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Basics of IP

What is Intellectual Property?

Intellectual Property or ‘IP’ is a term that covers a range of legal rights for the protection of creative effort, particularly the protection of economic investment in that creative effort. Staff such as academics and higher degree researchers at Monash University make discoveries or create inventions. These are also known as Intellectual Property.

At Monash University, IP encompasses a wide range of outputs from research and academic activities, including patents, copyrights, trademarks, and designs. They can be classified by the field of research such as Life Sciences, Physical Sciences, Med Tech or HASS - Humanities, Arts and Social Sciences.

Intellectual property rights can be bought, sold, leased and dealt with like any other form of property such as land and goods. One of these rights is the right to prevent other people from using the ideas or inventions. Applying for and securing a patent can be a long and expensive process.

If you own intellectual property, you have:

* exclusive rights to make, use or sell the property
* the right to assign, transfer, waive rights, license, donate, etc
* an entitlement to registration where applicable
* legal rights to protect property or to seek damages for improper use
* exclusive ability to control development of the intellectual property
* liability for ownership, including taxation, legal action in negligence, etc.

With your expert knowledge of your invention, Monash Innovation’s expert patent team will help draft the patent to give the invention the broadest scope of protection. If your invention doesn’t require formal registration, understanding what forms of IP protection are needed for commercialisation is still vitally important, whether it is software, data or crucial know-how.

Monash University ownership of IP

Monash University is a public research institution mandated to conduct research and utilise its resources for the public good. It needs to identify, protect, and where appropriate, commercialise the IP arising from its research activities.

The University’s rules governing intellectual property are set out in Part 5 of its Monash University (Vice Chancellor) Regulations. The regulations are confirmed at state government level and outline when to assign your intellectual property to the University. This usually depends on where you did the research, who paid for it and who you worked with.

Securing the IP

Intellectual Property (IP) is intangible property (e.g. an original idea or design) that is protected under the patent, trademark and/or copyright laws.
The revenue sharing provisions for the following types of IP align with the Monash IP Revenue Sharing policy.

Patents
A patent protects how an invention or innovation works or functions. To secure patent rights, an application must be made to IP Australia usually before any publication of the ideas for which patent protection is sought.
*Duration of 20-year registration
*Protects a new, non-obvious, data-supported, useful invention for example creating a new product, process, or a new drug, developing aspects of a particular technology or a genetically modified plant, animal or microorganism. *A patent does not protect a discovery like a natural product or law of nature.
Patents are granted for novelty, inventiveness, supporting data and usefulness
Trademarks
A trademark is an IP right that identifies your unique brand, product or service. It can be used to protect your business name or aspects of your brand. (Think Qantas® and Apple ®).
*Trademarks can be registered or unregistered.
*A registered trademark generally provides stronger legal protection.
*A 10-year registration can be renewed indefinitely.
For detailed information about trademarks take a look at ipaustralia.gov.au/trade-marks/what-are-trade-marks.
Other Rights
The following IP types are often classified as non-patent IP, or Other Rights. Revenue sharing provisions for these types of IP will be negotiated outside the Monash IP Revenue Sharing policy.
Copyright
Copyright protects the original expression of ideas, but not the ideas themselves. Some activities within a university which lead to the creation of copyright include:

* the writing of books and articles, theses, computer software, dramatic works and manuals
* composing music
* making an original video recording, DVD, CD-ROM or film
* creating a work of art
* designing a questionnaire or forms
Copyright includes an automatic protection for the creator’s lifetime +70 years but only protects material form, not ideas. It prevents copying without permission, but not protection over independently created similar works like literary or artistic work, software code or thesis.
Designs
*10-year registration
*Protects the visual appearance of a product like furniture or fashion items
*Registered designs protect the visual appearance of a product but not the way it works.

Designs consisting solely of features of two-dimensional pattern or ornamentation may also be registered. However, registration will only be necessary if the design has an industrial or commercial use, as designs that ornament an article are also protected under copyright.
Circuit layouts
The layout of integrated circuits is protected without the need for registration by the Circuit Layout Act.
Plant Breeder’s Rights
*20 to 25-year registration
*The breeding or genetic engineering of a new strain of certain types of plant (e.g. a disease-resistant species)

Confidential Information/Trade Secrets/Know How/ Tangible Research Materials
*Protect by way of good practice and agreements such as the Coca Cola® recipe, research projects, experimental data, collaborations or funding requests.

