Transcript in the universities Heriot-Watt

A Dual Role
Principal (Rector) of Heriot-Watt University
Chair of the regional economic development company
IP ownership in the UK
• Employers - even Universities - own the IP
created during employment.
• Students own their own IP but can assign to the
University and be treated as members of staff
• Universities assign copyright in publications but not
teaching materials
• Universities share royalty income with staff
• Universities license IP to companies but
do not normally assign it
Powering the Knowledge
Economy
Universities play a key role at the heart of the
knowledge economy…………….
They:
• Educate people with high level skills
• generate new knowledge
• apply new knowledge to enhance economic
prosperity AND quality of life
Recognising the need
Universities play a key role at the heart of the
knowledge economy…………….
Their ability to support the application of new
knowledge depends increasingly on effective
management of Intellectual property
Too often this process is less than smooth
Expertise, strategies and policies are needed
SE Edinburgh & Lothian
As Chairman of a regional economic development
agency:
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IP being created - especially in biotech
Often unsatisfactory interactions
Lack of expertise on both sides
Companies frustrated
IP not being released
Universities not earning income form IP
Universities being challenged
Scotland’s IP
Performance
• 8.6% of UK population
 12%of total UK research funding
 3rd in the world for research publications per capita
 24% of invention disclosures in the UK HEIs
 16% of new UK patents
 20% of licenses from UK HEIs
 19% of spin-out companies from UK HEIs
Scotland’s IP
Performance (2)
Which in 2002 meant:
• 100 new technology licensing agreements
• 100 new companies since 1999
Scotland’s Efficiency
In comparison with the USA for each millon dollars research
spend Scotland produces:
 1.5 X number of licenses
 5 X number of spinouts
 3 X disclosures
 but only 0.69 X number of patents
WHY is IP Management
Important?
• To avoid conflicts AND conflicts of interest
• To understand levels of investment and price
knowledge transfer appropriately
• To ensure that IP incentives are distributed fairly
and consistently with other policies
• To ensure that exploitation does not overshadow
knowledge creation
• To manage conflicts that will arise
Heriot-Watt
 500 research staff
 £16 million in research income
 @ 20-25 disclosures each year
 @ 12 patents filed per year- only those with route to market
or platform technologies
 year one - no licenses ; year 3 - 4-5 licenses
 3-4 spin-out companies each year
Heriot-Watt Policies
 IP revenue is shared - after costs
Staff/School/Patent Fund
 Spin-outs
 24% equity
 exclusive licenses
 royalty free at first
 assigned when company is robust
Conflict of interest
 Have a sensible and effective Policy in place
 Manage it
 Teaching, research, external activities & 3rd leg
 Register of interests
 Self-policing but with teeth
Collaborative Research
• Issues:
• IP generated needs to be identified, evaluated and
protected
• Future access to IP by the university needs to be
considered
• Research, if used for commercial purposes can
infringe others’ IP and lead to litigation
• Publication may infringe others’ IP and expose the
University to litigation - especially electronic
publication
• expertise in commercialisation in the UK is
- largely - in the universities
Heriot-Watt & industry
 In collaborative research with industry Heriot-Watt
Retains ownership of IP
 Offers standard contract terms - generally accepted
 Industry
meets full costs of research
gets 1st option on the IP
 gets an exclusive licence
 meets costs of defending licences
Incentives for Staff
 IP revenue sharing between
Staff/School/Patent Fund
 Staff can hold equity in companies,
if University permits
 Consultancy and CPD = returns to staff after costs
(currently 70% to individual/ 30% to School)
 Discussions about 3rd leg and career progression
The Guide
Managing Intellectual Property
A Guide to Strategic Decision-making in Universities
UUK: AURIL:DTI: Patent Office
URL:
http://www.patent.gov.uk/about/notices/manip/index.ht
m
Tensions
Commercialisation V Research Excellence
• expectation but no esteem for
commercialisation
• knowledge transfer is not fully recognised
• commercialisation activity takes staff attention from
basic research
• commercialisation takes research active staff out of
basic research
• commercialisation requires professional expertise
Unresolved tensions
What are now “normal” duties and expectations?
• How do we handle the impact on research activity of
the secondment of staff to spin-outs?
• Do we include commercial activity in promotion
criteria?
• Do we reward research earners in the same way that
we reward inventors with royalties?
• Do we continue to reward staff for “3rd leg” activity
- CPD and consultancy?
Issues for Institutions
Commercial activity provides valuable interactions
with industry but they need to be managed
Consultancy:
• may infringe IP owned by other companies
• may represent a potential leakage of IP
Research Funding:
• requires a clear contractual arrangement at
institutional level
Personnel issues can arise :
• disputes between staff over IP ownership or
invention need to be managed
Issues to Consider
Do we own the IP we need to own?
• To enable us to carry out research
• To use research results in future research
• To deliver our teaching, including ODL?
Can we use IP exploitation to recruit and retain staff?
Can we prevent conflicts of interests between staff?
What about student IP - do we infringe it ? Do we
know?
Ownership - an issue?
The real issue is knowing what you have and
what you want to do with it
Much of it will have a “sell-by” date
All of it has no value if it is not used
IP needs to be used effectively
Institutional Missions
Knowledge Acquisition / Knowledge Transfer
If your mission is strongly regional in focus do
you trade getting the best world price for
diffusion locally?
If your mission is to be excellent in research
do you prefer a direct financial return for
research and allow free knowledge
transfer?
Does research influence the quality of
teaching?
3rd leg Benefits?
Activity
Academic
University
Community
Collab.
Research
Spin-out
?
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Start-up
?
?
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Licence to
sme
Licence to
multinat’al
Consultancy
X
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X
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X
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Measuring Success
Measure the success of your activities
by your goals
Operational Information
Gillian McFadzean
Director, Technology & Research Services
Heriot-Watt University,
Edinburgh
EH14 4AS
email: [email protected]
Tel +44 131 541 3881