Category Archives: universities

MPs’ report on TT: mostly practical, sensible advice

The House of Commons of the UK Parliament has a Science and Technology Committee. The committee has today released its report (HC755) on its Inquiry into Managing Intellectual Property and Technology Transfer. Disclosure: IP Draughts was one of 19 witnesses who gave oral evidence to the inquiry, and he gets a brief mention in the report, more on which below.

The terms of reference of the inquiry explained that it was taking place in light of two recent developments:

Dame Ann Dowling’s July 2015 Review of Business-University Research Collaborations commented that in universities “there is a tension between the desire to earn short-term income from their Intellectual Property and the need to deliver wider public benefit, and potentially greater long-term return on investment from this IP. The emphasis needs to shift towards the latter, and this must be reflected in Technology Transfer Office funding models and success metrics. … This area remains a major source of frustration for both academics and businesses.”

Our recent hearing on Graphene included discussion about the role of universities in the commercialisation of their research work. We now invite written evidence on how well this system works and what measures are needed to improve it.

The inquiry ranged across a number of aspects of university technology transfer (TT) and the commercialisation of IP. The final report of the committee focused on three areas:

  • how business demand for technology transfer might be increased
  • the geographical context of technology transfer [is it nearly all done in the ‘golden triangle’ of Oxford, London and Cambridge, and should it be encouraged in other places]
  • funding and support for technology transfer

Golden triangle. A=Oxford, B=Cambridge, C=London, X = Milton Keynes?

The report summarises the range of views that it heard when taking evidence on these topics and draws some sensible conclusions and advice for government. The main points that IP Draughts takes from the report are:

  1. Let’s move on to implementation. We’ve had enough national reviews of intellectual property and technology transfer (“at least 12 …over the last 15 years”). It’s time for the government to take action in several areas, outlined in the report. [Hoorah! IP Draughts and his colleagues on the Law Society’s IP Law Committee have spent hundreds of hours over the last 15 years submitting evidence to some of those reviews, including Gowers and Hargreaves, and have been disappointed by the quality of some of their conclusions.]
  2. Don’t scapegoat the TT offices. Dame Ann Dowling’s review expressed the frustration felt by some companies and academics about the process of negotiating IP issues with universities. The suggestion appeared to be that TT offices were the cause of this frustration. The present report gives a much more balanced picture, pointing out that some of the perceived difficulties may be down to (a) a lack of understanding of the complex issues involved, (b) the problems of valuing early stage technologies, and (c) the different interests of the parties. The report provides some welcome support for TT offices (“…situated in the middle of complex IP negotiations, balancing competing priorities, with varying degrees of support.”) [Hoorah! It is too easy to blame the TT office, which often has insufficient support from the university’s senior management, leaving other participants – whose interests differ from the university – with an easy target for cries of causing “difficulties”.]
  3. Focus on improving take-up by UK industry. Universities are good at generating technology; UK industry has a poor record of making use of it. Rather than continually focus on making universities better at serving UK industry, focus on improving the environment for industry to make use of university research and innovation. [Hoorah! Viewed globally, UK universities have a more impressive reputation than UK industry. Government policy should focus on the areas mentioned in the report, including tax policy on R&D credits, VAT and investment in technology.]

Some other recommendations in the report didn’t resonate with IP Draughts. Databases of university technology are unlikely to be of much use. Getting government agencies to look into training TT offices sounds like a bureaucratic solution. Encouraging regional specialisation in research and TT sounds like another top-down, dirigiste waste of time and money.

Overall, IP Draughts welcomes the report’s conclusions and the committee’s encouragement to government to implement TT-friendly policies.

And how could he not, when he is quoted at paragraph 69 (on the subject of whether TT offices cause problems in negotiations over IP):

Other witnesses suggested that the very nature of negotiations, together with the challenges posed by valuing new, early-stage technologies, can mean that a degree of delay and difficulty is unavoidable. As [IP Draughts] explained, “it is a negotiation: inevitably, there are going to be difficulties sometimes”.

Hardly an earth-shattering observation, but one that needed to be made in light of Dame Ann Dowling’s unbalanced conclusions on this issue.

