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ECU Research Commercialisation

Invention Disclosure Form

Name of Potential Opportunity:

Date: Author: School / Institute:

PurposeThe first purpose of this form is to formally disclose a significant discovery, innovation or invention which is a compulsory obligation for all ECU employees in accordance with ECU’s Intellectual Property Policy. http://www.ecu.edu.au/GPPS/policies_db/policies_view.php?rec_id=0000000377

The IP Policy is designed to encourage and reward commercialisation of intellectual property contained in new and innovative technologies, products and services developed by ECU’s research staff and school. Disclosure of an invention developed by an ECU employee during the course of their work is a requirement under ECU’s IP Policy.

The second purpose of this form is to facilitate assessment of the opportunity in relation to:

i) alignment with ECU’s strategic priorities; ii) significance of the research breakthrough;iii) quality of the underlying research iv) ECU’s ownership position and rights in relation to the intellectual property

underpinning the innovation; andv) determining the most appropriate means to exploit the research.

InstructionsYour Associate Dean (Research) (or the Director in the case of Institute personnel) should be the first contact point for all researchers, employees and students who believe they have made a new discovery with strong potential for commercial benefits. Associate Dean (Research) and Institute Directors first point of contact is their respective Dean.

The Associate Dean (Research) / Institute Director and Dean may consider the information provided by ECU researchers in the Self-Assessment Form, which must be attached.

Opportunities that meet the selection criteria will obtain School support and advance to the next stage of the research commercialisation process. Without School support, the opportunity will not progress; i.e. ECU will not provide resources and/or funding to support commercialisation. Patent applications and other forms of intellectual property protection cannot be filed on ECU IP without the support of the School, ORI, FBSC, OLS

ECU Research Commercialisation – Invention Disclosure Form (January 2016) Page 1

http://www.ecu.edu.au/GPPS/policies_db/policies_view.php?rec_id=0000000377


and RASC. ECU employees need to be mindful of their obligations under the ECU IP Policy with regards to disclosures pertaining to ECU confidential information and intellectual property.

The key stages in the ECU Research Commercialisation Process are:

1. Self-Assessment (completed)2. Invention Disclosure and School Support3. Commercial Potential and IP Protection4. External Assessment and Co-Funding Support5. IP Protection, Strategy Development and Planning6. Strategy Implementation and Secure Returns 7. Measurement, Monitoring and Management of Returns8. Exit and/or Project Closure

All decisions with regards to the commercialisation of research outcomes, including entering and moving through the ECU commercialisation process, are at ECU’s discretion. Please note, the submission of an Invention Disclosure Form does not constitute the filing of a patent application, hence the conditions on disclosure remain in place.



Section 1: Project Information and Intellectual Property

Contact PersonPlease provide details of the primary contact person for ECU on all matters associated with this Innovation. Ideally, the contact person is the Lead Innovator/Inventor. For reasons of administrative efficiency, it is the responsibility of the Lead Innovator to keep all other ECU innovators/inventors named on this Invention Disclosure informed of the status of such matters.

Name and Title of Contact Person:

Business Address:

Business telephone and fax numbers:

Email Address:

Inventor(s) Details

Include the names and details for all others involved in the development of the invention (e.g. staff, students, collaborators). Do not be limited by the number of boxes below (copy and paste additional rows where necessary. If they were from outside of ECU then please indicate the relevant institution/organisation. An “inventor” is one who has conceived or contributed an essential element of the invention, either independently or jointly with others, during the evolution of the technology concept or reduction to practice. Inventorship is not discretionary. The rules for inclusion are not the same as a scientific publication. It is a matter of fact and its determination is governed by law. There are circumstances where such laws can supersede the conditions agreed to within contracts. Problem-solving is often an indicator of invention. Consider what problems have been solved to date and who was involved. It is rare, given the collaborative nature of research, for there to be a single inventor. Consider any collaboration involved in the research immediately prior or leading to the research that generated the breakthrough. Failing to list an inventor can have a negative impact on the validity of a patent and may seriously jeopardise the ability to fully commercialise IP. In the event that ECU determines the need to proceed with submitting a patent application, the final determination of inventors will be made by a suitably qualified professional applying the legal standards of inventorship under Australian law.

