CONTRACT RESEARCH AND TECHNOLOGY TRANSFER AT THE UNIVERSIT Y OF AUCKL AND
Guide for Researchers
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.
UniServices’ role 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.
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.
“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
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Introduction
Policies
This guide takes you through the technology transfer process, from University policies on commercialisation to frequently asked questions.
The University of Auckland has three policies covering the creation of intellectual property (IP) and commercialisation activities:
UNISERVICES OFFERS:
• The University of Auckland Intellectual Property Created by Staff and Students Policy -
• 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. 2
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
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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Technology transfer - the nuts, bolts and IP
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
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
• new funding for your department/centre
• licenses include terms requiring the licensee to meet certain performance requirements and to make financial payments to UniServices, including contract research payments
• the ability to meet the obligations of a research contract
• we distribute a share of these payments to researchers
• a sense of personal fulfilment • recognition and financial reward
• become attractive to research sponsors • the creation of educational and employment opportunities for students • a company start-up. 4
HOW DO WE TRANSFER TECHNOLOGY?
• 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.
HOW DO I WORK WITH UNISERVICES?
Pre-disclosure
Contact us as soon as possible.
The sooner you call us, the sooner we can help you maximise
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.
your discovery for your benefit and protect your work.
Our staff can advise on:
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
• marketability
can evaluate and assess commercialisation options.
• funding sources
Use our electronic idea disclosure form:
• commercial partners
http://tinyurl.com/m5yvlac
• patenting and other protection methods
All disclosures are confidential.
• new business start-up considerations
Assessment
• the University’s policies and procedures
We partner you with a Commercialisation Manager
• contracting considerations with companies and investors.
and IP Advisor to review your disclosure and discuss commercialisation potential. This assessment may include
WHAT ARE THE T YPICAL STEPS IN THE PROCESS?
conducting patent searches, market analysis and any
Research
competitive ideas.
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.
This evaluation process guides our strategy to license to an
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”.
encourage third party interest in commercialisation. Patent
However, for this guide, both are handled similarly and we will refer to both technologies and inventions as ideas.
being granted. However, the first steps are easy and we take
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 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 care of the whole process. 5
Technology transfer - the nuts, bolts and IP Where patent protection isn’t available, we may need to rely on a design registration, copyright or trademark.
2. We pay all the costs associated with IP protection.
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 startup 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.
Marketing
Commercialisation
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.
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.
Two points to note: 1. UniServices manages over half of all patents filed by Universities in New Zealand. That’s expertise you can access.
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.
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Licensing
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.
The commercialisation process THE UNIVERSIT Y OF AUCKL AND
UNISERVICES
Academic Research
Technology Disclosure
REVENUE
Contract Research
Research Funding
Licensing
Royalties
Spin Out
IPO / Equity
Assessment
Publishing
Protection
Marketing
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Technology transfer - the nuts, bolts and IP HOW LONG DOES THE TECHNOLOGY TRANSFER PROCESS TAKE?
• respond to UniServices and outside patent counsel requests
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:
- 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
• the nature of the idea
• keep us informed of upcoming publications or interactions with companies related to your intellectual property.
• 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: http://tinyurl.com/m5yvlac 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 8
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.
Idea disclosure 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: http://tinyurl.com/m5yvlac 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 SUBMIT TING 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.
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: http://tinyurl.com/m5yvlac 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
Even if you’re doubtful, still contact us. We can advise you on your options.
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Assessment of an idea disclosure HOW DOES UNISERVICES ASSESS
Some ideas lend themselves to non-exclusive licensing,
IDEA DISCLOSURES?
such as licensing to multiple third parties. Others will only
Commercialisation Managers and IP Advisors work together
reach the marketplace, and therefore the public, if licensed
to examine each idea disclosure to review:
on an exclusive basis.
• the opportunity to leverage the idea for a research
We will try to accommodate your wishes, but we
contract with a client • the novelty of the idea
required to determine
the
most
appropriate
commercialisation strategy.
• competing ideas
HOW DO WE DECIDE WHETHER TO
• protectability and marketability of potential products or
COMMERCIALISE WITH A TRADITIONAL OR
services • relationship to related intellectual property (IP). IP is the
OPEN SOURCE LICENSE FOR SOFTWARE? We support university software developers who choose to
product of the human creative process. It may be a new
license their programs through open source mechanisms.
idea, concept, knowledge, technology or a brand and
We retain the right to distribute the program freely 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.
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are
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
IF I BELIEVE THAT ALL IP SHOULD BE LICENSED
to a researcher.
NON-EXCLUSIVELY TO ALL POTENTIAL USERS
In such cases, and only where any commercialisation
FOR THE PUBLIC GOOD, WILL UNISERVICES
revenues are received, the researcher(s) must repay (out of
HONOUR MY REQUEST?
any commercialisation revenue they may receive) the costs
Your Commercialisation Manager will work with you to
incurred by UniServices in the development, patenting or
develop the appropriate strategy for your idea.
