ECU Research Commercialisation

Self-AssessmentForm

Name of Opportunity:

Date:

Author:

School / Institute:

Purpose

The purpose of this form is to assist ECU researchers to self-assess whether innovations made during their research represent a significant discovery, innovation and/or invention and therefore must be disclosed by the researcher in accordance with ECU’s Intellectual Property Policy which can be found at:

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This form is also to assist both researchers and other ECU personnel determine whether the intellectual property created in the course of research has sufficient potential to consider commercialisation, and if so the most appropriate means. It is also designed to provide a sense of the issues, risks and considerations involved in commercialisation, the complexity of commercialisation decision making and the effort that is required to undertake commercialisation.

Where researchers believe there is potential for commercialisation and are in a position to commit to supporting commercialisation, they should use their best endeavours to provide full and accurate information in order to assist ECU in assessing whether it is appropriate for the opportunity to proceed to the next stage of the research commercialisation process.

Foreword

Commercialisation initiatives must align to ECU’s purpose, vision and strategic priorities. As a result, the prioritisation of commercialisation initiatives selected and resources allocated to those initiatives takes into consideration their alignment and contribution to ECU’s teaching, learning and research objectives.

Given the high level of uncertainty and many unknowns, particularly in the early stages, good commercialisation practice encourages a staged process for determining commercialisation potential and development strategies. Through this process you will asked many questions to clarify the nature of your discovery, innovation and/or invention and its potential for commercialisation. These questions have been arranged in order of priority to reduce the resources required to determine the potential for commercialisation and identify any barriers that might prevent commercialisation.

Schooland/or Institute support to endorse alignment of commercialisation opportunities with ECU’s strategic priorities and establishing that the fundamental building blocks for commercialisation exist is the first requirement for entering into the commercialisation process at ECU and obtaining support.

Commercialisation is complex, difficult and challenging. It requires a range of skills, which are rarely found in a single person; hence a team approach is required. Commercialisation is a lengthy process that generally spans years and requires significant commitment from key inventors, particularly in the early stages. Before embarking on this journey researchers should be aware of the issues at stake and the commitment that is likely to be required.

Funding to support commercialisation can only be obtained by following the ECU research commercialisation process and receiving the necessary support in advance of expenditure being incurred. ECU is generally not a lead investor. ECU may co-invest with other parties (e.g. private investors, industry and government agencies) to facilitate commercialisation. The ECU commercialisation process is specifically designed to facilitate the application for grants and incentives and later external investment attraction. Only in exceptional circumstances would ECU invest ahead of others or alone in pursuing a commercialisation opportunity.

The Research Commercialisation Process

Proposals that meet the merit selection criteria will continue to advance through the ECU research commercialisation process. The key stages in the process are:

  1. Self-Assessment
  2. Invention Disclosure and School/Institute Support
  3. Commercial Potential and IP Protection
  4. External Assessment and Co-Funding Support
  5. IP Protection, Strategy Development and Planning
  6. Strategy Implementation and Secure Returns
  7. Measurement, Monitoring and Management of Returns
  8. Exitand/or Project Closure

All decisions relating to the commercialisation of research outcomes, including entering and moving through the ECU commercialisation process, are at ECU’s discretion. In accordance with ECU’s Intellectual Property Policy, IP that is created by ECU employees and affiliates is owned by ECU, including Students that are employees. Students that are not employees are required to assign their rights to IP where they wish to participate in funded research projects.

More often than not, commercialisation is not the most appropriate means of maximising the translation and impact of research. Just because the opportunity does not meet the criteria for commercialisation support, it does not mean ECU is not willing to facilitate the translation of the research outcomes into practice.

Instructions

TheAssociate Dean (Research) (or Institute Director in the case of Institute personnel) should be the first contact point for all ECU researchers, employees and students who believe they have made a new discovery, innovation and/or invention. If you have any questions in completing this form please contact your respective Associate Dean (Research)or Institute Director.

The first point of contact for Associate Dean (Research)and Institute Directors is their respective Dean.

