Patent Attorney Amanda Simons of J A Kemp’s Oxford office offers some do’s and don’ts for businesses regarding collaborations that rely on University IP
The number of spin outs from UK Universities has been on the up in recent years. Oxford University alone spun out a record 24 companies in 2018, attracting over £500m in external investment over the course of the year. There is real excellence in the technology being created in our region and a real drive to bring this technology into real life products and services.
Many of these collaborations with academia or spinouts are based on IP. Most experience some friction around IP. A few fail because of IP. Avoid disappointment by taking a long view, having realistic expectations and being flexible.
DO – be realistic. Bear in mind that a University-originating IP portfolio may not have been developed with the luxury of ample resources and a clear commercial focus. Before you came on board, hard decisions may already have been taken about costs, territorial coverage and maintenance, or to accommodate a need to publish. It may be that not everything patentable has been covered by an application or that patents have been granted with claims not ideal for you. You will have to live with the legacy of these choices so make sure you understand what you are taking on.
DON’T – worry about changing the direction of travel. Universities and their scientists will have different priorities from yours. Understand their viewpoints but form your own too. IP can often be more flexible than you think. You may well be able to rely on the most useful nuggets from their IP at the outset, and then build on it yourself.
DO – your homework. Check how rights to out-licence flowed from the scientists to the University or its spinout. Check that there are no missing inventors from other institutions that may co-own the IP. Check that there are no existing agreements that conflict with yours. Loose ends are not uncommon but the earlier ownership is established, the easier it is to access any rights that may lie elsewhere.
DON’T – think it is always all about patents. Sometimes the opportunity to build relationships and tap into knowhow and future developments matters more in the end.
DO – look to the future. New inventions may well arise in the University lab you are dealing with. Do you have an automatic option on those or do you need to agree access to them separately? Make an agreement about the handling of any future joint inventions between your personnel and the University’s too.
DON’T – ignore third party IP threats. The University or spinout may have mapped these partially but probably not in full. Freedom to operate analysis is costly and the University’s goal is to get the project moving on a tight pre-commercial budget. Freedom to operate is often given only a minor role by tech transfer offices, especially as at such an early stage, they may not be aware of exactly where the technology will be taken. But you will bear the greater risk and will have particular commercial goals in mind, so do your own FTO analysis too.
DO – remember why you came here in the first place. It’s not a perfect world but you do have access to the best minds and most disruptive technologies!
So don’t let the IP be a reason for failure in your own venture. IP should not be a bar to a successful collaboration. With the right approach to the IP, and a willingness to be flexible, IP portfolios can be adapted, and built on, to suit your changing needs as you take any new venture forwards!
Amanda is a partner with over 20 years’ professional experience, including an extensive track record in advising start-up companies and working in developing technologies. Contact Amanda at email@example.com or on 01865 406 100