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:
Licenses typically include performance milestones that can result in termination if they are not met. This allows for subsequent licensing to another business.
• additional testing • prototyping for manufacturability • durability and integrity • development to characteristics.
improve
performance
and
other
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.
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WHAT WILL HAPPEN TO MY IDEA IF THE START‑UP COMPANY OR LICENSEE IS UNSUCCESSFUL? CAN WE LICENSE THE IDEA LICENSED TO ANOTHER ENTIT Y?
Contract research We manage all aspects of contracting and can help to deliver both excellent research and contract requirements.
• help industry and clients understand the value of academic research and services
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.
• find and access targeted funding (government and industry-specific)
opportunities
• navigating the tricky conversations negotiations and pricing)
(IP,
WHAT CONSTITUTES CONTRACT RESEARCH?
HOW LONG WILL THE CONTRACT PROCESS TAKE?
Commercial engagements include:
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.
• 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:
contract
• managing commercial and contractual risk.
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.
• links to other research collaborators (external and internal) • voice of market - links to industry, sector knowledge and drivers • client introductions and liaisons
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Contract research 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.
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?
• pricing the work
1. Identifying the scope: What is going to be delivered (deliverables) and reported on, by when and by who (outcomes).
• project costs
2. Ensuring we cost and price the contract correctly:
• invoices
• how much will the scope cost?
• payments
• what is the price (value) to the client?
• removing/mitigating conflicts of interest
3. What Intellectual Property is each party contributing and who has access or ownership of any new Intellectual Property.
2. Day-to-day admin, including:
• 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.
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WHAT T YPES OF CONTRACTS ARE COVERED?
4. Who has the right to publish and what are the restrictions.
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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Licence agreements WHAT IS A LICENCE?
WHAT IS THE REL ATIONSHIP BETWEEN
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.
A RESEARCHER AND A LICENSEE, AND HOW
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.
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 T YPES 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.
WHAT CAN I EXPECT TO GAIN IF MY IP IS LICENSED?
We enter into NDAs for UniServices proprietary information shared with anyone outside UniServices.
You can expect a number of benefits including:
2. Material Transfer Agreements (MTAs) are used for incoming and outgoing materials at the university. UniServices or the Research Office administer them.
• 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. 16
MUCH OF MY TIME WILL IT REQUIRE?
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.
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 ANDÂ RESEARCH?
HOW DO YOU FIND MOST LICENSEES ANDÂ RESEARCH PARTNERS?
Commercialisation Managers use many sources and strategies to identify potential licensees and market ideas.
Research and consulting relationships are often a valuable source of licensees. Studies have shown that the researcher knew 70 per cent of licensees.
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.
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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.
HOW LONG DOES IT TAKE TO FIND A POTENTIAL LICENSEE OR PARTNER?
HOW CAN I ASSIST IN MARKETING MY IDEA?
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.
Your active involvement can dramatically improve the chances of matching an idea to an outside company.
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.
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 nonexclusively to several companies or exclusively to several companies, each only for a unique use or area. 19
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.
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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.
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: http://tinyurl.com/m77fe6v • 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.
CAN A STUDENT CONTRIBUTE TO AN IDEA?
Contact our Operations Team who are available to help with consulting and contract research agreements:
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:
Contracts Operations Manager +64 9 373 7522
http://tinyurl.com/m77fe6v
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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 EQUIT Y 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 EQUIT Y 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 REL ATIONSHIPS 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 UNIVERSIT Y AND UNISERVICES DEFINE AND DEAL WITH CONFLICTS OF INTEREST?
WHAT ARE EXAMPLES OF A CONFLICT OF COMMITMENT?
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:
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.
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).
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. 23
Patents and other legal protection WHAT IS A PATENT?
WHAT IS IPONZ?
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.
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.
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 T YPE OF SUBJECT MAT TER 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.
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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.
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.
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.
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.
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Patents and other legal protection 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
WHAT DOES IT COST TO FILE
PROCESS AND RESULTING PROTECTION?
FOR AND OBTAIN A PATENT?
The time to obtain a granted patent varies greatly between
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.
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 PROPERT Y 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
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.
potential of an idea before investing in the patent process.
WILL UNISERVICES INITIATE OR CONTINUE
However, because the need for commencing a patent filing
PATENTING ACTIVIT Y WITHOUT
usually precedes finding a licensee, we look for creative and
AN IDENTIFIED LICENSEE?
cost-effective ways to seek early protection for as many
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.
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.
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Patents and other legal protection 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 ANDÂ 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. 28
Auckland UniServices Limited
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