University of Technology Sydney

76056 Intellectual Property Commercialisation Overview

Warning: The information on this page is indicative. The subject outline for a particular session, location and mode of offering is the authoritative source of all information about the subject for that offering. Required texts, recommended texts and references in particular are likely to change. Students will be provided with a subject outline once they enrol in the subject.

Subject handbook information prior to 2025 is available in the Archives.

UTS: Law
Credit points: 6 cp
Result type: Grade and marks

Requisite(s): ( 70327 Introduction to Property and Commercial Law OR ((94 credit points of completed study in spk(s): C04236 Juris Doctor OR 142 credit points of completed study in spk(s): C04250 Juris Doctor Master of Business Administration OR 94 credit points of completed study in spk(s): C04363 Juris Doctor Master of Intellectual Property OR 94 credit points of completed study in spk(s): C04364 Juris Doctor Graduate Certificate Trade Mark Law and Practice) AND 70106c Principles of Public International Law AND 70107c Principles of Company Law) OR (94 credit points of completed study in spk(s): C04320 Juris Doctor Graduate Certificate Professional Legal Practice AND 70106 Principles of Public International Law))
The lower case 'c' after the subject code indicates that the subject is a corequisite. See definitions for details.
These requisites may not apply to students in certain courses. See access conditions.
Anti-requisite(s): 78188 Intellectual Property Commercialisation AND 79006 Intellectual Property Commercialisation

Description

This subject address issues related to the commercialisation of intellectual property (IP) rights as a business asset for new enterprises, or as a source of income for existing enterprises. Commercialisation is the process of bringing IP to the market in order to be exploited. This subject provides a comprehensive overview of legal, business and economic issues that are relevant to the commercialising and licensing of intellectual property (IP) rights in both domestic and global contexts. The scope is interdisciplinary, exploring the business and economic aspects of IP licensing and investment in IP development in the context of a detailed legal framework for IP licensing and investment. It includes consideration of relevant IP laws, competition law, compulsory and voluntary licensing, contract and consumer laws, and selected issues in international practice. The subject involves practical skills training in drafting and negotiating licenses as well as practice-focused exercises that give students a better sense of the deal-making process in licensing transactions both in Australia and abroad.

The subject is in three parts. Part I explores the connection between IP and economic development, and provides a comprehensive survey of major IP laws, such as copyright, patent, confidential information, trademark, and domain name. Part II addresses potential business structures for commercialising IP and specific laws related to IP commercialisation, such as the enforcement of completion law, contract law and consumer law in the IP area. Part III involves practice or skills training in negotiating and drafting licenses and getting a 'sense of the deal' in licensing transactions.

Subject learning objectives (SLOs)

Upon successful completion of this subject students should be able to:

1. Identify, critically analyse and apply intellectual property (IP) laws in business and commercial contexts and explain the key features of IP negotiation to stakeholders.
2. Advise clients on the business and economic implications of licensing and other IP commercialisation strategies.
3. Evaluate a client’s intangible assets and formulate a feasible IP commercialisation strategy aligned with the client’s objectives.
4. Identify and locate research material relevant to contemporary issues in IP commercialisation and creatively and analytically evaluate the legal and theoretical issues that arise.

Course intended learning outcomes (CILOs)

This subject also contributes specifically to the development of the following graduate attributes which reflect the course intended learning outcomes:

  • Legal Knowledge
    A coherent understanding of fundamental areas of legal knowledge including:
    a. The Australian colonial and post-colonial legal system, international and comparative contexts, theoretical and technical knowledge;
    b. The broader contexts within which legal issues arise and the law operates including cultural awareness, social justice and policy;
    c. The impact of Anglo-Australian laws on Indigenous peoples, including their historical origins in the process of colonisation and ongoing impact; and
    d. The principles and values of justice and ethical practices in lawyers' roles. (LAW.1.1)
  • Critical Analysis and Evaluation
    A capacity to think critically, strategically and creatively, including the ability to:
    a. Identify and articulate legal issues in context, including the skill of critical reading and writing;
    b. Apply reasoning and research to generate appropriate responses;
    c. Engage in critical analysis and make a reasoned choice amongst alternatives; and
    d. Think creatively in approaching legal issues and generating appropriate responses. (LAW.3.1)
  • Research skills
    Well-developed cognitive and practical skills necessary to identify, research, evaluate and synthesise relevant factual, legal and policy issues. (LAW.4.1)

Teaching and learning strategies

Strategy 1 - Preparation: Students prepare for classes by completing prescribed readings (details provided on Canvas); reflecting on and answering questions that guide readings; and listening to podcasts and watching vodcasts (available on Canvas). Engaging in these activities enables students to develop their understanding of key concepts and develop skills in policy interpretation. Students test their understanding and practise these skills further in class activities and assessment tasks.

