What is technology transfer?
In the context of the University, technology transfer is the process of transferring skills, knowledge and/or discoveries created by researchers (hereafter termed creators) out to government or business, to support and create new goods and/or services. The University undertakes technology transfer to deliver impact to society from the research undertaken by staff. For technology transfer to be effective and successful is essential that the creator(s) be fully engaged and work with Innovation ANU staff throughout the process.
The process of technology transfer is seldom linear, although often depicted that way, and success is dependent on the creators and their Tech Transfer Manager being collaborative and open with each other, flexible in their thinking, and prepared to engage in a multifaceted project that will involve IP protection, market and technical assessment, sales and marketing, contract negotiation, and above all relationship management.
Why should a creator consider technology transfer?
The reasons and motivations are different for each creator, but may include:
- Making a positive impact on society
- Sense of personal fulfilment
- Helping their research achieve broader reach and impact
- Creating educational and job opportunities for students
- Contributing to a positive entrepreneurial culture at ANU
- Personal career growth and development
- Generating additional funding (lab, school and at college level)
- Strengthening the University’s education and research programs
- Enhancing the University’s reputation
- Opportunities to interact not only with academic peers but with potential industry partners, investors and entrepreneurs (both on and off campus)
- Potential for personal financial benefit
- Participating in ‘use inspired’ research by solving key industry challenges and problems
- Showcasing individual, group or University-wide skills and expertise
How does Innovation ANU support the technology transfer process?
Innovation ANU, which sits within the Research and Innovation portfolio at ANU, works with creators, ANU Legal, Research Contracts Team, College Business Development Managers (BDMs), outside patent counsel and technical advisors to:
- Identify, evaluate and transfer IP from ANU to the commercial world (government or business) to develop products and services for the benefit of society.
- Maintain and build a network of partners (businesses and investors) to support the technology transfer. Work closely with IP attorneys and other stakeholders to protect ANU IP including patenting.
- Help creators’ source financial resources for proof-of-concept studies and prototype development.
- Work with entrepreneurial staff to establish start-up companies to commercialise ANU IP.
- Provide a suite of training programs on IP management, commercialisation, entrepreneurship and industry engagement.
What is the creators’ role during the technology transfer process?
Innovation ANU works closely with creators, and their input is essential in all stages of the technology transfer process. In essence, the creators have produced the ‘product’ or ‘service’ that Innovation ANU are trying to ‘sell’ so they are best placed to answer technical questions related to the invention. Creators are also likely to be able to provide unique insights into the relevant markets, or have already developed relevant industry contacts (through their research) that may translate into potential partners who would be interested in licensing the invention.
The creator’s role can essentially be broken down into four main areas:
- Tell Innovation ANU about the invention: Complete and submit the online Innovation ANU Invention Disclosure Form.
- Keep Innovation ANU staff informed: Let us know about what is going on including significant invention developments, upcoming publications, disclosures or grant applications, changes in priorities, changes in employment status, interactions with companies/industry contacts that are related to the invention, and participation of new personnel (e.g. visiting fellows, students, volunteers) on the research project, and more.
- Respond to Innovation ANU staff on a range of matters over the life of the project: It is essential that creators actively engage with the technology transfer process – the Tech Transfer Managers cannot progress without creator involvement. Creators will need to get involved in patent filing activities and interactions with the patent office’s post filing. Creators will need to make themselves available to participate in meetings with potential partners. Creators will need to review marketing documents and draft version of contracts. If a research contract is established with an industry partner or proof-of-concept funding is received, creators will need to provide milestone reports and meet the agreed deadlines. Technology transfer is a long-term project that will require ongoing commitment from creators, over months and years, even if they leave the University.
- Maintain commercial integrity of the invention: Be aware that any unintentional disclosure of the invention in conversations not covered by a non-disclosure agreement (NDA) or intentional disclosures of the invention in publications, prior to formal IP protection may jeopardise the commercial opportunity. Creators are strongly encouraged to discuss all potential disclosures of their invention with Innovation ANU prior to disclosure.
What does the technology transfer process look like?
