RMIT Intellectual Property (IP) evaluation panel

Policy

Context

The panel process is based on the activity of a flexible, expert evaluation panel to assess RMIT IP, and then actively assist to achieve the desired, often commercialization, outcome. The panel will provide a range of expertise (internal and external) to assist all researchers to quickly develop project management strategies with identified IP.

The panel process enables/assists RMIT researchers:

1. To access wider University expertise and networks and ensure a coordinated multi-skilled project team approach to managing, and where appropriate commercializing, IP. The evaluation panel will also provide access to resources to assist commercialisation after reviewing proposals. The formation of a project team to facilitate the exploitation process will promote communication between RMIT staff, and industry/community, and enhance access to the cross disciplinary university skill/resource.

2. To better participate in an environment at RMIT that fosters commercialisation activities. The panel and properly managed project processes it provides will improve university wide understanding of IP exploitation issues. It is intended to facilitate entrepreneurship and encourage researchers to progress their research towards applied outcomes.

3. To participate in business development, licencing and spin-off opportunities arising from university research activities and be supported in seeking capital for the establishment and development of these activities.

Scope of IP evaluation

Proposals to be considered by the panel will cover all research and development related University IP, from wherever it is generated within RMIT. It is likely that the exploitation of our IP will take many forms, from the sharing of know-how with key partners within a range of relationships, to patent application, to licence opportunities through to the formation of spin-off companies. RMIT will be looking to maximise the benefits of all IP it generates and expects these benefits to vary widely from the financial to the community good.

Panel operations and objectives

The Panel will exist to provide rapid response to the research community via a simple process, and to provide support structures and resources to assist exploitation of IP.

The key objectives of the evaluation panel are:

  • to increase knowledge and understanding of a given commercialisation opportunity and concurrently increase the confidence of potential investors (e.g., via the provision of a working prototype, business plans, market research etc)
  • to ensure relevant community groups are well aware of the know-how base within RMIT through which the common good can be furthered
  • to decrease the time to market of the opportunity or take advantage of the know-how
  • to provide access to cross university skills and external expertise to enhance the chance of project success
  • to develop immediate project plans and clear commercialisation/exploitation objectives early on for more rapid project progress and efficient resource use
  • to ensure appropriate protection of University intellectual property

Panel composition

The panel for any particular IP evaluation will be drawn from a pool of selected skilled staff within and outside RMIT. Each panel will have cross University participation with members bringing the capability to independently assess the proposal and be able to source outside specialist expertise (e.g. consultants, alumni, adjunct professors). The core of the panel on a case-by-case basis will seek the assistance of appropriately skilled RMIT and external staff. The core panel will comprise, for example:

  • the DVC(Research and Innovation) or nominee
  • a Faculty nominee
  • an independent financial/ business representative

The lead researcher / entrepreneur will be involved in the discussion and development of any proposal at all times.

Initial evaluation process

Proposals coming forward to the IP Panel require Faculty endorsement. Preparatory work on the proposal may have already been conducted via internal Faculty and Department processes.

Development of a proposal will involve consultation with the Research and Innovation Section on the best format, as information to be presented will vary with each proposal. Projects will be presented at varying stages of development and readiness, ranging from sole patent ideas and concepts, tradeable/valuable know-how, through to sustainable trading units. Guidance in the development of any proposal by an Research and Innovation Section staff member will assist effective presentation to the evaluation panel. The pathway for action by the IP panel, while flexible, would be expected to follow:-

A. Notification

1. A researcher notifies the Research and Innovation Section that they wish to develop and present an exploitation/commercialisation proposal (via a proforma).

2. After appropriate cross-notification to ensure that appropriate department and Faculty staff are informed, the staff member is assisted in the development of the proposal by the Research and Innovation Section and relevant Faculty staff.

3. Preparation of appropriate proposal format with assistance of the Research and Innovation Section.

B. Presentation to panel

4. Proposal is submitted to the Research and Innovation Section. Panel membership is determined in consultation with the Faculty and proposal distributed to the panel team for reference.

