New Book on University Intellectual Property

I was thrilled when Prof Graham Richards asked me to be part of his latest book project. Graham is very much the father of technology transfer in the UK. As well as holding the Chair of Chemistry at Oxford University – in which capacity he raised millions in funding -he found time to set up Oxford Molecular which was really the first proper spin out in the UK and was also a founder of the IP Group and a number of other spin outs. Interestingly he has sat on both sides of the fence as he also established Isis Innovation the technology transfer organ of the University of Oxford.

In the new book which has just been published by Harriman House he wanted to explore where we are now as there is increasing pressure on Universities to demonstrate the “impact” of their work and also to find third party funding. The book explores how universities and governments have reacted to the new challenges, the extent to which IP can be considered as a source of income as well as questions of ownership and academic freedom. Graham invited people who are involved in different aspects of technology transfer to contribute their thoughts which makes for a very interesting read with views from folk as diverse as an economist, an expert in ethics and a patent agent. As someone who usually works with the spin out or the industrial collaborator Graham asked me to comment on some of the issues relevant to my clients.

I picked out three areas for improvement that I thought would have an impact without incurring massive cost.

1. More sharing of expertise between the universities’ technology transfer offices to support unusual collaborations. Different industry sectors have different risk profiles and flashpoints which impacts on the licensing and contract agreements but the technology transfer office cannot be expected to have expertise in every conceivable sector. Increasingly offices are sharing expertise but more could be done to encourage this. More especially I think institutions could be more flexible in their handling of non standard situations such as when academics have brought IP with them from other jobs or institutions or where there has been a collaborations between multiple institutions. These situations are becoming more common and using the same terms as where all the IP is developed within one institution is simply inappropriate

2. Better handling of complaints from industrial collaborators.
University Technology Transfer Offices may foster industry-academic liaison, but have no powers to control the academic or force resolution if there is a dispute. Fear of lack of effective redress may discourage SMEs in particular from engaging with academia. To help prevent that happening I suggest giving investors a due diligence package to help create a more robust industry-academia partnership agreement. I argue that disputes could be avoided if contracts covered regular review and reporting of scientific and financial records, and set out clear expectations and obligations which were clearly accepted by the academic. Additionally it is essential to establish a transparent “one stop shop” dispute resolution methodology in which all parties can have confidence.

Problems can arise where an academic is engaged in the spin out company but is also acting on behalf of the university and carrying out sponsored work in his lab. While I would not advocate adopting the US practice of separating key roles in any spin-out company whole sale I do think we need to do something in the UK to avoid any confusion of responsibility and subsequent liability.

3. Better business training for budding entrepreneurs.
I believe universities would improve the impact of their knowledge transfer ( an expand their opportunities with SMEs) by better equipping their students for subsequent work in industry. They generally provide ad hoc training and entrepreneurship clubs that may be interesting, useful and/or enjoyable, but take-up is patchy and they fail to provide a comprehensive grounding in business methods and practices that would allow young scientists to have a more immediate impact in the workplace or to set up their own businesses. I suggest a variety of routes to provide better training, including using distance learning techniques and webcasts to establishing facilitated self-help groups along the Mastermind or alternative board models popular with businesspeople.

I hope that readers will enjoy our book but also that we can begin a debate on some of the issues raised by this wide variety of authors.

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