Name Telephone

University/Institute Fax

School/Department Address

Staff or Student? Email

Name Telephone

University/Institute Fax

School/Department Address

Staff or Student? Email



Inventorship AcknowledgementThe following persons acknowledge that all persons who have had a material input into the conception of the innovation and assisted in reducing the innovation from a concept to a practical embodiment are listed above:

Acknowledged by Lead Inventor / Author

Acknowledged by Associate Dean (Research) / Institute Director

Comments:

Acknowledged by Dean

Comments:

Student ProceduresIn accordance with ECU’s Intellectual Property Policy, ECU is the owner of all intellectual property created in the course of research undertaken by ECU employees, including if those employees are also students. Students who are not employees own their own IP unless it is assigned via a written agreement. However, to participate in funded research projects students must agree to assign their IP to ECU. Students must be given the opportunity to seek independent legal advice before entering into any agreements and must not be coerced or pressured in any way.

If any students are included above, have the procedures pertaining to ownership of intellectual property created by students been followed as set out in the IP Policy? If yes, please attach any relevant documentation.

If no, please describe any other arrangements that have been made and provide documentary evidence.

Student Procedures AcknowledgementThe following persons acknowledge that all students involved in the research and creation of the IP have been considered and student procedures consistent with ECU’s IP Policy have been followed and there are no outstanding or potential disputes in relation to students:





Comments:


Comments:

Third Party FundingEncumbrances and other conditions may already be imposed on IP before its creation due to agreements and arrangements in relation to the inputs into the research process. Collaboration and funding through grants, contract research, consultancy or salary stipends may all involve conditions imposed on the IP created during a research project. Please identify all of the intellectual and material inputs to the research and any agreements that governs their use and involvement in the research, particularly that leading to the innovation.

Please name any organisations collaborating on the research that led to the development of the research breakthrough and innovation.

Are there written contracts or grants relating to this funding (e.g. Consultancy, Sponsored/Contract Research, (Co-) Development or Collaboration Agreements)? If “Yes” please attach a copy and complete the table below in relation to each agreement. In particular, provide details of any conditions in relation to the intellectual property.

Agreement Agreement Number

Contracting Party(ies)

Subject matter of agreement

Conditions affecting IP

Agreements AcknowledgementThe following persons acknowledge that all agreements pertaining to the research and the creation of the innovation and intellectual property have been listed above:





Comments:


Comments:

Background and Project Intellectual Property

Encumbrances over IP are more likely to occur where agreements governing the research include definition and conditions in relation to Background IP and Project IP. Background IP is intellectual property that can be clearly identified as being owned by another party (therefore, has been created previously) and use of that IP should be governed by a licence or other agreement. Project IP is the intellectual property anticipated to be created by one or more parties in the course of the project (therefore, has yet to be created) which should also be governed by an agreement. In these agreements Project and Background IP are defined on a case by case basis. Background IP may include software, chemical agents, biologicals, libraries, assays, kits, equipment, machinery and other research and development tools. Access to Background IP may be governed by Material Transfer, Licence, Lease, Rental, Purchase, Sponsored/Contract Research, (Co-) Development or Collaboration Agreements. Review of all agreements in relation to the creation of an innovation is necessary to determine the appropriate response to the questions below.

Have any agreements involving the definition of Background IP and/or Project IP been involved in the research or creation and reduction to practice of the innovation? If so, please provide details of the agreement, definition, details and/or conditions relating to Background IP and Project IP.

Agreement Agreement Number

Contracting Party(ies)

Background IP Definition

Project IP Definition

IP Ownership and Position Sign Off

Establishing that ECU has a clear unencumbered ownership position and/or rights to the IP underpinning the innovation is a critical requirement for commercialisation. After considering all agreements that impose conditions on the IP the Lead Researcher, Associate Dean (Research) / Institute Director and Dean must be satisfied that ECU has not assigned or licensed the rights to the IP (which may or may not be defined Project IP) to another party, and where third-parties have been involved in the creation of the (Project) IP those parties have assigned or licensed their rights to the IP to ECU. Where conditions relating to the use of Background IP create conditions over the IP to be commercialised the Lead Researcher, Associate Dean (Research) / Institute Director and Dean must be satisfied that these conditions will not prohibit commercialisation, i.e. a satisfactory agreement with regards to ongoing access



to the Background IP and/or recompense for the use of Background IP has been executed between the parties. Without this, opportunities cannot receive School support and move to the next stage of the ECU research commercialisation process.

