Intellectual property as a strategic tool
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Intellectual property as a strategic tool Alison Campbell OBE PhD RTTP Belgrade 30 October 2012
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Belgrade 30 October 2012. Intellectual property as a strategic tool. Alison Campbell OBE PhD RTTP. Why do technology transfer?. Utilise research results for public good Benefit local/national economy Retain / incentivise academics Revenue generation. $$. ?. $. - PowerPoint PPT Presentation
Transcript of Intellectual property as a strategic tool
Intellectual property as a strategic tool
Alison Campbell OBE PhD RTTP
Belgrade 30 October 2012
Why do technology transfer?
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Utilise research results for public good Benefit local/national economy Retain / incentivise academics Revenue generation
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$$
$ ?
Developing the commercial proposition
Context Objectives National/regional/university/inventor
Returns Purely financial?
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Revenue and value5
What do we want to achieve? What will this allow us to do? Short term or longer term? Who influences this?
Revenue and value - Licensing6
Licensing transactions One-way Up-fronts, milestones, royalties Reimbursement of IP fees
Revenue and value: Company creation
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Spin-out transactions: Equity Licence fees New jobs Relationships
Revenue and value: Consultancy
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Consulting to industry Fee for provision of service Access to knowledge/problem solving Relationships
Revenue and value: Collaboration
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Collaborating with industry Directly funded research Access to leveraged funding In-kind resources: materials, facilities,
equipment, knowledge Publications Relationships
Revenue and value: the UK perspective
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Universities provided £3.3bn worth of services to business in 2010/11
Source: HEBCIS
University-business IP transactions in 2010/11
Licence income £61 million
Share sales £26 million
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University-business relationships in 2010/11
Collaborative & contract research £1.9 billion
Continuing Professional Development £606 million
Consultancy services £370 million
Access to specialised facilities £129 million
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% revenue by source 2010-1113
Translating research for social and economic benefit
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Licensing IPR
You need to know: Value The Market Its place in the value chain
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IPR and company creation
Investors love IPR And assignment of rights And pipelines
Success is built on GOOD technology and GREAT people
It’s rare to achieve equity and royalties Return is long term
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The IPR clause in consultancy agreements
The client owns foreground They are paying for it!
You are solving their problem
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Research collaboration and IPR18
Lambert model agreements
A set of agreements derived by industry, universities and lawyers
www.ipo.gov.uk/lambert
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Lambert Terms IPR
1 Sponsor has non-exclusive rights to use in specified field; no sub-licences
University
2 Right to negotiate an exclusive licence to some or all IPR
University
3 Assignment University
4 Sponsor owns, university has right to use for non-commercial purposes
Sponsor
5 Contract research: no publication without permission
Sponsor
Lambert Agreements 1-520
Lambert Toolkit
More than just agreements – models are NOT enough Guidance Notes – critical to understanding issues Heads of Terms/Outline – critical to meeting of minds Decision Guide – critical to choice of most appropriate starting
point (model research collaboration agreement) Key Elements/Criteria
Ownership and rights to use Results Financial and other contributions University's use of Results for academic purposes
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Easy Access IP aims
Easy Access IP promotes new ways of sharing IP between universities and industry
Some IP is offered free to industry, using quick and simple agreements
EAIP Adopters expect all IP to generate a return, however, they are choosing to forgo an immediate, financial return to stimulate the development of IP by business and promote new, long‐term partnerships
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Free IP?
All Easy Access IP has inherent value, but can be difficult to commercialise through traditional ways:
IP is too early stage or uncertain for a company to risk investment
Development is proving a difficult challenge within constraints of university environment
The best route to adoption is not to protect, but instead to promote to potential partners in this high‐profile way
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Benefits of Easy Access IP
It uses IPR strategically Increases ability to develop relationships with industry Free access allows industry partners to evaluate IP
quickly and take risks Easier for researchers to achieve knowledge transfer
outcomes/impacts Ensures university/industry relationships begin with a
gesture of good will and provides a strong foundation for long‐term relationships
Speeds up transaction time so that publicly funded knowledge and IP can be got into use as quickly as possible
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Strategic Assets
Intellectual Property (in all forms) Resources (cash, access to facilities) First mover advantage Relationships Reputation
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Contact details
www.alisoncampbellassociates.com
www.praxisunico.org.uk
www.easyaccessip.org.uk
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