17.91 The ALRC acknowledges that Australian research organisations have markedly improved their performance in capturing the value of intellectual property and commercialising research. Technology transfer practices within research organisations appear to be improving, particularly because organisations, government and industry are recognising and acting on the need to build skills and linkages. However, it appears that there is a need to continue the process of skill-building within technology transfer offices especially, thereby improving each organisation’s capacity for technology transfer.
17.92 The ALRC considers that patent management in relation to genetic research and interaction with the biotechnology industry requires specialised knowledge. This knowledge should encompass a basic understanding of genetics to enable offices to recognise potentially valuable technology, and an understanding of the commercial issues particular to the biotechnology industry. This may include an understanding of the time frames for product development in biotechnology; regulatory requirements such as clinical trial requirements and regulation of medical therapies; and awareness of industry structure. Technology transfer offices may sometimes lack this specialised knowledge because they are charged with managing intellectual property and commercialisation across a broad spectrum of research fields.
17.93 For these reasons, the ALRC considers that there is a need to continue to improve awareness of, and skills for dealing with, patent management and technology transfer in relation to gene patents. The ALRC recommends that Biotechnology Australia, in conjunction with its member departments, should further develop and implement programs to assist technology transfer offices in developing these skills. In doing so, Biotechnology Australia should collaborate with the peak national bodies with an interest in technology transfer from the public sector. These will include KCA, the AIC, AusBiotech Ltd, the LES and the AIG.
17.94 Such programs should include the provision of educational seminars and resource materials that focus on issues specific to patenting and commercialising genetic technologies. These could present models of best practice for technology transfer and commercialisation, including methods for identifying innovative technology and developing business liaisons. These programs should also encourage networking and sharing of expertise between organisations.
17.95 The ALRC believes that technology transfer practices could be improved by a consolidation of resources and expertise. This could be achieved by the creation of centralised technology transfer offices to commercialise technology from a number of research organisations. Such offices could be jointly administered and pool the resources and expertise from each organisation. However, the ALRC considers that such consolidation is best achieved through negotiation between research organisations and has no specific recommendations to make on this issue.
17.96 The ALRC regards the potential lack of clear ownership of patents over technology developed through collaborative research or funding arrangements as a significant impediment to the transfer and commercialisation of genetic technologies. The ALRC considers that these issues would best be dealt with through requirements that ownership of intellectual property be clearly delineated in the early stages of research. Such requirements are best incorporated into the National Principles, which should be revised to include clear guidance on the need to negotiate ownership of patents where there is more than one potential owner.
17.97 The ALRC therefore recommends that, as part of the review of the National Principles recommended in Recommendation 11–1, the NHMRC and ARC should recognise the importance of clear ownership of intellectual property resulting from collaborative or jointly funded research. This recognition should be reflected in the guidelines to the National Principles that are to be developed in accordance with Recommendation 11–2. These should provide guidance on ensuring clear ownership of intellectual property and should identify a range of approaches to ensuring clarity of ownership.
17.98 The ALRC considers that these measures should be supported by research organisations. The ALRC consequently recommends that research organisations should ensure that their policies and practices address the problems of ownership of intellectual property resulting from collaborative or jointly funded research.
Recommendation 17–1 Biotechnology Australia, in conjunction with its member departments, should collaborate with the peak national bodies with an interest in technology transfer from the public sector:
- to further develop and implement programs to assist technology transfer offices in research organisations in commercialising inventions involving genetic materials and technologies; and
- to develop strategies to ensure widespread participation of technology transfer offices in these programs.
Recommendation 17–2 The Australian Research Council (ARC) and the National Health and Medical Research Council (NHMRC), in implementing Recommendation 11–1, should recognise the importance of clear ownership of intellectual property resulting from collaborative or jointly funded research.
Recommendation 17–3 The ARC and NHMRC, in implementing Recommendation 11–2, should:
- provide guidance on ensuring clear ownership of intellectual property resulting from collaborative or jointly funded research; and
- identify a range of approaches to ensuring clarity of ownership.
Recommendation 17–4 Research organisations should ensure that their policies and practices address the problems of ownership of intellectual property resulting from collaborative or jointly funded research. (See also Recommendation 11–4.)
 However, it should be noted a recent DEST review of collaboration between universities and publicly funded research agencies found that the National Principlesare ‘not widely recognised, understood or utilised’: Department of Education Science and Training, Review of Closer Collaboration between Universities and Major Publicly Funded Research Agencies (2004), xi. See further Ch 11.