The following persons acknowledge that relative to the above there are no conditions imposed by any agreements that prevent ECU from satisfactorily pursuing commercialisation of the IP underpinning the innovation:



Comments:


Comments:

Further IP related acknowledgements

Intellectual property (IP) is a critical input to commercialisation. IP can be the only tradable asset or legally enforceable right available on which to base agreements in relation to commercialisation. Hence, ECU focuses its efforts on commercialisation opportunities with protectable IP and/or sustainable competitive advantage.Disclosure and dealing in research outcomes can preclude the protection of IP and diminish and even preclude the ability to commercialise. In order to make a proper assessment it is important that any disclosures made are acknowledged and described, even those under a confidentiality agreement or similar arrangement. While public disclosures can impact the patentability of the IP, the disclosure may not have revealed the underlying nature and mechanics of the innovation. Even where full disclosure was made there are grace periods in certain jurisdictions and IP rights may still be achievable. Commercialisation can be compatible with publishing/dissemination. It comes down to timing, i.e. delaying disclosure long enough to devise and implement an appropriate IP protection strategy.Please note that patenting is not necessarily the most appropriate strategy for protecting IP or for facilitating commercialisation. Information to make this decision is often not available at the outset. Therefore, decisions in this regard are not made until later in the process. Patent applications and other forms of intellectual property protection cannot be filed on ECU IP without the prior support of the School, ORI, FBSC, OLS and RASC.

The following persons acknowledge that relative to the above:i) there have been no material (i.e. those impacting novelty) disclosures or commercial

dealings (i.e. deriving commercial benefit) in relation to the IPii) there have been no patent applications filed or made in relation to the IP:





Comments:


Comments:

Section 2: Research and Outcomes

Area of Research PriorityECU must adhere to its purpose, vision and strategic priorities and honour its commitments and obligations. ECU’s performance in the areas of teaching, learning and research must be prioritised ahead of commercialisation. Commercialisation principles, policy and process at ECU must be aligned and support these imperatives. Alignment with ECU’s strategic priorities is a key requirement for commercialisation opportunities given that resources are limited and there is a high level of uncertainty at the outset of commercialisation. Only in exceptional circumstances can opportunities outside of ECU’s core areas of teaching and research be supported. By completing the questions below you will be enabling the Dean to make an assessment of an opportunity’s fit with ECU’s teaching and research areas of strength and activity and ECU’s strategic priorities. Obtaining School support is a requirement for progressing through the commercialisation process.

Please select from the following list of research priorities the area in which you believe your breakthrough falls within:

Health and WellnessChoose an item.

EducationChoose an item.

Environment and SustainabilityChoose an item.

EngineeringElectrical and Electronic Engineering

Choose an item.

Mechanical Engineering



Choose an item.

Civil EngineeringChoose an item.

Information and Communications Technology (ICT)Choose an item.

Indigenous Culture, Education and HealthChoose an item.

Social and CommunityChoose an item.

Business and SocietyChoose an item.

Communications and Creative ArtsChoose an item.

SecurityChoose an item.

Law and JusticeChoose an item.

Comments:

Please explain the relevance of the research to ECU’s research priorities, in particular with respect to ECU’s strategic goals:

1. Create positive community outcomes through mutually beneficial engagement.

2. Deliver accessible world-class education and an enriching student experience.

3. Enhance the personal and professional outcomes of graduates.

4. Strengthen research capability, capacity, translation and impact.

5. Enhance organisational resilience, sustainability and reputation.



Benefits to ECU and the NationFirst and foremost ECU must strive to achieve its Purpose, Vision and Strategic Priorities (http://www.ecu.edu.au/__data/assets/pdf_file/0014/433013/engagement-strategic-plan.pdf) and honour its commitments and obligations. ECU’s core areas of endeavour are teaching, learning and research. Alignment with and support of these core areas and the strategic priorities is a key requirement in regard to commercialisation given limited resources, cost involved, inherent challenges and uncertainty of outcomes.

Explain how the commercialisation of your product / service will benefit ECU.

Explain how the commercialisation of your product / service will benefit Australia and/or improve Australia’s participation and competitiveness in the global economy.

