Intellectual Property
Management Guide
for Cooperative Research Centres
Acknowledgements
This IP Management Guide has been developed for the CRC Branch of the Department of Industry, Innovation, Science, Research and Tertiary
Education.
The Department acknowledges the principal authors, Rob McInnes and Catherine Boxhall of DibbsBarker Lawyers.
Version
This IP Management Guide has been prepared for compatibility and consistency with the CRC Program Guidelines and template Commonwealth
Agreement and Participants’ Agreement current as at June 2012. These documents may vary over time, thus affecting the accuracy of this
guide. Each Cooperative Research Centre needs to consider this document in light of the provisions of its own Commonwealth and Participant
Agreements.
Disclaimer
This IP Management Guide contains general information for Cooperative Research Centres and their participants. It is not a substitute for
professional advice from a lawyer, patent attorney or other expert adviser regarding individual circumstances.
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Table of Contents
1
Introduction......................................................................................................................................................................... 3
2 What is Intellectual Property? ............................................................................................................................................ 4
3 Why Does Intellectual Property Matter to CRCs? .............................................................................................................. 6
3.1
CRC Program Guidelines........................................................................................................................................................ 6
3.2 Commonwealth Agreement.................................................................................................................................................... 8
3.3 Participants Agreement......................................................................................................................................................... 8
3.4 Transitional Agreements and Winding Up .............................................................................................................................. 8
3.5 Ownership and Rights of Use ................................................................................................................................................. 9
4 How to Manage Intellectual Property ................................................................................................................................ 10
4.1
Establishing an IP Management Strategy and Process......................................................................................................... 10
4.2 Identifying and Recording IP .................................................................................................................................................. 11
4.3 Making Decisions to Protect Centre IP ................................................................................................................................. 12
4.4 Tips for Managing IP Effectively ............................................................................................................................................ 13
4.5 Best Practice ........................................................................................................................................................................ 14
5 Making Decisions Regarding Utilisation of Intellectual Property...................................................................................... 17
5.1
Utilisation Methods ............................................................................................................................................................... 17
5.2 Influencing Factors ............................................................................................................................................................... 18
5.3 Key Issues in Licensing Arrangements ................................................................................................................................ 20
5.4 Winding Up and Post-CRC Utilisation ................................................................................................................................... 22
6 Case Studies...................................................................................................................................................................... 23
6.1
Establishment of a spin-off company for commercialisation by licensing .......................................................................... 23
6.2 Establishment of a spin-off company for supply of products/technical services .............................................................. 23
6.3 Skills transfer ...................................................................................................................................................................... 23
6.4 Exclusive licence.................................................................................................................................................................. 23
6.5 Widespread dissemination, with IP protection, through non-exclusive licensing ................................................................ 23
6.6 Publication direct to end-users ........................................................................................................................................... 24
6.7 Publication to wider audience.............................................................................................................................................. 24
7 Further Information and Assistance ................................................................................................................................ 25
8 Glossary of Terms ............................................................................................................................................................. 27
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Introduction
This IP Management Guide has been developed to assist Cooperative Research Centres (CRCs) and their participants in understanding and
implementing their obligations regarding the management and utilisation of intellectual property (IP) created under the CRC Program. This
document will also be useful for applicants seeking to join the CRC Program in developing IP management strategies for their applications, and
for those CRCs nearing the end of their funding cycle who are preparing transition and wind-up plans. Effective IP management should be a
focus of each CRC from the outset, in consideration of the CRC’s planned outcomes. Doing so will help ensure that the intellectual outputs of
CRCs’ activities enable and facilitate adoption of these outcomes, rather than raising barriers.
This Guide is intended to describe sound IP management practices across a range of circumstances, but is not intended to be prescriptive –
each CRC’s IP management strategies need to suit its objectives and the nature of its activities, while maintaining a focus on the CRC
Program’s primary objective of delivering significant economic, environmental and social benefits to Australia.
Information about different types of IP is contained in Section 1, and a glossary of terms used in this document is set out in Section 7.
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What is Intellectual Property?
Intellectual property (often referred to as IP) is a broad term used to describe creations and outputs of intellectual activity. Specifically, it
refers to the rights created by law to protect those outputs. Intellectual property rights are intangible, as opposed to physical, assets. The
traditional knowledge of indigenous communities may also be considered to be intellectual property, but because such knowledge is not yet
formally recognised in Australia as a right in the nature of intellectual property, it is not dealt with in this Guide.
The Convention Establishing the World Intellectual Property Organisation 1967 defines “Intellectual Property” as rights relating to:
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literary, artistic and scientific works
performances of performing artists, phonograms and broadcasts
inventions in all fields of human endeavour
scientific discoveries
industrial designs
trademarks, service marks and commercial aims and designations
protection against unfair competition
 all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields
In Australia, most forms of IP are regulated under statutory regimes. Other forms of IP are protected under general legal principles that have
been established over the years through decisions of the courts.
A brief overview of some of the key forms of intellectual property is set out below.
Type of IP right
Description
Registration
required?
Duration
Copyright
Protection for the expression of ideas, in respect of literary, artistic,
dramatic and musical works, as well as sound recordings, TV
broadcasts and films
No
Varies depending on
the nature of the work
Patents
Exclusive rights are granted for new and inventive devices,
substances, methods or processes
Yes
Up to 20 years
Designs
Protection of the visual features that give items a unique appearance
(such as shape, configuration, pattern and ornamentation)
Yes
Up to 10 years
Trademarks
Protection for brands, logos and other distinguishing features of
goods or services
Optional
(but desirable)
Indefinite
Plant Breeder’s
rights
Exclusive protection for new plant varieties
Yes
Up to 20 years (25
years for trees and
vines)
Circuit layouts
Protection of original layouts for integrated circuits
No
Up to 20 years
Confidential
information
Trade secrets and unpublished information, protected by contract
rights and principles of law
No
Indefinite (provided
obligation of
confidence is not
breached)
Some creative or inventive efforts may be able to be protected by different types of intellectual property rights.
Example
One of the areas that the Smart Services CRC is seeking patent protection is in gestures and techniques applied on and in respect of
interactive surface technologies. The Smart Services CRC has 8 patent families pending in that space, and the methods described have been
implemented using software, the source code of which is protected by copyright.
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Refer to Section 6 for other resources about intellectual property.
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Why Does Intellectual Property Matter to CRCs?
The CRC Program exists to foster collaborative innovative research. The fruits of that research are therefore of central importance. It is
through these research outcomes that the CRC Program’s key objective of bringing economic, environmental and social benefits to Australia
must be realised.
As with physical assets, intangible assets are both utilised during a CRC’s research activities, and created as an output of those activities. The
multi-party and cyclical nature inherent in the CRC Program means that centralised and systematic identification and management of IP assets
is key to the effective utilisation of CRC outcomes. This is reflected in the CRC Program Guidelines and template agreements, as outlined below.
For CRCs whose project outputs consist of technologies having identifiable commercial applications, the protection and management of IP is
generally pursued as part of the day to day operations of the CRC, and there is generally an identified manager within the CRC whose role
includes IP protection, management and utilisation. However, for CRCs that identify themselves as “public good” CRCs there is sometimes a
view that IP as a general concept is not relevant. However, even where CRC research outcomes are intended from the start to be made
available widely and free of charge, IP protection may be vital to preserve the academic and social integrity of the outcomes.
