New Framework for Intellectual Property Commercialisation

Improving research commercialisation to secure Australia’s economic and industrial future is a top Australian Government priority. As such, the 2020-21 Australian Government Budget provided $5.8 million to scope a University Research Commercialisation Scheme to better translate and commercialise university research outputs.

In response to perceived constraints in university-industry research collaboration and the ‘considerable scope for improvement’ in the translation of knowledge into new products and services for Australia, the Commonwealth Department of Education, Skills and Employment (DESE) released a Consultation Paper on 20 September 2021 in respect of a proposed Higher Education Research Commercialisation Intellectual Property Framework (HERC IP Framework). The Consultation Paper is available now and can be accessed by clicking here.

The DESE Consultation Paper states that “Understanding and addressing the underlying causes of the discrepancy between research excellence and unsatisfactory performance in commercialisation and collaboration offers great potential for a solution to build a stronger bridge between universities and business and deliver major benefits for Australia”. In particular, IP-related issues such as difficulties in negotiating IP terms and agreements has become a focus in the DESE Consultation Paper.

Since then, additional HERC IP Framework materials have become available for public consultation and can be found by clicking here. These consist of agreements, plain English guidance versions of agreements as well as broader educational and guidance material.

It is intended that implementation of the HERC IP Framework will provide standardised IP licensing and contractual agreements to establish a strong foundation for negotiating and managing successful university-industry collaboration and partnerships in seeking to achieve harmonisation with accepted international best practices. Specifically, it is hoped that standardisation will:

• Cut complexity and transaction times/costs;
• Provide an easier entry point for negotiations – particularly important for SMEs, individual researchers and start-ups; and
• Promote best practice.

The template agreements available for review include:

1. Accelerated Research Agreement
2. Standard Research Agreement
3. Multi-Party Collaboration Research Agreement
4. Accelerated Non-Exclusive Licence Agreement (including low-risk commercialisation)
5. Assignment Agreement
6. Material Transfer Agreement
7. Equipment Licence Agreement
8. Licence Agreement (including commercialisation) – Exclusive Licence
9. Mutual Confidentiality Agreement
10. Variation Agreement – two-party agreements
11. Variation Agreement – multi-party agreements
12. Licence Agreement (including commercialisation) – Non-Exclusive Licence
13. Technical Services Agreement

Feedback on the standardised agreements and plain English equivalents is being encouraged from the IP community and stakeholders and is open until 25 February 2022. Feedback on the standardised agreements and plain English equivalents should be provided in the feedback template and sent to HERCIP@dese.gov.au.

If you would like to learn more, please contact Michael Finney.