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INTELLECTUAL PROPERTY AS A STRATEGIC TOOL Alison Campbell OBE PhD RTTP Belgrade 30 October 2012
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Why do technology transfer? 2 Utilise research results for public good Benefit local/national economy Retain / incentivise academics Revenue generation
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3 IPR Research results Materials Know- how $$ $ ?
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Developing the commercial proposition Context Objectives National/regional/university/inventor Returns Purely financial? 4
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Revenue and value 5 What do we want to achieve? What will this allow us to do? Short term or longer term? Who influences this?
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Revenue and value - Licensing 6 Licensing transactions One-way Up-fronts, milestones, royalties Reimbursement of IP fees
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Revenue and value: Company creation 7 Spin-out transactions: Equity Licence fees New jobs Relationships
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Revenue and value: Consultancy 8 Consulting to industry Fee for provision of service Access to knowledge/problem solving Relationships
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Revenue and value: Collaboration 9 Collaborating with industry Directly funded research Access to leveraged funding In-kind resources: materials, facilities, equipment, knowledge Publications Relationships
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Revenue and value: the UK perspective 10 Universities provided £3.3bn worth of services to business in 2010/11 Source: HEBCIS
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University-business IP transactions in 2010/11 Licence income £61 million Share sales £26 million 11
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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 12
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% revenue by source 2010- 11 13
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LicensingNew Co CollaborationConsultancy IPR Translating research for social and economic benefit 14
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Licensing IPR You need to know: Value The Market Its place in the value chain 15
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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 16
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The IPR clause in consultancy agreements The client owns foreground They are paying for it! You are solving their problem 17
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Research collaboration and IPR 18
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Lambert model agreements A set of agreements derived by industry, universities and lawyers www.ipo.gov.uk/lambert 19
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LambertTermsIPR 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 5Contract research: no publication without permission Sponsor Lambert Agreements 1-5 20
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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 21
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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 23
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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 24
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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 25
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Strategic Assets Intellectual Property (in all forms) Resources (cash, access to facilities) First mover advantage Relationships Reputation 26
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Contact details www.alisoncampbellassociates.com www.praxisunico.org.uk www.easyaccessip.org.uk alison@alisoncampbellassociates.com 27
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