University Intellectual Property. Graham Richards

      

      Publishing details

      HARRIMAN HOUSE LTD

      3A Penns Road

      Petersfield

      Hampshire

      GU32 2EW

      GREAT BRITAIN

      Tel: [phone]

      Fax: [phone]

      Email: [email protected]

      Website: www.harriman-house.com

      First published in Great Britain in 2012

      Copyright © Harriman House 2012

      The right of Graham Richards to be identified as the Author has been asserted in accordance with the Copyright, Design and Patents Act 1988.

      ISBN: 978-0-85719-227-1

      British Library Cataloguing in Publication Data

      A CIP catalogue record for this book can be obtained from the British Library.

      All rights reserved; no part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise without the prior written permission of the Publisher. This book may not be lent, resold, hired out or otherwise disposed of by way of trade in any form of binding or cover other than that in which it is published, without the prior written consent of the Publisher.

      No responsibility for loss occasioned to any person or corporate body acting or refraining to act as a result of reading material in this book can be accepted by the Publisher, by the Author, or by the employer(s) of the Author.

      Figure data and information copyright © respective owners and sources

      Final figure design and presentation copyright © Harriman House Ltd

      About the Contributors

      Graham Richards was head of Chemistry at the University of Oxford. He was the scientific founder of Oxford Molecular Group Plc and is senior non-executive director of IP Group Plc.

      Professor Sir Robin Jacob is Hugh Loddie Professor of Intellectual Property Law at University College London. After practising at the Intellectual Property Bar he became a Patent Judge and was appointed a Lord Justice of Appeal.

      Ian Bingham is a Rolls-Royce trained Aeronautical Engineer and Patent Attorney who specialises in the creation and exploitation of commercially-focused Intellectual property.

      Patricia Barclay is a lawyer specialising in the commercialisation of scientific invention. Before opening her own firm, Bonaccord, she worked as General Counsel of two multinationals and a start-up.

      Roya Ghafele worked as an economist with the United Nation’s World Intellectual Property Organisation (WIPO) and is now the director of Oxfirst Ltd.

      Alexander Weedon joined UCL BioMedica, the predecessor to UCL Business, in 2004 and now manages a team responsible for providing IP and legal support to the Business Managers and UCL. He obtained a first degree in Biochemistry and has Masters degrees in Intellectual Property Management and International Business Law.

      Catherine Rhodes is a Research Fellow in Science Ethics at the Institute for Science, Ethics and Innovation, School of Law, University of Manchester. She has a background in international relations and her main area of research is the international governance of biotechnology.

      Preface

      Universities are being forced to look beyond their traditional roles of teaching and conducting original research. The driving force behind this is above all financial pressure, as governments, fee payers and other investors seek to limit their contributions or produce a more tangible result for the money they have given. In the search for extra finance and impact, the attention of universities is increasingly focused on the exploitation of intellectual property generated by the academics working within them, but the situation is complex. The sorts of questions that have to be answered are: What constitutes intellectual property? Who owns it? How can it best be exploited?

      This book aims to answer these questions by drawing upon the experiences of practitioners in this area. This will be helpful to academics, university administrators, and those involved in the growing business that is technology transfer. This latter activity involves not just those within universities, but also business angels, venture capitalists and major companies which increasingly look towards academic research to bolster their knowledge. All of these groups will find useful ideas, that will clarify thinking on university IP, in this book.

      After a review of the recent history and the current situation, this book presents the views and experiences of a series of experts in this field. These range from those of a very senior lawyer, a patent attorney and a solicitor, to the views of a set of practitioners involved in technology transfer. In the last chapter, a provocative look at the ethics of the situation is presented.

      We hope that the pieces in this collection will help readers to navigate this increasingly important area, which is now seen as a measure of the impact a university has as well as a potential source of finance for the institution.

      Graham Richards, July 2012

      1. Introduction

      By Graham Richards

      I am not a lawyer, but nonetheless I have had considerable experience of the exploitation of university intellectual property (IP) in some 50 years at Oxford University – where I chaired the very large Chemistry Department – and extended periods in California at Stanford University and at University of California, Berkeley. I was directly responsible for the creation of several spin-out companies from university research departments, have acted as a non-executive director or chairman of several more, and have been associated with perhaps another 50 companies created on the basis of university IP.

      The current economic situation, where governments are unlikely to be able to fund universities to a level at which they would wish, makes it increasingly certain that universities will look to their intellectual property as a source of finance. The most important reasons for the existence of universities are to provide teaching and to perform original research, but this third leg of IP exploitation is certainly going to grow in importance.

      This increasing pursuit of commercialisation of research need not undermine the other work that universities do. Professor G. H. Hardy of Trinity College, Cambridge may have toasted the Cambridge Mathematical Society as follows: ‘Here’s to pure mathematics. May it never be applied’, but his wish was in vain because there is no branch of science of which one can be sure that it will never have any practical application. As another wise man once said, ‘there are only two sorts of research: applied research and yet to be applied research’.

      Indeed, the most successful and financially rewarding returns from the exploitation of intellectual property have in fact arisen from blue-sky research, so there is no reason for a change in emphasis towards exploitation [of intellectual property] to cause academics to modify their choices of research topic. They just need to be aware, as does their department and the central university, of the possibilities, pitfalls and mechanisms in the area of exploiting university IP. My experience has shown that as universities and their academics look to exploit the IP they have developed, they are going to come up against a number of problems. This is because the situation regarding the ownership of IP generated in universities is unclear in many instances and the system of rewards for academics and their students if the exploitation is successful is even less straightforward.

      Part of this confusion is over patents and a lot of energy is usually expended in resolving disputes that arise in this area. However, there are other key areas too and if we are going to have sensible policies, preferably standardised across the sector, that lead to benefits for both institutions and individuals then copyright, trade marks, and even consulting and advising, should be included in government