5. Panel is constituted to discuss proposal (seeking other advice where appropriate) and provide a recommendation.

6. Recommendation provided to researcher and Dept/Faculty within 1 month of proposal receipt.

C. Implementation of outcome

7. Where appropriate a project team is assigned and an exploitation/commercial strategy developed by the project team.

8. Proposal with funding requirements presented to panel for approval.

Panel decision paths

There are four types of decision paths available to the panel:-

1. Potential development: further evaluation and development of the opportunity. Develop commercialisation path, assign a project team and initiate more in-depth evaluation of the market and technology.

2. Proposal needs further development before a final decision. Panel must decide on assignment of resources and/or timelines for delivery of subsequent proposal.

3. Proposed IP is not to be supported by RMIT. Panel may recommend that RMIT assign specific rights to inventor to commercialise independently of RMIT.

4. IP/know-how should be released to the public domain for the common good.

Project team

Depending on the proposal, and to facilitate access to funds, a project team would be constituted to lead and/or manage the recommended process. The role of the project team is, broadly, to provide and access business development, project management and skills as necessary to facilitate commercialisation. More specifically, the team would look to:

  • the provision of commercialisation project management skills
  • overseeing the process of IP protection (e.g. preparation of patent applications)
  • business planning and market research
  • the provision of access to commercial networks to facilitate IP commercialisation (if necessary external commercialisation assistance would be sought)
  • provide assistance in accessing capital
  • mechanisms for effective communication between researchers and University administrative units
  • the preparation of the case for commercialisation for Deputy Vice-Chancellor (Research and Innovation) to present to VC and RMIT Council where necessary
  • accessing relevant areas of university expertise where needed
  • accessing government business assistance

The project team will be formed after panel evaluation, and will be expected to provide assistance where necessary, and regularly report back to the IP panel and Faculty and Department. The commercialisation process will be overseen by the Deputy Vice-Chancellor (Research and Innovation)

Successful adoption of the panel process is contingent on Faculty support and endorsement.

Form of proposal

R&I Section assistance in proposal development will come from an assigned staff member.

The form to be presented to the evaluation panel will be flexible depending on the circumstances, likely to be many and varied. The form to be presented to the evaluation panel will be flexible depending on the circumstances, likely to be many and varied. Two often considered components for the exploitation of IP are ‘the patent application’ (a protection precursor to third party conversations which may lead to licensing for example) and the ‘Spin-off Company’ (when an opportunity exists to establish a new commercial entity). By way of example only the RMIT process for these two components are described below.

1. Development of a patent application

The form used by RMIT contains adequate coverage of the issues that need to be addressed in filing a patent (see invention disclosure document) The form outlines:

  • Description of the Invention: an invention may have been created when something new and useful has been conceived or developed, or when unusual, unexpected or unobvious research results have been achieved which can be utilised in a commercial way.
  • Intentional Disclosure: information to establish whether the invention is novel and patentable, in which case steps will be taken to seek comprehensive evaluation by a patent attorney and then patent protection.
  • Inadvertent Disclosure: particular care is needed to ensure that accidental public disclosure of the invention does not take place. Non-confidential disclosure can involve publication in written or oral form or other public presentation of material.
  • Commercial Development: it is vital for the inventor to assist in establishing the commercial potential by preparing clear descriptions of the invention which emphasise its technical merits, usefulness and practical applications.
  • Shared Ownership: it is important to provide details of all parties involved in funding the development of the invention including external organisations. Contractual agreements should be provided to determine ownership of the intellectual property.
  • The Inventors: the individuals who contributed to the development of the invention must be identified. Legal inventorship is determined by a patent attorney at the time a patent application is filed.

2. Development of a spin-off company

The initial proposal must address appropriate criteria including –

1. Commercial feasibility, including:

  • market potential
  • financing
  • project plan
  • exit strategy
  • management team and structure
  • revenues
  • major risks

2. Relationship of spin off company objectives to University objectives

  • assessment of University involvement and/or ownership versus methods of incorporation or technology transfer
  • terms of University participation, including effects on department and Faculty
  • conflicts of interest and ethic considerations
  • University liability
  • technology transfer objectives

3. IP strategy

  • development of patent application
  • registration of designs
  • other registrations

4. Outline of funding requests.

A successful proposal directed at forming a spin-off company would be expected to generate a number of next step actions. A project team will be formed to formulate the proposal further and ensure proper project management process. Initially this would involve the commissioning of a market and technical feasibility study, as approved by the panel.

[Next: Supporting documents and information]