Example
A CRC’s research involves the development of a program for the teaching of optimal parenting practices, which is intended to be delivered
free of charge on the basis of need. These materials include published teaching resources, and training materials for facilitators. If the CRC
simply makes the materials available without any constraints, it is likely that unskilled people may set themselves up as trainers of the
courses on a for-profit basis, or that the materials may be modified or used by others in ways that the CRC would not approve of. The CRC
therefore registers the name of the course as a trade mark, obtains any necessary assignments or licences of the copyright in the materials
from the authors, asserts that copyright to ensure that the CRC owns or controls the copyright in any additions to the materials created by
third parties, and ensures that those wishing to train the course enter into appropriate confidentiality and other written undertakings, so
that the course retains its integrity and remains free at the point of delivery.
CRC Program Guidelines
The primary objective of the CRC Program is to deliver significant
 economic,
 environmental, and
 social
benefits to Australia, by supporting end-user driven research partnerships between publicly-funded researchers and end-users to address
 clearly articulated,
 major challenges
 that require medium to long-term collaborative efforts
One of the four core activities CRCs are required to perform is utilisation activities to deploy research outputs and encourage take up by endusers.
‘Utilisation’ refers to technology transfer and take-up end use of research outputs by end-users. End-users may be individuals, organisations,
industries or communities, but they need to be capable of deploying a CRC’s research outputs to deliver economic, environmental and/or social
benefits to Australia.
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The CRC Program Guidelines give specific examples of ‘commercial’ utilisation, such as:
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the manufacture, sale, hire or other exploitation of a product or process
the provision of a service incorporating CRC intellectual property
licensing any third party to do any of those things, or
otherwise assigning CRC intellectual property.
While the CRC Program Guidelines do not give any specific examples of ‘non-commercial’ utilisation, this may include activities such as:
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the publication of educational materials which are provided free of charge to relevant organisations
organising events to raise awareness of an issue, or
provision of free agricultural extension activities for farmers.
Case Study 1 – Commercial Utilisation
Vision CRC’s high oxygen permeable soft contact lenses were developed in collaboration with CIBA Vision in the 1990s. CIBA Vision’s NIGHT &
DAY brand extended wear contact lenses generate around $2 billion per year in global sales, and to date have returned over $150 million in
royalties to the Vision CRC and its partners, and over $100 million in research fees.
Case Study 2– Non-Commercial Utilisation
The Antarctic Climate and Ecosystems CRC has made its sea level rise planning tools available online, free of charge, at
http://www.sealevelrise.info/. These are used by government planners as well as private engineering and environmental consultants. While
there is no charge for the use of the tools, the CRC asserts ownership of the tools, and use of the tools is conditional on the completion of
training.
The most appropriate form of utilisation will depend on the nature of the relevant research output, and the type of end-users who are best
placed to deploy that output and bring benefits to Australia. CRCs should bear in mind that while publication of some research outputs without
restrictions on further use may be appropriate in some cases, in others it may be appropriate to delay publication until a patent application can
be filed and a commercial partner can be granted rights to exploit that patent to bring a product to market. There are certain technologies for
which exclusivity, supported by intellectual property rights, is likely to be a prerequisite for utilisation and benefit to the public. For example, in
the area of human therapeutics, the costs of drug development and the regulatory hurdles to be overcome ensure that no drug candidate will
reach the market, and assist sick people, unless an established pharmaceutical company can be offered an exclusive position in the drug via
patent protection.
Even in CRCs whose research outcomes plainly have commercial relevance, it is sometimes suggested that an “open source” approach may be
taken to commercialisation, involving making outcomes freely available on a non-exclusive basis. While this is a legitimate approach in many
cases, the term ‘open source’ does not imply an absence of intellectual property protection or enforcement. The conditions under which open
source dissemination occurs are enforced as conditions of intellectual property rights. For example, if the creator of a computer program
wishes to ensure that the program is always disseminated for free, it is only by the threatened enforcement of copyright that this condition can
be imposed on others who might wish to charge for copies of the program.
Responsibility for the protection and/or utilisation of each CRC’s IP should rest with the participant that has the greatest capacity to do so. 1 In
recent years, the majority of CRCs have been structured in a way that involves the formation of a company (or separate companies) to own,
manage and pursue the utilisation of IP.
The CRC Program Guidelines note that strong governance and management of intellectual property are essential to the success of any CRC,
while providing flexibility to best suit the relevant CRC’s objectives. Right from the outset, applicants for the CRC Program must ensure that
their proposed structure deals effectively with the ownership and management of IP.2 However, the focus of implementation of the Guidelines
will change over time; from the establishment of processes and procedures on start-up, to the identification and protection of intellectual
1 CRC Program Guideline 7.4.3
2 CRC Program Guideline 5.1.6
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property as research progresses, to the making and implementation of commercialisation decisions, and finally to arriving at appropriate
wind-up arrangements.
Commonwealth Agreement
Each CRC is legally obliged to comply with the terms of its funding agreement with the Commonwealth. While funding agreements vary
depending on the round in which the CRC was funded and the structure of the CRC, each CRC should be aware of its obligations regarding
existing IP contributed by its participants as well as ownership, management and use of IP the CRC creates.
The current template Commonwealth Agreement requires CRCs to use their best endeavours to ensure the “utilisation” of research outputs by
persons, organisations, industries or communities capable of deploying those outputs to deliver economic, environmental and/or social
benefits to Australia. Each CRC is also obliged to ensure that any utilisation of Centre IP in its research outputs (whether by a CRC company,
participants or third parties) maximises the national benefits accruing to Australia. The template also includes provisions regarding the
utilisation of IP in research outputs, including by third parties, such as compliance with agreed utilisation milestones.
In addition to potential liability for breach of contract, any failure to comply with these obligations may entitle the Commonwealth to suspend or
terminate further funding, and/or make the CRC repay Commonwealth funding that was spent on utilising the research outputs.
Effective IP management systems will also assist CRCs with their reporting and planning obligations under their Commonwealth Agreements.
Participants Agreement
Each CRC’s Commonwealth Agreement includes an obligation that the intellectual property provisions of that agreement are reflected in the
agreement between the CRC’s participants (Participants’ Agreement). However, individual participants are generally not obliged to use best
endeavours to utilise research outputs, the requirement for which usually rests with the CRC entity.
The current template Participants’ Agreement for both incorporated and unincorporated CRCs includes the following objectives:
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promotion of the objective of the CRC Program to deliver significant economic, environmental and social benefits to Australia by
supporting end-user driven research partnerships between publicly-funded researchers and end-users to address clearly articulated,
major challenges that require medium to long-term collaborative efforts, and
as an ancillary and supportive purpose, to “utilise” intellectual property developed in the course of carrying out the CRC’s activities in
such a manner as to ensure that the maximum benefit accrues to Australia, including Australian industry, the Australian environment
and the Australian economy generally.3
The Participants’ Agreement for each CRC will contain provisions regarding the ownership and use of Centre IP. Centre IP may be beneficially
owned by a CRC company or shared between the participants, depending on the structure and tax status of the relevant CRC.
The Participants’ Agreement will also set out the process for making decisions regarding protection of Centre IP by patent or other formal
rights. The CRC Program Guidelines state that responsibility for the protection of Centre IP should rest with the participant with the greatest
capacity for this.