Acknowledgement of Strategic Alignment and ECU BenefitsThe following persons acknowledge that relative to the above the innovation is aligned with ECU’s areas of research activity and/or strength, or alternatively represent an area that is of significant interest to ECU, and the proposed benefits arising from its commercialisation are consistent with ECU’s purpose, vision and strategic priorities:



Comments:


Comments:

Research Breakthrough / Innovation

Describing the innovation is critical in determining the potential for commercialisation and the appropriate strategy for commercial exploitation including the protection of IP. The description of the innovation therefore needs to be highly detailed. Ensure you describe the essential nature of the innovation and provide enough detail to enable another person working in the field to reproduce and make the innovation work. Do not withhold any key elements of the innovation, as a complete description is essential should patenting be an appropriate means of IP protection. Potentially include materials and components used; operative and preferred ranges of process parameters; and methodologies. Significant research breakthroughs and innovation are more likely to generate protectable IP and a source of sustainable competitive advantage, which are key enablers of commercialisation. To assist ECU assess the appropriate level of commercialisation assistance please help us understand what makes this innovation so significant, why other researchers failed to make this step and why it would be difficult or take time for


http://www.ecu.edu.au/__data/assets/pdf_file/0014/433013/engagement-strategic-plan.pdf


them to catch up. Your justification and substantiation should be based on a thorough review of the literature in the relevant fields and reference to such literature should be provided similar that required for a grant application. Include this information in your responses to Competing Research in the next section below.

Summarise the research that led to this innovation and in particular the research problem that was most recently addressed.

Describe in detail below the innovation that underpins the opportunity you propose. What makes this such a significant breakthrough? Please explain what new knowledge or capability the innovation represents; how is it an improvement over the existing state-of-the-art? Please reference peer-reviewed literature and attach any other additional and/or supporting information.

Competing Research

What competing research is underway in the field?

What approaches are other researchers taking to address the same problem?

What are the advantages and disadvantages of your approach versus their approaches?

Why is your approach more likely to generate a commercially attractive product / service?

When are these competing approaches likely to result in a market ready product/service?

Novelty / Prior Art / Patents

Please provide details of any research carried out to establish the novelty of your innovation (e.g. literature reviews, patent database searches and/or internet searches).

Acknowledgement of Significant Innovation and/or Research BreakthroughThe following persons acknowledge that, relative to the above, this is a significant innovation and/or a research breakthrough relative to the state-of-the-art:



Comments:


Comments:



Technical Veracity

Given the cost and time involved in commercialisation, ECU must ensure efforts are focused on innovations that have demonstrated technical veracity (i.e. are proven to work reliably).

What is the functionality at work behind how your innovation achieves its benefits?

What evidence do you have to confirm the functionality and/or technical viability of your innovation / research breakthrough? Said another way, what efforts have you made to reduce it to practice and demonstrate that it works reliably (e.g. research studies, prototypes, bench testing, customer trials, sales, etc.)? In providing your response, please provide substantiation of what is being claimed, e.g. what statistically significant data supports the outcomes of the research / testing?

Acknowledgement of Technical VeracityThe following persons acknowledge that, relative to the above, the research and development has reached the point of technical proof of concept and that repeatable and reliable results have been demonstrated:



Comments:


Comments:

Time to Market

Given the cost and time involved in commercialisation, ECU must ensure efforts are focused on innovations that have a clear development pathway to achieve a market-ready product, service or licensable intellectual property. If significant research or validation is required ECU may need to prioritise other opportunities closer to marketable outcomes. As a guide, the time to achieve a market-ready product/service from this point on should not be more than 3 years.



In your view, what research and/or development will be required from this point before a product/service/commercially-viable process can be ready for sale? How long do you think this process might take, what might be the costs involved? Would this work be undertaken by you or do you see the need to bring in outside assistance?

