If creators have an invention, what should they do first?
To begin the technology transfer process, creators must disclose their invention to Innovation ANU.
Broadly defined, an invention is a unique or novel device/machine, method, composition (compositions of matter, chemicals), process or article of manufacture. The invention process can fall within an overall engineering and product development process. It may be an improvement upon a machine or product or a new process for creating an object or a result.
What is an invention disclosure?
An invention disclosure form is a confidential description of the creators’ invention, which should describe the novel aspects of the invention, the critical solution it provides, its advantages over existing technology/products and an outline of the circumstances of its development (e.g. any support received for the research, and a list of all the projects’ inventors and contributors). The purpose of this form is to record and provide information to enable Innovation ANU to evaluate the commercial potential of the invention. Innovation ANU’s Invention Disclosure Form was made in accordance with the University’s Intellectual Property Policy.
Who is a creator?
Creator is defined as any staff, student, emeritus or honorary appointee, visitor or visiting fellow who contributes to the creation, development or invention of any IP whether or not in conjunction with other persons. For patents, creators must be designated as either inventors or contributors. Inventors are those persons that have made an intellectual contribution to the claims of the patent application and are named on the patent application. Accurate designation of inventors is important in ensuring validity of the patent – in many countries the misidentification of inventors is considered fraud against the patent office. Contributors are those persons that made a significant contribution to the project that was not inventive. Contributors may play a role before or after the patent is filed. At ANU, contributors are recognised for the part they play in developing the invention - contributors can be named as authors on publications and are provided for under the University’s IP policy, wherein they also share in the returns of any successful commercialisation if they are named as a contributor when the invention is disclosed to Innovation ANU.
The table and questions below are tools to assist creators in determining whether people involved in the project are inventors or contributors. If a dispute arises this may be referred to a patent attorney to undertake an independent inventorship determination.
- Did the person contribute specific ideas that resulted in the development of the invention?
- Did the person contribute more than labour?
- Did the person make practical and/or concrete suggestions that contributed to the invention?
- Did the person provide a specific design or experimental improvement that made the invention operable?
- Did the person conceive an inventive step or part of the invention that can be identified?
- Did the person have some role in the final conception of the invention as it is or as it will be patented?
If the answer is yes to one or more of the above questions, then the person is probably an inventor.
Who is the owner?
Creatorship does not equal ownership. Almost always organisations own the inventions developed by their employees. The University claims ownership and control of IP rights that result from the research conducted by faculty and staff (see Section 3).
When should creators submit their invention disclosure form to Innovation ANU?
If creators wish to pursue commercialisation of their research findings, it is best to disclose their invention as early as possible. This means well prior to any public disclosure of the invention, as disclosure of enabling information about the invention may jeopardise the University’s ability to seek protection for the invention. Innovation ANU strongly encourages creators to submit an invention disclosure for all research that they feel may solve a problem and/or have commercial value. If in doubt, please contact Innovation ANU. We can provide assessment prior to disclosure, and advice on alternatives to patenting and licensing.
How do creators submit an invention disclosure form?
Creators can submit an invention disclosure using the Innovation ANU Invention Disclosure Form available on the ANU website.
What happens after creators submit an invention disclosure form?
Innovation ANU’s invention assessment process it outlined in Figure 3.
What is involved in the invention assessment process?
A Tech Transfer Manager will assess the submitted invention in relation to the existing market, potential competitors, customers and partners, and explore possible routes to market. They will also consider the appropriate IP protection strategy and undertake a preliminary patent search to determine if the IP is protectable and/or valuable.
Will creators be contracted during the invention assessment process?
Yes. Creator feedback is essential to the assessment process. Creators will be contacted during the assessment process for more information (Figure 3) or may be requested to attend a meeting and/or workshop. Questions that Innovation ANU personnel may ask, to assist with assessment, includes (but is not limited to):
- What is the problem being solved? How is the invention te solution to this problem?
- What are the features, benefits and advantages of the invention, i.e. how is this solution better?
- What is the current state of art? What is known in prior art?
- What is the current stage of development? (i.e. technology readiness level)
- What needs to be done to move the invention forward along the development path to the next critical milestone? Is there interest and available resources (time, funding, and students) to do this?
- How does this approach compare with competing solutions?
- What would the end product be? Who is the customer for this end-product?
- Is this invention a stand-alone platform or one component among many needed?
- One market or multiple markets? Market size(s)? Market trends? Time to market? Regulatory issues?
- Potential licensees? What existing industry contacts do the creators have?
- Have the creators disclosed any details about the invention (e.g. presentations, talking to industry)?
- Who collaborated in the invention’s development (e.g. visitors, adjuncts, students, third parties)?
- How was the research behind the invention funded?
What is a technology readiness level?
From early concept to an application of a technology in its final form, the technology readiness level (TRL) is a helpful knowledge-based standard and shorthand for evaluating the maturity of an invention/technology. TRL levels are based on a scale from 1 to 9, with 1 being the lowest level of readiness and nine being the highest. TRLs for Australia have been established by the Department of Defence (Note: different countries have different TRL definitions and descriptions).
What feedback will creators be given following the assessment?
Innovation ANU aims to complete opportunity evaluation within 60 days of receiving the invention disclosure. That said, it is difficult to put a hard timeframe on this activity as it is dependent on a number of factors, e.g. market complexity, amount of prior art available, response time of creators to requests for more information, turnaround times of outside patent counsel and technical advisors, etc.
Once the invention has been assessed by Innovation ANU, we will provide creators with an opportunity evaluation summary. At this stage, Innovation ANU may (i) recommend proceeding forward with the commercialisation of the invention, (ii) identify the invention as having potential but being too early for commercialisation, or (iii) identify significant barriers to commercialisation and indicate that Innovation ANU will not pursue IP protection or commercialisation for the invention. Common significant barriers to commercialisation include:
- Significant, existing prior art
- Product already exists (not novel)
- No apparent competitive advantage
- Market is small and shrinking
- Timing – development timeline that exceeds the window of opportunity
- Cost – development costs outweigh potential gain
- Uncooperative/unresponsive creator(s)
- High risk – development uncertainty, e.g. development requires outside expertise or considerable resources that are not easily sourced
- Invention has been publicly disclosed, e.g. at conferences, in publications or talking with third parties
- Unclear ownership, i.e. appropriate agreements where not put in place for collaborators, visiting academics and/or students
- Too early, i.e. lack of data
Innovation ANU will always provide feedback as to why we will not pursue IP protection or commercialisation for an invention. In these circumstances, Innovation ANU may offer advice on what additional work could be done (for the invention to be reconsidered) and/or recommend alternative support pathways. Where appropriate the University may consider assigning the IP to the creators for them to pursue commercial opportunities independent of the University.
» Go to next section: Section 3: Intellectual property - Types & ownerships