAMPLES OF

A CONFLICT OF COMMITMENT?

A conflict of commitment may exist if duties, assignments

or responsibilities associated with an idea licence or outside

business arrangement have a negative impact on your ability

to meet commitments associated with your UniServices

employment or exceed the amount of time available to you

for these activities. The best approach is to fully disclose

your situation to your department head and discuss the

implications for your job responsibilities.

HOW DOES UNISERVICES MANAGE CONFLICTS

OF INTEREST?

UniServices can work with you and your Dean or Head of

Department to resolve or manage any conflict of interest.

It is your responsibility to disclose and document any

potential conflicts.

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Patents and other legal protection

WHAT IS A PATENT?

Patent claims are the legal definition of a researcher’s

protectable idea. A patent gives the holder the right to

exclude others from making, using, selling, offering to sell,

and importing any patented idea.

Note: A patent does not provide the holder any affirmative

right to use their idea, since it may fall under a broader

patent owned by others. Instead, your patent only provides

the right to exclude others from practicing it.

WHAT TYPE OF SUBJECT MATTER

CAN BE PATENTED?

Patentable subject matter includes processes, machines,

compositions of matter, articles, some computer programs,

and methods (including methods of making compositions,

methods of making articles, and even methods of performing

business).

CAN YOU PATENT A NATURALLY

OCCURRING SUBSTANCE?

Not in its natural state. However, a natural substance that

has never before been isolated or known may be patentable

in some instances, but only in its isolated form. A variation

of a naturally occurring substance may be patentable if

a researcher can demonstrate substantial non-obvious

modifications that offer significant advantages in using

the variant.

WHAT IS IPONZ?

IPONZ is the Intellectual Property Office of New Zealand.

It administers patents on behalf of the government. IPONZ

employs patent examiners skilled in all technical fields in

order to appraise patent applications and issues trademark

registrations.

WHO SHOULD BE NAMED AS AN INVENTOR

ON A PATENT AND WHO DETERMINES THIS?

An inventor is a person who takes part in the conception of

the ideas in the patent claims of a patent application. Thus,

inventorship of a patent application may change as the

patent claims change during the process of developing and

filing (prosecution) of the application. An employer or person

who furnishes money to build or practice an invention

is not an inventor. Inventorship may require an intricate

legal determination by the patent attorney prosecuting the

application.

WHO IS RESPONSIBLE FOR PATENTING?

UniServices contracts outside patent counsel for patent

protection, ensuring access to patent specialists in diverse

areas. Researchers work with the patent counsel in drafting

the patent applications and responses to patent offices in

the countries in which patents are filed.

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WHAT IS THE PATENTING PROCESS?

A patent attorney generally drafts patent applications.

They will ask you to review an application before it is filed

and ask you about inventorship of the application claims.

At the time an application is filed, UniServices will ask the

inventor(s) to sign a Deed of Assignment and a Revenue

Sharing Agreement. The Deed of Assignment formally

transfers ownership to UniServices. The Revenue Sharing

Agreement sets up the obligation for UniServices to return

a share of revenue to the researchers.

Usually the first step in the patenting process is to file an

application with a provisional specification at IPONZ. This

preserves the position in terms of documents that can be

cited against the application.

The application and provisional specification will expire

one year following the date of filing. If protection is still

required, we will need to file a Patent Cooperation Treaty

(PCT) application with a complete specification prior to

that expiry. A PCT application is a patent filed under the

Patent Co-Operation Treaty. While not a patent itself, the

PCT application allows applicants additional time (up to 30

months from the date of the filing of the application with

provisional specification) to determine where they wish to

seek protection.

We often also file the complete specification at IPONZ at

the time of filing the PCT. All going to plan, the complete

specification will form the basis of a New Zealand patent.

IS THERE SUCH A THING AS

A PROVISIONAL PATENT?

No. However, there is a provisional patent application,

described below.

WHAT’S DIFFERENT ABOUT

FOREIGN PATENT PROTECTION?

Patent rights are territorial in nature. A New Zealand

patent will only grant protection in New Zealand, and a US

application will only grant protection in the US.

Foreign patent protection is subject to the laws of each

individual country, although in a general sense the process

works much the same as it does in New Zealand. In most

countries, a researcher will lose any patent rights if he or

she publicly discloses the idea prior to filing of the first

(or priority) application in one country. In contrast, some

countries, notably the United States, have a one-year grace

period after publication by the inventor in which a patent

may still be filed.

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IS THERE SUCH A THING AS AN

INTERNATIONAL PATENT?

Although an international patent does not exist, an

international agreement known as the Patent Cooperation

Treaty (PCT) provides a streamlined filing procedure for

most industrialised nations. A PCT application is generally

filed one year after the corresponding application with

provisional specification has been submitted. A national

phase entry from the PCT application must later be filed in

the national patent office of any country where you wish to

seek patent protection, generally within 30 months of the

earliest claimed filing date.

