IP Toolkit for collaboration: overview Peter Lunn 17 April 2015

IP Toolkit for collaboration: overview

Peter Lunn

April 2015

What this presentation covers

• A - why industry and researchers should collaborate.

• B - why intellectual property matters for you in collaboration.

• C - approach of the IP Toolkit to collaboration.

Disclaimer: This presentation and the IP Toolkit is not legal

advice: you should seek your own legal advice as required.

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Why businesses and researchers should collaborate?

• For businesses – possible increased profit based on a

competitive advantage.

– Evidence shows that innovative Australian businesses

are ‘46% more likely to report increased profitability’

than non-innovative businesses (Australian Innovation

Systems Report 2014).

• For researchers – possible increased research outcomes

based on an advance in knowledge.

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Why the Government is interested in collaboration?

• A major challenge for Government is ‘how to enhance our

productivity and ensure a strong future for Australian

industry’ (18 March 2015, Minister for Industry and Science).

• For most businesses to remain competitive, access to new

valuable technologies including IP is increasingly important.

• A key mechanism for doing this is collaboration with higher

education or public research agencies, but Australia ranks

poorly in international comparisons of collaboration rates.

• The Government seeks to increase the translation of

research into commercial outcomes, including through

increasing collaboration between researchers and business.

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What are the outputs of collaboration?

Some examples of outputs of collaboration are:

• inventions or improvements for products, processes or

services.

• tests, publications, know-how and areas of fruitful

research.

• software, research methods, reports, data (e.g. test

results), photos and plans, film and prototypes.

• designs - the overall appearance of a product including

the shape, configuration, pattern or ornamentation of a

product.

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SME example – pizza business software improvement

5 of 11 Photo from the Pizza Review, creative commons attributions license, some rights reserved.

Why IP matters in collaboration?

• Collaboration can result in the creation of IP in

information, documents, products, services, processes,

software and other material. Parties also bring IP inputs.

• Collaboration agreements establish who can use IP inputs

to the collaboration and how.

• They also set out the terms and conditions that determine

who can benefit from any IP outputs from a collaborative

project.

• Collaboration agreements determine what can be sold,

published, used or improved upon and how this can be

done.

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Why it matters to you?

• The IP position in the agreement may affect the extent to

which a business can use the collaboration output in their

business.

• Likewise, for researchers, IP arrangements in

collaborations may affect their ability to meet their

objectives of advancing and disseminating knowledge and

publishing research papers.

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What is the aim of the IP Toolkit and who is it for?

• The IP Toolkit is a joint project by the Department and IP

Australia to simplify collaboration by reducing duplication

and provide a common starting point for managing IP.

• It provides guidance and tools to simplify and improve

discussions around IP in research collaborations.

• It also provides information and resources to help establish

the terms for managing and using IP in collaborative

activities.

• The IP Toolkit is designed for business (particularly SMEs)

and publicly-funded research organisations (particularly

researchers) intending to undertake collaborative activities.

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IP Toolkit content – information and tools

• Information includes:

– short case studies,

– tips like ‘start small’,

– typical drivers of parties that collaborators should be

aware of,

– common IP related issues in contracts, and

– brief information on different types of IP and their limits.

• Tools include:

– a decision-making checklist,

– a sample term sheet, and

– model collaboration contracts.

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Approach of the IP Toolkit

• Overall approach is to ‘start with the end in mind’.

• The IP Toolkit provides a framework to assist collaborators

in agreeing on the IP that they bring to the collaboration as

inputs and what can be done with the finished product or

outcome of the collaboration.

• This ‘IP position’ in a collaboration should be guided by

the project goals of those involved. This should be agreed

by all collaborators before a contract is entered into, to

increase the chances of a successful collaboration.

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Where does it fit in a collaboration and what next?

1. Decide whether collaboration could be valuable for you.

2. Make contacts with potential collaborators either informally

or through formal mechanisms such as Research

Connections, Industry Growth Centres or Cooperative

Research Centres (for all see business.gov.au).

3. Plan project and the use of collaboration output in detail

with potential collaborator under a confidentiality agreement.

4. Negotiate on a detailed plan and the use of outputs and

agree these with the potential collaborator.

5. Start collaboration project.

• A draft version of the IP Toolkit is at industry.gov.au/IPToolkit

- planned to be finalised mid-year.

• Questions?

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Department of Industry and Science

Industry House

10 Binara Street

Canberra City, ACT 2601, Australia

Telephone +61 2 6213 6000

IPToolkit@industry.gov.au

industry.gov.au/IPToolkit