78188 Intellectual Property Commercialisation
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Subject handbook information prior to 2025 is available in the Archives.
Credit points: 6 cp
Result type: Grade and marks
Requisite(s): ( 78184 Intellectual Property: Law and Policy OR 77905c Preparing for Intellectual Property Practice 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 AND 78184 Intellectual Property: Law and Policy) 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 AND 78184 Intellectual Property: Law and Policy))
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.
There are course requisites for this subject. See access conditions.
Anti-requisite(s): 76056 Intellectual Property Commercialisation Overview AND 78189 Intellectual Property Commercialisation AND 79006 Intellectual Property Commercialisation
Description
This subject covers much of the law and some of the business and economics of buying, selling and licensing intellectual property (IP). IP is a broad field, including patents, trade secrets, copyrights, semiconductor chip protection, trade marks, trade dress, internet domain names, and rights of publicity. Licensing of intellectual property takes many different forms in different types of businesses. Research and manufacturing businesses typically buy, sell and license technology, such as patents and trade secrets. They also may trade in copyrights (for example, in computer programs) and protected semiconductor chip designs. Multimedia licences, such as those for films, video games, and multimedia websites, often involve a number of copyrighted properties, and virtually every business has a trade mark or trade name that might or must be licensed and sometimes is sold (for example, in a merger or acquisition).
This subject discusses most, if not all, major types of businesses and their practices in buying, selling and licensing IP. It also touches on some of the basic principles of using IP as collateral or security for other transactions, for example, bank loans. This subject focuses primarily on technology licensing (of patentable inventions and trade secrets), but also discusses 'soft' IP, including such things as copyrights in literary and entertainment properties, websites and computer software and multimedia properties like video games.
The subject is interdisciplinary. About one-third of its substance explores the business and economic aspects of licensing, including the scope of a licence, how licensors make money, and how business people estimate the economic value of IP and licensing rights. Another third discusses legal considerations in licensing, including relevant IP law, antitrust or competition law, involuntary licensing by operation of law, standing to sue and the problems of co-ownership, the problem of 'clearing' legal rights in IP, and selected issues in international practice, such as jurisdiction and enforcement. The final third involves practice or 'skills' training in drafting and negotiating licences and getting a 'sense of the deal' in licensing transactions.
An Australian practitioner engaged in IP licensing almost invariably has dealings with the US and/or Europe and thus must have an awareness of different approaches taken by those jurisdictions to licensing such as the analysis of the anti-competitive effects of a licence. The subject therefore includes an overview of the competition laws of Australia, the US and the EU, as they may affect licensing transactions.
Subject learning objectives (SLOs)
Upon successful completion of this subject students should be able to:
| 1. | Apply an advanced and integrated understanding of intellectual property law in Australia together with issues in international licensing according to national or supranational jurisdictions, including the US and the EU; |
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| 2. | Identify the business and economic context of licensing and analyse how business people ‘trade’ intellectual property in order to realise commercial objectives; |
| 3. | Demonstrate sophisticated cognitive and creative skills in approaching intellectual property from a client’s perspective; |
| 4. | Apply critical analysis and evaluation to generate solutions that meet clients’ commercial objectives; |
| 5. | Critically analyse a draft licence agreement to identify deficiencies demonstrating an holistic comprehension of the ‘sense of the deal’, use appropriate legal clauses and adhere to key business provisions. |
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
An advanced and integrated understanding of a complex body 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 principles and values of justice and ethical practices in lawyers' roles;
d. The impact of Anglo-Australian laws on Indigenous peoples, including their historical origins in the process of colonisation and ongoing impact; and
e. Contemporary developments in law and its professional practice. (1.1) - Critical Analysis and Evaluation
A capacity to think critically, strategically and creatively, including an ability to:
a. Identify and articulate complex legal issues in context, including the skill of critical reading and writing;
b. Apply reasoning and research to generate appropriate theoretical and practical responses; and
c. Demonstrate sophisticated cognitive and creative skills in approaching complex legal issues and generating appropriate responses. (3.1) - Research Skills
Specialist cognitive and practical skills necessary to identify, research, evaluate and synthesise relevant factual, legal and policy issues including an ability to:
a. Demonstrate intellectual and practical skills necessary to justify and interpret theoretical propositions, legal methodologies, conclusions and professional decisions; and
b. Apply ethical research practices. (4.1) - Communication
Well-developed professional and appropriate communication skills including:
a. Highly effective use of the English language to convey legal ideas and views to different and diverse audiences and environments;
b. An ability to inform, analyse, report and persuade;
c. An ability to strategically select an appropriate medium and message;
d. A cognisance of advanced communication technologies and willingness to adopt where appropriate; and
e. An ability to respond respectfully. (5.1)
Teaching and learning strategies
Strategy 1: Learning through engagement with each topic
Students prepare for each topic by completing readings from the prescribed text, e-readings, watching videos and viewing websites. Preparation and reflection on the material presented in each Topic is central to the learning in this subject. In class instruction and discussion will form the basis of each class. Not all topics will be covered in class in-depth. To ensure that classes can provide the most effective learning experience students are expected to have read the minimum required readings for each class.
