Getting Commercial: to patent or not to patent?

Commentary

Robert Chalmers takes up the role of Managing Director of the University's commercial development company, ARI Pty Ltd, in March. He has a long background in the business and legal issues surrounding research, development and commercialisation of new technologies, and also holds an academic role in the University's Law School. This month Robert discusses the use, misuse and abuse of intellectual property ("IP").

There is an increasing emphasis in our world on the power of ideas, brands and technologies. Along with this has come discussion about the protection and exploitation of these "intangible" outputs of our research institutions and the broader economy. Some of this discussion is practically oriented: about using IP protection to generate commercial returns. Others decry what they see as the abuse of IP and commercialisation: e.g. the controversies around patenting life forms or methods of medical treatment, or concerns about undue restraints on freedom of speech and distribution of information subject to copyright protection.

Much of the press on these issues is simplistic: on the one hand there can be an assumption that aggressively pursuing IP protection in all situations is an essential pre-requisite to success, and on the other a perception that all forms of protection and exploitation are inappropriate.

The reality is that IP provides a set of options that can be used to good effect, whether you are a hard nosed business person or of a more liberal "open source" sharing mindset. However, IP itself is far from the be all and end all: it needs to be placed within the broader context of what you are trying to do, why, how, and in what environments. There are many good businesses whose success is really derived from being first to market, or having effective distribution channels, rather than a heavy emphasis on IP protection. And there are numerous products and services we use for which the providers may derive indirect or intangible, rather than direct monetary, rewards.

One type of IP that gets a lot of focus is patenting. A patent is an exclusive right to exploit an invention, with a standard lifetime of 20 years. An idea with some practical application that is both novel and inventive, and satisfies certain other conditions may be patentable, but patenting is not an appropriate strategy in all situations and is also very costly. Copyright is more significant to most of us: it protects text-based works, software, music, art, film and other things. Trade marks is yet another important category: we live in a world submerged in the badges of business, and those can be very valuable intangible assets. There are also other categories of IP, including systems to protect confidential information, and even plant breeders' rights. Indeed, the majority of the University's commercialisation revenue is actually derived from this latter and relatively unknown form of IP.

As with all things, contextual understanding is key. Sometimes maintaining control of IP is important and useful, and sometimes not: giving away rights to use might be a more effective strategy. Understanding clearly how you might be using or abusing other people's IP rights is also critical from a risk management perspective. All of these issues can be complex and require advice (something we at ARI provide as a core service for University staff) - however it is always important to focus foremost on the outcomes you want to achieve.

www.adelaide.edu.au/aripl