Disclosing Inventions to the University of Newcastle and Newcastle Innovation

Research conducted at the University of Newcastle may lead to inventions, creations, or discoveries that have potential commercial value. Under the University's IP Policy, the University owns all Intellectual Property created by Staff Members within the Course of their Duties except for Artistic Works, Indigenous Works, Scholarly Works or Intellectual Property. In these cases, ownership is provided for in an agreement entered into with the University or approved by the University.*

An invention disclosure should be made when something new and potentially useful to industry has been conceived or developed, or when unusual, unexpected, or unobvious research results have been achieved and which may be utilised in a new product, process or service.

Inventions include new processes, products, apparatus, and compositions of matter, living organisms or improvements to existing technology in those categories.

Newcastle Innovation IP Disclosure Process

The University actively encourages the disclosure and commercialisation of new inventions. It seeks to reward the originators through sharing the net returns from the commercialisation process as follows.

Inventions can be disclosed to the DVC Research of the University or through Newcastle Innovation.

Newcastle Innovation, a subsidiary company of the University, has first right of refusal in relation to proposed commercialisation of University IP and is best placed to assist the originator maximise the returns available form the technology

* The University's IP Policy can be found at www.newcastle.edu.au/policy/000831.html. It should be read in conjunction with the IP Intellectual Property Procedurewww.newcastle.edu.au/policy/000832.html

Completion of the Form

The information provided by you in the Intellectual Property (IP) Disclosure Form will assist the University and Newcastle Innovation to evaluate the commercial potential of the discovery, and if there is sufficient commercial potential, develop a commercialisation strategy and find appropriate partners to implement this strategy.

Complete responses to all questions will result in more effective and efficient progression through the evaluation and commercialisation process. In particular, a thorough explanation of the core technology, supplemented by attaching research papers, reports & diagrams, will assist in a rapid assessment of the disclosure.

If you think you have made a discovery with some commercial potential but are not sure, please advise us and we can assist you in the evaluation. If this is the first time you have made a disclosure to Newcastle Innovation, please include a curriculum vitae of the principal inventor(s).

Upon completion of this form, please submit to the relevant Senior Business Development Managers (BDM):

David Fleming- Mining & Minerals Processing, Energy & the Environment

E: david.fleming@newcastle.edu.au

Chris Kelleher- Health and Biotechnology

E: chris.kelleher@newcastle.edu.au

Dr David Nicolson - Science and Information Technology

E: david.nicolson@newcastle.edu.au

Checklist before submitting form

• Has the document been signed by all the contributors?
• Has all the appropriate supporting material been included?
• Have you kept a copy of the disclosure form for your records?

Click here to download IP disclosure form

Next Step

Once an IP Disclosure Form has been received by Newcastle Innovation, a BDM will review the information to determine whether the document is complete. If critical information is absent, a BDM will work with the inventor(s) to ensure all available and relevant information has been provided. It is only after the form has been completed, and an invention is defined, that the disclosure is officially recorded and entered into the IP register of the University.

Once this has been done, Newcastle Innovation will determine whether the disclosure should be taken forward to the next stage of the commercialisation process; that is, Newcastle Innovation will conduct a preliminary assessment of the commercial potential and patentability of the invention.

This assessment process can take between 8-16 weeks depending on the technology. During this time, the BDM responsible will consult with the inventor(s), patent attorneys and other advisers as required. At the completion of the assessment, Newcastle Innovation will make a recommendation to the University as to whether the commercialisation of the invention qualifies to be supported. If so, Newcastle Innovation will embark on a commercialisation planning and implementation process based on the analysis conducted in the preliminary assessment period. If there is strong prior-art or insufficient commercial potential for the invention to be commercialised through Newcastle Innovation, the University may chose to pursue other options for the technology or assign it to the inventors on a case-by-case basis.