WHAT DO WE GAIN BY FILING AN

APPLICATION UNDER THE PCT?

The PCT application provides two advantages:

1. It delays the need to file costly foreign applications until

the 30-month date, often after an applicant has the

opportunity to further develop, evaluate and/or market

the idea for licensing.

2. The international preliminary examination often allows an

applicant to simplify the patent prosecution process by

having a single examiner speak to the patentability of the

claims, which can save significant costs in prosecuting

foreign patent applications. The Paris Convention permits

a patent application filed in a second country (or a PCT

application) to claim the benefit of the filing date of an

application filed in a first country, provided that a so-called

“convention applications” is filed in foreign countries (or as a

PCT) within one year of the first filing date of the application.

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WHAT IS THE TIMELINE OF THE PATENTING

PROCESS AND RESULTING PROTECTION?

The time to obtain a granted patent varies greatly between

countries and between applications. Currently, the average

US patent application is pending for about three years,

though researchers in the biotech and computer fields

should plan on a longer waiting period. Once a patent is

issued it is enforceable for 20 years from the initial filing of

the application that resulted in the patent (usually the date

the PCT application was filed), assuming that maintenance

or annuity fees are timely paid.

WHY DOES UNISERVICES PROTECT

SOME INTELLECTUAL PROPERTY

THROUGH PATENTING?

Potential commercialisation partners (licensees) often

require patent protection to protect the commercial partner’s

often sizable investment required to bring the idea to market.

Due to their expense, patent applications are not possible

for all UniServices IP. We carefully review the commercial

potential of an idea before investing in the patent process.

However, because the need for commencing a patent filing

usually precedes finding a licensee, we look for creative and

cost-effective ways to seek early protection for as many

promising ideas as possible.

WHO DECIDES WHAT IS PATENTED?

While we discuss this with you, ultimately we make the final

decision about filing for a patent.

WHAT DOES IT COST TO FILE

FOR AND OBTAIN A PATENT?

Filing a regular PCT application may cost $15,000 - $20,000.

An issued patent in countries of interest may cost $20,000 or

more per country. Once a patent is issued, maintenance or

annuity fees are required to keep the patent alive.

WHAT IF I CREATED THE IDEA

WITH SOMEONE FROM ANOTHER

INSTITUTION OR COMPANY?

Generally, the idea will be jointly owned between UniServices

and the other institution or company. Each researcher will

assign their rights to their employer. We will work with the

other institution to decide on management of the idea.

Usually, if the other institution is a university or research

institution, we will make an inter-institutional agreement

that provides for one of the institutions to take the lead

in protecting and licensing the idea, sharing of expenses

associated with the patenting process and allocating any

licensing revenues.

WILL UNISERVICES INITIATE OR CONTINUE

PATENTING ACTIVITY WITHOUT

AN IDENTIFIED LICENSEE?

We often accept the risk of filing a patent application before

a licensee has been identified. After UniServices’ rights are

licensed to a licensee, the licensee generally assumes the

patenting expenses. Sometimes, we must decline further

patent prosecution after a reasonable period (often two or

three years) of attempting to identify a licensee.

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WHAT IS COPYRIGHT AND HOW IS IT USEFUL?

Copyright is a form of protection provided by the laws of various countries to the authors of original works of authorship. This includes literary, dramatic, musical, artistic, and certain other intellectual works as well as computer software. This protection is available to both published and unpublished works. The Copyright Act generally gives the owner of copyright the exclusive right to conduct and authorise various acts, including reproduction, public performance and making derivative works.

Copyright protection is automatically secured when a work is fixed into a tangible medium such as a book, software code, video, and so forth.

WHAT IS A TRADEMARK OR SERVICE MARK

AND HOW IS IT USEFUL?

A trademark includes any word, name, symbol, device, or combination, used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. In short, a trademark is a brand name.

A service mark is any word, name, symbol, device, or combination used or intended to be used in commerce to identify and distinguish the services of one provider from those of others, and to indicate the source of the services.

WHAT IS TRADEMARK REGISTRATION?

An application can be filed at IPONZ for formal protection of a trademark. IPONZ will decide whether the application is registrable (with input from the applicant) and may register the application.

However, it is not necessary to register a trademark to prevent others from infringing upon it. Trademarks can become protective through use by an organisation, even before registration.


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Auckland UniServices Limited

Level 10, UniServices House70 Symonds Street, Auckland

Private Bag 92019Auckland Mail CentreAuckland 1142New Zealand

+64 9 373 7522

www.uniservices.co.nz

guide for researchers

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