Overcoming expense of patent is first step in commercialising university research

By / 31st of March, 2015
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A PROGRAM to fund the protection of intellectual property at universities has almost doubled the filing of provisional patents in the past three years.

The unique Intellectual Property Management Initiative offers grants to initiate patent protection of inventions stemming from biological research at South Australia’s three main universities - The University of Adelaide, Flinders University and University of South Australia.

Dr Stefan Enderling, the business development manager at Bio Innovation SAsaid the initiative is funded by the Government of South Australia and managed by Bio Innovation SA to help pay for the first stages of the patenting process.

“This provides the institution with a dated ‘peg in the ground’ relating to their intellectual property, and gives them an asset with which to undertake economic development,” he said.

A patent is a right granted for a device, substance, method or process that is new, inventive and useful when compared with what is already known. It gives researchers an exclusive right to commercially exploit an invention.

In Australia, patents are administered through IP Australia and the first step in the process is applying for a Provisional Patent.

The 2011 commencement of the Intellectual Property Management Initiative is linked to a 90 per cent increase in the filing of provisional patents from South Australia’s universities.

“It’s been a very successful program,” said Dr Enderling. “The filing of provisional patents increased from 57 during the 2008-2011 period, to 109 in the years 2012-2014.”

The rapid impact of the initiative illustrates the highly targeted nature of budgets within research environments.

Costs of provisional patents are usually in the range of AUD$4,000 to $7,000, but can be as high as AUD$10,000 for more complex technologies. Further patenting and searching across international databases attracts additional costs. Typically, institutions do not have funds set aside to cover these expenses.

“Universities have scarce resources that have to be diverted towards specific purposes,” said Dr Enderling. “In the past, this meant that patenting was often pushed to the side.”

Biological sciences patent attorney Mark O’Donnell said the Intellectual Property Management Initiative has nudged more South Australian researchers towards protecting their ideas.

“In the scheme of the cost of the research, four to seven thousand dollars doesn’t sound like that much,” he said. “But it’s a big expense for a university to take on, so having this fund is a fantastic thing for them.”

“Previously – because of the lack of funding – provisional patents just weren’t being filed, so research never had that chance of being commercialised.”

“I have not heard of any other comparable programs across Australia,” said O’Donnell, a partner at patent and trade mark attorney firm Madderns in Adelaide, South Australia.

The Intellectual Property Management Initiative has provided support for 78 projects since 2011 at the University of South Australia. The university’s technology commercialisation company ITEK Ventures Pty Ltd has filed 67 new patent applications in that period.

One of ITEK’s projects to benefit from the initiative is the Hand Held Cancer Probe, an ultrasensitive magnetic probe which detects small amounts of clinically introduced magnetic material in lymph nodes. The probe offers a non-radioactive approach for mapping the spread of cancers.

“The Intellectual Property Management Initiative covered the costs of filing the provisional patent, the International Type Search Report and the PCT application associated with this technology,” said Dr JC Tan, Commercial Manager at ITEK Ventures Pty Ltd.

The PCT application provides the university with patent protection in 148 countries, and expands the time frame for investigating market potential.

“Although the Hand Held Cancer Probe project has not yet been licensed, we are currently talking with Australian and international industry about this technology,” said Dr Tan.