3 Comments

Filed under Intellectual Property, Legal policy, universities

National reviews of IP are universally poor: discuss

radio-4Until a month ago, the closest IP Draughts had come to participating in national affairs was asking a question on the UK radio programme, Any Questions, in about 1981. The question he (neutrally) asked, which was whether a system of student loans should be introduced for UK students, provoked loud boos from some members of the audience, who were mostly fellow students at the University of Durham. As it happens (but nothing to do with IP Draughts’ intervention), a few years later the government introduced such a system, which is still in force today.

Last month, after 35 years of well-deserved obscurity, IP Draughts gave oral evidence on behalf of the Law Society to a House of Lords Public Bill Committee, which had been convened to consider the Intellectual Property (Unjustified Threats) Bill. The Bill was approved by the committee in its original form. It then proceeded to the Report stage, where the government proposed a few drafting amendments to deal with points that had been raised in committee by the Law Society, Chartered Institute of Patent Attorneys, and Professor Sir Robin Jacob, respectively. IP Draughts was pleased to see that the House of Lords voted in favour of the Bill with only these few amendments. We are now awaiting the third reading in the House of Lords, which should be a formality, before the Bill moves to the House of Commons for consideration.

commonsNext week, IP Draughts has another, unexpected public assignment. He has been asked by the House of Commons’ Science and Technology Committee to give oral evidence in relation to its enquiry into “managing intellectual property and technology transfer”. Details here.

As part of his homework for next week’s assignment, IP Draughts is re-reading last year’s Dowling Review of Business-University Research Collaborations, and  this year’s McMillan Review of University Knowledge Exchange Framework: good practice in technology transfer.

Dame Ann Dowling and Professor McMillan are giving evidence to the committee immediately after IP Draughts and his co-grillee, Daniel Nelki of Wellcome Trust.

Clearly, a great deal of work has gone into these reviews, and many of their comments seem sensible. But parts of these reviews, and of earlier national reviews of IP (Gowers and Hargreaves spring to mind), give the impression that they simply report views that have been expressed to them, or which appeal to their imaginations, rather than engaging in deep analysis of whether those views are:

  • objective, rather than promoting sectional interests
  • workable, in the views of experts who understand the subject
  • affordable and likely to be funded

Examples from (if IP Draughts remembers correctly) the Hargreaves Review were the ideas of having a national Digital Copyright Exchange or “hub” for making licences easily available, and of having standard IP licence agreements. The first soon died a death (a successor is still just about alive), while the latter resulted in the IPO forming a committee to work on licence agreements, of which IP Draughts was an inaugural member. At the first meeting, IP Draughts and one or two other members expressed strong doubts about the feasibility of this task, and the committee’s remit soon morphed into one of providing guides to licence agreements for SMEs.

Perhaps the review process doesn’t lend itself to, or have the budget for, this type of critical analysis. In the case of IP-related reviews, it is noticeable how rarely the composition of the review panels includes specialist IP lawyers, who might be expected to know something about the subject and have a degree of independence from the sectional interests who make representations to the reviews.

These thoughts are prompted by re-reading some of the Dowling Review’s recommendations. For example, recommendation 22 reads:

Innovate UK, in consultation with the IPO, should explore the establishment of an independent source of advice and expertise that SMEs could call upon for support in negotiating contracts with universities.

IP Draughts’ first reaction to this was that there is already such a source of advice: IP solicitors. Then he wondered whether the recommendation was more about getting advice on the commercial terms being proposed. Or getting free advice. Later in its report, the Dowling Review explains that it has in mind a kind of commercial mentoring service for inexperienced SMEs.

ipoWe have been there before. Following the Hargreaves Review, the UK IPO was tasked with finding inexpensive sources of IP advice for SMEs. 5 years ago, IP Draughts described that idea as half-baked and, as expected, it didn’t get anywhere. But the poor IPO spent time and taxpayer’s money in various initiatives, including the ill-advised promotion of a British Standard for Commercial Intellectual Property Services. It really isn’t part of the IPO’s skill set or function to set up new professions to provide cheap advice.

