Symposium Scribbles: Universities and Commercialisation
What: Universities and Commercialisation: The Impact of the Oxford Case
Treating students, interns, academics and universities fairly, and the implications of the Oxford case and the Tracey/Williamson review.
When: 15 Feb 2024
Where: University College London Faculty of Laws
Who: Translation experts, IP and patent experts, regulators, scientists, investors
Aim: The conference delved into the intersection of academia and commercialization, focusing on the implications of consumer protection laws for student treatment, especially regarding IP, revenue sharing, and equity policies. It examined the expectations from interns in technology development and IP ownership, the rights of academics to their IP, and how university policies on equity in spinout companies affect the commercialization of university IP. Drawing from the Oxford case and the Tracey/Williamson review, the event fostered discussions among scientists, university administrators, knowledge transfer experts, regulators, and investors, aiming to identify effective university approaches to these complex issues.
Host: UCL’s Institute of Brand and Innovation Law (IBIL)
Established in 2007, IBIL stands out as a premier UK intellectual property law research center, dedicated to impactful academic research with real-world application. Under the guidance of Professor Sir Robin Jacob, the institute excels in fostering dialogue between academia and the IP industry. Yesterday's conference is a testament to IBIL's commitment to bridging gaps and influencing IP practice and policy, reflecting its core mission of integrating scholarly excellence with practicality.
Key Lessons: extracted from my meeting notes
Intellectual Property (IP) and inventorship disputes have been a longstanding issue, with some obscurities in legislation dating back to 1977.
Clarity of IP assignment in employer/employee relationships is crucial for international protection.
PhD students are recognized as consumers and warrant clearer contractual agreements and protections. On the flip side, universities must be careful to protect the student’s freedom to operate.
The Oxford case highlighted trends such as the impact of consumer protection laws, changes in student status, and the rise in university commercialisation and independently sponsored students.
Academic curricula should foster academic citizenship, spreading the responsibility of fairness across the peer group rather than isolating it within individual student/teacher relationships.
Academic freedom is often more protected for supervisors than PhD students, raising concerns about the nature of project deliverables and student rights.
Commercially funded PhD projects should be managed carefully to protect freedom to operate and the academic research's nature.
Revenue sharing determinations should not be left to the student and group leader due to power imbalances; universities should play a role and possibly have independent reviews.
It's critical to have proper laboratory notebook practices to aid in inventorship determination.
Universities aim to maximise returns on IP, but must adapt to evolving guidelines and the increasing entrepreneurial expectations of their students.
The need for policy evolution is recognised, alongside the importance of reducing friction in licensing and equity negotiations.
There is a debate on the appropriateness of university shareholdings in spinouts and the influence of such stakes on the success of these ventures. Keep an eye out for Tomas Coates Ulrichsen's forthcoming paper on the subject.
The significance of distinguishing between inventors and founders was highlighted.
Universities must consider the full range of commercial risks and impact on reputation when engaging in litigation. However, they must be willing to defend their IP position, which will in turn increase the value of their IP.
A consistent global perspective is essential for universities when they adopt commercial stances on their IP.
Universities need to align with government guidelines to better support the ecosystem.
AI- rephrased and structured version of my raw notes:
WELCOME AND INTRODUCTIONS
Professor Sir Robin Jacob provided a warm welcome and set the stage for the conference.
Hon. Professor Mark Anderson reminded everyone of the pivotal themes stemming from the Oxford case.
PANEL 1 - Roles and Duties in Research; IP Ownership
Discussion highlighted longstanding IP and inventorship disputes, with the 1977 Patents Act offering a solution that was not clear-cut.
Emphasized the importance of clear IP assignment in international contexts beyond the employer/employee relationship defined by section 39.
PANEL 2 - Consumer Protection Laws and Student Fairness
It was pointed out that students at all levels lack experience with contractual agreements; universities need to offer clearer contracts.
The Oxford case was noted as a confluence of trends, including the increased power of consumer protection laws, changing student statuses, the growing commercialization of universities, and the rise of independently sponsored students.
PANEL 3 - Fair Treatment in Relation to IP and Spinout Issues
The discussion proposed a shift in the academic curriculum toward creating academic citizens rather than focusing solely on consumer transactions.
Fairness should be a collective responsibility, not isolated within individual relationships.
Academic freedom is often more protected for supervisors than for PhD students.
The nature of PhD projects, especially those that are commercially funded, should not be strictly defined to protect the student's freedom and the integrity of the research.
Equity determination should involve the university due to power imbalances and possibly require independent review.
Proper laboratory notebook practices are essential for determining inventorship.
PANEL 4 - Evolving University IP and Revenue Sharing Policies
Universities seek to maximize IP returns and act as custodians of this IP.
There was a call for policy evolution to align with government guidelines and accommodate students' entrepreneurial expectations.
The discussion on whether there is scope for harmonization of guidelines suggested some alignment is present, but universities and government may view guidelines differently.
Smaller universities face challenges with policy and resource implementation, and it was suggested that they might benefit from collective resources.
What potential pitfalls should we be vigilant about in the future?
The first concern is whether there is an adequate delineation between the roles of inventors and founders. A positive outcome of the independent review has been the amplification of the founder's perspective.
Secondly, the ramifications of potential governmental shifts must be considered.
Thirdly, the challenge of demonstrating tangible impact and progress has emerged as a critical issue for the future.
Fourthly, there appears to be a reluctance to implement changes.
Lastly, there's a prevalent worry that entities beyond the university sphere may be outperforming academic institutions in certain respects.
PANEL 5 - University Shareholdings in Spinouts
A range of university shareholding approaches exists across the UK, with more prominent universities showing flexibility in equity for founders.
An upcoming study suggests a weak relationship between equity splits and success rates of ventures.
The panel agreed that negotiation is key in licensing agreements, with a focus on how to resolve stakeholder differences.
The appropriateness of public funding in the Oxford case for the development of commercial products was questioned but not elaborated on.
How should equity be divided at the inception of a spinout? The challenge lies in balancing the company's early valuation against the developmental strides needed for market entry. Pinpointing a company's worth at the nascent stage, and forecasting its profitability before any actual returns, presents a complex puzzle.
In negotiations, equity signifies not just the monetary value of shares but also the principle of fairness—both must be in harmony for all parties involved.
As for areas of improvement within the UK, there's a call for:
Broader access to investment funds,
Enhanced funding for proof of concept stages,
A greater demonstration of impact to facilitate better funding opportunities.
While equity divisions often take center stage in discussions about the UK's innovation landscape, they are but one facet of the broader economic forces at play. Nonetheless, investor confidence is paramount, and aligning with established benchmarks—such as the 5-10% non-dilutive share customary in the US—could streamline collaborations between universities and investors.
PANEL 6 - University Engagement in Commercial Litigation
Universities should consider litigating more to protect their IP but need support to do so.
Regular and systematic audits of licenses are crucial to prevent exploitation of inconsistencies.
Universities must balance the desire to protect their IP with concerns about reputation, cost, and resources.
Increased litigation could increase the value of university-held IP.
What are the barriers for universities when it comes to pursuing legal action?
The resources available, often tied to the institution's size.
The dilemma of reputation management: Universities struggle to strike a balance between protecting their intellectual property without being perceived as aggressive litigants.
Financial constraints and budgetary considerations.
The potential financial risk if the litigation doesn't result in a favorable outcome.
The need for extensive time commitment from the university's senior leadership.
The magnitude and complexity of the legal case in question.
Universities are encouraged to maintain a global perspective when commercializing their IP.
Observation:
During lunch, a conversation with a commercialization executive at a UK university revealed a steadfast adherence to a near 50:50 IP policy. This was unexpected, considering the recent independent review advocating for reform, and it stood in contrast to the conference's emphasis on conforming to government guidelines for more equitable agreements.
Nearing the end of the conference, IBIL graciously extended an offer to review the tech transfer policies of interested institutions, aligning with the conference's goal of fostering collaboration and improvement in this area. This gesture was commendable and presents a valuable opportunity for universities. Engaging with IBIL could provide institutions with expert insights and guidance, potentially enhancing their tech transfer strategies to be more effective, equitable, and in tune with the evolving landscape of academic commercialisation. It is hoped that universities recognize and seize this chance to refine their policies, ultimately benefiting their research communities and the broader ecosystem of innovation.
Useful Links Provided:
Mark Anderson and his team have written some published template agreements and guides for use by universities. They include:
In the UK, the PraxisAuril Practical Guides to Commercialisation (which include template agreements). Originally written 20 years ago, some of them were updated a few years ago. See https://www.praxisauril.org.uk/resource/practical-guides
A more comprehensive and up-to-date set of guides and template agreements that were commissioned by an Irish government agency, Knowledge Transfer Ireland. Designed for use by Irish universities and to be suitable for use under Irish law, they can be found at: https://www.knowledgetransferireland.com/Model-Agreements/
Disclaimers:
* My personal meeting notes should be largely correct, though I'm only human!
Join the dialogue—reflect, share your tales from the trenches, and by all means correct me if you spot any erroneous information.
