Commercialisation

Monash University is committed to translating research into real-world solutions that make a difference. The commercialisation process is a way of developing innovative ideas and innovations and applying them to real-world problems.

Commercialisation involves a range of legal and commercial processes and concepts, such as intellectual property, patents and licensing.

The diagram below shows the standard process in the commercialisation of inventions and intellectual property developed in a university environment. Use it as a guide only as each invention has different requirements and we work with you to maximise the chance of commercial success.

Please contact us for further information on this process.

Patenting

Patenting is the most common route that we use to protect intellectual property (IP) developed by Monash researchers. This will usually involve filing an initial provisional patent application in Australia and then worldwide coverage can be obtained by filing through the Patent Cooperation Treaty (PCT) route.

Initial Patent

The initial provisional patent filing will usually be through the Australian patent office although each case will be examined individually in order to obtain the most appropriate patent coverage. The patent will be filed by a firm of external patent agents with expertise in the technology area, under the supervision of our in-house patent manager. This in-house expertise allows us to minimise external costs, obtain broad coverage and simplifies the process for the inventors. The typical cost will be in the range $5-10,000

PCT Filing

12 months after the initial filing in Australia, then a further filing designating most world-wide countries will be filed under the Patent Cooperation Treaty (PCT). At this stage it is also possible to add new data to the application, provided that this has not already been publicly disclosed. The cost range will be $10-20,000.

PCT Publication

The PCT application is published after a further 6 months after the PCT filing, a total of 18 months after the initial filing. This is the first point at which the application becomes public, and is available for searching through various publicly available patent databases.

National Filing

After 30 months the national filing strategy is decided, based on the potential value of the technology and the success of the marketing strategy. Countries are chosen to maximise coverage in potential markets while minimising costs, which can be considerable at this stage (in the $20-100,000 range). The patent application will then be translated (for certain countries) and sent for examination in individual country patent offices. Due to the costs involved at this stage we will always try to licence an invention before this stage with the expectation that the licensee takes on these costs. Where this is not possible we would consider paying the costs for patents considered to be of significant strategic importance.

Patents Granted

Once sent to the national patent offices the application is examined as to its patentability and questions raised by the patent office will be answered. After consideration the patent office will grant a patent based on those claims in the application that are valid. This process can take some considerable time, and can be 5-7 years after the original application. The cost is dependent on the number of countries and the complexity of the patent prosecution, but can easily stretch to several hundred thousand dollars. After patents are granted in individual countries then regular renewal fees are payable to keep patents valid, up to a period of 20 years from the initial filing, at which point the patent will lapse.

Publication

Patenting is not a barrier to publication, and we coordinate activities with the researchers in order to minimise any delays in publication and maximise protection of IP. We often work with inventors to file patents shortly before publication.

Marketing

Our team of business development managers work with you to market your technologies and innovations through a worldwide range of contacts, targeted to companies with the expertise to develop the technology.

Revenues

Monash has a revenue sharing policy to distribute funds from commercialising technologies to the inventors, faculty or department, and the central university. For further details see Statement on Patent Revenue Distribution (Link). As well as generating upfront revenues where possible we will also aim to maximise long term revenue over the life of the patent.

Do Not Publish

Before the initial patent application is filed it is important not to publish or otherwise disclose any of the information that will be included in the patent. This disclosure could be in the form of a lecture, poster at a conference, abstract or early publication of a paper on the internet. It is also important to consider your earlier work, as information in a previous paper, or a section in the discussion section may make your new invention obvious, and hence not patentable. If the information has been disclosed, or the research team decide to publish before a patent is filed then we can advise on the impact on patentability. It may still be possible to obtain more limited patent protection in a range of countries. This requires that the patent is filed within a specified time period, typically 12 months.

Care on Publication

For the next 12 months, prior to the PCT filing, we will work with you and provide advice prior to you submitting any new publication. We will then advise you on consequences of publication on patentability and hence possible value of the invention. There may also be aspects of the new publication that could be added to the PCT application or be patentable in their own right.

Marketing 1

After the provisional filing we will start marketing the invention to selected potential partners. This will be under confidentiality agreements where necessary. This helps to define the potential market and demand for the technology.

Free to Publish

After the filing of the PCT application, 12 months from the initial filing you are free to publish with no effects on patentability. We would still be keen to see any papers before publication to comment on any aspects relating to IP, or IP that may be generated in the future. High quality publications are often important in the marketing process as they help potential commercial partners.

Marketing 2

Further marketing will occur after the PCT publication. Detailed descriptions of the technology will be sent to a selected network of company contacts for evaluation, and the technology will be advertised on the website, at international conferences and in one to one meetings with company contacts. To facilitate this process the inventor is involved in providing information and pictures, and checking the accuracy of the material sent out. When specific technical questions are asked by the company then these will either be answered by the BDM, or the inventor as appropriate. We are keen to involve the inventors during the marketing process as they know the technology better than anyone.

Negotiations

Once a company has decided that it is interested in an invention, then we will negotiate a contract in order to maximise value obtained for the invention. The deal will usually involve licensing rights to use the IP to an existing company, but may involve other forms of venture, such as start-up companies when appropriate. With an experienced team of BDMs and extensive networks we can determine the most appropriate route to market and the potential value of the invention. It is important that the terms of any deal do not hinder the ability of the licensee to commercialise the technology through inappropriate financial terms, but do reflect the objective to achieve impact from Monash innovation.

Potential Revenues

It is always our intention to generate some revenue early on in any agreement. But we always balance this with the potential to realise long term value as this is where the potential to generate significant revenue usually lies. It is highly unusual to generate significant revenues in a short time period and most technologies that significant revenues do so after long time period, typically 5-10 or more years, but often with smaller payments as value is added to the technology.