A key objective of the technology transfer process at ANU is to create a continuous cycle in which transferring intellectual property (IP) to a partner creates a relationship with that partner, resulting in future funding opportunities for research and innovation (see Figure 1).
Observations and experiments during research activities often lead to discoveries and inventions. An invention is a unique or novel device, method, composition or process. An invention may have been created when something new and useful has been conceived or developed, or when unusual, unexpected or unobvious research results have been achieved which can be utilised in a commercial way.
An invention disclosure is a confidential document written by creators, which functions as a written notice of the invention to Innovation ANU. The invention disclosure (see Section 2) should fully describe the novel aspects of the invention, the critical solution it provides, and its advantages over existing technologies/products.
Invention assessment is the most important step in the commercialisation process. It is critical, before embarking on a commercialisation project, to determine if the invention is in fact new and there is sufficient market interest to proceed with investing in IP protection, product development and marketing. Innovation ANU performs the assessment in conjunction with the creators, outside counsel and/or advisors as appropriate.
Intellectual property (IP)
Where appropriate Innovation ANU will engage outside counsel to pursue IP protection. Forms of IP protection include patenting, copyright, trademark registration and preservation of trade secrets (see Section 3 & Section 4).
Innovation ANU proactively approaches companies, entrepreneurs and investors who have been identified as potentially suitable partners to help bring the invention to market. Innovation ANU displays available inventions on the ANU website and at exhibitions, tradeshows and conferences (see Section 5).
Marketing activities will hopefully result in a party (or parties) being interested in obtaining rights to use the invention. The preferred partner will be identified and this decision is based on a range of factors including their location, the relationship that can be established (or is established) with the partner, the partner’s capacity to take the product or service to market, and the capacity of the partner for ongoing engagement with the University. Initially, a non-disclosure agreement (NDA) will be signed so that potential partners can learn more about the invention. Teleconferences and face-to-face meetings enable a relationship to grow to the benefit of both parties.
Innovation ANU, with the creator’s support, will negotiate business terms with the selected partner. The type of agreement negotiated will depend on the specific circumstances but may include collaborative research to further develop or evaluate the IP as well as transfer of IP rights (generally a license) to enable the partner to undertake commercial development of the product or service. In return for the IP rights the partner will provide a financial benefit to the University, the form of which may include fixed fees, milestone fees, royalties, equity and other benefits. Alternatively, if the creators want to establish a start-up company, Innovation ANU will work with the creators and their advisors to transfer the relevant IP rights to the start-up company. Information regarding start-up companies established from University IP is contained in a separate handbook.
Product development & sales
The partner will invest time, funding and other resources towards the commercialisation of the invention and the time required will vary depending on the type of product or service and the stage of development. Once a product and/or service is on the market and the University starts to receive income from the partner it will be shared in accordance with the relevant ANU policy effective at the time of signing the agreement (refer to ANU IP Protection and Commercialisation Policy).
In addition to the support outlined above, Innovation ANU also coordinates a range of workshops and other training for creators around commercialisation, innovation and entrepreneurship. Innovation ANU is connected and can introduce creators to a number of innovation networks and opportunities present in the ACT and beyond, and a Tech Transfer Manager can also assist creators with the submission of grants/funding options specific to commercialisation projects (see Section 6).
How long does the technology transfer process take?
The process of protecting the IP, finding the right partner, negotiating a license, and getting a product/service to market will take months to years to complete. The amount of time depends on a number of things:
- The development stage of the invention (often University inventions are too early stage to attract industry investment);
- The market (size, need and strength) for the invention;
- Competing technologies (current and future);
- The amount of work needed to bring a new concept to the marketplace; and
- The resources of the licensee.
Be aware, that despite best efforts it is not always possible to successfully commercialise University inventions.
Does public disclosure impact upon one’s ability to undertake technology transfer activities?
YES. Once research results have been disclosed in the public realm, the ability to protect the related invention is significantly reduced. Innovation ANU strongly encourages creators to submit an invention disclosure well before any public communication or disclosure of the invention, to enable the best chance of protecting the IP. Once publicly disclosed (published or presented in some form), an invention may have restricted or minimal potential for patent protection and the invention can no longer be treated as a trade secret (particularly important for software inventions - information regarding software inventions established from University IP is contained in a separate handbook). A patent cannot claim something that already exists, nor can it claim something obvious. To determine this, patent examination always involves looking for prior art, i.e. earlier publications that may mean that the invention is not new or is obvious.
