Last updated: 
3 April 2017

Sourcing IP

Not all IP ventures arise from IP created and owned by one of the venture participants. Often they can develop from collaboration between a research and development (R&D) organisation (the IP source) and a funding business. IP sources exist globally as well as nationally.

R&D organisations such as publicly funded universities, medical institutes and (in Australia) the CSIRO may be suitable IP sources and usually have Technology Transfer Offices or equivalents to facilitate commercialisation externally. These R&D organisations have large IP portfolios, however it’s important to understand that their R&D staff may not be incentivised or trained under their terms of employment to participate strongly in commercialising their R&D. The IP can also have complex legal ownership issues or not be close to marketability.

An alternative type of IP source is a technology business incubator, sometimes known as an innovation centre. Other sources of IP include small-to-medium innovative private companies, and individuals.

Connecting business and research

Source IP is a digital marketplace specifically created to help businesses and researchers collaborate by facilitating quick and easy contact. It contains a list of available and licensable patents for business to find innovation and technology developed by Australia’s research institutes.

The Australian IP Toolkit for Collaboration also simplifies the management of IP in collaborations between researchers and business.

Forms of IP protection

If your IP strategy includes legally protecting your idea, brand, design or even the application of your idea, it’s important to understand the different forms of IP legal rights. Some forms of legal rights require registration, others do not.

We administers registered forms of legal protection in Australia including patents, trade marks, designs and plant breeder’s rights. You may also be able to obtain IP legal protection in forms not requiring registration include copyright and circuit layouts.

A trade secret is a form of IP protection that is an alternative to some forms of legal protection. It cannot be used simultaneously with legal protection for the same IP. Trade secrets may be partly implemented by use of confidentiality agreements, also known as non-disclosure agreements (NDAs). An NDA is a type of legal contract that can maintain secrecy, however it is not itself a form of IP protection.

IP disclosure

IP disclosure occurs when secret IP is revealed to the public in written form or verbally. The geographical location and extent of the disclosure are usually irrelevant.

One of the first actions taken by an IP owner, possibly even before commercialisation, may be to consider whether you need to file for a form of IP protection. This is because for some IP rights such as patents or designs, IP disclosure can affect the possibility of registration.

Any publicly available information that was published before the priority date of an application is referred to as ‘prior art’. This could be information that challenges the novelty of an invention or is similar to the claimed IP such as public description, drawing, demonstration or commercial sale.

Sometime after an application for legal protection has been filed, the IP is published online as part of the normal application process. You, as the IP owner, may choose to disclose it sooner. This choice is often preferred if you insist on early publication because you’re a professional researcher whose career prospects depend on the publication record, or if you wish to raise venture finance publicly.

Otherwise, it’s usually sensible for you to keep the IP secret for as long as possible to keep the available options open and to delay competitors’ access to the IP content.

Maintaining secrecy with non-disclosure agreements (NDAs)

NDAs, also known as confidentiality agreements, legally oblige one or more recipients (‘disclosees’) of secret IP provided by the ‘discloser’ to be kept secret for a specified period. An NDA does not cover public IP revelations (i.e. IP disclosures, discussed above), it’s limited to specific disclosees. 

NDAs can be ‘two-way’, when each party exchanges confidential information with the other.

Execution of NDAs is often one of the first steps taken in commercialisation so that potential participants in the venture, other than the IP owner, can consider the IP before it is publicly revealed.

NDAs can be essential for commercialisation to proceed in the case of undisclosed IP. At least, they help to establish if a potential venture participant is genuinely interested rather than simply accepting free information about potential opportunities.

In many cases, NDAs need only apply until the IP is disclosed in, say, a patent application publication. 

In any case, an IP owner can reveal the minimum information necessary to meet the terms and objectives of the NDA.

It’s important for both parties, but in particular for a smaller business, that the definition of the IP in the NDA is accurate and well defined to avoid problems if it’s breached.

Next step to consider: review the IP background.