In order to adequately identify and manage background IP contributed by participants and Centre IP produced by the CRC, as well as to
promote the effective utilisation of Centre IP, appropriate management systems need to be implemented and maintained. IP management
systems and registers are discussed further in Section 3.2 below.
Participants may also be required to identify and communicate Centre IP they generate or develop and not deal with any interest they might
hold in Centre IP other than as permitted. This means that participants must also ensure they have adequate procedures in place to ensure
they are able to comply with this obligation.
Transitional Agreements and Winding Up
Each CRC is required to prepare a transition plan, describing its strategy for maximising the utilisation of its research outputs following the
cessation of Commonwealth funding. One of the intentions of the plan is to identify potential markets (i.e. users and consumers of the research
outputs) for the Centre’s intellectual property. Transition plans need to include:
Clause 5.1 of template Participants Agreements for incorporated and unincorporated CRCs (v3.0)
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a description of the IP developed or expected to be developed by the CRC
an assessment of the value (both monetary and non-monetary) and competitive advantage of that IP
the governance, management and operation mechanisms employed by the CRC to ensure that the return from its IP is realised in a
manner that will maximise national benefits (including alternatives and adjustment mechanisms)
the resources, structures and mechanisms required to ensure that utilisation and transition objects are achieved
the proposed business model or pathway for transferring the CRC’s IP to end-users, and
the potential sources of investment capital, if required, and engagement with SMEs.
The Wind-Up Guidelines for CRCs also require that CRCs develop a wind up plan in respect of the winding up of their activities at the end of their
funding period. This plan must address the utilisation of the outcomes of the CRC’s activities, as well as IP management. CRCs are required to
put structures and procedures in place to ensure ongoing management of the CRC’s IP following the grant period, such as any assignment for
further development or commercialisation and distribution of commercial returns. Each item of IP created by the CRC must be described, its
proposed ownership arrangements specified and the rationale for these arrangements given. This detail can largely be drawn from the
transition plan the CRC has been developing and updating over its grant period.
If the CRC has been managing its IP well throughout the grant period, preparation of the transition and wind-up plans will be much easier.
Refer to Section 4.4 for further information regarding the treatment of CRC IP on winding up, including case studies.
Ownership and Rights of Use
As with physical assets, it is possible for the legal and beneficial ownership of an item of intellectual property to belong to different parties. For
example, the management company of an incorporated CRC may be the legal owner of patent rights for inventions from that CRC, and so be
named as the owner of the patent rights on relevant official registers. The participants of the CRC (or at least those involved in the creation of
the relevant invention) may be beneficial owners, with an entitlement to a share of the proceeds from commercial use of that invention and a
right of veto over any transfers or licences of the patent rights.
Separating legal and beneficial ownership can have many practical benefits, such as avoiding the need for multiple joint owners of an IP asset
to sign and manage documents and contracts relating to that IP. CRCs need to ensure that their participants are familiar with the provisions of
their Participants’ Agreement dealing with legal and beneficial ownership of Centre IP, to ensure that their IP management systems and
utilisation activities appropriately reflect these.
While legal owners of IP assets are, in the absence of any contractual restrictions, able to use and exploit the rights in those assets, beneficial
owners do not automatically have an implied licence to do so. Subject to some limited exceptions permitted by law, CRC participants who are
not legal owners are only entitled to use Centre IP (whether such use is commercial in nature or not) in the manner specified in the relevant
Participants’ Agreement or other contracts. Where contemplated use is not covered in those contracts, consent will need to be obtained from
the legal owner of the relevant IP.
Publication of Centre IP can only occur with the prior consent of the legal owner of the Centre IP, which may be given in the relevant
Participants’ Agreement or a project-specific contract. As public disclosure of an invention or know-how can destroy its commercial potential,
procedures allowing adequate time for review and assessment of proposed publications need to be implemented and followed.
It is essential to ensure that these matters are discussed from the initial planning stages of each new CRC, and clearly documented in the
Participants’ Agreement. It may be appropriate for different arrangements to be made for specific projects.
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How to Manage Intellectual Property
Given the wide variety of activities of and participants in CRCs, coupled with differing nature of IP rights, there is no “one size fits all” strategy
for managing IP. For example, a CRC that has environmental benefits to arid regions as a primary objective is likely to adopt a vastly different
IP management strategy than one that is focussed on delivering efficiencies and economic benefits to commercial entities in the manufacturing
sector. However, as all CRCs are focussed on delivering the benefits of research to end-users, the management of those research outputs
must of necessity be a focus of all CRCs.
Some general principles are set out in this Section 3, while various utilisation methods are discussed in Section 4 below.
Establishing an IP Management Strategy and Process
An IP management strategy consists of more than just maintaining a register of background and Centre IP in order to comply with the
Commonwealth Agreement. An IP management strategy should ensure that the importance of IP is recognised throughout the CRC, and that
efforts are made to maximise the value (which may not be solely financial) of IP assets through the most appropriate methods of protection
and utilisation.
At a minimum, a good IP management strategy should consist of policies and processes addressing the following:
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acquisition and use of intellectual property of participants and third parties
identification and recording ownership of new IP created
protection of new CRC IP (where relevant depending on the nature of that IP)
sharing and use of both background IP and new CRC IP by CRC participants
sharing and use of CRC IP for commercial gain
sharing and use of CRC IP for public good without direct commercial gain
balancing considerations of publication of research with protecting IP
disposal of CRC IP, and
management and decision making processes in relation to the above matters
An IP management strategy should also include a framework for the categorisation of IP assets by relative value, and may also include
reporting and review mechanisms. Recognition of individual researchers’ contributions to the creation of new IP may also be covered, although
this will generally be done under each participant’s IP policies rather than at the CRC level. In addition to developing and implementing their
own IP management strategies and processes, CRCs should ensure that their participants have processes in place to assist in feeding
information to the CRC necessary for the CRC’s IP management.
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Example
The following hypothetical illustrates how the stages of an IP management strategy might help to achieve a CRC’s goal of utilisation of
research outputs for the benefit of Australia.
1.
A project is proposed. The researchers identify the background IP of two university participants and a company participant. The
researchers and CRC staff then confer to consider what IP rights may be created in the course of the research that will protect the
outcomes and aid in their commercial uptake.
2.
Having identified IP inputs and likely outputs, the CRC then reviews the “IP landscape”, to identify any likely constraints on the
protection and use of the project outputs. It is recognised that a third party holds a patent that the project outputs are likely to
infringe. Armed with this knowledge, the CRC approaches the third party to negotiate an option to take a licence of the patent. The third
party sees benefit in participating in the project because the project may create a new application of its technology.
3.
After negotiating and documenting a project agreement, the project proceeds. Regular review meetings are held, at which IP protection
is discussed. Potentially patentable inventions are referred to patent attorneys, but attention is also paid to ensuring that authors of
copyright works are identified, and that confidentiality agreements are used to document the existence and protection of trade
secrets.
4.
On completion of the project, the CRC consults the project participants and other CRC participants before determining the best path to
utilisation for the project outcomes. On determining that considerable further investment will be needed, and regulatory hurdles will
need to be overcome, before the outcomes can become a useful product, the CRC decides to look for a commercial licensee. The CRC
reviews the relevant project agreements and IP ownership and protection documents, before preparing an outline of the project
outcomes.
5.