What is classified as a public disclosure?
Public disclosing is any sharing of IP in any form that is not covered by a confidentiality agreement. This includes, but is not limited to:
- Creators speaking about their research at a conference
- Presenting research results in a presentation/poster at a conference
- Publishing research results in a journal
- Manuscript submission to some journals wherein reviewers are not bound by confidentiality obligations
- Creators discussing their research with external parties (e.g. old peers/colleagues from other organisations) without having an appropriate NDA in place
- Creators presenting their research in a seminar or poster session - both on or off campus
- Posting or publishing of a student thesis
- Applying for some grants (some grant applications are not kept confidential)
- Submitting grant progress reports (some grant reports are accessible to the public)
- Open-sourcing software (information regarding software inventions established from University IP is contained in a separate handbook)
- Transferring scientific materials without the use of a materials transfer agreement (MTA)
- Posting messages anywhere online describing the invention, e.g. websites, blogs, ANU media releases, etc.
- Selling a prototype of the invention (put on sale)
If unsure whether or not a scheduled upcoming activity falls under the category of a public disclosure, creators can contact Innovation ANU for clarification.
What is safe disclosing?
Until the IP is protected, creators need to be mindful not to inadvertently disclose information about their invention. Below are some tips for safe disclosing:
- If appropriate, file a patent application first.
- If creators do want to discuss their project, omit enabling details about the invention - talk about what the invention can achieve, rather than how it will achieve it.
- When applying for grants, check on the grants’ website to see if the applications are kept confidential. Many grants will specifically state “do not include confidential or proprietary information in your application”, which in effect means that the applications are not kept confidential.
- Ask any collaborators, or other interested third parties (i.e. any non-ANU personnel including visitors and students) to sign a non-disclosure agreement (NDA) prior to discussing the research project/results. Innovation ANU can help creators put an NDA in place.
- In publications, omit the last sentence (or maybe the last two sentences) wherein it is speculated what the results might mean, “This data suggests . . .” as this may make the next 1-3 years’ worth of work obvious to a patent examiner.
Can creator’s still publish research results whilst pursing commercial pathways?
Innovation ANU recognises that publications are a key performance measure for academic careers and as such we will work with creators to balance the need to publish with technology transfer activities. Publishing the research and protecting the commercial value of the IP are not mutually exclusive. Draft manuscripts often form the basis of a patent application draft. Likewise, the experimental/data requirements of a patent application (see Section 4) can often be integrated into publications. Publication of the research behind an invention is a great way to let companies know about it and to demonstrate internal capabilities. In other words, creators can both publish a paper and file for a patent, but the paper needs to be published after the filing of the patent application. The best practice is to publish once the patent application reaches the PCT stage (~12 months after the initial patent application filing); however, Innovation ANU recognises that this length of publication delay is not always possible.
Creators with filed patent applications are strongly encouraged to submit any draft manuscripts (related to the invention outlined in the patent application) to Innovation ANU for review, prior to submitting to a journal for publication. This is because new research results may need to be incorporated into the patent application, either via a redraft of the initial application or via the filing of a second application, so that all aspects of the invention are protected.
What agreements are used in the technology transfer process?
There are a number of different types of agreements used in the technology transfer process - we have listed some of the most common here. The terms and conditions covered by the different types of agreements have been outlined in Table 1.
Table 1: Terms and conditions typically covered by different agreement types
|Agreement type||Exchange of CI||Exchange of materials/IP||Testing/use of IP||IP ownership||Commitments/resources||Licensing revisions||Future agreement provisions||Benefit sharing|
|NDA or CDA||✓|
|Data usage or data sharing||✓||✓||✓||✓||*|
|MOU or Letter of Intent||✓||✓||✓||*||*||✓||✓|
|Services or consultancy||✓||✓||✓||✓||✓||*|
Please note that ANU researchers are not authorised to sign any of the agreements discussed in this section. The appropriate ANU delegate (i.e. person with the authority to sign the agreement on behalf of the University) for such agreements may be the DVCRI, PVCI, Director of the Technology Transfer Office, School Dean, School Director, School Manager, or other. See ANU’s Delegations Framework for more information.