Strategy 2 - Collaborative learning: In the seminars students test their understanding by navigating, explaining and applying complex statutory provisions and IP-related law policies in peer-facilitated group discussions, debates and practice problems. Students are assessed on their knowledge and skills demonstrated through class participation and receive feedback on their understanding and problem-solving skills regularly during class discussions through peer feedback and discussions with the seminar leader.

Strategy 3 - Seminar activities and feedback: The use of active seminar-style classes helps students to build a solid conceptual framework around core concepts of IP laws and the laws in relation to IP commercialisation. Students engage in problem-solving exercises, short scenario discussions and student presentations with feedback from both peers and the seminar leader, which includes early feedback for their first presentation (Assessment task 1B: Topic Presentation 1, in relation to final essay topic) before the end of week 4 (the census date).Students give two oral presentations to the class during the teaching session in order to receive individual feedback from both seminar leaders and peers on their understanding of key concepts, critical legal analysis and policy interpretation, and problem-solving skills – key skills which form a core part of professional legal practice.

Strategy 4 - Developing legal research skills: Students further develop their research skills in this subject by completing a research essay (Assessment task 3). Students complete this task in stages and receive feedback on their research skills at two stages during the session before submitting the essay.

Students will be required to give two presentations (Assessment task 1, Parts B and C) on a draft research question, key arguments and research outline as well as bibliography that are appropriate to their chosen essay topic. Students’ first presentations (see also Strategy 3) are scheduled prior to submitting the final essay and the seminar leaders will provide feedback on the research topic, research strategy and bibliographic sources ahead of the final writing task (Assessment task 3).

Strategy 5 - Invited Experts: Through guest speakers from regulators (such as ACCC and IP Australia), commercial lawyers from law firms, and/or practitioners from IP-related companies (depending on availability), students are exposed to the views of regulators, commercial lawyers and entrepreneurs, and learn about how IP and intangible assets in general are commercialised in the real world.

Content (topics)

  1. Introduction to IP & Economic Development
  2. IP Laws Survey (1): Copyright & Design
  3. IP Laws Survey (2): Patent & Confidential Information
  4. IP Laws Survey (3): Trade Mark, Passing off & Domain Name
  5. Business Structure: Corporate and Partnership, IP Financing, PPS
  6. Competition Law Overview
  7. Contract Law and Consumer Law Overview
  8. Licensing and Negotiation
  9. Licence Drafting

Assessment

Assessment task 1: Class Engagement

Intent:

This task encourages students to practise and develop their critical analysis and oral and written communication skills. It allows feedback throughout the subject on students’ understanding and application of core subject materials and themes. It also encourages collaboration with peers in class discussion and small-group work.
Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

LAW.1.1, LAW.3.1 and LAW.4.1

Weight: 30%
Length:

1500 words (equivalent)
Criteria:

Assessment Criteria for Part A (Class Discussion):

  1. Frequent, clear and thoughtful contributions to class and group discussions on assigned questions, and constructive feedback provided for peers
  2. Contributions that demonstrate personal engagement with the subject materials and activities across the range of topics and issues
  3. Critically-informed understanding of current issues and challenges in competition law, demonstrated by presenting persuasive views, arguments and ethical approaches
  4. Cooperative approach to group discussions including contribution to a respectful environment by showing sensitivity to others and a professional responsibility towards learning in the subject.

Assessment Criteria for Parts B & C (Topic Presentations):

  1. Clear and thoughtful presentation to class, facilitation of class discussion about their topic
  2. Appropriate response to previous feedback
  3. Concise slides that provide audience with a useful overview of the topic before and during presentation
  4. Demonstrate personal engagement with topic, key issues and challenges in national and international competition and consumer law
  5. Development of logical arguments with persuasive conclusions.

