Sue RatcliffePatent Attorney

• IP in a University Context

• Universities are a Unique Situation

• A university is like a company with several divisions and a great deal of expertise and they are:

• a great untapped resource!

• Collaborative Schemes

• University Consultancy• KESS Studentships (Knowledge Exchange Studentships)• ATM Studentships (Access to Masters)• TSB – Technology Strategy Board• KTP - Knowledge Transfer Partnerships• Research Councils• (In future there may be schemes reinstated such as A4B/CIRP

subject to funding)• LEAD – Management Training

• Main areas where issues arise for a collaboration

• Contractual issues • IP • Confidentiality• Project management and delivery• Compliance with University Policies

• Contractual Issues

• Correct Parties Included - parent company/subsidiaries?• Are the aims of the contract clearly defined?• Are the obligations in the contract reasonable – can they be

delivered on time?• Parameters that a university has to work within – e.g.

warranties, liabilities, freedom of information requests• Has the University managed a third party’s expectations and are

work plans in place to deliver the project?

IP

• What IP are we talking about – patents, know how, copyright?• How is the background and foreground IP delineated?• Who are the inventors – staff, students, third party?• Is IP to be assigned?• Licenses?• When can academics publish?• Freedom to use for academic research• What do the parties receive in income if the IP is exploited?• Who is going to manage the IP connected with a project?• Ongoing consultancy work and collaborations?

Confidentiality

• Academics want to publish a commercial partner may not if a patent application is to be filed – need to discuss

• Once a patent application is filed, how are future publications by academics handled?

• NDAs• Management of confidential information?• Are research groups working for competing industrial partners –

how are conflicts handled?• What if research staff move institutions?• Freedom of Information requests

Project Management and Delivery

• Aims of the project and milestones• Is the business manager also aware of what the deliverables are

and have they a plan in place to keep the project on track• Are the deliverables realistic?• Outputs – is everyone clear on what these are?• Relationship management – contacts?• Reporting?• Can future projects arise from a current project – how are these

propositions put forward to collaborators/funders?

• Liability

• For a University this is limited – will not accept indirect and consequential liabilities

• If you are dealing with overseas companies, will there be different types of liabilities particular to that country?

• Money laundering, good governance• Ethics e.g. working with human tissue• Implied terms e.g. Sale of Goods Act

Compliance with University IP Policies

• Student IP Policy• IP Policy for Staff• Conflicts Policy

All have been set up to provide a framework for all those studying at or who are employed by the university to help them minimise risk for the university and themselves

They also put in place a framework that helps the university work with third parties more effectively

• Main issues that need to be considered when working with a University …..

• NDAs should be signed by authorised signatories of the University• Be aware of IP policies at the university, they are there to help all parties• Know what the objectives are of research contracts and make a project plan• Be aware of IP requirements that funders may have put in place• Keep project managers informed of the progress of the project • Keep in mind possible conflicts between various projects so conflicts can be managed• Record data on a regular basis and keep good lab books, it will provide useful

evidence of what was done when if there is ever litigation• Keep in regular touch with university TTOs (Technology Transfer Offices) in case there

are issues that could affect commercialization• Be aware of the risks associated with IP e.g. infringement of third party rights

• Final Points

• Third mission activities include helping companies, especially in Wales and the convergence area

• There is world class expertise in Wales for research collaborations or consultancy work

• The legal teams and Tech Transfer Offices of the universities have a lot of expertise and can assist greatly in project management and commercialization

• There are grant applications that universities can access if collaborations are going on with third parties e.g. FP7 and Horizon 2020

• Research is a collaboration so there needs to be input and dialogue between both sides to have a successful outcome

• By working together we can make Wales a more vibrant economy which attracts inward investment and jobs and raises the profile of Wales in the world

Any questions?

Contact:

E: sue.ratcliffe@swansea.ac.ukT: 01792 602085

E: d.r.guite@swansea.ac.uk – for details of collaborative schemesT: 01792 295291