IP Draughts is left with a sense that these repeated IP reviews are being conducted on the basis that if they produce several dozen recommendations, at least a few of them will “stick” and prove useful. This is a terrible way of conducting public business. Please could we have a decent pause – say 10 years – before another national review of IP policy is conducted. And when the next review is conducted, could it be written into its terms of reference that it may not produce a report unless:

  1. The report has no more than 5 recommendations.
  2. Each of those recommendations has been reviewed by a specialist IP lawyer or IP contracts manager who advises in writing that he or she considers the recommendation to be workable.

 

2 Comments

Filed under Intellectual Property, Legal policy, universities

Why we need a Royal Academy of Innovation

raeSome readers may be aware that the British House of Commons has a Science and Technology Committee. Some of those readers may be aware that this committee is currently holding an enquiry that has the title “Managing Intellectual Property and Technology Transfer“. The enquiry has received both written and oral evidence, and is due to hear further oral evidence in December.

The enquiry appears to have been prompted partly by the publication of the Dowling Review. One paragraph in particular from its executive summary (how many people have read the full report?) seems to have caught the committee’s attention:

Universities have rightly become more aware of the importance of intellectual property and have significantly professionalised their knowledge exchange activities. However, there is a tension between the desire to earn short-term income from their IP and the need to deliver wider public benefit, and potentially greater long-term return on investment from this IP. The emphasis needs to shift towards the latter, and this must be reflected in technology transfer office funding models and success metrics. Notwithstanding the substantial work already undertaken to improve approaches to establishing contracts and IP agreements, this area remains a major source of frustration for both academics and businesses.

(emphasis added; only the bold text is quoted in the committee’s terms of reference)

raaSee also paragraphs 110 to 125 of the main report. Let’s unpick what, in IP Draughts’ view, the highlighted parts of this paragraph are saying.

  1. Universities shouldn’t be so concerned about making money from their IP, as long as there is a benefit to [UK?] society from its commercialisation.
  2. Universities shouldn’t judge their technology transfer (TT) offices on whether they make a profit.
  3. Academics and businesses are frustrated by the behaviour of TT offices in requiring complex agreements that give too much financial benefit to the university and take too long to negotiate.

IP Draughts’ reactions to these assertions (as reformulated by him) are as follows:

  1. Sometimes yes, sometimes no. IP Draughts would like to see technology transfer opportunities routinely triaged into (a) those which are worth investing in, and having detailed agreements for; (b) those which are best licensed for free or low cost, with a simple agreement, under an “easy access” type of model; and (c) those for which no commercial opportunity is identified, which the inventor(s) should be allowed to deal with as they see fit, with minimal university involvement. We should also be careful to avoid equating the benefitting of society with the interests of one company. IP Draughts has heard the benefit-to-society point being used in negotiations by a company that wants more favourable terms.
  2. Agreed. It is pure chance whether a commercially valuable technology crosses the TT officer’s desk, and very few TT opportunities make a significant amount of money. IP Draughts said as much to the project team on the Dowling Review.
  3. IP Draughts is highly suspicious of comments of this kind. Academics sometimes behave very badly in siding with the company to put pressure on the TT office to accept the company’s preferred terms. Often, the frustration arises through the company not understanding the university’s objectives, which may be very different to those encountered in business-to-business agreements. In particular, the company may not understand the university’s needs to ensure public benefit and avoid legal risk. It is also true that, sometimes, universities are their own worst enemies, through failing to have a clear “bottom line” or a clear hierarchy and process of decision-making on legal and contractual issues. There is also the issue that companies are not neutral observers of the process: their “frustration” with the university’s approach in resisting the terms that the company proposes is aligned with their desire to achieve the best commercial outcome for the company.

ramStanding back from these issues, it seems to IP Draughts that there are human factors that need to be considered:

  • Vice chancellors and their teams. Universities are primarily concerned with research and teaching, and TT activities take second place to these priorities. Senior management of universities tend to understand research and teaching and not to understand TT.
  • Academic researchers. Academics tend to be concerned solely with their research and its funding, and not to be so concerned with the larger institutional interests of the university, including those which come into play when negotiating commercial contracts.
  • TT and contracts staff. TT and research contracts offices tend not to have high status within the university, and their staff are sometimes thought of as support workers rather than leaders of the university.
  • Business representatives. As mentioned earlier, companies sometimes lack understanding of the institutional, legal and other drivers of university behaviour. Often, it is not a case of the TT staff being “difficult”; rather, their behaviour is perfectly logical if you understand the context in which they are working.