The CRC approaches potential licensees, giving priority first to the commercial participant that participated in the project, then to its
other commercial participants, then to outside parties. The CRC ensures that the deal terms are structured so as to give favourable
terms for the utilisation of the project outcomes by the proposed licensee’s Australian customers.
The CRC ensures that the ongoing commercialisation performance of the licensee is in accordance with the licence terms, and on windup, that appropriate arrangements are in place to ensure that the CRC’s obligations continue to be performed, and that the licensee’s
performance continues to be monitored.
6.
Identifying and Recording IP
Why bother to identify and record IP?
Aside from each CRC’s contractual obligation to maintain a register of background and Centre IP, systems for identifying and recording IP have
benefits for both the CRC and participants. Provided such systems are well designed and implemented, they:
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facilitate the CRC’s obligations to identify background IP contributed by participants, including any constraints on its use
assist in identifying background IP that may be necessary for the utilisation of Centre IP
ensure research outputs from the CRC are identified and monitored
facilitate utilisation of research outputs (what can’t be reported can’t be managed, and what isn’t protected can’t be commercialised)
fulfil record keeping, accountability and good governance obligations
ensure resources are used efficiently and effectively (e.g. through avoidance of duplication in the creation or acquisition of IP)
lower the risk of infringing IP rights of third parties or breaching contractual obligations regarding use of others’ IP (including
contravention of the terms of ‘open source’ software used in CRC activities), and
ultimately assist in fulfilling the CRC’s objective of delivering economic, environmental and social benefits to Australia through
utilisation of its research outputs
Identifying New IP
Each CRC should develop methods for identifying new Centre IP that are best suited to its activities and participants. Some participants may
have existing mechanisms which could be utilised to assist this process.
Where a CRC’s activities are likely to result in patentable inventions, standard invention disclosure forms will be helpful. Many patent attorney
firms can supply (and, if necessary, customise) these forms. Where a CRC’s primary method of promoting utilisation of its research outcomes
is publication, a system for centrally recording all journal and other submissions should be maintained.
Other mechanisms include ensuring that individual project plans contain details of IP required for the conduct of the project, as well as IP
expected to be created from the research and strategies for its utilisation. Progress and final reports to the CRC’s management team should
provide updates on these matters.
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Recording IP
An IP register is essential to ensuring each CRC is able to obtain the maximum benefit from its research outputs, in addition to being a legal
obligation. An IP register is essentially an electronic database of the identity and status of IP assets, which also facilitates monitoring of critical
dates. The following table sets out some of the features that need to be included in an IP register, along with other features that are desirable.
Essential Features of an IP Register
Non-essential, but desirable, features of an IP
Register
Project details, including participants involved
A systematic internal reference number
Description of relevant IP (including version numbers for software or
other copyright works)
The date of creation of the IP and publication date for
copyright materials
Nature of relevant IP (e.g. copyright, patent right, confidential
information)
Where multiple creators, authors or inventors, details of
the portions of the IP to which their work related (if
identifiable)
For registered rights such as patents, filing date, official number, status,
critical dates (including expiry dates for IP rights with a definitive
lifespan)
The location of original records, laboratory notebooks,
prototypes, biological materials etc. relating to the IP
Contributor (for background IP) and details of owner if not the
contributor
Planned utilisation pathways
Restrictions or conditions on use of background IP (e.g. if only for a
specific project or for all of the CRC’s activities)
Possible licensees and commercial partners
For CRC IP, names and employers of creators, authors, inventors and
others involved in creation of the relevant CRC IP
Third party IP that is necessary or desirable to combine
with the Centre IP for more effective utilisation
Details of assignments, confidentiality, licences, co-ownership and other
agreements relating to the IP (e.g. escrow agreements in respect of
software code)
Results of freedom to operate patent searches and
other information regarding potential risks or claims
associated with the IP
External patent attorneys or other professionals assisting with obtaining
or maintaining registered rights
Details of any security interests or encumbrances
granted over the IP (including interests recorded on the
Personal Property Securities, Patents, Designs and
Trade Marks Registers)
Known claims or disputes regarding the IP
Information relevant to the valuation or commercial
potential of the IP
Making Decisions to Protect Centre IP
The research outputs of many CRCs may be protectable by registered IP rights, such as patents, designs and plant breeders’ rights. Each CRC’s
IP management strategy needs to address how decisions to seek and maintain registered rights are made, particularly in light of the costs
associated with obtaining and enforcing registered rights, and the proposed utilisation pathways for the relevant research.
A sample checklist for assessing whether or not registered protection should be sought is set out below. It can be helpful to obtain assistance
from a patent attorney or other expert at an early stage, to assist with determining the threshold issue of whether registration is likely to be
obtained.
Sample IP protection assessment checklist
Purpose and value
□ What is the intended use and purpose of the IP asset?
□ What is its value to the CRC (quantitive and/or qualitatively)?
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□ Is protection via registration required to maintain or realise its value?
CRC’s objectives and policies
□ What are the CRC’s objectives?
□ What are the CRC’s policies with respect to IP protection?
□ What is the CRC’s approval process for protection of IP?
□ What resources does the CRC have to maintain registration of the IP?
Forms of IP protection available
□ What types of IP protection are relevant (patent, copyright, trade secret etc)?
□ What form of protection is most suitable for this asset?
□ Does the IP require registration? What is the cost of obtaining registration?
□ How will the IP rights be enforced infringed? Will they be enforced by the CRC?
Determining appropriate protection
□ Will the registration provide any useful protection for the CRC or potential utilisation partners?
□ Do the benefits of registration merit the costs of registration?
□ Is registration necessary to maintain or enhance the operational or commercial value of the IP?
□ If protection is not sought, will the operational value of the IP be lost or reduced?
□ Will the IP be adequately protected without registration?
□ Can registration be sought to protect commercial opportunities, while still ensuring that the IP can be published to assist further
research?
□ Can the IP be easily reverse-engineered or reproduced?
□ Is the need to be able to commercialise the IP asset important?
□ Have other relevant factors been considered?
Tips for Managing IP Effectively
The Board of a CRC, assisted by senior management, is ultimately responsible for creation of an IP-aware culture within the CRC, where the
value of intellectual activity within the CRC and the role IP rights have to play in its utilisation are recognised and respected.
In some CRCs, this may require raising awareness of and dispelling misconceptions that IP is only important for those CRCs with more
‘commercial’ objectives. Senior management should ensure that intangible assets are managed and used just as well, if not better, than
physical assets in a way that is efficient, effective and ethical. Accountability processes such as employee KPIs and performance reviews
should include IP management matters.
IP management works best when it is integrated into an organisation’s everyday business processes. If IP management is seen as, or
communicated as, a legal add-on, it will not be effectively carried out.
Resources and structural support need to be provided to ensure that a CRC’s IP is managed and utilised to its full potential, with the nature and
focus of the support changing as the CRC progresses through its life cycle.
Such support may take the form of:

establishing an IP/commercialisation/utilisation committee (either as a sub-committee or a delegated committee of the Board) to
discuss strategic IP matters and make recommendations to the Board or other persons responsible for making decisions regarding
the protection and use of Centre IP
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



appointing an IP manager or officer who is responsible for day-to-day management of IP used and created by the CRC, including the
maintenance of the IP register
identifying persons with expertise in IP within the CRC, to provide internal advice and act as ‘IP champions’
providing access to independent advisers such as patent attorneys and IP lawyers to obtain professional advice on the best methods
for protection of IP, and
allocating resources for training and education on IP management matters.
