University & Industry Collaborative IP Development Andrew Carlin, Head of Commercial Contracts LES Annual Conference, Leeds, 24th June 2009 20 September 2018

Sector Income by Partner Type Source: HE-BCI 2008 Survey Report published at: http://www.hefce.ac.uk/pubs/hefce/2008/08_22/

Sector Income by Activity and Partner Type Source: HE-BCI Survey Report 2008 Fig.2

Sector income streams 2003-2007 (real terms) Source: HE-BCI Survey Report 2008 Fig.3

Sector Invention Disclosures Source: HE-BCI Survey Report 2008 Fig.17

Sector Licence Numbers Source: HE-BCI Survey Report 2008 Fig.18

Motivations for Collaboration (non-exclusive and in no particular order …)

University … Securing future quota funding Meeting government policy expectations Research, Innovation, Employability Maximising Impact of research outputs Regional economic contribution Building reputation Securing direct income and covering costs Balancing a funding portfolio Taking advantage of IP exploitation potential Developing research base

Building relationships with a range of funders which are: long term, sustainable, Scientifically/ academically significant economically viable

Academics … Funding – direct and jointly secured Access to company owned IP Delivering quality PhD training/ experience Furthering research through access to: facilities expertise/ applied knowledge etc Creating more and better research outputs Continuing to research as freely as possible

…on policy and strategy … 10 years since HEROBC (Higher Education Reach Out to Business and Community) Followed by 4 rounds of HEIF (Higher Education Innovation Fund) Now mainstream (& capped) Infrastructure & project funding Focussed on TT and business interaction – now more explicitly about Knowledge Transfer and “Impact” DfEE to DfES to DIUS to BIS in the same period

Influence on Research Funding Research Councils UK Mission and Statement of Expectation on Economic and Societal Impact To advance knowledge, understanding and technology (including the promotion and support of the exploitation of research outcomes), and provide trained researchers; To build partnerships to enhance take-up and impact, thereby contributing to the: economic competitiveness of the United Kingdom, effectiveness of public services and policy, and enhancement of the quality of life and creative output of the nation. http://www.rcuk.ac.uk/innovation/rolerc/missionsei.htm

RCUK & IP “In respect of research grant-funding, unless stated otherwise, the ownership of intellectual property (IP), and responsibility for its exploitation, rests with the organisation carrying out the research… In taking responsibility for exploiting intellectual property, the Research Councils expect the research organisation to ensure that individuals associated with the research understand the arrangements for exploitation. Where research is funded by or undertaken in collaboration with others the research organisation is responsible for putting appropriate formal agreements in place covering the contributions and rights of the various organisations and individuals involved. Such agreements must be in place before the research begins. Research organisations are required to ensure that the terms of collaboration agreements do not conflict with the Research Councils’ terms and conditions of research grants. “ http://www.rcuk.ac.uk/innovation/intellectualproperty/default.htm

RCUK & Data Access Ideas and knowledge derived from publicly-funded research must be made available and accessible for public use, interrogation and scrutiny, as widely, rapidly and effectively as practicable. Published research outputs must be subject to rigorous quality assurance, through effective peer review mechanisms. The models and mechanisms for publication and access to research results must be both efficient and cost-effective in the use of public funds. The outputs from current and future research must be preserved and remain accessible for future generations.

Background to Negotiation Other factors affecting University room for negotiation … Charitable Status Satisfying Charitable Purposes, Public Benefit Full Economic Cost (“FEC”) External Funding Terms State Aid Rules Nolan Principles Ethics Existing external relationships Internal relationships Employment terms; protecting background; academic expectations/ aspirations; the best commercial deal; duty of care to students; unintended effects on future funding, etc …

Time to take Stock? Where is government science and research policy taking us? What do the HE-BCI figures tell us? What do our observations of 10 years of concerted Technology Transfer suggest?

(…perhaps for debate …) Arguably for universities collaborative research is a better value means of delivering new IP and innovation than maintaining and licensing patent portfolios. Universities have maturing and diverse IP experience and skills in-house which can have real impact in planning and contracting for collaborative activity. Current economic climate needs a renewed air of pragmatism and an emphasis on establishing mutual value in relationships rather than the emphasis on individual transactions grown since 1999/2000

How can we do this? Framework research agreements? Pre-Agreed Material Transfer terms & mechanisms? Data Sharing? Open Innovation? Closer relationship management? Agreed publication review and approval mechanisms? Protocols on taking up and handling new IP? Field specific licence/ assignment templates? Opening doors to each others “back offices”? Using experience gained in TT developments to negotiate research projects with realistic and workable outcomes for the IP outputs