The University of Sydney © 2003

Commercialising Research and Protecting Intellectual Property

Commercialising Research and Protecting Intellectual Property

Kevin W L Croft

Deputy Director

Business Liaison Office

Kevin W L Croft

Deputy Director

Business Liaison Office

The University of Sydney © 2003

What is Intellectual Property?What is Intellectual Property?

Intellectual Property (“IP”) is that set of mental creations that have been reduced to some tangible form together with the legal rights which adhere to them.

The University of Sydney © 2003

Why do universities commercialise the outcomes of research?

Why do universities commercialise the outcomes of research?

So that the outcomes of research are applied for public good;

to reward, recruit, and retain faculty and students;

to forge closer ties to industry; to promote economic growth; and, to generate income.

The University of Sydney © 2003

Research Contract IssuesResearch Contract Issues

Defining the scope of the research Costs and charges Project management IP management Warranties Limitations of liability

The University of Sydney © 2003

IP Licence / Assignment Contract IssuesIP Licence / Assignment Contract Issues

Defining the IP Warranties

Fitness Ownership No third party IP infringement

Liabilities

The University of Sydney © 2003

Extra-contractual RiskExtra-contractual Risk

Other IP Inventorship IP ownership

Employees, Students and Others Disclosure before IP protection Disclosure in the due diligence process Product liability

The University of Sydney © 2003

Risk managementRisk management

The Intellectual Property Policy The Invention Disclosure process Reviewing the prior art Monitoring publications Standardisation of contracts “Best reasonable endeavours”

The University of Sydney © 2003

QuestionsQuestions