Everyone involved in the conduct of research and utilising the outcome of that research within a CRC needs to have at least a basic
understanding of the nature and types of IP, the CRC’s responsibility to identify, record, manage and utilise that IP and the CRC’s IP
management strategy. Such awareness may also assist in reducing the risk of the CRC’s activities infringing the IP rights of third parties.
Refer to Section 6 for details on how to obtain further information and assistance.
Suggested ways for promoting IP awareness and skills
 Clearly communicating the CRC’s IP management strategy, including any interaction with the IP policies of participants
 Including an IP section on the CRC’s intranet, containing basic information, the CRC’s IP management strategy and links to resources and
updates
 Including IP content in the CRC’s other training sessions and materials
 Holding regular sessions with experts to enable the dissemination of knowledge and the opportunity to discuss issues relevant to the
CRC, either on a formal or informal basis
 Encouraging relevant staff to undergo external training or attend conferences to increase their knowledge regarding IP matters and
utilisation strategies
 Addressing IP issues at the initial project planning stage, including background or third party IP required for the research, expected
outcomes and likely utilisation methods
 Communicating significant IP-related events within the CRC and acknowledging the contributions of individual researchers responsible
for the creation of that IP (e.g. the grant of a patent for an invention made by CRC researchers or the publication of a training resource
developed by the CRC under a Creative Commons licence)
Communicating significant IP-related events within the CRC and acknowledging the contributions of individual researchers responsible for the
creation of that IP (e.g. the grant of a patent for an invention made by CRC researchers or the publication of a training resource developed by
the CRC under a Creative Commons licence)
Regular reviews of the CRC’s IP register will assist in identifying opportunities for further research or development, or for utilisation, or for
identifying protection expenses may be avoidable (for example, patent expenses that could be transferred to a third party as a condition of
commercial rights to use that patent).
Mechanisms need to be implemented to ensure that restrictions on use of a participant’s background IP are communicated to those
researchers involved in projects utilising that background IP. IP that is made available by non-CRC participants (such as consultants) should
also be recorded in the CRC’s IP register and communicated to those involved both at the research stage and in implementing the outcomes of
projects in which that third party IP was utilised.
Similarly, where authors of copyright material developed for a CRC retain the right to use that material for teaching or other purposes
(typically under university IP policies), protocols should be established to ensure the CRC’s role in development of the material is appropriately
acknowledged.
Best Practice
In addition to the contractual obligations imposed on CRC companies and participants outlined in Section 1, participants may be subject to
policies regarding the creation, management and use of IP and other intangible assets.
Examples include the Financial Management and Accountability Act 1997 , which requires Australian Government agencies to implement the
Intellectual Property Principles for Australian Government Agencies to ensure their IP assets are managed in an efficient, effective and ethical
manner. State Government agencies may also be required to comply with policies regarding management and use of IP. Universities generally
have intellectual property policies which their researchers are required to comply with, as do many large or innovative corporate
organisations.
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Two examples of IP management principles from the public sector, including the National Principles of IP Management for Publically Funded
Research, are set out below. Regardless of whether or not a particular CRC is bound by these, such documents provide useful guidance on IP
management for research that is publicly funded.
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Example 1: Intellectual Property Principles for Australian Government Agencies (extract)
1.
Australian Government agencies are responsible for managing IP in their control or custody in an effective, efficient and ethical
manner.
2.
Agencies should periodically evaluate the overall effectiveness, including costs, risks and benefits of the policies and practices they
have in place for the management and use of IP.
Each agency should have an IP management policy which reflects its objectives and these IP principles.
3.
4.
5.
Implementation of the IP management policy should be supported by appropriate training and resources, including access to expert
advice.
Agencies should maintain appropriate systems and processes to identify and record IP
6.
Agencies should have strategies and guidelines to ensure that IP is protected in an appropriate manner.
7.
Agencies should have procedures in place to reduce the risk of infringement of the IP rights of others.
8.
Agencies should maintain a flexible approach in considering options for ownership, management and use of IP
9.
Agencies should recognise innovation and creativity in the development of IP in an appropriate manner which is consistent with agency
objectives.
…
13. Agencies should be responsive to opportunities for commercial use and exploitation of IP, including by the private sector.
…
15. Where IP is commercialised or disposed of, agencies must do so in an accountable manner consistent with Australian Government
legislation, policies and guidelines.
Source: Attorney-General’s Department, Intellectual Property Principles for Australian Government Agencies http://www.ag.gov.au
Example 2: National Principles of Intellectual Property Management for Publicly-Funded Research
1.
2.
3.
Institutional policies: Research institutions will have policies approved by their Governing Body relating to the ownership, protection
and exploitation of IP.
Identification of IP: Research institutions will have procedures that provide support to publicly funded researchers so that they can
recognise when their discoveries may have potential commercial value and provide for a review process to identify IP that can be
protected and/or exploited.
Protection of IP: Research institutions will have policies that make clear to staff their responsibilities in relation to IP protection
including, where appropriate the maintenance of research laboratory records and the prevention of premature public disclosure of
research results prior to obtaining IP protection. Institutions should provide, wherever possible, assistance to researchers in fulfilling
these obligations and responsibilities as well as rewarding and encouraging their participation in any subsequent commercialisation
process.
4.
Ownership of IP: Public funding agencies should have a clear policy on whether they will claim any ownership and/or associated
rights for IP generated from their supported research…institutions will have policies and relevant procedures in place for determining
the subsequent ownership and/or assignment of IP rights...institutions will also have clear policies [regarding] ownership of IP
generated during [students’] study, research and training…
5.
Assessment of existing IP: Institutions will have procedures in place to guide researchers in assessing the existing IP in the field that
is likely to affect their research in order to determine their freedom to operate in that field of research.
6.
Management of IP: Research institutions will have procedures for the regular review of IP and associated commercial activities and
outcomes arising from publicly funded research.
Research institutions will have procedures in place to provide advice to the creators of the IP on the options that are available for
commercialising IP.
7.
Sharing of benefits: Research institutions will have policies that recognise the rights and needs of all stakeholders involved in the
research supported by public funds.
These policies will define the way in which benefits from the development and exploitation of the IP will be allocated.
8.
Transparency and reporting: In order for funding agencies to fulfil their reporting requirements to the government on the outcomes of
the funded research, research institutions must be in a position to report annually on IP management of their publicly funded research.
9.
Potential conflict of interest: Research institutions will have policies and procedures that provide guidance in relation to potential
conflicts of interest concerning ownership, management, protection and exploitation of IP.
Source: The Australian Research Council et al, National Principles of Intellectual Property Management for Publicly-Funded Research
http://www.arc.gov.au
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Making Decisions Regarding Utilisation of Intellectual Property
Decisions regarding the utilisation of a CRC’s research outputs are some of the most important decisions that a CRC is likely to be called upon
to make, given a CRC’s obligations under the Commonwealth Agreement to ensure utilisation of outcomes and to seek to fulfil the objective of
bringing economic, environmental and social benefits to Australia.
In determining the optimum model for utilisation, the ultimate beneficiaries (the Australian people, environment and economy) need to be kept
in mind. Research and commercial participants may have different experience in utilisation methods, and all participants should be open to
learning from others’ experience and be receptive to utilisation models that they may be less familiar with.