Confidential information is a type of intellectual property, and the courts will protect it, commonly under a confidentiality or non-disclosure agreement. Often confidential information is created concurrently with some of the other rights above, but usually consists of ideas or know-how, which cannot be registered in the same way as other types of intellectual property.
A patent is the right to exclude third parties from making, using, selling, offering to sell, or importing any patented invention. Patents are generally granted to protect a device, substance, method or process.
In order for an invention or innovation to be protected it needs to be novel, useful, inventive and is “a suitable subject matter” also known as “manner of manufacture”.
The following course on IP is a great resource for understanding aspects around patents for academics in Universities: Intellectual Property for Entrepreneurs
Monash University owns 100% of the IP generated by its employees and researchers, but Creators are entitled to ⅓ of the Net Revenue generated from the IP.
Review File MU IP Policy and MU (Vice-Chancellor) Regulations (Part 5) for more information.
All contributors to the ideas leading to a creation of IP must be mentioned in your disclosure, even if they are not employed by Monash University (such as an industry partner). To exclude any creators could invalidate the IP at any time in the future.
The Monash University IP policy has a clear policy regarding the ownership of IP created by its students and staff. The Guidelines-on-Graduate-Research-Student-Intellectual-Property.pdf is also informative.
IP created by staff members in the course of their employment is owned by the University. This includes research outputs, inventions, and any other IP generated as part of their job responsibilities.
These are the different scenarios for student-developed IP
Student-Created IP
Generally, students own the IP they create during their studies as ownership of copyright in ‘scholarly works’ will generally stay with the student.
Scholarly works are defined in the University Vice Chancellor Regulations to mean copyright works intended for publication or performance. They include research papers, theses, book chapters, artwork etc, but generally not software.
There are some exceptions, particularly in the technical disciplines
* Where the IP may be created as part of a group project
* The research may depend on significant University resources
* Or the University has obligations to a third party in relation to that project.

In situations such as these, the IP must be assigned to the University.
Collaborative Projects
In group projects involving both students and staff, or multiple students, the ownership of IP can become complex. The university’s policy aims to ensure that all contributors are fairly recognised and rewarded.
IP in Group Projects
Group projects are a common part of both undergraduate and PhD programs. Here’s how IP ownership is typically handled in these scenarios:
1. Joint Ownership: When a group of students collaborates on a project, the IP is usually jointly owned by all contributing members. Student groups should ensure they have clear agreement on how the IP will be owned, managed and commercialised. Where a group project involves both students and Monash staff members, the student(s) must assign the IP to the University.
2. University involvement: If a research project involving a student makes significant (more than standard) use of University facilities, then Monash may claim ownership of the IP. This is to ensure that the University can protect and commercialise the IP effectively.
3. External funding: Projects funded by external organisations will have specific IP requirements. Students will generally be required to assign any project IP to the University so that the University can meet its obligations with respect to the external organisation.
Monash University offers many programs for Founders and entrepreneurs to help you develop skills towards building your own company, regardless of whether Monash owns the IP. Reach out to the Generator, our central startup hub to learn more about the support on offer.
Patents pursued by Monash will not usually require any financial input from Monash creators of IP; however your time will be needed to go through the disclosure and patenting process, as well as technical input in marketing the technology and finding potential licensors. Furthermore, patent costs incurred by Monash are typically reimbursed by commercial partners when the technology is licensed
Monash will typically file patents in Australia first (known as the priority filing) and pursue patents in other countries later (known as the National phase), in part to save costs but also to allow commercial partners to make the strategic decision on which countries matter to them. For more information, please see the Securing IP section.
A standard patent application is an application for the full and long-term protection of your invention. Standard patent applications usually take significant time and money to draft well.
If you are concerned someone else may file a patent before you do, Monash can file a provisional patent application. This gives you 12 months to file a full patent application with comprehensive data, and to claim the priority date of the provisional application.
No. You must file a patent in every country you wish to have an enforceable right in. A Patent Cooperation Treaty (PCT) application provides 18 months in which to decide the specific countries in which to do national filings - and Monash typically does this in conjunction with the commercial partner who also pays for this filing.
The Patent Cooperation Treaty (PCT) covers a large number of countries and allows provisional patents to keep the option of being filed at National jurisdictions for another 18 months. This has numerous advantages, not least allowing 18 months to finalise data before having to incur large fees at the National stage.
Copyright (such as written texts and software), data and other forms of IP can also be licensed without formal protection (these are known as "non-registrable IP"). The important thing is that the commercial route forward is valid based on the form of IP available.

