ip protection in universities

As London sweltered in searing hot temperatures, those attending the TIPLO dinner meeting were treated to a heated debate about the role of IP within Universities and the best way to protect and exploit IP flowing from research. The meeting was chaired by Lord Justice Jacob who set the scene for the evening saying this was not just about IP Law but was of great importance to Universities financially and to society and industry.

The first speaker was Doctor Catherine Rhodes of the Institute for Science, Ethics and Innovation, and a signatory of the Manchester Manifesto. Catherine provided an interesting practical insight into how she viewed the relationship or indeed possible tension between IP and academic freedom. Catherine saw no financial case for patenting the results of academic research as the sole solution. Whilst accepting that Universities are under increasing pressure to bridge funding gaps, in her experience revenue generated from licensing and spin off activities rarely made any significant impact once overheads were deducted.

Agreeing that financial return should not be the sole measure, Catherine turned to the importance of technology transfer from academia into society and industry. Catherine questioned whether in practice there had been any increase in the levels of technology/information transferred via the efforts of Technology Transfer Offices. Her view was that the increased pressure to patent actually led to decreased publication and sharing of knowledge which in turn protracted negotiations on licensing and exploitation deals and further delayed any transfer. In one study 70 per cent of academics and 80 per cent of businesses felt that technology transfer took too long to achieve.

Catherine suggested that the adoption of longer term IP policies by both governments and Universities taking a wider view on how to value, share and exploit research, rather than counting up the number of patents/deals done could better strike a better balance.

In response Professor Graham Richards of the Oxford University believed that increased protection and exploitation of IP was of great value for Universities and the economic future of the UK. Graham started off with a little known historical example about the importance of the UK government retaining ownership of and being able to exploit IP generated from public funding. In the 1940 Lend Lease Agreement with the US, the UK Government agreed not to patent radar, jet engine and penicillin, giving up vast sums of money.
Graham’s view was that patents are necessary to enable Universities to exploit their IP. They are needed to entice investors across the board and in particular major pharmaceutical companies.

Graham's experience was that spin out companies could generate over £100 million of income, albeit such levels of revenue are the exception rather than the norm. In the global market it is vital for the growth and survival of the UK economy that there is a clear ability to exploit new innovations and in Graham’s view the best way to achieve this was via patenting.

In usual TIPLO style there then followed a series of questions and lively exchanges between audience members and the speakers. It was suggested there should be greater collaboration between Universities to pull resources together to develop and exploit inventions on a more consistent basis. One response to that was that one cap will not fit all and each University should have an IP policy tailored to their own strengths.

It was recognised that whilst many academics may prefer to retain ownership of all IP they generate or have the ability to freely publish their studies, in reality very few individuals would have sufficient resources or desire to patent, protect and effectively exploit. A more realistic solution is to ensure academics and students are incentivised financially and where appropriate retain a continuing role in any commercialisation.

Whilst the importance of other forms of IP protection and knowledge sharing was discussed, there remained a concern amongst some of the audience working in the University sector that future funding assessments would increasingly be based on measurement of the “impact” of research, which on one view is most easily verified by registered IP such as patents.

Regardless of which side of the fence the audience sat on or supported it was clear that patenting technology has a vital role to play and that untapped resources could be better exploited through a clearer understanding of the patenting system and its role both in Universities and in business. One thing was clear - there was no clear correct answer and the debate will continue outside the four walls of TIPLO. Another very enjoyable and stimulating TIPLO!

Robert Buchan
Partner
Maclay Murray & Spens
www.mms.co.uk
Direct dial: 0131 228 7103
Robert.Buchan@mms.co.uk