Paying for patent protection

 

Question:

 

Cockatoo, really enjoy your newsletters. I learn something with each edition. I’m working on a problem here and I hope you’ll have some ideas. We have some good R&D at our universities but few funds to pay for patents.  Do you know of any creative ways that researchers in your area have been able to get their patents registered when funding is short? Any ideas appreciated.

 

Best,

Russ Fletcher (Montana Technology Roundtable)

 

Answer No. 1

 

Hi Russ,

I’m afraid I have no magic solution to your dilemma, just a couple of comments/suggestions.

 

The first obvious comment is that future research proposals from universities etc should contain a funding provision for protecting generated IP. I know that that’s not much help in the current situation but my very limited understanding of the 1980 Bayh-Dole Act in the US puts the onus on  universities to protect foreground IP and it seems logical then to provide some financial support within granting programs or in university appropriations to do this. The other side of the act is that it encourages universities to work with the private sector for the commercialisation of any IP generated. This I guess would be where your RoundTable comes in.

 

I’ve attached a European paper on IPR management for Public Research organisations.  It’s got a short analysis of the US situation on Page 9 including the view that most of these Public Research organisations now have a technology Transfer Office.  This might be a good avenue to explore.

 

Of course, if a technology is considered to be worth patenting, all the good economists will tell us that the research & subsequent IP was developed in response to a demand. The trick often is to identify the source of that
demand or alternatively to discover whether the research outcomes are simply a solution looking for a problem (or demand). 

 

So again the Roundtable would seem to be a good place to start looking for a partner to fund the IP protection in return for a share of the spoils down the track.  Many researchers & firms alike are worried about going into such partnerships without appropriate protection and sharing arrangements.  A set of IPR provisions developed some years ago for a program called IMS (for  Intelligent Manufacturing Systems) was designed to provide just such
protection and comfort 

 

The web address is www.ims.org and follow the links  to find the IPR provisions and a draft template for a consortium cooperation agreement. The US is a partner in this international Program and helped in the development of the IPR provisions. That’s all from me, if you think I can add any more or want some clarifications, let me or Rod know.

 

Best regards, Michael Parker (Wattle Hill, Canberra)

 

Answer No. 2

 

IP costs are normally seen as a full commercialization cost and therefore outside the ambit of the Commercial Ready program. This has always been a contentious issue, and as a pragmatic concession CR now allows partial allowance for IP costs - see quote from the CR guidelines below. Under the R&D Tax Concession program, IP costs are still not allowable.

 

‘Reasonable costs to protect intellectual property related to the agreed project up to the lesser of 10 per cent of eligible project expenditure or $100,000. These include fees to a national patent office for the cost of filing an application, search and examination fees and annual patent maintenance fees. Only costs incurred during the period of the Commercial Ready Grant Agreement will be supported and Commercial Ready will not support the cost of defending intellectual property, with the exception of legal expenses insurance.’

 

Denis Taylor