So, what can be done to increase mutual understanding among the actors in TT, to raise the status of innovation and creativity as a discipline, so that it is no longer a “poor relation” of the university’s research and teaching activities, and to provide a focus for national policy initiatives in this field?

IP Draughts would like to suggest the formation of a Royal Academy of Innovation and Creativity (RAIC).

rsRoyal or national academies are a tried-and-tested way of developing a discipline, encouraging professionalism, and promoting the discipline at a national level, all for the benefit of society. Their core activities seem to vary across disciplines. Some of the science-based academies have a strong focus on academic research (eg the Academy of Medical Sciences or the Royal Academy of Engineering). Some of the arts-based academies seem to be more like national conservatoires, focussed on excellence in teaching (eg the Royal Academy of Music).

Drawing on the common features of some national academies, IP Draughts would like to see a Royal Academy of Innovation and Creativity that (adapting the words of Wikipedia’s article on national academies):

  1. is a voluntary, non-profit body with which government has agreed to negotiate, and which may receive government financial support while retaining substantial independence.
  2. has a core membership of “fellows”. The fellowship is elected, on the basis of excellence, by existing fellows. The number of fellows is restricted either to a total number or to a rate of accretion.
  3. has a governance structure that is democratic and “bottom up”. The fellowship is the ultimate source of the academy’s authority.

One of the functions of national academies is to bring together diverse bodies representing different aspects of a discipline, with a single national body. In the case of UK TT activities, there are bodies representing parts of the community, from PraxisUnico/AURIL for university TT and research contracts managers, to the British Inventor’s Society for individual inventors, as well as scientific and professional organisations.

The RAIC would provide a national focus for policy, education, research and excellence within the fields of innovation and creativity. It would raise the status of innovation and creativity in the academic and business communities, and provide an authoritative voice when dealing with government. It would be cross-disciplinary, in the sense of including among its members eminent representatives of academia, industry, TT leaders, investors and, dare one suggest it, professional advisers.

For this initiative to get off the ground, suitable individuals would need to act as midwives and perhaps form the first batch of fellows. Possible candidates, if they are interested, might include:

Academia: Professor Anthony Finkelstein (UCL, and Chief Scientific Adviser for National Security), Professor Sir Tim Berners Lee (MIT)

Industrial inventors and creators: Jonathan Ive (Apple), James Dyson (Dyson)

Industrial managers: Sir Howard Stringer (Sony), Malcolm Skingle CBE (GSK)

TT community: Jeff Skinner (London Business School), Alison Campbell OBE (Knowledge Transfer Ireland)

US National Academy of Inventors

US National Academy of Inventors

No doubt, others can think of different names. Does this idea have legs? Should the House of Commons’ Science and Technology Committee be pushing it as a way of improving the development of national policy and mutual understanding in university/industry relations and technology transfer?

Leave a comment

Filed under Legal policy, universities

New standard agreements for universities are published

Sir Richard Lambert

Sir Richard Lambert

Have you had sleepless nights? Have you found it difficult to concentrate on Brexit or the US presidential elections, through wondering when the new Lambert agreements, promised many months ago, will finally be issued?

Worry no more: over a dozen new agreements and term sheets are waiting for you on the UK IPO website.

How are they different from the old Lambert agreements, IP Draughts hears you ask. In fact, he is one of those asking. Well, it’s difficult to say, without a line-by-line comparison. Has anyone done such a comparison? The Lambert committee, for example? And could they share the mark-ups? That would be very helpful for the university community.

