Commercialisation
Common forms of IP that can be commercialised at Sydney Children's Hospitals Network include:
- Patents – how something works (e.g. the method of production or a composition)
- Copyright – the expression of ideas (e.g. software or clinical assessment tool)
- Research reagents and materials – (e.g. model organisms, proteins, DNA/RNA, etc.)
- Design rights – designs (e.g. the shape and appearance of an object)
- Knowledge – know-how (e.g. formulae or methods can be a trade secret)
- Trademarks – the designation of origin, reputation of goods and services (e.g. logo)
IP disclosure, protection management and commercialisation process
Disclosure
It is advisable to discuss ideas that may be protectable with the SCHN IP and Commercialisation Manager first.
Ideas and or inventions are important to keep confidential in the early stages as this may jeopardise the IP and any decision to commercialise by SCHN. When submitting a disclosure, it is important to identify all contributors including staff and any past and or current collaborators.
The disclosure will be submitted to the SCHN IPC for consideration. The IPC will determine if the invention should be submitted to an independent Patent Attorney for an expert opinion regarding potential patentability.
Evaluation and approval
SCHN will undertake a preliminary assessment of:
- Ownership of the IP, including liaising with any other owners
- The prior art, involving searches of the literature and patent databases, to determine patentability
- A high-level assessment of the commercial potential of the invention or pathway to market
The SCHN IPC will make a decision on the protection and management of all IP and if further consultation with independent experts such as Patent Attorneys and/or IP Lawyers is needed.
Registration
Once approved, SCHN works with you and a patent attorney to draft and file a provisional patent application. SCHN manages the patent prosecution (and pays associated costs).
There are several steps involved before a patent is awarded and depending on the circumstances and the type of protection you are applying for, the examination can take from 6 months up to several years. A patent must be applied for in every country (jurisdictions) where protection is sought. Generally, cost per jurisdiction is around $40-50k. There is no such thing as a ‘universal’ or ‘global’ patent.
Provisional patent application
A provisional patent provides 12 months for the inventors to continue and improve their findings whilst protected. Once a provisional patent is filled, inventors may disclose their idea, however, it is important that all discussions relating to your IP with external companies and or individuals is protected under a Confidential Disclosure Agreement (CDA).
Patent Cooperation Treaty patent application
A patent cooperation treaty (PCT) application provides 18 months protection for the invention. In this time, the invention is published online and an International Search Report (ISR) is conducted by a competent examining authority (patent office). This report further advises if the invention has commercial potential and at this stage SCHN may choose to engage with potential investors.
National patent application
Before filing a national patent application, the SCHN IPC works with patent attorneys to determine which jurisdictions will be chosen to seek protection. If possible, it is also advantageous to have an investor or potential investor lined up before the SCHN gives approval for filing a national patent application. SCHN will continue to pay renewal fees as long as there is a potential investor.
Commercialisation
SCHN will market your invention to potential commercial partners. SCHN works with inventors to prepare a non-confidential technology brief that is made available to targeted companies.
SCHN negotiates with potential partners on the terms for the commercialisation of your invention in return for appropriate consideration. The terms of any agreement (generally a license or outright sale) varies depending on the technology, stage of development and the potential partner’s ideas for commercialisation.
Commercialisation only occurs once an agreement is made with an investor.
Management
Most SCHN inventions are very early stage and require significant further development and investment to commercialise. SCHN is responsible for ensuring that the commercial partner appropriately develops and commercialises the technology, including tracking of performance milestones, revenue generation and commercialisation plans.
Royalties or other financial consideration are paid to SCHN and distributed in accordance with the SCHN Intellectual Property Policy. See more on our IP Ownership Policy page.