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Intellectual property as a strategic tool

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. $$. ?. $.

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Intellectual property as a strategic tool

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  1. Belgrade 30 October 2012 Intellectual property as a strategic tool Alison Campbell OBE PhD RTTP

  2. Why do technology transfer? • Utilise research results for public good • Benefit local/national economy • Retain / incentivise academics • Revenue generation

  3. $$ ? $

  4. Developing the commercial proposition • Context • Objectives • National/regional/university/inventor • Returns • Purely financial?

  5. Revenue and value • What do we want to achieve? • What will this allow us to do? • Short term or longer term? • Who influences this?

  6. Revenue and value - Licensing • Licensing transactions • One-way • Up-fronts, milestones, royalties • Reimbursement of IP fees

  7. Revenue and value: Company creation • Spin-out transactions: • Equity • Licence fees • New jobs • Relationships

  8. Revenue and value: Consultancy • Consulting to industry • Fee for provision of service • Access to knowledge/problem solving • Relationships

  9. Revenue and value: Collaboration • Collaborating with industry • Directly funded research • Access to leveraged funding • In-kind resources: materials, facilities, equipment, knowledge • Publications • Relationships

  10. Revenue and value: the UK perspective • Universities provided £3.3bn worth of services to business in 2010/11 • Source: HEBCIS

  11. University-business IP transactions in 2010/11 • Licence income • £61 million • Share sales • £26 million

  12. 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

  13. % revenue by source 2010-11

  14. Translating research for social and economic benefit

  15. Licensing IPR • You need to know: • Value • The Market • Its place in the value chain

  16. 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

  17. The IPR clause in consultancy agreements • The client owns foreground • They are paying for it! • You are solving their problem

  18. Research collaboration and IPR

  19. Lambert model agreements • A set of agreements derived by industry, universities and lawyers • www.ipo.gov.uk/lambert

  20. Lambert Agreements 1-5

  21. 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

  22. 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. 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. 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. Strategic Assets • Intellectual Property (in all forms) • Resources (cash, access to facilities) • First mover advantage • Relationships • Reputation

  26. Contact details www.alisoncampbellassociates.com www.praxisunico.org.uk www.easyaccessip.org.uk alison@alisoncampbellassociates.com

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