Intellectual property

IP is a creation of the mind (or several collaborating minds) that is novel (new), useful and protectable. IP is an asset: it has value, belongs to an owner and can be used or traded.

IP may be created through:

• academic research
• commercial research (university-industry collaboration to resolve industry questions and problems), or
• commercialisation (turning discoveries, inventions and innovations into marketable products and services, in the process of which further refinement, invention and innovation can occur).

When RSU employees create IP, RSU asserts at least partial ownership of the IP, in common with most universities and other R&D organisations worldwide. This means that legal rights relating to the IP reside with RSU, including the right to transfer (assign or sell) ownership. Students and visitors own IP they create at RSU but sometimes they may be required to assign it to RSU.

RSU asserts IP ownership in order to provide effective initial management of IP as a potentially valuable asset. RSU may later assign IP ownership to its creators, although this is rarely practical. When an external organisation collaborates in IP creation with RSU, the IP may be jointly owned.

The Innovation and Commercial Research (ICR) unit identifies and manages RSU’s IP, whether it is developed within the university, or jointly with industry partners.

RSU’s IP policy is business friendly. While maintaining RSU researchers’ ability to continue work in their fields, RSU seeks to diversify research income, discover new applications for research outcomes, understand industry needs to drive future research, and increase industry networks and engagement to benefit researchers and students.

Good IP management:

• upholds researchers’ ability to publish their work
• enables the greatest public benefit from the IP
• fosters productive university-industry engagement, and
• reduces the risks of commercialisation.

By working with the ICR unit, RSU researchers can achieve successful and clean IP outcomes.

Typical steps in RSU’s intellectual property (IP) management process are described below in an ideal sequence:

IP identification: To ensure that appropriate IP protection can be achieved, researchers should contact the Innovation and Commercial Research (ICR) unit as soon as they think that their R&D has created IP. Alternatively, the ICR unit may initiate IP identification by approaching researchers. .

IP definition: The ICR Unit assists the researchers who created the potential IP to define its core concepts and perceived uses. This allows a search of the prior art, which is work disclosed previously anywhere in the world that challenges the novelty of the potential IP. If novelty and usefulness appear likely, then IP probably exists.

Preliminary IP evaluation: Based on the perceived uses of the IP, its potential market, and the potential for IP protection to deter competitors, the ICR Unit and IP creators assess the IP’s market readiness and commercial value.

Basic IP commercialisation plan: If the IP is deemed commercially viable and commercialisation ready (no further R&D is necessary), the ICR unit will lead the development of a commercialisation plan outlining the best path to market, including the IP protection strategy and improving the preliminary evaluation with further research. This plan will support discussions with potential partners, collaborators and funders.

Application for IP protection: Patent applications are expensive and trigger deadlines for further action and expense, so if the IP warrants patenting, the ICR unit’s policy is to file a provisional patent application no earlier than at this step in the process. Before the application is submitted, researchers are usually required to confirm that legal rights to the IP reside with RSU, in a standard assignment document.

IP licensing or sale: Depending on the commercialisation plan, the ICR unit will attempt to license or sell the IP to a suitable business by means of a negotiated contract. The business may be an established one, or a start-up or a spin-off company.

Post contract execution: After contract execution, researchers may choose to discontinue their involvement in the IP’s commercialisation, or continue to participate in various ways. Some researchers collaborate in ongoing R&D to improve the IP or develop related IP, in which case they usually remain employees of RSU. In some circumstances, RSU may permit secondment of researchers to a commercialisation partner for a period of about three years. Shorter secondments are unlikely to be effective.

To limit copying of IP by competitors, three types of protection are possible:

• secrets (a.k.a. trade secrets)
• legal registrations (patents, trademarks, registered designs, plant breeders rights, etc)
• automatic protection (copyright, circuit layouts)

Learn more about IP protection from IP America 
The Innovation and Commercial Research (ICR) unit assists researchers to develop the best protection strategy for their IP.

When should IP be kept secret and when can it be published?

Initially, IP must be kept secret and not disclosed publicly; otherwise it is not protectable, detracting from its commercial viability. As an exception, secrecy is irrelevant when one of the forms of automatic protection applies.

RSU encourages its researchers to publish IP at the right time. Timing of IP disclosure by researchers is critically important: legally registered forms of protection are only allowed if application for IP protection is made before any public disclosure of the IP occurs. This is why researchers should contact the ICR unit as soon as they think that their activities have created IP.

Poorly-timed disclosures of IP that rule out IP protection through legal registration include:

• any public verbal discussion
• journal publication
• conference presentations or posters
• articles posted on the internet, social media or the RSU intranet,
• any commercial sale of a product or service based on the IP,
• (often) draft papers or abstracts submitted to journals or conference organisers, and
• (sometimes) descriptions included in funding applications.

This timing issue does not apply in the case of automatic protection (copyright and circuit layouts) because, unlike legal registrations, these forms of protection do not require formal applications or registrations. However, the legal rights conferred upon the IP owner/s through automatic protection are not as strong as those for a legal registration such as a patent.

Confidentiality agreements
Confidentiality agreements (also known as Non-Disclosure Agreements or NDAs) help to maintain secrecy when it is necessary to divulge all or some of the IP to selected persons or organisations such as R&D collaborators, R&D funders and potential commercial partners. Such agreements do not constitute public disclosure of the IP because the secrets remain contained and controlled under common law. Without such agreements, no legal rights accompany secret IP. The ICR unit assists researchers and students to create and use NDAs.

The ICR unit will help IP creators determine the best IP protection strategy, based on the IP evaluation and commercialisation plan, and assist researchers and students to manage early protection issues such as provisional patent applications, and the nature and timing of any IP disclosures.

Patents often provide the most effective protection but are expensive and difficult to obtain. When granted, patents afford the owner of the IP a 20- or 25-year monopoly for commercial exploitation of the IP in a specific country or region. In return for the monopoly, in the patent application, the IP owner must disclose the precise technical details of the IP and fully describe the best application of the IP and means of implementing it.

Learn more about IP protection and commercialisation from IP America or the World Intellectual Property Organisation.