Acknowledgement of Time to MarketThe following persons acknowledge that, relative to the above, the research has a clear development pathway and will be market-ready within a period of 3 years:



Comments:


Comments:

Acknowledgement of Existing Commercialisation ProjectsAre you involved in any other commercialisation projects at this time? If so, please provide details:

Project Name Current Status(Relevant to Process

Stages)

FTE % Completion Date

Commitment to Commercialisation ActivitiesResearcher CommitmentPeople and knowledge are just as important as Intellectual Property. Rarely will all knowledge be captured in writing whether that be a patent or otherwise, hence the need for commitment from the key inventors. Notwithstanding, in the face of considerable uncertainty, career advancement, particularly for junior academics, needs to be considered and balanced with the likelihood of deriving benefits from commercialisation. ECU researchers committed to embarking on the ECU research commercialisation process should thoroughly read all documentation available to them, understand the issues concerned, agree to abide by ECU’s relevant policies and decisions, and ensure they are committed to providing the



assistance reasonably requested to give the innovation the best chance of commercialisation success. The same acknowledgement should be made by all co-inventors and individuals who have had material input into the innovation.

The following persons acknowledge that relative to the above, they will abide by their obligations under ECU Policy, and use their best endeavours to support commercialisation of their innovation and respond to reasonable requests made by ECU personnel in relation to the ECU research commercialisation process:

Acknowledged by Lead Inventor / Author (insert name)

Acknowledged by Co-Inventor / Innovator (insert name)

[copy and paste additional lines to replace this text where necessary]

Acknowledgement in relation to Funding and SupportECU has limited resources and funding to support commercialisation and cannot commercialise every innovation arising from ECU research. Given the high level of uncertainty and many unknowns, particularly in the early stages, “best practice” encourages a staged process for determining commercialisation potential and to develop and implement appropriate strategies to ensure the most efficient use of limited resources. Funding to support commercialisation can only be obtained by following the ECU research commercialisation process, allowing the necessary assessments to be performed and receiving the necessary support in advance of expenditure being incurred. The School is liable for any costs incurred prior to the receipt of a grant or without prior approval of the Commercialisation Committee. ECU is the owner of all intellectual property created in the course of research undertaken by ECU employees. As such, all decisions with regards to the commercialisation of research outcomes, including entering and moving through the various stages of the ECU research commercialisation process are at ECU’s discretion and require sign-off by multiple personnel.

The following persons acknowledge that relative to the above, any funding to support commercialisation activities prior to School, ORI, FBSC and RASC support will be borne out of the researcher’s research funds and/or School funds:



Comments:


Comments:


ATTACHMENTS:

Copy of your completed Self-Assessment Form signed by all Inventors / Innovators

School support is subject to:

i) Satisfactory completion of all questions;

ii) All acknowledgements made by researchers, Associate Dean (Research) / Institute Director and Dean;

iii) Attachment of required documentation; and

iv) All inventors / innovators have signed required documentation.

Support by the Dean is required for the opportunity to enter into the ECU research commercialisation process, which is managed primarily by the Finance and Business Services Centre with input from the Office of Research and Innovation, the Office of Legal Services and the Risk and Assurance Service Centre. The opportunity will then undergo assessment of its commercial and intellectual property protection potential. Subsequent stages of the process include securing co-funding support, IP protection, strategy development and planning, securing further co-funding support, strategy and plan implementation, measuring, monitoring and managing returns, and eventually exiting or closing the project (where appropriate).

Prepared By ______________________________________

[Replace this text with Name of Author, Position and Date]

Supported By ______________________________________

[Replace this text with Name of Lead Inventor, Position and Date]

Supported By ______________________________________

[Copy and paste for additional Inventors, including Position and Date OR delete]

SCHOOL SUPPORT

1. Associate Dean (Research) / Institute Director

Supported to progress to next stage

Not supported to progress to next stage

Reason for not supporting:[Insert comments as needed]

Recommended next step: Further information required (see comments)

Further research required

Publish research

Easy Access IP

Other _______________________________________________________________

[Replace this text with Name of Associate Dean (Research) / Institute Director, Title, School / Institute and Date]

2. Dean

Endorsed / Supported to progress to next stage

Not endorsed / supported to progress to next stage

Reason for not endorsing/approving:[Insert comments as needed]

Recommended next step: Further information required (see comments)

Further research required

Publish research

Easy Access IP

Other _______________________________________________________________

[Replace this text with Name of Dean, Title, School and Date]

Documents

ATTACHMENTS: - Sign Inintranet.ecu.edu.au/__data/assets/word_doc/0005/542813/... · Web viewBackground IP may include software, chemical agents, biologicals, libraries, assays, kits,