Technology Transfer: The Good, the Bad and the Ugly

Book review: University Technology Transfer: What Is It And How To Do It, Tom Hockaday (Johns Hopkins University Press, 2020)

Would you like to work with leading academics, and help them to transfer their technology from the university to the market, for the benefit of society? What skills do you need for this work? How is your work environment organised? What pressures do you face? How do you measure success? These and other questions are answered in Tom Hockaday’s crisply written, compellingly argued, authoritative book.

At the time of writing, the World is rushing to develop treatments and products for Covid 19, to reduce the number of human deaths, perhaps by hundreds of thousands. Many of those treatments and products are being initiated in universities. IP Draughts knows several people, across universities and law firms, who have been working on Covid 19-related research and technology transfer (TT).

The state of TT today reflects its evolution over the last few decades. When IP Draughts started in practice, many academics were suspicious of the commercial world and its values. Commercial exploitation was, for some, a negative term; the emphasis was on the word exploitation. In 1985, the UK Government announced that universities would be free to manage their own TT activities, rather than assigning their IP to the British Technology Group (formerly the National Research and Development Corporation). Thus started the growth of TT departments in UK universities.

Tom Hockaday has been part of that growth for nearly as long as IP Draughts. Their paths have crossed many times. Tom’s first job in the sector was at University College London; although IP Draughts advised UCL at that time, he can’t remember working with Tom. Next, Tom moved to the University of Bristol, and IP Draughts worked on several projects with him during that time.

Finally, Tom moved to the University of Oxford, where he was promoted to managing director of the university’s TT company; he did this job for 10 years. The former head of Tom’s legal department,  Stephen Brett, is now a partner in Anderson Law LLP.

Tom’s book is packed with useful information, which would be of interest to anyone starting a TT function, or wanting advice on how to deal with the difficulties that a TT office faces. Reading the book, IP Draughts was reminded of how much knowledge one acquires over several decades in a professional role, and how that hard-learnt knowledge can be wasted when you retire. Writing a good book is one way of passing on the knowledge, as is building up and training a large team that will be your legacy, and providing consulting services to other TT teams. Tom has done, and is doing, all of these things.

The book is, as already mentioned, crisply written. It gets straight to the point that Tom is making. IP Draughts is drawn to the analogy of an intelligent staff officer briefing a group of impatient generals about how the battle is going. Colonel Hockaday is sensitive to his audience, has the facts at his fingertips, avoids waffle, is not afraid to express an insightful opinion, and is above all clear.

Although disciplined in his writing, Tom allows himself occasional bursts of humour, which IP Draughts greatly appreciates. One of Tom’s topics is the habit of universities to conduct periodic (and sometimes ill-informed) reviews and reorganisations of TT activities. He cites the example – genuine? apocryphal? it doesn’t really matter – of the head of the TT office who hears of his vice-chancellor’s plan to conduct a review of the office, and offers to resign immediately to save him the hassle.

One reason why Tom’s thesis is so persuasive is that it is expressed in reasonable terms, and backed up by evidence and examples. As one might expect, many of those examples are from his experience at Oxford, and sometimes IP Draughts was provoked to think that other ways of doing things were equally valid. But that in itself is useful – the book presents a point of view and implicitly challenges you to come up with a better alternative. This is what Ken Adams calls, in a different context, the marketplace of ideas.

The book is not all about Oxford, though. Tom is well informed about other leading UK universities and their approach to TT. He is not afraid to put the boot in where he thinks it is justified, as he does when describing Imperial College’s “interesting experiment” in hiving off its TT activities to a publicly-listed company.

The book provides extremely useful information to anyone who is involved in creating or developing a TT office, in the UK or overseas. It should be required reading for all presidents, vice-chancellors and senior managers of universities that have a TT office and are tempted to interfere in its activities.

Farewell, Institute of Knowledge Transfer

So long, farewell!

Regular readers of this blog may recall that IP Draughts has expressed a wish to see a new national body that focuses on the public policy, networking and educational aspects of innovation. See, for example, this post from 2016, which suggested the formation of a Royal Academy of Innovation and Creativity.

Experience has taught IP Draughts that he achieves more when he sets something up himself, rather than joining someone else’s party. He has thought about how he might set up a body of this kind. One idea that passed through his mind was whether he could take over an existing, but moribund, organisation, and repurpose it.

In this context, he has occasionally looked at the Institute of Knowledge Transfer (IKT), wondering whether he should make an  offer for it. From a company law perspective, it had certain things going for it. It was set up as a company limited by guarantee, and as a membership organisation. It had permission from the relevant government department to call itself an Institute and omit the word “Limited” from its name. It had some name recognition in the university sector. And it didn’t seem to be going anywhere.

Fresh from the recent bank holiday, this morning he looked at their entry in the UK Companies Register. Too late! The company was dissolved in March of this year.

The IKT would make an interesting case study about the life cycle of a membership organisation. IP Draughts doesn’t know much about its internal workings, but he knows others who do. In a little over 15 years it passed through the seven ages of a man-made organisation. It was incorporated, grew, acquired a “big name” chairman, became part of an international network, was overtaken by other organisations (e.g. ATTP, which runs the RTTP certification), its assets were acquired, and the company was eventually dissolved.

IKT still has a Wikipedia page, which is now rather out of date.

The reasons why membership organisations fail to thrive are many and varied. Some depend on the active participation of volunteers, and if there is not a constant refreshing of the volunteer cohort, the organisation may die. Some are given pump-prime funding (e.g. by a UK or EU public body) and when the money runs out there is no viable revenue stream. Some simply don’t offer enough to their members.

IP Draughts hopes he has a sufficiently good track record, from growing a law firm, public policy experience, leadership roles, teaching, and publications, to demonstrate his focus on long-term success.