Please limit your responses to half a page or less and, wherever possible, provide evidence of any relevant sources. The objective is for you and any co-inventors to assess if there is real and significant potential for commercialisation and the level of commitment required by all parties in achieving any commercial outcomes and benefitsto ECU and the community.

Information contained in this self-assessment form is maintained in confidence by ECU. You should not disclose to others the nature of yourinvention, innovation, and/or discovery without appropriate confidentiality restrictions in place. For assistance in this regard please contact the Business Development Manager within Finance and Business Services Centre.

Once you have fully completed this form please keep it as a record as the information will be required by the Associate Dean (Research)/ Institute Directorand Dean during the next stage of the ECU research commercialisation process (the Invention Disclosure Form)to determine whether there is sufficient merit to continue its progress. The Associate Dean (Research) / Institute Director may alsoconsult with and draw upon the expertise of other ECU personnel,as part of their review.

ECU Research Commercialisation – Self-Assessment Form (January 2016)Page 1

ECU Research Commercialisation

Questions

The Innovation and its Significance

  1. Has your research produced a significant discovery, innovation and/or invention that will addressa commercially relevant problem? If so, describe the problem, your solution and how it functions (i.e. what new knowledge has been discovered and/or what capability has been achieved and how it works). Ensure your description includes the product, service or process that you envisage being commercialised.

Notes to Question 1: Before ECU can make an assessment of commercialisation potential it is important to understand the nature of the research outcome that you have achieved. Commercialisation is only appropriate when there is a clear, identifiable and commercially relevant problem that has been solved. It must also be possible to deliver the solution to those experiencing that problem in a form they are prepared to pay for, i.e. a product, process or service. You should justify why you believe this is the case. Without these characteristics other forms of research translation such as dissemination may be more appropriate.

Problem, solution/product/service/process description, explanation and justification:
  1. Do the research and innovation fit with ECU’s research and external engagement priorities and plans, including those of your School and/orInstitute? If so, please explain and justify this fit,including how commercialisation will assist ECU achieve its purpose, vision and/or relevant strategic priorities.

Notes to Question 2: Alignment with ECU’s purpose, vision and 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. Before the opportunity can proceed to an Invention Disclosure, the Dean will need to validate the opportunity’s fit with ECU’s teaching and research areas of strength and activity and ECU’s strategic priorities. Obtaining Schooland/or Institute support is a critical requirement for entering into the commercialisation process at ECU and seeking support.

Description, explanation and justification:
  1. Would your discovery, innovation and/or invention be considered a breakthrough by those skilled in the area? If so, please explain the significance of the outcomes you have achieved and justify your response by referring to the area of research, current knowledge, the difficulty in this and any previous attempts to solve the problem, and why others would be unlikely to replicate the outcomes without knowing how you achieved them.

Notes to Question 3: ECU has limited resources and funding to support commercialisation. It is impossible to commercialise every discovery, innovation and/or invention arising from ECU research. ECU prioritises the commercialisation of highly significant “breakthrough” innovations. The significance of the innovation is a strong indicator of the potential for protectable intellectual property and other sources of sustainable competitive advantage, which are key ingredients for successful commercialisation efforts. In determining the potential for commercialisation and the appropriate means assistance ECU will need to assess what makes this innovation so significant, why other researchers failed to make this step and why it might be difficult or take time for them to.

Description, explanation and justification:

Intellectual Property Ownership and Encumbrances

  1. Are you confident that inventorship and ownership of the IP has been agreed? In preparing your response, consider who has made a contribution to the creation of the IP and may therefore have rights to the IP. Making innovations typically requires problem solving. Consider the problem solving involved in the innovation and who was involved. Often individuals may feel that they have made a material contribution even where other do not. For this reason, please consider all contributors, collaborators and students involved whether you feel they provided material input or otherwise. If non-ECU employees were involved, how has IP ownership been agreed?