Utilisation Methods
There are many ways in which the outputs of a CRC’s intellectual endeavours can be utilised in order to benefit the Australian economy, public
and environment. Some examples are given below.
Examples of ways in which CRC IP may be utilised
 Publication of research results in an academic journal or via a community-focussed website
 Development of educational materials which are made available free of charge under an open source (such as a “Creative Commons”)
licence, with the author also being entitled to use such materials as part of the curricula of a research institution where they have
teaching responsibilities
 Establishment of a spin-off company, created for the purpose of attracting investment and exploiting a commercial product
 Making source code of software available under an open source licence for other developers to embed in their software products
 Licensing software products on commercial terms
 Licensing new technology on an exclusive basis (subject to performance criteria, i.e. ‘use it or lose it’ provisions) to a company with
existing networks enabling the exploitation of a new product or process
 Licensing efficiency-creating technology to CRC participants and other Australian companies on a non-exclusive basis
 Making research results available to governments and other decision-makers, to influence policy setting and development of standards
According to the CRC Program Guidelines, responsibility for the utilisation of Centre IP rests with the participant (whether end-user, university,
publicly-funded research organisation or a CRC entity) that has the greatest capacity for this. 4 The participant with the greatest capacity is
not necessarily the one with the deepest pockets. Consider factors such as internal expertise and past experience, existing relationships and
infrastructure, and alignment with organisational values and strategies.
Open Source Licensing
‘Open source’ licensing is increasingly being used in respect of software and other copyright material. Open source licensing is not an
‘alternative’ to IP rights – in fact it relies on the fact that copyright exists, and it is up to the owner of that copyright to determine the
conditions on which other people are able to use the subject matter of that copyright.
As there are various types of open source licences available, CRCs wishing to utilise Centre IP in this manner need to ensure they select the
licence model that best suits their objectives. For example, the Free Software Foundation has developed both the GNU General Public Licence
(‘copyleft’ licence) and a number of other licences with varying conditions.
The various Creative Commons licences for use of copyright material (other than software) are summarised in the table below.
Type of Creative Commons
Licence
Attribution
CC BY
Description
This licence lets others distribute, remix and build upon a work, even commercially, as long as
they credit the original creator/s (and any other nominated parties). This is the most
accommodating of the licences in terms of what others can do with the work.
CRC Program Guideline 7.4.3
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Type of Creative Commons
Licence
Attribution
- Share Alike
CC BY-SA
Description
This licence lets others distribute, remix and build upon the work, even for commercial purposes,
as long as they credit the original creator/s (and any other nominated parties) and license any
new creations based on the work under the same terms. All new derivative works will carry the
same licence, so will also allow commercial use.
In other words, you agree to share your materials with others, if they will share their new works
in return. This licence is often compared to the free software licences, known as ‘copyleft.’
Attribution
- No Derivative Works
CC BY-ND
Attribution
- Noncommercial
CC BY-NC
Attribution
- Noncommercial-Share Alike
CC BY-NC-SA
This licence allows others to distribute the work, even for commercial purposes, as long as the
work is unchanged, and the original creators (and any other nominated parties) are credited.
This licence lets others distribute, remix and build upon the work, but only if it is for noncommercial purposes and they credit the original creator/s (and any other nominated parties).
They don’t have to license their derivative works on the same terms.
This licence lets others distribute, remix and build upon the work, but only if it is for noncommercial purposes, they credit the original creator/s (and any other nominated parties) and
they licence their derivative works under the same terms.
Source: Creative Commons Australia, Creative Commons licences v3.0 http://creativecommons.org.au/licences
Sources of further information regarding open source licensing can be found in Section 6.
Influencing Factors
There are a wide range of factors that will influence the most appropriate utilisation method for particular Centre IP. Consideration should be
given to all forms of utilisation, as the most obvious or straightforward method (or the first proposal by an interested party) may not result in
the greatest benefit. It is not enough to simply publish or release material into the public domain for utilisation to occur. CRCs should develop
and employ sound strategies to ensure that the path to utilisation is clear and the benefit accruing to Australia is maximised.
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Example 1
A CRC has developed an innovative method to capture and store solar energy. The CRC decides to publish this method in an academic
journal, on the assumption making the technology freely available is the best way to transfer it to end-users for the benefit of Australia.
Unfortunately implementing the new system requires a significant cost outlay, and requires practical skills that are difficult to learn just
from reading an article. As a result, there is limited take up of the technology in, and thus benefit to, Australia. It is only after a Chinese
company further develops and improves the technology, patents its improvements, and creates an off the shelf commercial product, that the
technology becomes available in Australia. For reasons of both cost and lack of access to the patented improvements, Australian solar
companies cannot compete, and the need to import the technology contributes to Australia’s adverse balance of payments.
It may have been more appropriate for the CRC to obtain patent protection for the new method, and establish a spin-off company with the
exclusive right to exploit the technology. CRC researchers transfer technical skills to the company’s personnel, who then provide advice and
technical assistance to its customers. Exclusivity enables the company to obtain the necessary capital from investors, and the performance
obligations in its contract with the CRC give the company an incentive to ensure the technology is offered on reasonable terms so it is taken
up by as many end-users as possible. Even if the spin-off company were to license the technology to China after further developing it in
Australia, the value of the development phase would be captured in royalty flows back to the Australian economy.
Example 2
A CRC has developed software that is useful for improving the speed and reliability of digital communications. Making the source code
available for anyone in the world to use free of charge is unlikely to maximise the benefit to Australia, and will result in confusion and
inefficiency as multiple users each create and disseminate their own version of the software.
Instead, the CRC decides to grant free licences to not-for-profit and regional organisations and to charge Australian organisations on a costrecovery basis. The CRC does not have the resources to exploit the software overseas, so grants an Australian company the right to do so,
in return for the payment of royalties. Any changes to the software must be fed back to the CRC or its licensee, to maintain the integrity of
the software.
Common methods of commercial exploitation of CRC IP include licensing to an industry participant or third party, or establishment of a spin-off
company. The most appropriate model must be considered on a case-by-case basis, with the pros and cons of each weighed up – an example
is given below.
Examples of factors to consider
Licence Out
Start-Up Company
Where there is an obvious or logical fit with an existing industry
collaborator or licensee
Likely to attract a high valuation from investors
Where the Centre IP is incremental or dependent on other
technologies
Likely to provide an exit opportunity for investors in the medium
term
Where significant resources are required to develop and deliver
a product to end-users
A disruptive technology that will not be understood or grasped by
existing players
Where there is limited ongoing interest or engagement for the
technology within the CRC
Entrepreneurial researchers keen to pursue the spin-off route
Where the CRC IP has multiple applications in distinct industries,
allowing for the grant of multiple licences
Centre IP is know-how or other non-patented material that may
be difficult to license
Where the technology has application in a mature, low-growth
market and the IP will help a licensee increase its market share
Ability to derive income within the short term, from product sales
or licensing on to a further licensee
When making decisions regarding the most appropriate utilisation method, CRCs should also consider the following questions:

Does the technology have the scale or market readiness that investors in a spin-off company will require, or are significant
development activities still necessary?
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





What technologies and related IP rights fall within the portfolio of intellectual assets that are being commercialised? Does the CRC own
those intellectual rights, and if not, are the owners of those rights able to grant commercialisation rights to a spin-off company or
licensee?
