Transcript www.cymru.gov.uk The translation of knowledge from public research organisations: strategy, policy and practice Dr.

www.cymru.gov.uk
The translation of knowledge from public research
organisations: strategy, policy and practice
Dr. Jim Houlihan
Asst. Director - IP, knowledge transfer and commercialisation, NISCHR
Vice-chair - European Research Area KnowledgeTransfer Group
Knowledge transfer and IP management
• European and national strategic considerations
• Culture & perceptions
• IP legal framework
• Policy considerations for public research organisations
• Tool-kits and initiatives
Strategic considerations
• Europe Innovation Union & Horizon 2020
• Hargreaves Review - Digital Opportunity: A review of intellectual
property and growth, UK
• Science for Wales 2012
“It is vital that all those engaged in Welsh science understand the important principles
underpinning intellectual property management and how these relate to wider socioeconomic benefit. It is important that we can fully exploit the intellectual property from
scientific R&D in Wales. Training for early career researchers in this area is essential”
Cultural and perception issues
The “open innovation imperative” - IP as an enabler
“…..An entirely different mind-set towards managing IP; instead of managing your
IP to exclude rivals, manage your IP to profit from others use of it”
Henry Chesbrough, “Open Innovation”
“IP’s greatest value would not lie so much in being a weapon against competitors,
but rather serving as a bridge to collaboration with others”
Marshall Phelps ,Vice President IP Microsoft “Burning the Ships”
“Best forms of knowledge transfer involve human interaction”
Sir Richard Lambert, “Lambert Review of Business-University Collaboration “2003
“
Legal issues - IP ownership and entitlement
UK Patents Act 1977
Right to employees ’inventions
39.-(1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to
belong to his employer for the purposes of this Act and all other purposes if (a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically
assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out
of his duties; or
(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his
duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer's
undertaking.
(2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.
Right to apply for and obtain a patent
7.(2) A patent for an invention may be granted –
(a) primarily to the inventor or joint inventors;
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or
international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention,
was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United
Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so
mentioned and the successor or successors in title of another person so mentioned; and to no other person.
(3) In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly.
Legal issues – IP ownership and
entitlement
Copyright, Designs and Patents Act 1988 (As amended)
11 First ownership of copyright
(1)
The author of a work is the first owner of any copyright in it, subject to the following
provisions.
(2)
Where a literary, dramatic, musical or artistic work, or a film is made by an employee in the
course of his employment, his employer is the first owner of any copyright in the work
subject to any agreement to the contrary.
Lessons from the case law
• Greater Glasgow Health Board 1995 - High Court
• Cyprotex Discovery Ltd v University of Sheffield 2004 - Court of
Appeal
• IDA v University of Southampton 2006 - Court of Appeal
IP ownership disputes in university-business collaboration
IDA Ltd v University of Southampton 2006
Jacob L J Court of Appeal, UK
“Many disputes of fact are likely to arise-who thought of what and who suggested
what to whom.....It is all too understandable that one man is likely to overestimate
his input at the expense of the others, even where he is fundamentally honest”.
“Disputes about this sort of issue can readily become overheated and prolix....Such
disputes are all the more likely where the parties relationship has not been reduced
to writing.”
“Parties to these disputes should realise.....they can be protracted, very very
expensive and emotionally draining....exploitation of the invention will be stultified
by the dead hand of unresolved litigation”
“This sort of dispute is particularly apt for early mediation”
(RPC 21 page 567 et. seq.)