Comparing the new and the old agreements won’t provide a complete picture, as some of the new documents are completely new, and don’t have an equivalent in the old set. In particular, there are now 7 bilateral agreements, numbered 1-6 (yes, that is confusing – there is a 4A as well as a 4). The old set comprised 5 bilateral agreements. There continue to be 4 multi-party agreements, numbered A-D.

A European consortium: Queen Victoria and Albert, the Prince Consort

An early European consortium: Queen Victoria and Albert, the Prince Consort

IP Draughts prefers to call the documents bilateral, or two-way, agreements, and multi-party agreements, though the documents themselves are named “collaboration agreements” and “consortium agreements” respectively. In IP Draughts’ mind, these official names are not descriptive. Some bilateral research agreements don’t involve a true collaboration, and are merely one party paying another to do research. And most multi-party research agreements are collaboration agreements, as that term is normally used. The name consortium agreement seems to have become popular through its use as a term of art in EU funded research projects, and in this context is synonymous with collaboration agreement.

Sometimes, universities will instinctively select Lambert 2 as a starting point. Its terms are similar to those used by US universities in most cases, ie the university owns the resulting IP, and grants the sponsor a non-exclusive use licence plus an option to negotiate an exclusive licence to commercialise.

From a quick scan through the new Lambert 2, and without the benefit of a line-by-line comparison with the old one, IP Draughts spotted the following:

  1. Many or most of the terms are familiar from the old document.
  2. There seem to be more optional terms, marked in square brackets.
  3. One of the clauses mentions the need for the university to demonstrate public impact in its research, and to disclose certain information for this purpose. “Impact” as an important policy objective for UK universities post-dates the date of publication of the old Lambert agreements.
  4. There are some tediously lengthy schedules that set out policies on issues such as anti-bribery, non-use of child labour, etc. Many large companies now seem to require references to such policies in their standard agreements.

As with the old agreements, the main “variable” between them is their different IP terms. Below is a summary of the IP terms in each case.

Bilateral agreements
No Terms IPR owner
1 Collaborator has non-exclusive rights to use in specified field/territory; no sub-licences (Institution)
2 Collaborator may negotiate further licence to some or all Institution IP (Institution)
3 Collaborator may negotiate for an assignment of some Institution IP (Institution)
4 Institution has right to use for non-commercial purposes (Collaborator)
4A Each party has right to exploit certain results created during project and takes assignment of those results. Institution has right to use for academic and research purposes, Collaborator for research purposes (Both)
5 Contract research: no publication by Institution without Collaborator’s permission (Collaborator)
6 Institution has right to use for academic and research purposes (Collaborator)

Multi-party agreements
No Terms
A Each member of the consortium owns the IP in the results that it creates. They grant each other party a non-exclusive licence to use those results for the purposes of the project and any other purpose.
B The other parties assign their IP in the results to the lead exploitation party (or the lead exploitation party is granted an exclusive licence).
C Each party takes an assignment of IP in the results that are germane to its core business and exploits those results.
D Each member of the consortium owns the IP in the results that it creates. They grant each other party a non-exclusive licence to use those results for the purposes of the project only. If any member of the consortium wishes to exploit another’s IP they must negotiate a license or assignment with the owner of that IP.

A new feature in the 2016 Lambert agreements is that two templates for term sheets are provided, one for Lamberts 1-6, and one for Lamberts A-D. In IP Draughts’ view, these are not particularly useful documents. They are very detailed and lengthy. If one is going for that amount of detail, it will often be better to move straight to negotiation of the actual agreement. IP Draughts has previously commented on his preference for term sheets, MOUs, heads of agreement and similar documents to be brief, perhaps no more than 2-3 pages. For instance see this article: Keep the Term Sheet Simple. Pretty please…?

IP Draughts is aware that some UK universities use modified versions of the (old) Lambert agreements. It will be interesting to see if those documents are updated to reflect the new Lambert terms. If not, we may end up with a proliferation of versions, and the original Lambert message – that parties should use the Lambert agreements rather than their own, favoured documents – may be further diluted.

 

Leave a comment

Filed under Contract drafting, Intellectual Property, Legal practice, universities