An initiative of this kind will need different types of contribution, including:

• financial sponsorship
• networking and opening doors
• helping to run the organisation and devise attractive offerings to participants

If you think you might be able to help him create a robust, national body to promote, debate and teach innovation – to government, to participants in academia and industry, and to the wider public – he hopes you will make contact with him.

Hopeless student IP disputes

Complaints between PhD students and their supervisors seem to be on the rise. IP Draughts has been instructed on several in recent years, both on behalf of the student and on behalf of the supervisor and university (but not all at the same time!)

Memories of these cases came flooding back when IP Draughts read the recently-published court judgment in the case of Ukoumunne v The University of Birmingham & Ors [2020] EWHC 184. This was a preliminary decision in the Intellectual Property Enterprise Court (a low-cost court for smaller disputes) on whether to strike out the former student’s claims against various supervisors, the university and an academic publisher.

Nearly all of the claims were struck out, and those that remained were in the “last chance saloon” – the claimant, who was not legally represented, was required to be more specific as to what she was claiming.

An interesting feature of this case for IP Draughts is the discussion of the difference between plagiarism (copying ideas, not attributing them, etc, in breach of academic norms) and infringement of copyright (typically copying lines of text rather than underlying ideas, though occasionally the organisation and structure of a work can be the subject of a copyright claim). In IP Draught’s experience, academics are sometimes unclear about the differences between plagiarism and copyright infringement. Plagiarism claims may be referred to an academic committee (eg if there is a claim of research misconduct) – this happened in the present case and the claims were dismissed.

Copyright claims are ultimately for a court of law to decide. The claimant in this case was unable to persuade the judge that she had an arguable case on copyright infringement. This claim was struck out, as were claims of negligence, racial harrassment, bullying and sex discrimination by the university .

The claimant also made allegations of breach of confidence in relation to her thesis, and breach of contract (seemingly the terms on which she became a PhD student, though this was unclear to the judge). On these allegations, the judge gave the claimant one last chance to improve her case (clarity of argument and supporting documents), failing which these claims would also be struck out.

IP Draughts wonders whether the claimant really thought she had a good legal case, or was just hoping for the best, and determined to pursue her dispute. He also wonders whether any attempt was made to negotiate a settlement or refer the matter to mediation. Sometimes, people just want to be heard, and there may be less expensive ways of enabling that to happen than going to court. The money saved might be better spent on a settlement with the student than on court fees and lawyers.

Law faculties: pure or applied?

Last week, IP Draughts greatly enjoyed attending the UCL Laws graduation ceremonies at the Royal Festival Hall, in London. He was honoured to lead the academic procession on to the stage, but realistic enough to know that his surname starting with an A had something to do with it!

He now regrets his choice of university, 40 years ago. The ceremonial hood of a BA (Law) of Durham University involves a large amount of white ermine, which may be more suited to medieval winters in the north of England than to July in London in the present era.

At a dinner of the law faculty and guests after the ceremonies, IP Draughts found himself in two separate conversations that seemed mutually exclusive. In the first, an academic was arguing that research in academic law was all about ideas, and he was surprised that some of his colleagues focussed on “doctrinal” law. He assumed that the latter’s work was relevant to practitioners (by implication he seemed to think it was of less interest to the legal academy). This prompted some discussion on how academic thinking about doctrine helped to inform the judiciary and indirectly seeped through into court decisions.

This academic showed polite interest when IP Draughts argued that university law faculties should go much further in the direction of addressing practitioner needs, and that focussing on judges and cases was a small part – the visible part of the iceberg – of the professional skills and knowledge of legal practitioners.

The academic reflected on the fact that (in IP Draughts’ words) many of the people that he taught went into large, City law firms where they performed repetitive work, and where thinking about the law formed a very small part of their professional lives. This academic seemed to view the work of most practitioners as very remote from his interests.

The discussion moved on, but IP Draughts could have commented that many of his colleagues didn’t even have law degrees, and had studied law in a compressed course at the College of Law (now University of Law) or similar institution. During their professional lives many of them developed a deep knowledge of their area of law.

Later in the dinner, IP Draughts had a conversation with another UCL Laws academic who had a different perspective. She had worked in private practice for a decade before changing career, obtaining a PhD, and becoming a law academic. She seemed to agree with IP Draughts’ argument that research and teaching on subjects of interests to law practitioners could be just as academically rigorous as some of the “purer” areas of legal research; that academic law faculties should embrace this type of work; and that some said they did, but in reality what counted in the faculties was the traditional type of legal research. Where the law department formed part of a faculty of social sciences, this problem was exacerbated, as the priorities of sociologists in the faculty influenced faculty thinking.

While these conversations were going on, Venn diagrams were forming in IP Draughts’ fevered brain (it was a hot day). The following categories reflect what happens in England Wales. IP Draughts is aware that legal-qualification providers, such as the University of Law, may not exist in other jurisdictions.

First the current arrangements:

An outward-looking law faculty such as UCL’s conducts research and teaching across both pure and applied subjects. There is some overlap with qualification providers, e.g. it provides the main course for qualifying as a notary in England. There is some overlap with professional training providers, e.g. it runs IP Draughts’ public courses. But these are very much secondary activities and not part of the core focus of the law faculty.

Next, a structure that would seem to be the logical consequence of the ideas expressed by the first academic mentioned above.

Finally, what IP Draughts would like to see:

Some leading law faculties may believe that they are already in this third category. In IP Draughts’ view, a way of verifying this would be to count how many full professors they have in each of the three broad categories of pure, applied and practice-based. While he wouldn’t want to be too rigid about this, a quick rule of thumb might be to see one third of the law faculty’s professors in each category. He suspects that it will be long time before this happens in a majority of leading law faculties.