Understanding Intellectual Property
Introduction and Representative Profile
Speaker: Dr. Grace Chan, PhD in Chemistry, Patent & Trade Mark Attorney.
Role: Senior Intellectual Property (IP) Manager at Research, Innovation & Commercialisation (RIC), University of Melbourne.
Division: Innovation & Enterprise Commercialisation under DVC Research.
Functional Areas:
Grants & Genesis Pre-Seed Fund.
Research Ethics & Integrity.
Knowledge & Technology Transfer: Assisting the academic community in safeguarding and translating IP generated through research for social, environmental, and economic impact.
Date of Presentation: 20 May 2026.
Understanding Intellectual Property (IP)
Core Definition: IP is defined as the "product of the mind."
IP at the Heart of Research: It encompasses diverse outputs including:
Preliminary results and research findings.
New processes, methodologies, and compositions.
Software, algorithms, and novel particles.
Teaching and course materials.
Devices, sculptures, and artistic works.
Literary works, sound recordings, and films.
Utility of IP: IP acts as a bridge for:
Academic Advancement: Research grants, publications, theses, and academic promotion.
External Engagement: Industry collaboration, government advice, and community engagement.
Commercialisation: Licensing to society, establishing Start-up enterprises, Social Enterprises, and Non-profits to deliver products and services.
Comprehensive Taxonomy of Intellectual Property Rights
1. Confidential Information:
Non-Registered: Trade secrets, know-how, expertise, and scientific/technical knowledge.
Specific Examples: Algorithms, recipes, formulas, experimental data, pre-patent research, customer databases, and strategic plans.
Protection Mechanism: Confidentiality Agreements (CDAs) or Non-Disclosure Agreements (NDAs).
Duration: Indefinite, provided the secret is not disclosed. There is no protection against independent discovery.
2. Copyright:
Protects: The original creative expression of an idea in material (physical) form. It does not protect the idea itself.
Categories: Literary works (books, computer programs, publications), artistic works (paintings, sculptures), musical works (scores), dramatic works (scripts, choreography), and multi-media (films, sound broadcasts).
Status: Automatic right upon creation; registration is not required in Australia.
Duration: Lasts for the life of the author plus years.
Note: "Freely available" does not mean "Free to Use."
3. Registered Designs:
Protects: The overall appearance, relating to visual features such as shape, configuration, pattern, or ornamentation.
Requirements: Must be novel and distinctive.
Duration: Registration lasts up to years.
Limitation: Protection can be circumvented if a competitor changes the design enough to result in a different overall visual impression.
4. Trade Marks:
Purpose: Signs used to distinguish a trader’s goods and services.
Forms: Words (e.g., IPHONE), logos, phrases, shapes, colours, scents, movements, or sounds.
Status: Can be registered (indicated by the symbol) or unregistered.
Duration: Indefinite, provided they are renewed every years.
Restriction: Purely descriptive terms (e.g., "MELBOURNE CARS") are generally not registrable to allow public use.
5. Patents:
Definition: A granted right to exclude others from making, using, or selling an invention.
Social Contract: A legal monopoly granted by the government in exchange for the public disclosure of the invention's details.
Duration: Maximum of years.
6. Other Forms:
Plant Breeders Rights: For new varieties of fruit, plants, flowers, and vines.
Domain Names: Examples include .com, .edu, .net, .biz, and country codes like .au or .uk.
Business Names: Trading names for entities.
A Deeper Dive into Patents
What Can Be Patented?
Compositions of matter (compounds, biologicals).
Methods of manufacture.
Methods or processes of use/application (a series of steps to achieve a result).
Machines or devices (inter-operable parts or articles of manufacture).
What Cannot Be Patented?
Discoveries found in nature (e.g., finding beneficial bacteria in soil).
Abstract ideas, schemes, and plans.
Pure algorithms and mathematical formulae.
Example of Patentable Progression:
Finding bacteria in soil: Discovery (Not Patentable).
Process for isolating bacteria while maintaining activity: Method (Patentable).
Method of applying bacteria in specific amounts to promote wheat yield: Process of Use (Patentable).
Fertilizer composition containing the bacteria in stable form: Composition (Patentable).
Legal Requirements for Patentability
1. Novelty: The invention must not be known or exist anywhere in the world. It is assessed against "prior art," which includes:
Documents available publicly worldwide.
Public acts of use.
Public disclosures like conference talks or social media posts.
Note: A single piece of prior art describing the invention is enough to destroy novelty.
2. Inventive Step: The invention must not be an obvious development to a person skilled in the art based on existing knowledge.
3. Usefulness (Utility): The invention must have a practical application and solve a specific problem.
Strategic IP Management and Ownership
Timing and Public Disclosure:
In patents, timing is critical. Filing a provisional patent application must happen before any public disclosure.
Public disclosures include: Published papers, social media uploads, conference presentations/abstracts, and PhD thesis submissions to libraries.
Internal discussions within the same organization are usually not public disclosures, but external discussions are.
Patent Publication Lag: There is an -month time lag between the initial filing of a patent and its public publication in databases (e.g., WIPO Patentscope, Espacenet, Google Patents).
IP Ownership Factors:
Identity of the creators/inventors.
Employment obligations (Staff vs. Third-party).
Funding agreements (e.g., ARC Linkage).
University of Melbourne (UoM) Policy:
Governed by the University of Melbourne Statute and IP Policy (MPF).
Staff: UoM owns IP created in the course of employment (except copyright in scholarly works).
Students: For graduate research students (post- October ), the University may require IP assignment as a condition for participating in specific research activities.
UoM owns all IP that constitutes teaching material.
Freedom to Operate (FTO) and Infringement
FTO Definition: The ability to carry out work without infringing the legal rights (like patent claims) of a third party in a specific country.
Patent Claims: These act like a "fence" or boundary. If your activity falls inside that boundary, you are an infringer.
Managing Risks:
Conduct specialist FTO searches.
Design around existing patents to avoid boundaries.
Seek a license from the IP owner.
Case Study: Clarity Pharmaceuticals & SAR Technology
Technical Breakdown: SAR Technology platform involves a "Cage" (chelator) that securely holds radioisotopes, connected via a "Linker" to a "Targeting molecule" that binds to specific receptors (proteins) on cancer cells.
Isotopes Used:
: Used for Positron Emission Tomography (PET) imaging.
: Used for therapy.
Development Pathway:
Research led by Professor Paul Donnelly (UoM School of Chemistry).
IP disclosed in ; provisional filed in December .
Clarity Pharmaceuticals licensed the technology in .
Currently protected by patent families.
Clarity acquired full ownership of patents in early .
Impact: Development of cancer theranostics for prostate cancer, breast cancer, and paediatric neuroblastoma.