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Intellectual Property &

Commercialisation

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What is Commercialisation?

Conversion of new ideas, innovations, and basic research into valuable and useful commercial

products

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Why Commercialise research?

• So society can benefit from research and innovation • E.g. New pharmaceuticals, diagnostics, devices and other hi-

tech products • New companies and industries

• Financial benefit to Universities and Inventors

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What do ‘Commercial Arms’ do?

• Aim • link industry with research on behalf of the University

• Manage

• commercial strategy • contract negotiation • project/contract management

• Skill set

• science, marketing, accounting, business and law

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Market Validation

• Who will buy the technology? • What do they currently use? • Why is this technology better? • What will they pay for it? • Is it easy for them to adopt or is it

disruptive? • What are the key barriers to entry? • Will we make a return on our investment?

• Ideas need applications

• Involve the market early

• Value chain- who are the key players and where will this product

fit?

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Key market issues

“If you are going to succeed, you need a vision, one that’s affordable, practical and fills a customer need. Then go for it. Don’t worry too much about the details”

Michael Bloomberg

Case Study: FTA®

•Professor Leigh Burgoyne, Flinders University

•Needed to safely collect, store, transport and analyse blood DNA.

•Significantly improved & compatible

•Developed chemically impregnated paper technology

• Blotting paper + • SDS • EDTA • Urate

The Story of FTA®

The Story of FTA®

Flinders Technologies consulted about invention. FT performed detailed patentability and market evaluation (Due Diligence)

• novelty, inventiveness • potential infringement • market research (size, viability and other technologies -

PCR). • Financial models/valuations

The Story of FTA®

•Target market – US Forensic market

•Store DNA used in identification of suspects/victims

•US companies initially nervous too early: risky, market not yet developed.

The Story of FTA®

• FITZCO Inc. - DNA blotting paper for the ‘DNA Registry’

• FITZCO signed CDA & analysed ‘Flinders Paper’

• FT / Fitzco executed a licence

• FTA® Trademark registered

• FITZCO made and sold FTA® paper

The Story of FTA®

The Story of FTA®

•Feed-back to Flinders = new products, methods & IP.

•FT had 13 FTA® patents

•FTA® approved by US Postal Service

•Difficult for competitors to copy FTA®

•Added value to the FTA® patent portfolio

The Story of FTA®

The Story of FTA®

FTA® GeneMachine

•FT sold the FTA® portfolio to Whatman plc.

•Whatman provided significant funds to FT

•Funds shared with University and Inventor

•Whatman re-classified as Biotech company

•Whatman distribution deal with Qiagen Inc.

The Story of FTA®

FTA®: model example of University technology commercialisation

•Dr David Currow repurpose Kapanol™ for chronic breathlessness

•Phase II clinical trial; IP

•Partnership + license with Mayne Pharma

•Phase III clinical trial; TGA, FDA filings

The Story of Kapanol™

•Talking-Head research program

•Virtual Agent for Health & Care services

•Anna Cares Avatar

•Compliance

•Venture Capital

The Story of Clevertar®

•Circadian rhythms research program; Prof Leon Lack

•Insomnia, Jet-lag, Shift work

•Light therapy glasses

•SMR Partnership

•World wide sales

The Story of Re-Time®

What is Intellectual Property?

Creations of the mind

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Types of IP?

Patents - inventions Trade marks - words, symbols, pictures, sounds Trade secrets - secret know-how and other confidential information Copyright - literary, artistic, dramatic or musical works Designs - shape or appearance of goods Plant breeders rights - new plant varieties Circuit layout - integrated circuits, computer chips

What is Intellectual Property?

• Exclusive property rights, recognised by law, for intangible creations of the mind.

• Currency of the new century

Why Protect IP?

• Promote Innovation

• Incentive to invent

• Encourage economic growth

• Moral right to fruits of own labour

• Attract investment

Multiple Types of IP at Once

“As a publicity, marketing, and intellectual property protection strategy started by Robert W. Woodruff, the company presents the formula as a closely held trade secret known only to a few employees.”

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• Distinguish good or service of one trader from another • Word, logo, shape, colour, sound, smell

• Can be registered or unregistered • e.g. Nike® vs. NikeTM

Trademarks

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Copyright ©

• Copyright Literary or artistic works (computer programs)

• Governed by Common Law and Copyright Act 1968

• Registration No

• Period of Protection 50 years after creators death

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Registered Designs

• Design • means feature of shape, configuration, pattern or ornamentation

applicable to an article judged by the eye

• Governed by • Designs Act 2003 (Cth) and common law

• Registration

• IP Australia etc.

• Period of Protection • 16 years

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Trade Secrets

• A device, method or formula that gives one an advantage over the competition and which must therefore be kept secret if it is to be of special value

• Governed by: • Common Law

• Registration:

• No

• Period of Protection: • Indefinite monopoly provided secrecy is maintained

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Patents

• Novel & Inventive & Non-obvious • A product, composition, or process

• Be useful & do what you say it will do

• Are expensive

• Exclusive property rights

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Patents

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Patents

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Patents & Research

• Aim to stimulate research

• The 20 year monopoly incentive

• No investment = no high tech industries

• Patents stimulate wealth

• Wealth stimulates investment in research

IP rights (+ associated customers) = 70-90% value of modern business

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IP Ownership

Student

Staff

Contractor