Monash Innovation Research Commercialisation FAQs
Introduction to Research Commercialisation View
Knowledge exchange is the process of sharing knowledge with the public. Examples include academic publication, exchanges at conferences, and relationships with industry. Technology transfer or commercialisation is a subset of this knowledge sharing which aims to achieve impact in the community and which may or may not come with financial reward.
Monash Innovation is responsible for commercialisation of university IP. See the summary of the technology transfer process at Monash - Enterprise
The team at Monash Innovation will work with creators of Intellectual Property (IP) at Monash to assess the commercial opportunity of their creation, secure the IP, and work with the creators to look for partners to license the IP to. This may be a third party or it could be to a spinout or startup company which is a newly formed company set up to exploit the IP.
The amount of time to progress an IP creation from invention to market depends on what the technology is, stage of development, demand for the technology, how strenuous the statutory regulations are, and the time, effort and resources required to get it to market.
Disclosing information about your invention in the public sphere will likely prevent your invention from being patented. Even sharing details to other researchers in conversation or through a conference abstract will minimise the chance of obtaining patent protection.
First sign a Non Disclosure Agreement (Confidentiality Disclosure Agreement) before speaking to anyone external to the university about your IP or submitting a conference abstract etc. A patent application can be filed by Monash Innovation before publishing your research - speak to the team before you make any external disclosure or decide to publish.
If you want to be involved in a spinout or startup, you should decide your level of involvement (which may change over time). If you only want to be partially involved, you could be a scientific advisor, consultant or contractor. If you decide you would like to be fully involved, you could be anything from chief executive to researcher. Monash Innovation can discuss options with you.
Both licensing and spinouts and startups involve licensing out the IP to a company. The difference is spinouts and startups need to be set up before the external licensing can take place, rather than licensing out to a pre-existing company.
Licence revenues paid to you as a creator or inventor may be taxed as income. You should seek advice from a tax accountant for your specific situation regarding the distribution of any revenues.
The creators’ share of revenue under the licence is distributed equally amongst all creators, unless they collectively agree in writing to a different distribution. Creators can indicate uneven distributions on the Invention Disclosure form or they can sign a Distribution of Benefits Agreement.
Your Idea View
Complete an Invention Disclosure Form. That way, Monash Innovation can formally record and review your invention. If you are in doubt, feel free to reach out to a member of the team.
Patent searches can become very detailed and often involve specialised Patent Attorneys. However anyone can do basic searches using free databases such as espacenet or Google patent. If you want to learn more about using these search tools, you can also find good tutorials on the KCA website to walk you through the basics of doing a patent search.
For a patent to be granted, your invention must be new, inventive and useful (as determined by the patent office). You can search for existing patents to make sure no one else has secured an undifferentiated patent. This is something Monash Innovation will help with when you lodge an Invention Disclosure form.
Preparing insight about the potential use of your invention will greatly benefit the process of assessing the invention by the Monash Innovation team and the Invention Disclosure form invites you to include this information. You should provide:
- Which markets would benefit from your invention (e.g. potential users, and potential licensees/partners)
- Who would be the major competitors in this market
- Provide any similar inventions or recent partnerships related to the invention
- A list of potential industry partners in this space, particularly those who you have a relationship with
- A list any other inventors, contributors, partners or funders involved in this invention
The Invention Disclosure form gives Monash Innovation the information it needs to assess your invention, the funding that led to it, and other aspects that may affect the commercialisation. It is also a formal record of the invention, which could be used in defending the patent.
Download and complete the Disclosure form (Fill in online soon) as completely as possible and get all creators to sign it before returning to Monash Innovation. Also, attach any relevant manuscripts or papers/ presentations that will help describe the invention as completely as possible.
The Invention Disclosure form allows Monash innovation to start working on assessing your invention, but is also a formal record of the invention and the inventors, which can be important in the future of patent prosecution.
Inventorship has a legal basis in patent law, which requires everyone who contributed inventively to the creation of the invention to be named on the patent. If you are unsure, you can reach out to Monash Innovation to get advice on who should be listed as an inventor.
Creators are those who have made inventive contribution to an idea, or in the case of Copyright, the person who physically created it. Deciding who is and isn't a creator can be tricky, and you should consult with the Monash Innovation team if in doubt.
Contributors are those who make significant contribution, but are not Creators. This could be someone carrying out lab work under direct supervision and direction, or someone who helped with a project but did not come up with the ideas. Their contributions can be valuable and therefore if the Creators wish they can be included in the Creators revenue share.
Anyone who creates a work subject to copyright (such as software) is the Creator of that work. In the case of software the Creator is the person who wrote the lines of code (even if under instruction).
Yes, the Monash Innovation team need to assess every funding agreement that led to the creation of the invention, as the rights may be affected. Please disclose all funding that may be relevant, and be ready to provide the terms and conditions of the agreements if asked.
Please include all information of creators, inventors and contributors of an invention, as well as their affiliations. It may be that your invention is jointly owned. The Monash Innovation team are used to dealing with this and will advise.
NDA's or Non-Disclosure Agreements (also called Confidential Disclosure Agreements) are legal agreements that protect the confidentiality of discussions between two parties. Information shared under an NDA should not be shared outside of the parties who have signed it and must be handled carefully. If in doubt, please ask a member of your department's Business Development (BD) team or your Monash Innovation contact about whether you need an NDA.
A team member from Monash Innovation will be assigned as the Case Manager and will be in touch to discuss the points on your form, and advise on potential commercial and patent strategies. It is important to give them all the information you can about the invention and its background so that they can make an informed and quick decision. The first step is to review the terms of the funding that led to the invention to confirm if funders have rights to IP, or if ownership is spread across multiple organisations.