Assessment task 2: Article Evaluation

Intent:

This assessment task gives students an opportunity to follow up with latest development of IP commercialisation strategies and innovation models to practise their critical analysis and evaluation skills, and develop the content, style and quality of written arguments expected of law graduates.
Objective(s):

This task addresses the following subject learning objectives:

1, 2 and 3

This task contributes specifically to the development of the following graduate attributes:

LAW.1.1, LAW.3.1 and LAW.4.1

Weight: 30%
Length:

1500 words not including footnotes (with 10% flexibility).

Footnotes should only be used for references. No part of your answer can be included in your footnotes: if it is, it will be ignored during marking.
Criteria:
  1. Clearly explained rationale for selecting the article
  2. Clear and insightful analysis of the important points made in the article, appropriate background, and major legal or social-economic issues involved
  3. Critical and reflective analysis and evaluation of the author’s major arguments and balances possibly opposing views
  4. Clear conclusions regarding the article’s implications for IP protection and commercialisation
  5. Well-structured and organized according to legal conventions with accurate referencing in accordance with AGLC utilising footnotes and bibliography.

Assessment task 3: Research Essay

Intent:

This assessment task allows students to develop effective writing skills and independent legal research skills. The task encourages and tests independent and self-directed learning.
Objective(s):

This task addresses the following subject learning objectives:

1, 2, 3 and 4

This task contributes specifically to the development of the following graduate attributes:

LAW.1.1, LAW.3.1 and LAW.4.1

Weight: 40%
Length:

2500 words not including footnotes (with 10% flexibility).

Footnotes should only be used for references. No part of your answers can be included in your footnotes: if it is, it will be ignored during marking.
Criteria:
  1. Thorough knowledge and understanding of the essay topic;
  2. Clear, accurate and creative application of the relevant law to the essay topic;
  3. A sustained thesis or overall argument;
  4. Coherent and persuasive arguments, drawing reasoned and logical conclusions;
  5. Well-structured and organised;
  6. Demonstration of well-developed cognitive and practical skills necessary to identify, research, evaluate and synthesise relevant competition law and policy issues;
  7. Referenced properly in accordance with the Australian Guide to Legal Citation, 3rd ed, 2010.

Required texts

  • Natalie P Stoianoff, Fred Chilton and Ann L Monotti, Commercialisation of Intellectual Property, (2019) LexisNexis Butterworth, Australia

  • Detailed reading lists and handouts will also be distributed in class.

Recommended texts

  • R. Reynolds, N. Stoianoff, A Adrian and A. Roy, Intellectual Property: Text and Essential Cases (Federation Press, 5th ed, 2015 or latest version)
  • C. Turner & J. Trone, Australian Commercial Law, 31st edition, Lawbook Co, Thomson Reuters, 2016 (or latest version).*
  • McGinness P., Intellectual Property Commercialisation, Lexis Nexis Butterworths, 2003*
  • Port, Jay Dratler et al, Licensing Intellectual Property in the Information Age (2d ed., Carolina Academic Press 2005) (also known as Port et al, hereinafter, “Casebook”) (the Co-op Bookshop has a number on order but this book is also available from online bookstores - it should also be available through LEXIS)*
  • S. Ricketson, M. Richardson and M Davison, Intellectual Property: Cases, Materials and Commentary (5th ed) (Sydney: LexisNexis Butterworths, 2013)
  • Stewart, P. Griffith and J. Bannister, Intellectual Property in Australia, Lexis Nexis 4th Ed 2010
  • M. Davison, A. Monotti, L. Wiseman, Australian Intellectual Property Law (CUP, 2nd ed, 2012)
  • K. Bowrey, M. Handler and D. Nicol, Australian Intellectual Property: Commentary, Law and Practice (OUP, 2010)

