Industry Partnerships and Research: Rewards and Benefits Edinburgh Research and Innovation Industry Partnerships & Research Jan/Feb 2001
Introduction Dr Ford Kennedy Manager, Medicine Industry Partnerships & Research Jan/Feb 2001
ERI Structure Director: Bob Smailes Research Policy Arts, Law, Soc. Sci Business Development Life Sciences & Vet Med EU Industry Partnerships & Research Medicine Tech Transfer Phy. Sci/Eng Consultancy Jan/Feb 2001
Who we are • Manager Ford Kennedy • Business Development Patrick Mc. Carthy Lorraine Smith • Proposal Administration Lorraine Kellacher Fiona Edler • Secretary Megan Lampinen Industry Partnerships & Research Jan/Feb 2001
Support Structure Patrick Mc. Carthy Lorraine Smith cardiovascular sciences reproductive biology neuroscience inflammation community and public health cancer and genetics infective studies biomedical sciences Industry Partnerships & Research Jan/Feb 2001
Objectives University, Medical Faculty, ERI • broaden the base of research funding • effectively exploit the research base • optimise local economic impact Industry Partnerships & Research Jan/Feb 2001
Broaden Base of Research Funding Why? • standard sources of funding under pressure • respond to scientific and technology requirements Industry Partnerships & Research Jan/Feb 2001
Effectively Exploit Research Base How? • identify technology requirements • evaluate innovations • identify exploitation strategy Industry Partnerships & Research Jan/Feb 2001
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 Industry Partnerships & Research Jan/Feb 2001
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 Industry Partnerships & Research Jan/Feb 2001
ERI-Faculty Partnership Royalties Licenses Patents Disclosures Industry Partnerships & Research Jan/Feb 2001
Current Position 1999/00 Total 2002/03 £ 111. 3 m £ 169. 7 m 42. 6 67. 7 Coll. Research (Med) 8. 3 28. 0 Industry (Med) 2. 8 6. 0 Medicine Industry Partnerships & Research Jan/Feb 2001
Industry Partnerships and Research; Awards and Benefits • How and Why? • Facilitate ERI and Motivate addressing fears motivating factors Industry Partnerships & Research Jan/Feb 2001
Motivation • recognition • creativity and self realisation • empowerment and control and • money? Industry Partnerships & Research Jan/Feb 2001
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 Industry Partnerships & Research Jan/Feb 2001
Creativity and Self Realisation · ideas can be reduced to practice · development opportunities (sabbatical leave? ) Industry Partnerships & Research Jan/Feb 2001
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 & Research Jan/Feb 2001
Industry Partnerships and Research; Awards and Benefits • How and Why? • Faciltate ERI and Motivate addressing fears motivating factors Industry Partnerships & Research Jan/Feb 2001
Intellectual Property ‘the output of any creative endeavour’ • • 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 Industry Partnerships & Research Jan/Feb 2001
Protecting Intellectual Property • Know-how • Patent • Copyright • Trademark Industry Partnerships & Research Jan/Feb 2001
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 & Research Jan/Feb 2001
Industry Partnerships • collaborative research • consultancy • patenting and licensing • clinical trials/contract research Industry Partnerships & Research Jan/Feb 2001
Collaborative Research: Benefits • • access to industry know-how access to equipment, technical support flexibility to set and negotiate overheads deal for downstream benefits Industry Partnerships & Research Jan/Feb 2001
Collaborative Research: Rewards Overhead University Department 65% 35% PI Industry Partnerships & Research Jan/Feb 2001
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) Industry Partnerships & Research Jan/Feb 2001
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) Industry Partnerships & Research Jan/Feb 2001
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 Industry Partnerships & Research Jan/Feb 2001
Consultancy • academic sells know-how • contract retains no ownership of IP • negotiated fee for input (calculated as standard hourly rates) Industry Partnerships & Research Jan/Feb 2001
Consultancy: Rewards Consultancy Fee Administration Academic Department 15% 70% 15% Academic Industry Partnerships & Research Jan/Feb 2001
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 Industry Partnerships & Research Jan/Feb 2001
Patents • must be novel • must have inventive step • must have industrial application • must not be excluded Industry Partnerships & Research Jan/Feb 2001
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. Industry Partnerships & Research Jan/Feb 2001
Protecting Intellectual Property • good practice in maintaining lab books (first-to-invent in US) • no prior disclosures • protect disclosures with CDA Industry Partnerships & Research Jan/Feb 2001
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 Industry Partnerships & Research Jan/Feb 2001
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 Industry Partnerships & Research Jan/Feb 2001
Development Funding Industry Partnerships & Research Jan/Feb 2001
Licensing: Finding a Partner • prepare non-confidential disclosure, send to companies with complementary interests. • sign secrecy agreement. • present opportunity. • choose best partner. • negotiate terms. Industry Partnerships & Research Jan/Feb 2001
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. Industry Partnerships & Research Jan/Feb 2001
Licenses: Rewards First £ 50 K Above £ 50 K Inventor Department University 50% 30% 20% 35% 30% Industry Partnerships & Research Jan/Feb 2001
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). Industry Partnerships & Research Jan/Feb 2001
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? Industry Partnerships & Research Jan/Feb 2001
Summary • collaborative research • consultancy • patenting and licensing • clinical trials/contract research case-by-case custom contracts Contact ERI Industry Partnerships & Research Jan/Feb 2001
Contact Edinburgh Research and Innovation Address: 15 South College Street. EH 8 9 AA Telephone: 650 9016 Fax: 650 9019 Industry Partnerships & Research Jan/Feb 2001
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