Invention disclosures are assessed for novelty, inventiveness and commercial potential - that is, the market opportunity combined with the potential for the technology to have an impact. This is done using internal knowledge and expertise in commercialisation, as well as third party data (market reports) and external validation from industry experts.
The Case Manager will also work closely with the inventors to help in the commercial assessment process.
The Case Manager will review the 'prior art' of the invention and if relevant conduct a patent search. Prior art is any information in the public domain that relates to or may cover aspects of your invention. This may be in patent or academic literature, or even presentations, news articles or blog posts. Understanding what is in the public domain already will allow the Case Manager to understand the scope of protection available, and therefore assess the commercial potential of the invention. Once an assessment has been discussed with the creators, it is reviewed by our in-house Patent Attorneys before engaging an external Patent Attorney to draft the patent.
Securing the IP View
Intellectual Property (IP) is intangible property (e.g. an original idea or design) that is protected under the patent, trademark and/or copyright laws.
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.
The following course on IP is a great resource for understanding aspects around patents for academics in Universities: Intellectual Property for Entrepreneurs
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.
Students can contribute to an IP creation and will be named as creators under the IP policy. Under the policy, students own their own IP unless it builds on IP that was substantially University owned, or made significant use of University facilities in its creation.
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 (usually 20 years, but 25 years for pharmaceutical substances) 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.
A provisional patent application is an inexpensive way to signal your intention to file a full patent application later. This gives you 12 months to file a full patent application and claim the priority date of the provisional patent 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 more development 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 View
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 between two to eight weeks.
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 patent that lapses after 12 months in favour of 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, allowing more time to continue development whilst maintaining possibilities for broad protection in a large number of countries (note, the patent is still provisional, and 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 View
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.
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 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.
Societal benefit through impact - technologies that are commercialised raise revenues, create jobs and have positive societal impact.
Recognition and profile - through the positive impact created, successful commercialisation 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. 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 commercialisation.
Many licensees require the active assistance of the 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.
Monash Research Impact Fund (MRIF) is a proof of concept fund - it exists to help further technology towards a commercial outcome. It therefore has a different focus to traditional research grant funding. To apply for this funding a technology needs to be in the Monash Innovation portfolio, therefore you should speak with a member of the team about whether your technology might qualify.
Medical Research Future Fund (MRFF) - MRFF applications are for large scale medical research programmes - please talk to your faculty BD and Monash Innovation before starting any MRFF application
US-focussed guide on many aspects of spinout companies including planning, founding considerations, licensing and legal: University Spinout Founder's Handbook
Rundown of activities, news, resources and more in the Australian ecosystem - by Gary Visontay of Right Click Capital: Australian Startup Resources For Founders & Investors
In the context of commercialisation, spinouts and startups are both based on University IP, but the University typically holds equity in a spinout whereas a startup may have licensed the IP on purely financial terms (such as royalties and annual fees). Startup also more commonly refers to any early-stage high-growth company whether related to a University or not.
Both startups and spinouts associated with Monash (staff, researcher, student or alumni) are supported by the Generator, Monash University's central startup hub.
The University IP Policy governs revenue sharing and all revenues from commercialisation of IP are split evenly between the team of creators, the department/faculty and the University (typically a 1/3rd 1/3rd 1/3rd each) - the revenue share can be affected by joint ownership, funder rights and other factors, see full policy for details.
When a spinout company is wound up, the licence from the University will lapse with that company but the IP will still be owned by Monash. As a result, there may be opportunity for Monash Innovation to seek a new commercial partner.
Please check out the portfolio page for an up-to-date list of recent spinouts.
Spinouts are complicated, time consuming and not every technology is suited to starting a company so the decision needs to be properly assessed as part of the commercial evaluation. This will typically involve the Monash Innovation commercialisation lead, the New Ventures team, creators, external advisors and more.
The Creators of the IP can play many roles in a spinout company, from none at all, through being a passive collaborator, informal advisor, formal advisor or founder.
It is common to see a Creator take on a role such as Chief Technology Officer in a spinout, but in practice they may be involved at any level from researcher to CEO depending on the various stakeholders (such as investors) and what is right for the company.
Spinouts require significant effort on behalf of the founders, the Monash Innovation team and any other stakeholders involved to get them off the ground. It is typical for founders to work long hours and weekends in order to prove the technology, get traction in the market and raise capital to make the spinout a success.
This refers to a situation where a conflict arises for an individual between two competing interests, which are often, but not exclusively, interests of public duty versus private interests. Conflicts of interest may be reasonably perceived, potential or actual. Conflicts of interest can involve financial or non-financial interests of the staff member and the interests of a business partner or associate, family member, friend or a person who has or has had a close personal relationship with the staff member. Please ensure you follow the Monash procedure on managing COI.
Before you go and spend any time or money of registering a company based on Monash owned IP, you must first speak with Monash Innovation to understand the processes and clarify both the IP and ownership.
In addition, you should seek legal guidance to help you understand the different corporate structures in Australia, negotiate your shareholders agreement and design an appropriate constitution.
You can find a series of free templates to see what may be required here: https://www.allens.com.au/sectors-services/services/allens-accelerate/accelerate-startups/
Put simply, equity in a company ("shareholder equity") represents ownership of a share of a company (hence "shares"). In the most simple example possible: if you have 50 shares of a business with 100 shares (and no debt), you would have 50% equity.
Getting the equity split right at the beginning of the company formation is crucial to the success of a business. Please speak to a member of the Monash Innovation team for more information. If you want to understand more about the factors that go into equity allocation in startups, check out this article.
A licence agreement will be put in place to give the spinout the ability to use the IP from Monash. There are numerous terms in this licence that can also include equity. The exact structure will depend on the type and value of the IP being licensed into the spinout as well as the respective contributions of the founding parties. Here's a general guide on university equity stakes in spinouts [link].