References

Other Materials: Reports, Books/Journals and General References

Books

  • Stephen Corones and Jeannie Paterson, Corones’ Australian Consumer Law (Thomson Reuters (Professional) Australia, 4th ed, 2019)
  • Mark Davison and Ian Horak, Shanahan's Australian Law of Trade Marks and Passing Off (Thomson Reuters (Professional) Australia, 6th ed, 2016)
  • Arlen Duke, Corones’ Competition Law in Australia (Thomson Reuters (Professional) Australia, 7th ed, 2018)
  • Nickolas James, Business Law (Wiley, 5th ed, 2020)
  • Andrew Terry and Des Guigni, Business and the Law (Thomson Reuters (Professional) Australia, 7th ed, 2018)
  • Clive Turner and John Trone, Australian Commercial Law (Thomson Reuters (Professional) Australia, 32nd ed, 2019)
  • Dilan Thampapillai et al, Australian Commercial Law, 2nd Ed (Cambridge University Press, 2020)

Journals

  • Akindemowo O. Information Technology Law in Australia, LBC. 1999
  • Arup C, Innovation, Policy and the Law; Australia and the International High Technology Economy, Cambridge University Press, 1993
  • Arup C. The New World Trade Organization Agreements, Cambridge University Press 2000
  • Bently L & Sherman B, Intellectual Property Law OUP, latest edition (currently 3rd Ed)
  • Calvert M. & Reid I, Technology Contracts: A Handbook for Law and Business Butterworths, 2002
  • Bannon C. Passing Off, Trade Deception, Trade Marks, Butterworths, (rare and difficult to find)
  • Carter J & Harland D., Contract Law in Australia Butterworths, latest edition
  • Corones S. Competition Law in Australia LBC, the latest edition
  • Dean R. The Law of Trade Secrets and Personal Secrets LBC, 2nd Ed 2002
  • Drahos & Braithwaite, Information Fuedalism: Who Controls the Knowledge Economy?, Earthscan, 2002
  • Drahos & Mayne, Global Intellectual Property Rights: Knowledge, Access and Development, Macmillan, 2002
  • Drahos & Braithwaite Global Business Regulation, Cambridge University Press, 2000
  • Drahos A Philosophy of Intellectual Property, Dartmouth, 1996
  • Lahore Dwyer J. & Duffy A., Patents, Trade Marks and Related Rights, Butterworths loose leaf
  • Gaze B, Copyright Protection for Computer Programs, Federation Press, 1989
  • IP Australia, IPToolbox, IP Aust
  • Koepp R., Clusters of Creativity John Wiley and Sons Ltd, 2002
  • Monotti A. & Ricketson S., Universities and Intellectual Property OUP 2003
  • Rowland D. & Macdonald E. Information Technology Law Cavendish Publishing 1997
  • Shannahan, Davison, Freeman & Berger Shanahan's Australian Law of Trade Marks Law Book Co 4th ed. 2008
  • Sell S., Private Power, Public Policy Cambridge University Press, 2003
  • Tang K et al., Taking Research to Market How to Build and Invest in Successful University Spinouts Euromoney Books 2004
  • Copyright Council of Australia Bulletin
  • Australian Business Law Journal (LBC) (Australia)
  • Australian Trade Practices Law Reporter (CCH) (Australia)
  • Competition & Consumer Law Journal, Butterworths (Australia)
  • European Competition Journal (2005-) (United Kingdom)
  • European Competition Law Review (United Kingdom)
  • International Review of Intellectual Property and Competition Law (Germany)
  • Journal of Competition Law and Economics (2005-) (United Kingdom)
  • OECD Journal of Competition Law and Policy (France)
  • The Antitrust Bulletin (USA)
  • World Competition: Law and Economics Review (Netherlands)

Law reports

  • Intellectual Property Reports (IPR) for cases since 1983 plus historically significant cases (Butterworths)
  • Copyright Law Review Committee Reports
  • Australian Intellectual Property Cases (AIPC) (CCH)
  • Fleet Street Reports (FSR)
  • Report of Patent Cases (RPC)
  • Federal Court Reports (FCR)

Loose-leaf series

  • CCH, Industrial and Intellectual Property loose leaf Services
  • Lahore J, Copyright and Design, 1996 - , Butterworths
  • Lahore J, Patents, Trade Marks and Related Rights, 1996 - , Butterworths
  • Ricketson S, The Law of Intellectual Property: Copyright, Designs and Confidential Information, 1999- LBC

Reference

  • Australian Guide to Legal Citation, 3rd ed, (2010) – hereinafter, “AGLC”.

Others

Other resources

Useful Websites

National

Overseas/International