Strategy 2: Learning through discussion and activities
Students use the discussion area for each Topic to ask questions or share ideas. Students engage in collaborative discussion and evaluation of the materials in each Topic, which assists them in developing new perspectives, testing their ideas and understanding, and identifying areas for clarification.
Discussion questions will be provided for each Topic and each student will be required to participate in group discussions and make a presentation from time to time reporting the outcome of group discussions to the rest of the class.
By actively participating in the guided activities, self-assessment questions and discussion questions in each Topic, students test their learning, clarify understanding and challenge ideas about the material presented for each Topic. Students also have the opportunity to ask questions of their peers and of the teacher to assist them in consolidating their own learning.
Teachers and guest speakers will provide perspectives on the recommended readings and clarification of the law. The ability to listen and think at the same time is a crucial skill for a lawyer or legal adviser, who will often need to master new information delivered orally and/or in writing and provide an intelligent response immediately. Participation in discussion and various activities in each Topic will extend the ideas of the lecture in new directions or in greater depth.
Strategy 3: Learning legal skills: legal analysis and problem solving
The ability to solve legal problems is an essential skill for a legal adviser. Problem-solving involves interpreting and analysing legislation and cases, and applying the legislation and principles developed through the case law to novel and difficult factual situations. Students practice legal problem solving skills by preparing for and participating in online or class discussion and by completing the drafting exercise.
Strategy 4: Learning legal skills: effective written communication skills
The ability to communicate the thrust of a legal argument through effective written advocacy is an essential skill for a legal adviser. Increasingly legal advisers are asked to prepare written submissions setting out and arguing for a client’s position. Students test and practice their communications skills by participating in class or online discussions and by completing the drafting exercise.
Strategy 5: Feedback
Detailed guidance as to the assessment criteria and the provision of timely feedback are an important part of the learning process. This process is enhanced by the formative activities in each Topic, which inform and consolidate student learning of key concepts. Students are also able to obtain guidance on their progress and to test their learning by participating in a variety of substantive activities including: the early low stakes online quiz; class discussions; and the drafting exercise.
Subject Delivery
This subject is taught totally online on Canvas. In addition, several Zoom Meeting webinars are scheduled, which enables real time participation in discussions on issues and real life scenarios, deepening your understanding and application of the key concepts. For those who cannot attend by Zoom, in real time, you can view recordings of the sessions and participate in online discussion groups through Canvas.
All students will be required to participate in discussion boards and other online activities after having reviewed relevant materials on Canvas and having read the applicable materials prior considering discussion questions.
Participation is required for each discussion board. The aim of the teaching strategies for this subject is to foster an effective learning environment for students. Accordingly, this subject is taught using Canvas and is enhanced with Zoom Meeting webinars.
Content (topics)
Content Modules
- Review of types of intellectual property (IP) from a licensing perspective: what legal doctrines matter most for licensing and transfers; pitfalls of co-ownership. International Agreements. Business structures for Commercialisation.
- Types of Licensing agreements: Business aspects of licensing agreements: key commercial and business terms for licensors and licensees; how each side makes money; each side’s most vital interests and how to protect them. Preparation for licensing including audits and valuation. Implied licensing and compulsory licensing, including denial of injunctive relief; equitable licences; shrink-wrap and “click-wrap” licences: Standing to sue. Dispute resolution.
- Multimedia licensing; rights “clearance;” common terms in licensing agreements, their risks and opportunities, and how to draft them; co-ownership of IP.
