Innovation disclosure

Is my invention patentable?

We may be able to patent a new device, substance, method or process if it meets the requirements of the Patent Act 1990 (Cwth).

These requirements include the invention:

• being a manner of manufacture, such as a tangible invention rather than a theory, idea, mathematical model or artistic creation
• being novel (new) and not having been made public by you or anyone else
• having an inventive step that isn’t obvious to somebody with knowledge and experience in the relevant field of technology
• being useful and doing what you say it will
• not having been used in secrecy in a commercial manner before filing the patent.

Is my invention novel?

To help decide if your invention is novel, search the patent database on the IP Australia website. You should also search other resources including the internet, journals and textbooks.

Due to the novelty requirement for patent applications, you should seek advice before sharing your invention with anybody.

This includes sharing it in:

• publications
• conferences
• by email or any other way.

Make sure you use a confidentiality agreement if you need to disclose your invention to potential business or research partners.

Is software patentable?

We may be able to patent software if it meets the requirements in the Patent Act 1990 (Cwth). This may include software that improves the technical functionality of a computer in a new and innovative way.

Read more about computer-related inventions on the IP Australia website.

Patenting software can often be difficult, and we may need to look at other forms of protection.

There may be IP implications if you’ve used open-source software such as limitations on how we can protect and use the new software.

Other IP protection

We may be able to apply for:

• trade marks to protect branding such as names and logos
• registered designs to protect the appearance of a product.

Copyright is a form of protection that doesn’t need a registration process – it’s automatically applied when original material is created.

Copyright protects a wide range of works including but not limited to:

• literary material
• publications
• photographs
• drawings
• software code
• audio-visual material.

You can also protect your IP by keeping it confidential.

Freedom to operate

It’s important to consider freedom to operate early in the commercialisation process. We need to make sure the planned use of your invention won’t infringe anyone else’s IP rights.

You can do a patent search on the IP Australia website to help to identify any protected IP technology. IP professionals, such as patent attorneys can help with freedom to operate searches.

If freedom to operate is impacted, we may still be able to protect and use your invention by negotiating licences with the owners of existing technology.

Reviewing existing agreements

Make sure you look at the IP provisions in any agreements relevant to your research.

This includes:

• funding agreements
• research collaboration agreements
• non-disclosure agreements
• material transfer agreements for biological materials
• open-source software licences.

We need to determine who owns the IP and if there are any restrictions on how it can be used, protected, and commercialised. This applies to both new IP developed during your project, and pre-existing IP that is used in your project (also called “Background IP”).

Commercialisation strategy

It takes a lot of time and resources to commercialise IP, so it’s important to have a commercialisation strategy.

This should include:

• deciding the best way to protect the IP
• analysing the market need for the new technology
• identifying other products or services you might be competing with
• deciding who to partner and collaborate with.

The researchers who helped create the IP will play an important role in developing the commercialisation strategy.

You’ll need funding to develop and commercialise your IP. You may be able to use government grants such as those that are listed on the business.gov.au website. There may also be loans, incentives and venture capital companies willing to invest in your invention.

Sometimes partnering with a company who make similar technology, can help you get to a market ready stage.

Innovation Disclosure Form

Queensland Health employees who create IP in the course of their employment must complete and submit the Innovation Disclosure Form (DOCX 121 kB).

The information you provide will help us decide how to protect, use, manage and potentially commercialise our interests in the IP.

Confidentiality

You should get advice before disclosing innovations to others, so you don’t jeopardise the ability to patent or commercialise the IP.

We may give the information in the disclosure form to our legal and other advisers on a confidential basis.

Hospital and Health Services (HHS)

We can advise HHSs about commercialisation, but if you’re an HHS employee, contact your internal legal, commercialisation or research office first. They can advise you on local invention disclosure procedures.

How to use this form

This form has 2 parts.

• Part A, which requests a brief outline of the innovation
• Part B, which requests more detailed information about the ownership, protection and commercial potential of the innovation.

If you need help completing Part B, you can submit the form with only Part A filled in. We’ll contact you and arrange a time to meet and help you complete Part B.

Complete the Innovation Disclosure Form (DOCX 121 kB).

The Innovation Disclosure Form - Supporting Information (DOCX 75 kB) has general information regarding intellectual protection and commercialisation in relation to the information sought via the form.

For assistance and to submit this form, contact the Principal Policy Officer (Intellectual Property) at the Office of Research and Innovation on 07 3708 5069 or IP_Officer@health.qld.gov.au.