Jan/Feb 2001 Industry Partnerships & Research Edinburgh Research and Innovation Industry...

Jan/Feb 2001Industry Partnerships & Research

Edinburgh Research and Innovation

Industry Partnerships and Research:

Rewards and Benefits


Dr Ford KennedyManager, Medicine

Introduction


ERI Structure

Director: Bob Smailes

Business Development Tech TransferResearch Policy

Arts, Law, SocSci

Life Sciences & Vet Med

Medicine PhySci/Eng

EU Consultancy


Who we are

• Manager Ford Kennedy• Business Development

Patrick McCarthy

Lorraine Smith• Proposal Administration

Lorraine Kellacher

Fiona Edler• Secretary Megan Lampinen


Support Structure

Lorraine Smith

cardiovascular sciences

neuroscience

community and public health

infective studies

Patrick McCarthy

reproductive biology

inflammation

cancer and genetics

biomedical sciences


ObjectivesUniversity, Medical Faculty, ERI

• broaden the base of research funding• effectively exploit the research base• optimise local economic impact


Broaden Base of Research FundingWhy?

• standard sources of funding under pressure • respond to scientific and technology requirements


Effectively Exploit Research BaseHow?

• identify technology requirements• evaluate innovations• identify exploitation strategy


ERI: Key Activities

• provide support for applications• provide information on funding sources• support the increase of research activity through

the broadening of the research base• support the effective exploitation of the research

base


ERI Targets

• Increase research awards 15% pa.• 40% funding o/s not-for-profit / government sectors• £15 million pa from industrial sources• 100 disclosures pa• 25 patents pas• 15 licenses pa• £7 million pa royalties• 5 spin-outs• 20 start ups * OVER 4 YEARS 99/00, 00/01, 01/02, 02/03


ERI-Faculty Partnership

Disclosures

Patents

Licenses

Royalties


Current Position

1999/00 2002/03

Total £111.3 m £169.7m

Medicine 42.6 67.7

Coll. Research (Med) 8.3 28.0

Industry (Med) 2.8 6.0


Industry Partnerships and Research;

Awards and Benefits

• How and Why?

• Facilitate

and

Motivate

ERI

addressing fears

motivating factors


Motivation

• recognition• creativity and self realisation• empowerment and control

and• money?


Recognition

within local community through contribution to economy and employment from spin-out and start-ups raised public appreciation of research by peers as ideas reduced to practice by the University


Creativity and Self Realisation

ideas can be reduced to practice

development opportunities (sabbatical leave?)


Empowerment and Control

authority to make decisions and commit resources

through financial rewards from share of infrastructure costs, royalty sharing, consultancy income and dividends


Industry Partnerships and Research;

Awards and Benefits

• How and Why?

• Faciltate

and

Motivate

ERI

addressing fears

motivating factors


Intellectual Property

• the (most valuable) property of the University• every research contract contains statement regarding IP• contractual obligation to identify & exploit IP• charities may require royalties on IP

‘the output of any creative endeavour’


Protecting Intellectual Property

• Know-how

• Patent

• Copyright

• Trademark


Protecting Intellectual Property (2)

• Confidentiality Agreements

• Any presentation of patentable information

• Material Transfer Agreements

• Limits use to agreed field of research

• Prevents transfer to third party

• Provides no warranties

• Allows commercialisation after negotiation of license


Industry Partnerships

• collaborative research

• consultancy

• patenting and licensing

• clinical trials/contract research


Collaborative Research: Benefits

• access to industry know-how• access to equipment, technical support• flexibility to set and negotiate overheads• deal for downstream benefits


Collaborative Research: Rewards

Overhead

University Department

PI

65% 35%


Collaborative Research: Overheads

• research councils: negotiated rate of 46%

(topped up by SHEFC)• minimum break-even rate: 70%

(contract will usually include downstream share)• service work: >70%

(no IP share for University thus include profit margin)


Collaborative Research: Tips

• discussions with industry should normally be conducted under a CDA

• ERI can contact industry on your behalf• ERI can assist with marketing

(e.g. collaborative research opportunities advertised in technology bulletin)


Collaborative Research: Tips 2

• project cost vs. project price• the University always aims to retain intellectual

property: licensing of IP is negotiable.• limitations to publication• defined work plan


Consultancy

• academic sells know-how• contract retains no ownership of IP• negotiated fee for input

(calculated as standard hourly rates)


Consultancy: Rewards

Consultancy Fee

Administration DepartmentAcademic

15%70%15%

Academic


Consultancy: Tips

• University Directory of Experts advertised on University website: make sure your entry is up-to-date

• make sure your know-how doesn’t compromise your IP

• contact ERI consultancy bureau


Patents

• must be novel

• must have inventive step

• must have industrial application

• must not be excluded


Reasons for Patenting

• in return for a full enabling disclosure the state grants a monopoly for a 20 year period following filing date.

• protection is available in 83 other countries who have signed the Patent Co-operation Treaty, subject to paying national fees.

• without a patent an invention may never reach people who need it.


Protecting Intellectual Property

• good practice in maintaining lab books (first-to-invent in US)• no prior disclosures• protect disclosures with CDA


Patenting Process

• invention disclosure

• interview with ERI

• initial patent search/ referral to agent for preliminary view

• report to director of ERI

• file patent in UK

• file PCT application after 12 months


Exploitation Strategies

ERI aims to license or assign the patented technology within one year of filing the patent

• obtain research funding & continue development in-house until more attractive.

• seek licensing opportunities.• consider spin-out


Development Funding


Licensing: Finding a Partner

• prepare non-confidential disclosure, send to companies with complementary interests.

• sign secrecy agreement.• present opportunity.• choose best partner.• negotiate terms.


Licenses: Key Clauses

• define IP.• exclusive or non-exclusive.• term / territories• field(s) of use• responsibility for patent maintenance & defence• rights in further developments or improvements made

by either side• royalties, technology transfer fees.


Licenses: Rewards

Inventor Department

35% 30%

University

35%

First £50K

20%30%50%

Above £50K


Spin-outs

• no company ready or able to license.• portfolio of products or “enabling technology”.• pressure from funders, e.g. customers or Venture

Capital backers.• inventors supportive, (clarify their role /

aspirations).


Spin outs: Key Issues

• financing: seed capital, grants, loans, equity.• shareholders’ agreement, equity stakes.• management team - role of inventors.• business plan.• strategy / exit routes.• accommodation / resources required.• R&D in company or University?


Summary

• collaborative research

• consultancy

• patenting and licensing

• clinical trials/contract research

case-by-case custom contracts

Contact ERI


Contact

Edinburgh Research and Innovation

Address: 15 South College Street. EH8 9AA

Telephone: 650 9016

Fax: 650 9019

Jan/Feb 2001 Industry Partnerships & Research Edinburgh Research and Innovation Industry...

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