Home » General Interest » Managing IP for Universities and Spinouts – what I wish I’d known four years ago

Managing IP for Universities and Spinouts – what I wish I’d known four years ago

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

imperialOn 25th May 2016, we were fortunate to welcome Jeremy Holmes, the IP Due Diligence Manager of Imperial Innovations, to Keltie to present a lunchtime talk. This post begins by outlining Jeremy’s background and then delves into what he has learned from his experience in managing IP for Universities and spinouts, finishing off with how commercialisation works at Imperial.

Early career and move to IP

Jeremy’s career began in academia – following an undergraduate degree and PhD in Chemistry at Cambridge University, Jeremy spent two years in Strasbourg working with Nobel Laureate Professor Jean-Marie Lehn. After this, he joined the R&D function of ICI as a research chemist where he worked in a variety of roles including a Royal Society Industrial Fellowship at Edinburgh University and three years in the Netherlands for an ICI subsidiary. In 2000, Jeremy entered the IP profession by training in-house at ICI, AstraZeneca and Reckitt Benckiser and is now a fully qualified UK and European Patent and Design Attorney.

During his 12 years of working as an in-house Patent Attorney he gained a wealth of technology transfer experience which led him to Imperial Innovations where he joined as Patent Attorney and IP Due Diligence Manager just over 4 years ago. Jeremy’s role at Innovations is to manage IP and Patent Searching resources and to ensure that thorough and timely due diligence is carried out on investment opportunities, as well as to act as an in-house consultant on IP issues. This includes managing: the filing of approximately 60 new patent cases a year; the IP of spinouts; and the due diligence activities of the investment funds of Imperial College as well as the University of Cambridge, the University of Oxford and University College London.

The changing face of innovation – what are Universities looking for?

One of the key challenges currently facing academics, technology transfer offices and start ups is to keep up with technology as it is changing so rapidly. Innovation is increasingly skewed toward software inventions and interaction with arts/humanities coupled with the pull of market demand to simplify everyday processes. Jeremy gave an example here of yoyo wallet – a mobile wallet application with which the user can make payments, pre-order food/drinks and earn rewards.

Jeremy has found working with Universities and spinouts a very different experience to working in a corporate environment and has come to understand what universities are looking for in the context of commercial activity and IP, especially in the new changing face of innovation. As Jeremy explained, Universities are now supporting start ups and encouraging undergraduates and postgraduates to be entrepreneurial. Synonymously there is a huge commercial drive to spin out research into new ventures, licence knowledge to business partners as well as set up collaborations to run research programmes.

“I” for “Impact”

In addition to the revenue produced, commercialising university research has a significant impact on “Impact” (!). “Impact” is defined as “any effect on, change or benefit to the economy, society, culture, public policy or services, health, the environment or quality of life, beyond academia” in the Research Excellence Framework (REF) by the Higher Education Funding Council for England (hefce) and is now not only included in the 2014 REF but accounts for 20% of the final REF score for the overall assessment of the university. Academics are very concerned about Impact and, as Jeremy described, “they want to know how to do it and how to do it better”.

Let’s think long term

The Dowling Review of Business-University Research Collaborations of 2015 highlighted that technology transfer offices need to prioritise knowledge exchange over short-term income generation and that people are central to successful collaborations. Jeremy noted that technology transfer offices essentially need to think longer term and focus on building relationships rather than placing the focus on short term goals and patent statistics.

Current trends and initiatives

Universities in the US have already started to expand their tech transfer teams, shifting their business aims and changing their models (as discussed in the feature article of Nature Biotechnology vol. 32, no. 12, Dec 2014). Models in the UK are changing too – Jeremy gave the recent rebranding of the University of Exeter’s tech transfer office to “Innovation, Impact and Business” as an example.

There are several options for Universities when reorganising their tech transfer offices. One concept is a collective centre dedicated to translating projects out of university labs through to early proof of concept, an example of which is the Apollo Therapeutics Fund – a collaborative joint venture between three global pharmaceutical companies (AstraZeneca, GlaxoSmithKline and Johnson & Johnson Innovation) and the tech transfer offices of Imperial College London, University College London and the University of Cambridge. Some universities adopt innovation hubs that provide office and lab space for early-stage spinout and start up companies. This model is adopted at Imperial College London in the form of The Imperial Incubator as well as Bristol & Bath Science Park as the Innovation Centre. Other options include partnerships with research councils (e.g. knowledge transfer partnerships (KTPs)) and networks of tech transfer offices to share resources (e.g. Praxis Unico).

Universities and IP strategy

Next, Jeremy delved into some of the challenges that may be faced when working with academics. He explained that the start up environment is extremely busy and crowded – they must have a good business strategy, be aware of the routes to protecting IP and be aware of the cost challenges. It’s important for patent attorneys to demystify the patent process and to explain these processes thoroughly to tech transfer offices. It’s also useful to explain potential issues that may arise during the patent process, particularly issues related to disclosure, subject matter, patentability and conflict of interest. As research and innovation in universities often leads to multiple inventions, Jeremy suggested that patent attorneys spend time with academics to brainstorm the inventions, plan the patent pipeline carefully and help provide practical solutions to help universities achieve their commercial objectives with IP.

Imperial College and Imperial Innovations

Jeremy wrapped up the presentation by giving an overview of how commercialisaton works at Imperial and how, contrary to popular belief, Imperial College and Imperial Innovations are separate entities.

Bound by a technology pipeline agreement with Imperial College extending until 2020, Imperial Innovations supports scientists and entrepreneurs of the College in the commercialisation of their ideas through the licensing of intellectual property by leading the formation of new companies and by providing investment. In the terms of the agreement, exclusive commercialisation rights are assigned to Innovations and it continues to act as the College’s technology transfer office. The agreement essentially gives Innovations first right of refusal on all College IP generated by research staff during the course of their normal duties as a College employee. As well as Imperial College, Imperial Innovations supports start up companies and University spin-outs in the geographical region broadly bounded by London, Cambridge and Oxford through its Ventures team, an in-house venture capital firm with access to over 150 million to invest in projects where proof-of-concept has already been established, and a further major injection of funding is needed.

Monica Patel 27 July 2016


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: