Lessons on tech transfer from five universities

University tech transfer programmes are not like typical intellectual property departments in private companies. For one, inventors can choose whether they want to commercialise a breakthrough discovery. And collaborative research projects with competing universities are not only permitted, they are actively encouraged to advance the speed of science.

While the goal of in-house patent attorneys is to protect intangible assets, universities work towards discovering and sharing knowledge. Just as the objectives of businesses and research institutions are different, so too are their IP strategies.

Tom Higgison, IP projects manager at the University of Edinburgh, describes tech transfer as the bridge between academia and industry. He says one difference he has observed is that universities often deal with theoretical knowledge in early-stage development, as opposed to applicable knowledge that comes out of private companies. 

“That puts a different nature on the IP that arises. We are evaluating very early-stage ideas and are more likely to find a new way to approach a problem,” he says.

Karen Sinclair, director of IP at Harvard University in Cambridge, Massachusetts, tells Managing IP that one difference between tech transfer and private industry is that the IP in universities usually comes together before there is a clear idea of where the invention is heading.

“If you are a pharma company with a branded product, you are thinking about how to protect your approved small molecule and keep your patent term as long as possible. 

“I would say tech transfer is one step before all of that. We have to think about IP differently from a pharma company because we might not always have a lead candidate yet, although sometimes we do. We may have a foundational idea or a class of compounds,” she says. 

Another difference Sinclair observes between universities and in-house IP departments is that her team would never tell an academic they cannot publish or talk about their research before filing a patent. “The first mission of the university is to share knowledge, and we come in and do the best we can before they publish.

“In the US, we have a one-year grace period, but that means we may be limited to a US right. We communicate with our faculty and have heart-to-heart conversations about how we can file before they publish,” she says. 

Scott Elrod, associate director of technology licensing at Stanford University in California, tells Managing IP that unlike at a big pharma company, it is perfectly acceptable for an academic to have research that could lead to a blockbuster drug and decide not to patent the invention.

He says: “Our tech transfer goal is to try to take things that can be commercialised and find ways to do that. The charter of the university is education, and we don’t want to do anything to slow that down. The people who run the research get to decide on their own if they want to put something into the public domain at no cost, or if they want to file IP and find a commercial outlet.”

Elrod adds that part of the activity of a tech transfer department is to help faculty understand the need for IP if they want to find investors for their inventions. Few pharma companies or venture capitalists are going to invest millions in an invention if there is no IP to protect it.

And while getting the timing right for a patent application is difficult for any in-house patent attorney, tech transfer departments are harvesting IP at much earlier stages before all the data has even been generated.

Alan Tibbatts, IP and licensing manager at the University of Birmingham in the UK, says there is extra pressure to get a patent filed before an academic reveals an invention at a conference or through publication.

“Because there is a need to publish, we need to file patents very early before there is a lot of data behind the invention. When you are drafting the application you just hope you get it right because the invention is still evolving,” he says.

“In industry, you would have a well-defined invention from a test lab so you will have a tight specification. In academia, there is more uncertainty with how the invention will be used at the end of the day.”

Teaming up with competitors to do R&D and file patents is not the usual activity of private companies. For universities, this is normal business.

Sinclair at Harvard notes that Boston has at least 12 different academic institutions that regularly collaborate, and that the contracts arising from these collaborations have to be very clear about ownership of IP.

“That is the ethos of research: to collaborate across specialities to advance science, but that creates a lot of complexity for us because our assets are often co-owned. 

“In industry that would be toxic because you don’t have exclusivity, but in academia we have learned to live with it and we work closely with our academic co-owners to resolve those issues through invention administration agreements to facilitate licensing,” she says.

Paul Ashley, head of licensing and ventures at Oxford University Innovation in the UK, says his department is seeing more collaboration with other universities and understanding the provenance of an idea when there are multiple inventors can be quite challenging.

“We see different funding bodies support university projects to help begin to identify and exemplify an invention’s real-world applications. This mix of funding and inventors creates a greater burden when it comes to IP due diligence to understand the provenance of an idea, but it is a good problem to have because collaboration often leads to better science and innovation.”  

One advantage US tech transfer departments have over their European counterparts is the one-year grace period between a provisional application and a patent filing. Elrod at Stanford says getting the correct names of inventors on both the provisional and patent application is critical for the future validity of a patent. That can also be very tricky when academics from different research institutions work together.

“We have visiting researchers at Stanford, and if they are paid by their home institution it will result in joint ownership. We are constantly writing inner institutional agreements with universities. Certainly if you were in a company the pressure would be not to collaborate because you would not want your IP diluted, but here we are collaborating all the time.”

Though patent filing is optional and open collaboration is encouraged, tech transfer and private industry share the goal of trying to capture great ideas and find ways to turn them into something that advances science.