IP in the University context
The University owns and controls valuable intellectual assets in which various intellectual property rights may subsist. Such assets comprise, for example the accumulated and individual skills, knowledge and know how of our staff and students; the potential of its valuable specialized equipment; its connections and reputation; papers and teaching materials and the experiments and investigations conducted by staff and students and the raw data, databases and papers and inventions and discoveries that may arise in consequence.
If you have looked at our page Intellectual Property - What is it? you will appreciate that these assets may give rise to various intellectual property rights.
The law of confidential information will protect unpublished know how and results, including discoveries and inventions. University employees and students are required to observe confidentiality in relation to such information although of course as a University our overriding purpose will always be the dissemination of information and the building of our research base. So balancing academic integrity with commercial drivers and ambitions is often a question of timing. We can thus win research funding, achieve academic publication in respected journals and embrace commercialisation opportunities - all from our intellectual assets.
Where the University wishes to discuss its confidential information with potential collaborators – including other Universities - it will need to ensure that a Confidentiality Agreement is in place with such third party. Such an agreement must contain appropriate terms such as, imposing duties of secrecy on the person receiving the sensitive information, restricting the purpose for which it may be used, and dictating who in the receiving organisation has access to and how the information is to be stored and treated.
The terms of Research Collaborations will invariably impose confidentiality obligations on all participators. As such no one will be at liberty to publish without reference to and clearance from the others (or compliance with other agreed protocols). However academic publication and teaching and building the research base are a University’s life and breath. Where the University is carrying out Research (whether blue skies or applied) the potential for publication is a vital element, so this must be contemplated and contracted for in every case, with delays that are manageable in an academic context for the making of Patent filings. If this is unacceptable to a commercial sponsor or collaborator the appropriate type of engagement should be consultancy or contract research (which has a different cost and tax basis).
The terms of the Research Collaboration will also contain other terms relating to intellectual property such as who is to own the IP Rights that arise from the Project (often called ‘Foreground IP’) and the basis of rights to use IP already developed or developed independently from the funded Project which has been used in the Project (‘Background IP’). Sometimes it may be possible to divide up different fields for the exploitation of IP.
Another issue where IP rights become important is the question of ongoing rights of access by the Collaborators to Background and Foreground IP for future research. This can be a sensitive issue as commercial sponsors will not wish to see Universities using the Foreground which they have part funded used in future research with their competitors. Equally the Universities will regard the ability to build their research base and seek funding for this as a fundamental requirement. Since frequently publicly funded research such as that from the Funding Councils and EU requires industrial participation the involvement of commercial entities in future research should be contemplated and, where possible, contracted for.
Other IP issues sometimes include how royalties, revenue shares or other benefits are to be calculated and divided between the collaborators and on what basis (they will usually only have such an entitlement where that particular institution has contributed to the inventive step claimed in a patent or owns copyright and/or database rights in exploitable code or databases). All of these terms need to be decided given the particular context.
In keeping with the academic desire to share knowledge and to enable others to develop and achieve further intellectual insights academics often share materials and research tools under ‘Material Transfer Agreements’ (“MTAs”). Such agreements are important in order to ensure that the Provider (who is doing this for altruistic reasons) is not liable in respect of the use the Recipient makes. They will usually also provide that the Provider owns certain IP Rights – commonly IP in improvements and modifications to the supplied material (whether or not patented or patentable) and depending on the circumstances the Provider may want to leave open the prospect of some claim to other IP developed by the Recipient with or by means of the Material, or a revenue share if the use of the Material leads to a commercial outcome. MTAs are common academic practice and facilitate research. But they are legal agreements and should be regarded as such requiring careful consideration of the terms.
Commercial companies and some research organisations lending Materials or Research tools may prefer to do so under Licences rather than MTAs. An example is Harvard’s onco mouse – the rights of which were assigned to DuPont on terms that NIH funded researchers could require a free licence for academic research.
If an academic has developed a research tool that may have commercial value intrinsically or as a means to further intellectual insights a patent filing and more formal licence of rights and careful consideration of the implications of liberal dissemination in the context of a research and or commercialisation strategy need to be considered in conjunction with IP and Legal Services and RDSO and/or Bath Ventures.
Where the University owns IP which has a commercial potential the academic may wish to explore opportunities to develop the IP so that it can enter the market. In that way the academic can see the research being put to practical effect and can benefit not only reputationally but financially.
The Intellectual Property Policy of the University provides that the University owns all Intellectual Property Rights arising in connection with an academic staff member’s work at the University. This claim also extends to ownership of students’ IP (see Student IP). Where the University (in cooperation with the academic inventors) commercialises IP it will share the benefits with the inventors and creators in accordance with the Policy.
The University has access to funds to facilitate such commercial development. For example the EDF fund offers sums to projects for proof of concept and market validation to assist in evaluating the commercial potential of IP. The University also has its own seed fund: the University of Bath Crescent Seedcorn Fund which may be willing to invest funds for the development of University IP.
When the IP is thus developed it may be the subject of a commercial Licence to a third party who will further develop the technology and the then incorporate it into its manufacturing products and processes. The terms of such a Licence need to be carefully considered and negotiated to ensure for example that the Licensee does indeed use its commercial efforts to place the product on the market to generate income, and so that the University gets a fair share of that income – as a royalty payment. The Licensee must ‘use it or lose it’. Continuing research rights of the University also need to be agreed. Sometimes the Licensee may want the University to carry out further development work on a research basis – in which case a Research Collaboration will also be agreed.
An alternative to the commercial third party Licence is for the University itself to set up a spin out company to house and develop the IP. The spin out will be funded by investors – these will usually include the University’s own seed fund and IP Group Plc with which the University has a special framework agreement. They will thus become shareholders of the new company – along with the academics and the University. The executive team of the Company will also often be shareholders. The purpose of the spin out is a mechanism to enable fast growth. The ambition is that the company may ultimately become a manufacturing company – e.g. Vectura Plc –a Bath spin out now listed on the UK Stock Exchange - or may be the subject of a trade sale.
Key issues of importance to the Academics and University will include the consultancy or secondment terms of University staff who will carry out work for the spin out, the arrangements in respect of facilities and space and sometimes the scope of continuing research rights.
For more details in relation to the legal processes involved see Commercialisation Related Agreements.
If you have developed IP that is intellectually significant or that may have commercial utility and are interested in exploring commercialisation contact Bath Ventures.