Will the patent rights be broad enough to give a market advantage? In particular, how likely is it that pending patent applications will be
granted, or that issued patents will be valid?
How likely are those rights to be infringed, and how difficult will it be to enforce those rights?
Is there reasonable freedom to practice the intellectual property rights and commercialise the technologies, or are there pre-existing
patent rights of a third party that need to be licensed in order to do so?
Will a licence of participants’ background IP be necessary for the proposed utilisation? If so, will a licence to that background IP be
obtainable on reasonable terms? What does the Participants’ Agreement say about licensing of background IP for the
commercialisation of centre IP?
Are there contractual obligations that will affect utilisation methods, such as a right of first refusal for industry participants to make
commercial use of the Centre IP, or a right for the original author of copyright material to re-use or modify those materials for
specific purposes (either as a condition of the assignment or licensing of that copyright to the CRC)?
The costs of implementation of different methods of achieving utilisation will vary widely. Care should be taken to not allow cost considerations
to have undue influence on decisions. It is sometimes attractive to lean towards lower-cost alternatives that may not be appropriate on
substantive grounds. If, for example, a CRC’s research leads to a potential new drug aimed at a disease that is prevalent in developed
countries, utilisation will not be achieved by any means other than patenting and exclusive licensing. The cost of IP protection, and the
transaction costs of negotiating and finalising a licence in favour of a commercial partner, will be tens of thousands of dollars. But any attempt
to minimise cost would likely result in the drug never being developed and commercialised.
Key Issues in Licensing Arrangements
Licensing is a commonly used method of promoting the utilisation of IP, as it provides significant flexibility in how arrangements are structured
and gives the IP owner (‘licensor’) the ability to reclaim the IP in the event of unsatisfactory performance of the entity that has been given the
right to utilise that IP (‘licensee’).
Some of the common features and variables in technology licence agreements are outlined below.
Common variables in technology licence agreements
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Variable
Comment
Nature of licence
Is the licence only for the use of the IP by the licensee, or will the licensee be responsible for ‘distributing’
the IP by granting sub-licences to third parties? If the latter, will the identity of sub-licensees need to be
approved?
Exclusivity
Licences can be exclusive (i.e. not even the licensor can use the IP), sole (the licensor can still use the IP)
or non-exclusive. The licensor may retain the right to use the IP for further research, which may or may
not be limited to CRC activities.
Exclusivity may be on a geographic or market-segment (field) basis.
Generally licensees will need to meet minimum performance obligations in order to maintain exclusivity –
these may take the form of financial targets, deadlines for meeting key milestones, investment of non-cash
resources in utilising the IP etc.
Should a CRC participant who has been granted utilisation rights also be required to meet minimum
performance obligations?
Licensed IP
What is being licensed? Patents, copyright, know-how, trade marks? What happens if pending patent or
design applications are not granted?
Should improvements created by the licensor be automatically included, or the licensee given a right of
first refusal or negotiation?
Financial terms
Financial terms (if any) may take the form of upfront or milestone payments, royalties on sales by the
licensee, a share of sub-licensing revenue, annual licence fees, equity in the licensee or a combination of
the above.
Will any deductions to royalties or suspension of payments be permitted (e.g. if the IP is being infringed and
the licensee’s market share affected, or if it transpires that a licence of third party’s IP is also necessary in
order to utilise the licensed IP)?
Licensee’s activities
Will the licensee be required to comply with a utilisation or business plan, or have other specific obligations
to ensure the maximum value of the IP is realised?
If the licensee is conducting further development work or trials, does the licensor have access to the
results of these (either as a matter of course, or if it exercises a right to terminate the licence)?
Maintenance and
enforcement of IP
Who bears the cost of maintaining registered rights? Who will be responsible for taking action against any
third parties who infringe the IP? These questions are particularly relevant for exclusive licences.
Term and termination
In what circumstances can the licensor or licensee terminate the licence? How will the consequences be
managed (particularly where the licensee has been providing a product or service, or has granted sublicences to third parties)?
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Winding Up and Post-CRC Utilisation
When preparing transition and wind-up plans, each CRC needs to ensure that it complies with:




relevant provisions of its Commonwealth and Participants’ Agreements
the CRC Program Guidelines
specific guidelines issued by the Commonwealth in respect of transitional and winding-up arrangements (currently Guidance for
Preparing Transition Plans and Wind Up Guidelines for CRCs issued by the Commonwealth in May 2011 (discussed in Section 2.4 above)),
and
other relevant contractual obligations (such as assignments of IP from previous incarnations of the CRC or licences of Background IP
from participants).
The manner in which CRC IP is planned to be owned and utilised after the CRC ceases to exist should be considered at all stages of a CRC’s life,
not just when a CRC comes to the end of their funding period. ‘Non-commercial’ utilisation of CRC IP is just as important as ‘commercial’
utilisation – if a CRC has developed education and training programs, its wind-up plan needs to contain a strategy enabling those programs to
be available to their intended audience.
There are a range of ways in which a CRC’s research outputs can be utilised after it is wound up – each CRC must evaluate possible options in
light of the nature of those outputs and its own specific objectives.
Examples of post CRC models
□ Establishment of a research institution to own and further develop CRC IP, funded by industry or other sources
□ Establishment of a transitional company with a finite life span, for the purpose of facilitating transfers or licences of CRC IP to commercial
entities in return for financial benefits to the CRC’s participants
□ CRC company to continue in existing form, with activities funded by proceeds of commercialisation of Centre IP and surplus profits
distributed by way of royalties to participants of the old CRC
□ Transfer of each item of CRC IP to a participant who is best placed to utilise it for the benefit of Australia, possibly in return for financial
benefits to other participants
When considering possible wind-up models, CRCs should ensure they are aware of potential technical problems that can arise due to the nature
of IP rights. For example, joint ownership of IP does not automatically entitle each joint owner to a share of profits made from
commercialisation of that IP. A joint owner may be free to licence or transfer its ownership interest without needing the consent of the other
co-owners in some countries but not others.
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Case Studies
The following case studies highlight the wide range of ways in which the CRC Program has brought benefits to the Australian economy, people
and environment. Further examples can be found in the Impact study of the CRC Program prepared by the Allen Consulting Group in July 2012.5
Establishment of a spin-off company for commercialisation by licensing
Case Study 3
The CRC for Cochlear Implant and Hearing Aid Innovation, the predecessor to the HEARing CRC established Dynamic Hearing as a venture
capital-backed spin-off in 2002, primarily to commercialise the CRC’s adaptive dynamic range optimisation (ADRO) technology. Dynamic
Hearing has enjoyed strong growth in the international licensing of ADRO and other digital signal processing software innovations for hearing
aids and telecommunications. Dynamic Hearing has filed a number of patents for the technology and employs over 20 staff in Victoria. In
2011, Wolfson Microelectronics plc acquired Dynamic Hearing for an announced sum of up to $5 million, and the company now continues to
operate as Wolfson-Dynamic Hearing, providing research expertise in digital solutions for hearing technology
Establishment of a spin-off company for supply of products/technical services
Case Study 4
CRCMining has commercialised its dragline monitoring technologies through spin-off company MineWare. MineWare is a world-leading
provider of dragline and shovel monitoring systems for the surface mining industry, that has developed a global reputation for integrated
technologies that optimise mine, machine and operator performance.
