The inventions disclosed to NSi are scientifically novel and interesting. However, many do not represent viable commercialisation opportunities, a result that is consistent with university technology transfer operations worldwide. It is imperative that NSi’s initial assessment of incoming inventions explore and understand the commercial opportunity such that our later stage commercialisation efforts are focused appropriately. Such research should also identify glaring “red flags” such as existing patents, ownership issues, or market deficiencies that would preclude successful commercialisation.

As diagrammed in the figure below, NSi follows a standard process whereby an invention is assigned to a Business Development Manager (BDM), evaluated in a team based approach by a BDM, a Business Analyst, an IP (patent) analyst, and our IP Manager who reviews ownership. Following meetings with the inventors and the preparation of reports, a commercialisation recommendation is made to NSi’s Technology Review Committee (TRC). The following paragraphs expand on each of these activities.

An overview of NSi’s Invention Intake Evaluation Process:

Assignment to a Business Development Manager:  NSi has a seasoned business development team with a range of scientific and commercialisation backgrounds. Assignment of an invention to a BDM will be based on a number of factors, including pre-existing relationships with researchers and specific scientific and/or commercialisation expertise.  Once assigned, the BDM will be in immediate contact with the researchers to discuss the new invention.

Concept Development Meetings:  In early 2008 NSi instigated a Concept Development Meeting as part of its IPN intake process.  This meeting is designed to effectively explore the invention and commercial opportunity, and is attended by the inventors, an NSi Business Development Manager and Business Analyst, and often a representative of bwiseIP.  These meetings have not only improved the quality and effectiveness of our market and IP analyses leading to better commercialisation decisions, they have also provided valuable feedback to the inventors.  This feedback helps inventors understand their technology’s position within the market, and can lead to research plan modifications that better position a technology for commercial acceptance. 

Market and Business Analyses:  Following the Concept Development Meeting, the Business Analyst assigned to the technology will perform further research and ultimately prepare a Market Analysis Report for use in making a commercialisation “Go/No-Go” decision.  The report investigates at least six separate areas – market, competition, competitive advantage, market entry and critical success factors – allowing NSi to objectively evaluate the strength of each incoming opportunity.  The report results from an iterative process, in that the Analysts regularly seek feedback from the inventors as drafts are prepared.  Regardless of NSi’s final commercialisation decision, the inventors ultimately benefit via receipt of the final report.

IP Analyses:  A second aspect of NSi’s invention assessment capabilities is represented by the consulting group bwiseIP, our in-house patent management and advisory group.  Although not all inventions require patent protection to be successfully commercialised (e.g., software), bwiseIP reviews those IPNs where patent protection may be useful and provides an IP Analysis Report that also contributes to NSi’s commercialisation “Go/No-Go” decision.  The report provides a preliminary outline of the patent landscape surrounding an invention.  In addition to hopefully identifying existing patents or other prior art that may eliminate our patent position, the analysis may also identify coverage gaps that are available to strengthen our position.  In these instances, NSi may be able to suggest experiments to the inventor that substantially strengthen the patent or market potential of an invention. To complete this report, bwiseIP works with the inventors to identify key words or phrases describing the inventive field and queries international patent databases.  Again, the process is iterative and a copy of the final report is provided to the inventors.

Legal ownwership due diligence:  A third aspect of the invention assessment process concerns ownership.  UNSW investigators often have conjoint appointments with other institutions or CRCs that impact the ownership of any inventions they make.  Alternatively, a UNSW investigator may be collaborating with another institution or with industry, with or without agreements that define IP matters.  As a result, NSi has instituted a best practice approach of performing initial ownership due diligence at the very earliest stage of invention assessment.  If NSi cannot demonstrate that it has sufficient ownership interests to warrant involvement, the invention may be quickly returned to the inventors or collaborating partner.

Technology Review Committee Report and Commercialisation Decision:  As the final stage of NSi’s IPN evaluation process, BDMs use the information provided in the reports above to prepare a Technology Review Committee (TRC) report with a commercialisation Go/No-go recommendation.  Composed of NSi senior staff, Business Development Managers and Business Analysts, and advised by external patent attorneys and venture capital representatives, the TRC reviews the analyses, provides feedback, and approves or rejects the BDM’s recommendation.  In addition to facilitating good commercial decisions, the process provides investigators with assurances that their inventors are being reviewed by NSi’s full breadth of expertise.

Answer: Determining correct inventorship is an important legal requirement for securing intellectual property protection. The following five points are useful considerations, however please feel free to contact NSi with any questions and a BDM will gladly provide further guidance.

To invent something is to conceive of it

To be a named an inventor on a patent, one must have solely or jointly with others conceived of an element that constitutes a novel and non-obvious aspect of the invention.


To invent something is to reduce a concept to practice.

Conception, as defined by case law, is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. An idea is considered definite and permanent only when ordinary skill could reduce the invention to practice (i.e. create a working invention) without extensive research or experimentation.

It follows therefore, that invention occurs when the solution to a particular problem is conceived, and no more than routine workmanship is required to put the conceived solution into practice.
Therefore to satisfy the inventorship test, it must be shown that an individual contributed to the conception of the invention AND contributed to reducing the invention to practice. In doing so, the inventor contributes to at least one independent patent claim.

Conception is incomplete where someone claims to have conceived of the solution but fails to adequately describe (or contribute to) the means to accomplish that solution.

Patent rights are granted in exchange for disclosure of inventorship

Patent rights are granted to the person(s) (or their employer) who first invents a new and useful process, machine or composition of mater (or other patentable subject matter) in exchange for disclosing the details of the invention. Failure to name an inventor or conversely naming an inventor who did not contribute to the inventive process can invalidate a patent in many jurisdictions. If inventorship is found to be incorrect during the course of litigation, the patent can be held invalid and all patent rights can be lost. Incorrect inventorship discovered during prosecution of the patent is correctable if the error can be show to have occurred without deceptive intent.

Ownership of patent rights follows inventorship

Only owners of patent rights can exploit them and there must be consensus among owners of a patent on how the patent is to be exploited. An ownership claim can restrict the right to exploit a patent. Owners and in many cases inventors share in the royalties generated from a patent and, therefore, identifying inventorship is financially important.

Inventorship does not necessarily follow authorship

As indicated above, inventorship is a matter of law. In contrast, authorship is a matter of choice and many reasons may justify the addition of an author to a journal article, not the least of which is politics. Such reasons must be avoided when evaluating inventorship.

Further Frequently Asked Questions will be placed here in due course. However, if you have a specific question for the NSi team then please contact us directly.