Non-Disclosure Agreement (NDA)/Confidentiality Agreement (CDA)
These agreements are used in the exchange of confidential information between two or more parties. The agreement should define what information is to be shared and outline restrictions on its use. The agreement can be one-way or two-way. This type of agreement is commonly used when the parties wish to enter into discussions about a specific process, method or invention, for the purpose of determining the potential for a future relationship. Currently, the appropriate ANU delegate for NDAs is the DVCRI, PVCI or Director of the Technology Transfer Office. Agreements should be sent to email@example.com to be reviewed and executed. In some instances, changes will be requested to protect the interests of the University and the creators.
Material Transfer Agreements (MTAs)
MTAs are used in the exchange of tangible research materials. MTAs are a legal contract that allows for the exchange of materials, such as chemicals, software, plant- and animal-derived material, or research animals, between universities and other organisations for research purposes. It is important to document carefully from whom and under what conditions the outside materials were obtained, as this may impact the ownership rights of a subsequent invention. Currently, the appropriate ANU delegate for MTAs is the DVCRI, PVCI or Director of the Technology Transfer Office. Agreements should be sent to firstname.lastname@example.org to be reviewed and executed. In some instances, changes will be requested to protect the interests of the University and the creators.
An evaluation agreement is a contract in which one party (in this case ANU) submits an idea, product or service, i.e. an invention, to another party, and the other party promises to evaluate it. After the evaluation, the evaluator provides the other party with a report that documents the evaluation results. These results can then be used internally to improve upon the invention. If the invention is ‘fit to purpose’ (good enough to do the job it was intended to do) then the evaluator may be willing to enter into an agreement to exploit that invention.
Data usage/sharing agreements
Data usage/sharing agreements are used when there is a requirement to use data from one system in another system. It is a formal contract that clearly documents what data is being shared and how that data can be used. Such an agreement serves two purposes: (i) it protects the institution providing the data, ensuring that the data will not be misused and (ii) it prevents miscommunication on part of the provider of the data and the institution receiving the data by making certain that any questions about data use are discussed. Terms addressed in a data sharing agreement include period of agreement, intended use of the data, constraints on use of the data, data confidentiality, data security, methods of data sharing, and the financial costs of data sharing.
Inter-Institutional Agreements (IIAs)
IIA’s are typically used when two or more institutions, e.g. two universities, jointly own IP. The purpose of this agreement is to increase efficiency and to clarify procedures in order to prevent or limit conflicts amongst the institutions. The IIA describes the terms under which the institutions will cooperate to assess, protect, market, license and revenue share the jointly owned IP.
Options, term sheets, MOU’s/Letters of Intent
Option agreements (or option clauses within research agreements) describe the conditions under which the University grants a right (for a limited period of time) for the option holder to negotiate a license for ANU-owned IP. Simply put, an option is a promise which meets the requirements for the formation of a contract and limit’s the promisor’s power to revoke an offer. Option clauses are common to research agreements, so that the corporate partner obtains an exclusive, contractual first right to negotiate a license to any IP that is generated during the funded research.
A term sheet is a nonbinding agreement setting forth the basic terms and conditions under which the University may license IP to an outside party. A term sheet often serves as a template to develop a more detailed, legally binding document, such as an IP license agreement. A term sheet lays the groundwork, ensuring that the parties are in general agreement on most of the major aspects of the future potential license deal. A term sheet should state that it is ‘non-binding’ so that the parties are not inadvertently bound to the terms under negotiation before final agreement is reached.
A Memorandum of Understanding (MOU), also known as a Letter of Intent, is a formal document describing the broad outlines of an agreement that two or more parties have reached through negotiations. It is not legally binding, but signals the intention of all parties to move forward with a contract/agreement. Generally the terms of a MOU are broad and non -specific hence the need for a more detailed formal agreement at a later stage.