Notes to Question 4: Establishing a clear line of ownership and control over the IP is a critical requirement for commercialisation. Without written agreements to base this on ECU, will not proceed with assessing commercialisation potential. It is rare, given the collaborative nature of research, for there to be a single inventor. 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. Indeed, there are circumstances where such laws can supersede the conditions agreed to within contracts. 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. A suitably qualified professional would be required at the appropriate time to make a determination on Inventorship prior to the filing of any patents.

Additional Notes to Questions 4-6: 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.

In 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.

Notwithstanding, encumbrances 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. Disclosure and dealing in research outcomes can preclude the protection of IP and diminish and even preclude the ability to commercialise. 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.

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 School/Institute, ORI and FBSC support.

Key problem-solvers and material contributors:
Other contributors:
Agreements relating to IP ownership and rights to commercialise:
  1. Is the IP free of encumbrances such as exclusive/non-exclusive licenses or other agreements granting ownership or rights to the IP? In preparing your response consider any agreements or arrangements that you and/or ECU has entered into that may impose conditions on the ownership, use or control of the IP underpinning the discovery, innovation and/or invention. Your response should cover all intellectual and material inputs to the research, the arrangement or agreement governing that input and any conditions relating to IP. Consider funding sources and support, research tools and materials, collaborations and consultancies.

Input; Arrangement/Agreement; IP-related Conditions:
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Notes to Question 5: Access to third-parties’ background IP, software, biologicals, libraries and other research tools, collaboration and funding through grants, contract research, consultancy or salary stipends may all involve conditions imposed on the IP created during a research project. In order to establish a clear line of ownership, title and control over the IP ECU will need to review all agreements and arrangements governing any intellectual and material inputs to the research, particularly any leading directly to the discovery, innovation and/or invention.

  1. Have you disclosed your innovation or the nature of your research? If yes, provide details of all disclosures whether verbal or written; include the audience/recipient and nature of the information disclosed.

Notes to Question 6: Disclosure and dealing in research outcomes can preclude the protection of IP and diminish and even preclude the ability to commercialise. 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. 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. Please also note that 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.

Nature and content of disclosure; recipient/audience:
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Technical Veracity

  1. Given the functionality at work behind how your innovation is described earlier, 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.)?

Notes to Question 7: Given the cost and time involved in commercialisation ECU must ensure commercialisation effort are focused on innovations that have demonstrated technical veracity; i.e. are proven to work and work reliably. Often given the time, resources and expense involved in proving technical veracity a staged process is followed with increasing levels of validation and proving in environments more and more representative of that in which the product, service or process will operate. ECU may need to prioritise opportunities with a greater level of validation for the same reason.

Current level and means of validation to date:
  1. In your view, has the IP reached a point where it can be licensed or has a marketable product or service been developed? If “yes”, please justify why you believe this is the case with reference to potential licensees or customers. If “no”, what research and/or development will be required from this point onwards; what is the nature of the IP (i.e. IP to be licensed, product/service to be commercialised); how long do you think this processmight 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?

Notes to Question 8: For commercialisation to be achievable, ECU needs to be convinced that there is a clear pathway for developing a market-ready product, process or service or licensable intellectual property. If significant research or proving is required your opportunity ECU may need to prioritise other opportunities that are closer to marketable outcomes. As a guide, from this current point in time, the time to develop the IP to a point where it can be licensed should be no more than 1-2 years. Likewise, the time to develop a market-ready product/service should not be more than 3 years.

Yes: justification for licensable IP or marketable product/service:
No: R&D to be completed; nature of IP to be commercialised; time required; estimated budget; parties involved:

Commercial Potential

Once committed to commercialising their research there are many things ECU researchers can do to improve the likelihood of commercialisation success. For this reason ECU asks for information regarding the market and commercial potential. You may not have many, or even any, of the answers to these questions, but they will give you an appreciation of the information that will need to be obtained in order to make an assessment of commercialisation potential and on which to devise a viable commercialisation strategy and plan. Separately, as you proceed through the commercialisation process start to compile a list of relevant industry contacts.