Patent process

The first step involves sitting down with the Patent team at Monash Innovation and external Patent Attorneys who will assess novelty and inventiveness as well as the available scope of the patent based on the prior art. This process depends on the speed of response and iterations needed, and can take anywhere from one to three months.
The normal process for Monash is that the Monash Innovation team will work with an external patent attorney to file a provisional patent at the Australian Patent Office. This starts the patenting clock and provides an initial date (known as the Priority Date) from which the future granted patent will be valid.
The first patent you file will typically be an Australian provisional application that provides priority for the PCT filing. Final filing and grant in Australia will happen during the National phase.
12 months after filing the provisional patent, in order to continue with patent prosecution we file the patent under the Patent Cooperation Treaty. This extends the process for another 18 months, maintaining possibilities for broad protection in a large number of countries (note the patent is still not granted yet!).
The contents of the patent are published on the World Intellectual Patent Office (WIPO) website, and shortly after on other systems such as Google Patent.
30 months after filing the provisional patent (month 0) comes the Nationals deadline, which means the patent must now be filed at every National jurisdiction where patent protection is required. This can be expensive ($5-10k AUD per country) so it is important that this decision is made by a commercial partner who will be covering the costs and can decide which countries are commercially relevant.
The patent as filed in the National jurisdiction will now go under the microscope of patent examiners in each country. This process can take another few years and the timeline is highly variable. Once the examiners have been satisfied that the patent meets all their criteria (which typically involves a lot of back and forth) - it will be granted.

License out

Finding an external partner who is interested in your technology is key to sourcing a potential deal. The Monash Innovation team will use multiple routes to help try and find partners interested in technologies in the portfolio.
Ultimately the most effective marketer of the technology is the inventor who understands it inside and out, and we encourage inventors to get involved in finding and sourcing potential collaborators.
Inventions are marketed via a number of channels, including through Monash Innovation networks and website, cold outreach to potential companies and also partnering platforms such as In-Part.
In addition, we will work with the Creators of the IP to connect to their existing relationships and collaborators as potential license partners.
Finding a licensee and executing a licence can take a long time. There is always a time pressure once a provisional patent is filed as the costs and decision making of patent prosecution are best made by a commercial partner as a licensee.
You can help the Monash Innovation team in sourcing licensees by looking into the marketing and using your network to approach contacts, but also by being responsive and attending meetings with interested companies as well as assisting in drafting marketing materials.
Typically, the levels of development and investment needed to take a technology or innovation to market mean that licensees want exclusive access to a technology, however it may be in some cases that non-exclusive (and therefore the opportunity to have multiple licensees) is the preferred route forward.
You will have input in the terms of the licence agreement and the team is always happy to discuss and take your views on board, but the responsibility for this agreement rests with the Monash Innovation team to negotiate with external partners.
A licence is a permission that the owner or controller of intellectual property (ie. Monash University) grants to another party, usually under a Licence Agreement.
There are many benefits from licensing research IP. It depends on the aims and mission of the researchers and the pathway they have chosen. Some gains usually include:
Societal benefit through impact - innovations that are commercialised raise revenues, create jobs and have positive societal impact.
Recognition and profile - through the positive impact created, successful commercialisation or knowledge transfer means that there is significant uplift in profile and recognition for inventors and innovators. This can also be tied to academic promotion at Monash University.
Financial returns - by generating impact through commercialisation there is the possibility of financial returns as a profit or not-for-profit entity. These do not drive the mission of the University or Monash Innovation but do come as a benefit to the Creators, Faculty and University as a result of successful IP commercialisation.
Many licensees require the active assistance of the innovator, inventor or creator to facilitate their commercialisation efforts, at least in the early stages of development. This can range from infrequent, informal contacts, to a more formal consulting or collaborative research relationship.
If the licensee is a new company (spinout or startup), it can require substantially more time, depending on your role in or with the company, and your continuing role within the University. Your participation with a spinout or startup is governed by University conflict of interest policies.
Grants and funding opportunities to build your research project
We look for opportunities to help you secure funding through government grants and other funding programs that offer incentives to universities to build collaborative research projects. To kick start the process, contact the Business Development Manager in your faculty or the Monash Research Office directly for assistance with grant applications.
Other funding opportunities to fund an invention or innovation
Monash Innovation can assist with access to grants and funding designed to support research initiatives that have the potential to create significant societal impact. It is particularly aimed at projects that align with Monash University's strategic goals in research and innovation. Researchers, academic staff, and teams looking to translate their findings into real-world applications may find this fund beneficial.

See more about Monash Ventures investment funds