To establish the correct expectations for the research agreement, creators should refer to the ‘IP Decision Framework’, ’Project Road Map’ and ‘Statement of Work’ documents available from Innovation ANU. The IP decision framework can be used along with the template agreement to determine the most suitable IP arrangements for a particular project. The IP decision framework (i) ensures that decisions are in-line with University principles, (ii) enables consistency across units, (iii) allows creators to have something to direct industry partners to when considering a project, (iv) provides confidence in decision making and negotiations, and (v) provides explanations to industry partners about the reason for ANU’s position. The project road map plots out industry partner requirements and how a pipeline of potential projects could be funded. The project road map is to be prepared by the academic/group and should be based on the needs, time/funding requirements and priority of the industry partner. The statement of work is a template designed to assist with the development of industry funded contracts to support IP arrangement decision making. The statement of work is to be prepared by the ANU team (academic/group along with support from relevant University offices) agreed on, with the industry partner.
A number of different research agreements can be used, depending on the situation, e.g. Sponsored Research Agreement, Collaborative Research Agreement, Master Research Agreement, and so on. These types of agreements are typically negotiated by the Research Contracts Team, with Innovation ANU and ANU Legal assisting the process when needed, e.g. when legal, IP and industry terms of engagement advice is required.
If research is funded by an industry partner (or some government agencies) creators may be required to submit an invention disclosure to Innovation ANU within a certain time period, in order for ANU to own the rights in the IP resulting from the research. As such, it is wise for creators to familiarise themselves with these aspects of any agreements they are working under.
These types of research agreements will usually contain provisions pertaining to IP. Often the University will own the IP rights resulting from the industry-funded research, but must provide the partner a limited time to negotiate a license for any IP developed under the specific scope of work that the partner funded. The partner generally will not have contractual rights to discoveries that are clearly outside the scope of the research. It is for this reason, that it is important to clearly define the scope of work within a research agreement.
Research services agreements
Contract Research or Research Services Agreements are used when a partner wants a researcher(s) to undertake a defined piece of research and they will pay all cost associated with that effort. Where the partner is covering all costs, they will also own the resulting IP and are less likely to agree to any royalty or other benefit sharing from the future commercialisation of that IP. It is also likely that there will be greater publication restrictions. Innovation ANU does not recommend that students be involved in research services arrangements (see Section 3 Staff vs. Student)
The contents of a Research Services Agreement varies according to the services provided, the relationship of the University/researcher(s) and partner, and the contents/assets of the proposed project, but typically address: confidentiality, delivery of services, dispute resolution, inspection and testing, IP, outsourcing restrictions, non-circumvention, payment, quality of services, period of agreement, and termination.
License agreements describe the rights and responsibilities related to the use and exploitation of IP developed by ANU by the party obtaining the license. When IP is licensed ownership is retained by the University and only the right for use is transferred. License agreements can be exclusive or non-exclusive.
What is an exclusive license?
An exclusive license is one where the licensee if given the right to commercialise the IP to the exclusion of all others, including the licensor (in this case ANU). Under an exclusive license, ANU remains the owner of the IP and a financial return is negotiated, to be paid by the company to the University. A license is also granted to the University for the right to use the IP for non-commercial research and education.
What is a non-exclusive license?
A non-exclusive license gives the licensee the right to commercialise the IP, but not to the exclusion of all others. The benefit of this is that the rights can be granted to multiple parties at once ensuring broad use of the technology, however, a non-exclusive license may not be attractive to the commercialisation partner and multiple licensees can be challenging to manage.
What kinds of things can be licensed?
Generally licenses include a grant of rights to a form of IP such as a granted patent or pending patent application, a piece of copyright, software code, a device prototype, a tangible research material or reagent, a defined data set, etc. Because know-how often exists in the creator’s mind and skillset, ANU will generally try and avoid licensing know-how and if licensed, licensing of know-how is typically done solely on a non-exclusive basis and only where it can be reduced to a tangible form. Know-how may also be transferred by establishing a formal invention/technology exchange period where the parties work together to transfer the knowledge from the University to the company.
IP assignment agreements
Under an Assignment Agreement ownership of the IP is transferred from the University to the commercial partner. The University will not assign IP rights to third parties except under specific circumstances.
» Go to next section: Section 2: Invention disclosure - Submission & evaluation