Knowledge transfer and IP - strategy and policy issues for
public research organisations
European Commission Recommendation on “the management of
intellectual property and knowledge transfer activities and code of
practice for universities and other public research organisations”
EU Commission May 2008
http://ec.europa.eu/invest-in-research/pdf/ip_recommendation_en.pdf
“Intellectual asset management for universities”
Intellectual Property Office May 2011
http://www.ipo.gov.uk/ipasset-management.pdf
“European Research Area guidelines on intellectual property (IP)
management in international research collaboration agreements
between European and non-European partners”
European Research Area Knowledge Transfer Group 2012 (in press)
KT & IP strategy and policy issues for public
research organisations
Construct an IP policy that meets the organisation’s business model which:
• Ensures the most effective translation of knowledge immediately and in the long term
• Recognises priorities for social, economic, reputational and financial benefit
• Ensures that ‘freedom to operate’ is maintained in research, teaching and business engagement
• Is clear about commitment of new IP (foreground) in existing projects and subsequent use
• Is clear about commitment of existing IP (background ) to a project and subsequent use
• Protects intellectual assets where necessary
• Provides a system to manage and utilise IP that might have commercial impact
IP & KT strategy and policy issues for public
research organisations
Underpinning themes
• Clarity about IP ownership and access rights
• Provide incentives to participate in innovation
• Career
• Financial
• Altruism!
Putting policy into practice
• Lambert tool kit for collaborative research between public research
organisations (PRO) and businesses
• Driving innovation in health and social care in Wales
Lambert Tool-Kit for Collaborative Research*
•Different approaches/spectrum of solutions
• Set expectations in negotiation
• Ease/speed the process - not solve every issue
• Not cover every scenario - but cover common scenarios
• Workable and reasonable compromise
*http://www.ipo.gov.uk/whyuse/research/lambert.htm
Lambert Tool-Kit
Research collaboration agreement scenarios
1. PRO owns IP and grants industry partner non-exclusive licence to use for any
purpose in field/territory
4. Industrial partner owns IP but PRO has right to use for academic purposes ( in the event of nonexploitation IP can revert to PRO)
2/3. PRO owns IP; industry party has an “Option” during and for specified period
after project to negotiate exclusive licence/assignment. PRO retains broad academic
research use rights.
5. Industrial partner owns IP and PRO does not have right to use for academic purposes
(contract research)
Common Principles
• Background for project use only
• Duty of non-owning party to assist IP owner to exploit IP
• Affiliates rights for industry partner
• Apart from Lambert 5, broad academic research use rights retained
http://www.ipo.gov.uk/whyuse/research/lambert.htm
Science for Wales 2012
Grand Challenge - Life-sciences and Health
•Research and innovation as core to improving health and social care outcomes.
•Effective collaboration between the National Health Service, businesses and universities in
Wales to enable speedier introduction of new technology into the NHS and more innovative
and rapid translation of research outcomes into patient benefit and business opportunities.
•Stronger arrangements for bringing together institutions, disciplines and activities. We will
draw in stakeholders, partners and investors, driving projects from bench through bedside to
commercialisation, and confidently projecting the sector to a global audience.
People, patients, service users, carers
NHS & social care
Universities
Industry
Community
research infrastructure
Academic
Health
Sciences
Collaboration
Hosts NHS
Permissions unit
and ethics service,
builds NHS
capacity, monitors
NHS R&D
allocations; and
facilitates
industrial
collaboration
Biomedical
Research
Centres
Units
Support for
four flagship
high quality
translational
research
groups to help
them deliver
Clinical
Research
Centre
NHS
(RS&G)
Support via
research
workforce
portfolio
management,
training and
development
Support and
develops local
NHS R&D
strategies,
administers
support
funding,
facilitates and
monitors
research
Networks
(RRGs)
Networks of
researchers who
generate
proposals,
win grants,
deliver and
disseminate
Trials
Units &
Infrastructure
groups
Support and
deliver high
quality
research
Academic
Social
Services
collaboration
A capacity
building pilot
scheme with
social services
Faculty
The
community
of NISCHR
funded
researchers
Welsh Government
NISCHR leads on strategy, policy, commissioning, funding, contract management and governance of
NHS & social care R&D and supports industry engagement and innovation throughout this infrastructure
“Invent”
Helping to drive innovation in the National Health Service and Social
Care in Wales for the benefit of health, well being and wealth of
people in Wales
• Patent and proof of concept 100% funding
• Open to all employees
• IP owned by NHS organisations – reward mechanisms
Thank You!
Questions?