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Intellectual property: top five best practice tips for researchers

Jason Watson, ITEK commercial lawyer

By Jason Watson
ITEK commercial lawyer

From Harry Potter to the Apple iPod, the purple wrapping of Cadbury's chocolates to the new Boeing 7E7 and even your research notes there's a common theme, and it's intellectual property rights.

Intellectual property (IP) is increasingly part of modern life. It's estimated that some 69 percent of the value of US publicly listed companies a whopping US$24.6 trillion is attributable to intangible assets such as IP. This applies equally to the University environment where we find IP of vast value in our processes, lecture materials, delivery methods, publications and research outcomes.

So what is IP? Intellectual property represents intangible assets created through intellectual endeavour. It generally consists of legal rights expressed in the form of patents, confidential information, copyright, trade marks, designs, circuit layouts or plant breeders' rights.

Being a non-physical asset it is easy to overlook IP's existence. This can result in unnecessary research through a 're-creation of the wheel' or, even worse, a breach of third party rights or dispute as to ownership.

Although the world of IP is complicated, there are some practical steps researchers can undertake to avoid problems and maximise potential IP rights. Here are my top five tips:

1. Undertake patent searching

Researchers will be familiar with undertaking general literature searches. For research which may lead to a new discovery, product or process this should include patent databases. Patent searching should be undertaken before the project commences and, for longer projects, every few months during the project.

Worldwide patent databases are freely available and contain more than 30 million patent documents. Many of these are not published elsewhere and contain more details than standard journal publications. For example, had anyone looked, a full description of the winged-keel of the yacht Australia II was publicly available at the Patents Office prior to the 1983 America's Cup during which many attempts were made to garner this 'secret' design. The best free websites for patent searching are: http://ep.espacenet.com/ (European and worldwide) and www.uspto.gov/patft/index.html (US only)

2. Keep your research confidential

Patents can be obtained to protect inventions which are new and novel. In order to be 'new and novel' the invention must not have been published or otherwise publicly disclosed anywhere in the world. This includes in papers, journal articles, conference presentations and generally any other disclose on a non-confidential basis. If you need to discuss your research outside your University research group a confidentiality agreement should first be executed to ensure that your inventive work will remain patentable. These are available at www.unisa.edu.au/res/legal/contract.asp#confidential

3. Keep good laboratory notebooks

Detailed laboratory notebooks should be kept and witnessed for all research which may have inventive outcomes. These can be very important to establish first inventorship and the right to an associated patent. ITEK Pty Ltd, UniSA's commercialisation company, has developed standard Laboratory Notebooks which provide guidelines on their usage. These can be obtained by contacting me (jason.watson@unisa.edu.au)

4. Keep it internal or use project agreements

During a typical research project, ideas may originate from many sources, including University employees, students and third parties. This collaborative scenario sets the scene for creating IP rights that may be co-owned by multiple parties. Unless the rights of each party are specified at the outset, for example in a written agreement, there is a possibility that certain parties may disagree as to ownership and use of the IP, or even worse, may be able to use and commercialise the IP without accounting to the others. Where students are involved in a UniSA project, a Student Project Participation Agreement should be executed. See: www.unisa.edu.au/res/legal/intprop.asp#students and www.unisa.edu.au/res/legal/contract.asp#student

Where a third party (industry partner, employee at another university etc), is involved in the project a Project Agreement should be executed. This will outline who owns any IP and how any commercial returns will be shared. Further details are available at www.unisa.edu.au/res/legal/default.asp

5. Seek advice

Your Business Development Manager and Research Services are generally the first ports of call in relation to any research and IP questions you may have. ITEK is also available in relation to IP issues including the identification, protection and commercialisation of valuable IP arising from your research. These resources are available at any stage during your research process.

Further general information in relation to IP is also available from IP Australia: www.ipaustralia.gov.au