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Jan/Feb 2001Industry Partnerships & Research
Edinburgh Research and Innovation
Industry Partnerships and Research:
Rewards and Benefits
Jan/Feb 2001Industry Partnerships & Research
ERI Structure
Director: Bob Smailes
Business Development Tech TransferResearch Policy
Arts, Law, SocSci
Life Sciences & Vet Med
Medicine PhySci/Eng
EU Consultancy
Jan/Feb 2001Industry Partnerships & Research
Who we are
• Manager Ford Kennedy• Business Development
Patrick McCarthy
Lorraine Smith• Proposal Administration
Lorraine Kellacher
Fiona Edler• Secretary Megan Lampinen
Jan/Feb 2001Industry Partnerships & Research
Support Structure
Lorraine Smith
cardiovascular sciences
neuroscience
community and public health
infective studies
Patrick McCarthy
reproductive biology
inflammation
cancer and genetics
biomedical sciences
Jan/Feb 2001Industry Partnerships & Research
ObjectivesUniversity, Medical Faculty, ERI
• broaden the base of research funding• effectively exploit the research base• optimise local economic impact
Jan/Feb 2001Industry Partnerships & Research
Broaden Base of Research FundingWhy?
• standard sources of funding under pressure • respond to scientific and technology requirements
Jan/Feb 2001Industry Partnerships & Research
Effectively Exploit Research BaseHow?
• identify technology requirements• evaluate innovations• identify exploitation strategy
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
ERI-Faculty Partnership
Disclosures
Patents
Licenses
Royalties
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
Industry Partnerships and Research;
Awards and Benefits
• How and Why?
• Facilitate
and
Motivate
ERI
addressing fears
motivating factors
Jan/Feb 2001Industry Partnerships & Research
Motivation
• recognition• creativity and self realisation• empowerment and control
and• money?
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
Creativity and Self Realisation
ideas can be reduced to practice
development opportunities (sabbatical leave?)
Jan/Feb 2001Industry Partnerships & Research
Empowerment and Control
authority to make decisions and commit resources
through financial rewards from share of infrastructure costs, royalty sharing, consultancy income and dividends
Jan/Feb 2001Industry Partnerships & Research
Industry Partnerships and Research;
Awards and Benefits
• How and Why?
• Faciltate
and
Motivate
ERI
addressing fears
motivating factors
Jan/Feb 2001Industry Partnerships & Research
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’
Jan/Feb 2001Industry Partnerships & Research
Protecting Intellectual Property
• Know-how
• Patent
• Copyright
• Trademark
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
Industry Partnerships
• collaborative research
• consultancy
• patenting and licensing
• clinical trials/contract research
Jan/Feb 2001Industry Partnerships & Research
Collaborative Research: Benefits
• access to industry know-how• access to equipment, technical support• flexibility to set and negotiate overheads• deal for downstream benefits
Jan/Feb 2001Industry Partnerships & Research
Collaborative Research: Rewards
Overhead
University Department
PI
65% 35%
Jan/Feb 2001Industry Partnerships & Research
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)
Jan/Feb 2001Industry Partnerships & Research
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)
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
Consultancy
• academic sells know-how• contract retains no ownership of IP• negotiated fee for input
(calculated as standard hourly rates)
Jan/Feb 2001Industry Partnerships & Research
Consultancy: Rewards
Consultancy Fee
Administration DepartmentAcademic
15%70%15%
Academic
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
Patents
• must be novel
• must have inventive step
• must have industrial application
• must not be excluded
Jan/Feb 2001Industry Partnerships & Research
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.
Jan/Feb 2001Industry Partnerships & Research
Protecting Intellectual Property
• good practice in maintaining lab books (first-to-invent in US)• no prior disclosures• protect disclosures with CDA
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
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
Jan/Feb 2001Industry Partnerships & Research
Licensing: Finding a Partner
• prepare non-confidential disclosure, send to companies with complementary interests.
• sign secrecy agreement.• present opportunity.• choose best partner.• negotiate terms.
Jan/Feb 2001Industry Partnerships & Research
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.
Jan/Feb 2001Industry Partnerships & Research
Licenses: Rewards
Inventor Department
35% 30%
University
35%
First £50K
20%30%50%
Above £50K
Jan/Feb 2001Industry Partnerships & Research
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).
Jan/Feb 2001Industry Partnerships & Research
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?
Jan/Feb 2001Industry Partnerships & Research
Summary
• collaborative research
• consultancy
• patenting and licensing
• clinical trials/contract research
case-by-case custom contracts
Contact ERI