Skills transfer
Case Study 5
Specialist knowledge and skills developed by Hawker de Havilland (now Boeing Aerostructures Australia) through its involvement in the CRC
for Advanced Composite Structures were instrumental in it winning a $4 billion contract with Boeing in 2004, relating to wing-trailing devices
for the Boeing 787. That project was estimated to result in the creation of 250 jobs for skilled workers, with a further 3300 flow on jobs in
the local economy.
Exclusive licence
Case Study 6
The former CAST CRC Limited obtained patent protection for various innovative magnesium alloys developed by its researchers. A number of
these patent rights were exclusively licensed to CAST’s various commercial participants, who brought or are bringing the technology to
market.
The Pork CRC has obtained plant breeders’ rights protection for a new variety of triticale purpose-bred for the pork industry. It has granted
an exclusive licence of those rights to an Australian SME, Waratah Seed Company, in return for payment of royalties on seeds sold.
Widespread dissemination, with IP protection, through non-exclusive licensing
Case Study 7
The HEARing CRC, through its commercialisation company HearWorks Pty Ltd, has developed and successfully commercialised the NAL-NL2
‘prescription formula’ which enables hearing aids to be optimised for the needs of each end-user. A key factor was development of the IP in
such a way that it could be easily integrated into individual manufacturers’ software, creating a new international standard for hearing aid
fitting. To date, HearWorks has licenced NAL-NL2 to all 16 major international hearing aid and audiological equipment manufacturers
5 This report can be downloaded at <http://wwww.crc.gov.au>
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(including the CRC’s industry participant Siemens). HearWorks has also developed a stand-alone version of NAL-NL2, providing significant
opportunities for clinical researchers to use this technology in hearing aid research.
The Future Farms Industries CRC has created an easy to use, online, regional-based repository of resources regarding perennial plants.
While publications are free to download and use, the CRC has reserved it rights, meaning that consent needs to be obtained for the
reproduction, publication or modification of these resources.
Publication direct to end-users
Case Study 8
The Young and Well CRC is exploring the role of technology in young people’s lives, and how technology can be used to improve the mental
health and wellbeing of young people. The Young and Well CRC is ensuring that its research activity benefits those who need it most, and
includes the provision of online services and resources designed with end-users in mind.
The HEARing CRC uses its members’ established communication channels to ensure CRC knowledge reaches clinical managers and clinicians
working with end-users of hearing rehabilitation technology and services. For example, Cochlear Ltd’s Technical Reports, Australian
Hearing’s clinical service network, and Audiology Australia’s magazine “Audiology Now” and email alerts are all employed to reach this target
audience. In addition, research is published for public dissemination, for example “Binge Listening”, the first study of hearing loss for
‘clubbers’. Recently, the HEARing CRC has launched the HEARing Education and Research Network (HEARnet), which will provide a
comprehensive information source supporting hearing healthcare researchers, clinicians and the public.
Publication to wider audience
Case Study 9
When Vision CRC’s comprehensive National Indigenous Eye Health Survey was released in late 2009, the mainstream media reported on the
alarming state of eye health among Australia’s indigenous people that the survey had identified. The survey has not only raised awareness of
problems, but acted as a catalyst for a number of further initiatives to redress these.
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Further Information and Assistance
Organisation
Can assist with
Website
CRC Branch, Department
of Industry, Innovation,
Science, Research and
Tertiary Education
Information and advice regarding the CRC Program
http://www.crc.gov.au
CRC Association
Information regarding CRC activities (including
utilisation)
www.crca.asn.au
IP Australia
Information about patents, designs, trade marks and
plant breeders’ rights
http://www.ipaustralia.gov.au
Guidelines and template CRC agreements
Online searches of existing registered rights
Australian Centre for
Intellectual Property in
Agriculture
Training and resources regarding IP issues in grains,
horticulture and rural industries
http://www.acipa.edu.au
Australian Copyright
Council
Information about copyright
http://www.copyright.org.au
Knowledge
Commercialisation
Australia
Resources to assist best practice in knowledge
commercialisation (particularly from public sector
organisations)
http://www.kca.asn.au
Federal Government
Policies and guidelines relevant to IP (including
Government 2.0 open access licensing)
http://www.finance.gov.au
http://www.ag.gov.au
IP management for Australian Government agencies
Engagement of external legal advisers
State Governments
IP policies and guidelines regarding the management
and use of IP
New South Wales:
http://www.nsw.gov.au
Victoria:
http://www.vic.gov.au
Queensland:
http://www.qld.gov.au
Western Australia:
http://www.wa.gov.au
South Australia:
http://www.sa.gov.au
Tasmania:
http://www.tas.gov.au
Australian Capital Territory:
http://www.act.gov.au
Northern Territory:
http://www.nt.gov.au
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Organisation
Can assist with
Website
Professional Standards
Board of Patent & Trade
Mark Attorneys
Directory of registered patent and trade mark attorneys
http://www.psb.gov.au
State and Territory Law
Societies
Directories of lawyers with IP expertise
New South Wales:
http://www.lawsociety.com.au
Victoria:
http://www.liv.asn.au
Queensland:
http://www.qls.com.au
Western Australia:
http://www.lawsocietywa.asn.au
South Australia:
http://www.lawsocietysa.asn.au
Tasmania:
http://www.taslawsociety.asn.au
Australian Capital Territory:
http://www.actlawsociety.asn.au
Northern Territory:
http://lawsocietynt.asn.au
Licensing Executives
Society
Resources regarding technology licensing and directory
of lawyers and other professionals with licensing
expertise.
http://www.lesanz.org.au
Creative Commons
Australia
Open source licences for copyright material
http://creativecommons.org.au
Open Source Initiative
Open source licences for software and other copyright
material (including a directory of licences such as the
GNU General Public Licence)
http://www.opensource.org
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Glossary of Terms
Term
Definition
Background IP
IP that a Participant has agreed to contribute to a research, training or utilisation activity of
a CRC.
Commonwealth Agreement
The funding agreement between the CRC entity and the Australian Government.
Centre IP or CRC IP
IP developed in the course of carrying out a CRC’s activities.
CRC Program Guidelines
CRC Program Guidelines issued by the Commonwealth from time to time, and as amended by
the Commonwealth from time to time.
End-user
A person, organisation, industry or community capable of deploying the research outputs of
a CRC to deliver economic, environmental and/or social benefits to Australia.
Intellectual Property (IP)
Includes all copyright (including rights in relation to phonograms and broadcasts), and all
rights in relation to inventions (including patents), plant varieties, registered and
unregistered trademarks, registered designs, confidential information (including trade
secrets and know-how) and circuit layouts and all other rights resulting from intellectual
activity in the industrial, scientific, literary or artistic fields.
Participant
A person, body or organisation who has agreed to support the CRC’s activities and provide
contributions to the CRC.
Participants’ Agreement
The primary agreement between all participants in a CRC.
Small or Medium Enterprise (SME)
Firms or businesses which employ up to 200 staff.
Transition Plan
Provides a description of the CRC after CRC Program funding has ceased, how it will
operate, its objectives, and the strategy to achieve those objectives.
Utilisation
Technology transfer and take-up and use of research outputs by end-users. Commercial
utilisation includes the manufacture, sale, hire or other exploitation of a product or process,
or the provision of a service, incorporating CRC IP, or licensing of any third party to do any
of those things, or otherwise licensing or assigning the CRC IP.
Source: Adapted from the CRC Program Guidelines (2012)
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