- Drafting licences: interpretive rules; clarity and ambiguity; covenants and conditions; the role of word placement; the importance of brevity and simplicity ("less is more"); drafting for performance; self-editing; key scope and financial terms: key legal provisions, assignment and sub-licensing.
- Antitrust and competition law in licensing: monopolisation/abuse of dominant position; illegal tying; vertical and horizontal restraints.
- Misuse of intellectual property; sovereign immunity; IP as collateral (PPSA); insolvency; tax considerations.
Assessment
Assessment task 1: Multiple Choice Online Test
| Objective(s): | This task addresses the following subject learning objectives: 1 and 3 This task contributes specifically to the development of the following graduate attributes: 1.1, 3.1 and 4.1 |
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| Weight: | 5% |
| Length: | Equivalent to 500 words |
| Criteria: | The multiple choice questions will test a student’s ability to:
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Assessment task 2: Class Participation
| 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: 1.1, 3.1, 4.1 and 5.1 |
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| Weight: | 10% |
| Length: | Equivalent to 1000 words |
| Criteria: |
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Assessment task 3: Licensing Drafting Exercise
| Objective(s): | This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 1.1, 3.1, 4.1 and 5.1 |
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| Weight: | 25% |
| Length: | Word limit: 1500 words |
| Criteria: |
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Assessment task 4: Take-home exam
| Objective(s): | This task addresses the following subject learning objectives: 1, 2, 3, 4 and 5 This task contributes specifically to the development of the following graduate attributes: 1.1, 3.1 and 5.1 |
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| Weight: | 60% |
| Length: | 3000 words |
| Criteria: |
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Required texts
Natalie P Stoianoff, Fred Chilton and Ann L Monotti, Commercialisation of Intellectual Property, Lexis Nexis Butterworths, Australia 2019 (but published December 2018).
Recommended texts
These readings are recommended and are not intended to be exhaustive. Students are encouraged to use the Library catalogue and databases to locate additional resources.
Gary N. Keller, Guide On Intellectual Property (IP) Commercialization, Committee on Development and Intellectual Property (CDIP), Sixteenth Session, Geneva, November 9 to 13, 2015, CDIP/16/INF/4, September 30, 2015, available at <http://www.wipo.int/edocs/mdocs/mdocs/en/cdip_16/cdip_16_inf_4.pdf>
ACIPA, Intellectual Property and the Commercialisation of Research and Development - A Guide for Horticulture Industries, 2006, available at <http://acipa.edu.au/pdfs/intellectual-property-for-commercialisation-of-research-and-development.pdf>
Kenneth L. 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') (this book is also available from online bookstores - it should also be available through LEXIS) some chapters will be provided on Canvas.
R. Reynolds, N.P. Stoianoff, A. Roy, Intellectual Property Law: text and essential cases, (5th ed, Federation Press, Sydney, March 2015), 782 pages (hereinafter, 'the IP Book')
Paul McGinness, Intellectual Property Commercialisation - A business manager's companion, Lexis Nexis Butterworths 2003
M. Calvert, Technology Contracts, A Handbook for Law and Business in Australia, Butterworths 1 Oct 2002 2nd Edition. The library may have the second edition.
Other resources
Jay Dratler, Jr. & Stephen McJohn, Intellectual Property Law: Commercial, Creative, and Industrial Property (four-volume treatise) (Law Journal Press 1991 & Supps.), available on line on LEXIS under acronym IPLCCIP, as described at http://gozips.uakron.edu/~dratler/treatises/handling.htm#online (visited Nov. 22, 2009).
These works deal with specific topics in much greater depth.
Jay Dratler, Jr., Cyberlaw: Intellectual Property in the Digital Millennium (Law Journal Press 2000 & Supps.), available on line on LEXIS under acronym CIPDM, as described at http://gozips.uakron.edu/~dratler/treatises/handling.htm#online (visited Nov, 22, 2009).
David M. Epstein, Eckstrom’s Licensing in Foreign and Domestic Operations (Thomson-West 1972 & Supps.) (binder/looseleaf)
Derek Bosworth & Elizabeth Webster, The Management of Intellectual Property, Edward Elgar, 2006 David W Tollen, The Tech Contracts Handbook ABA
Ira Jay Levy & Joseph Yang, Advanced Licensing Agreements (2014) (PLI #51356)
Les Nouvelles, Journal of Licensing Executives Society