Managing and Exploiting Intellectual Property

Patient Benefit is Our Over-riding Objective

Our over-riding objective in intellectual property (IP) management and exploitation is to bring new benefits to patients, more likely achieved through mechanisms that maintain the value of IP. This increases the likelihood that industrial partnerships will be formed and the chances of market delivery. Further, industry prefers to operate in countries with strong IP laws such as the UK, if other factors are favourable. This proposal addresses a range of these critical factors to attract industrial partnerships to the Liverpool BRU and other NIHR-funded operations. The Industrial Liaison Manager will be instrumental in many of these critical factors. He/she will ensure due diligence in our research to prevent attrition of IP (e.g. by exploring the possibility of patenting prior to disclosure), encouraging a shift in our culture in which IP protection becomes an essential step to engage and work with industrial partners. We anticipate significant economic benefit will follow adoption of this approach. Two thirds of the value of large businesses have been traced to intangible assets, while IP-intensive industries have been estimated to generate 75% more value added (price minus material cost) than non-IP-intensive industries. The financial incentives are important for industrial sustainability and growth, while revenue generated by us can be re-invested in our research.

Partnership and Open Innovation

While material transfer, confidentiality agreements and contracts are necessary for collaboration between public and/or private partners, the extremes of both closed innovation (where research and development are undertaken in secret by a single party) and open innovation (where all IP is shared among all interested parties) are largely unsustainable in the long-term, e.g. in the Pharma and Biotech industries. Collaboration and partnership require sharing of ideas and yet as outlined in 14.1.1 IP protection is necessary to maintain the interest of, and incentives for, industry. We shall endeavour to maintain an astute balance between vigilant IP protection on the one hand, and our commitment to partnership with our comprehensive platforms on the other.

IP Identification

The Trust has commissioned the Liverpool lifescience incubation company 2Bio Ltd to scope the Trust’s potential and/or actual IP, to enhance the potential for industrial collaboration and encourage staff to engage in product development. Additionally, the Trust has a contract with the NW NHS Innovation Hub TrusTECH to promote innovation. TrusTECH has an office in the Trust and formally meets Trust RDI members every month, is represented on the Industrial Liaison and Innovation Working Groups, and works with the Trust to promote product and service innovation. Simultaneously the University has revised its IP policy, to ensure more effective management of IP arising from research discoveries and inventions, through Business Gateway. The University has appointed a commercial partner to further exploitation of University IP, initially by identification of potential IP opportunities arising from research and other activities. The commercial partner will make the responsible academic aware of this opportunity and assess the support and commitment from the academic for the protection and exploitation of the IP. Our BRU’s Industrial Liaison Officer will work across the research areas to identify and protect potential and/or actual IP, while raising awareness among all interacting Trust and University staff of the importance and value of IP. He/she will use IP identification as a springboard to launch multiple forms of engagement with industry.

Engagement of Trust/University Staff

Our focus on IP as a key element in all projects, with an essential role in establishing and maintaining industrial partnerships, will alter the perceptions of all BRU lead and key researchers, clinical staff including consultants, academic clinical lecturers and fellows, research nurses and research nurse leads, post-doctoral and PhD student scientists, technicians and associated staff. Simultaneous leverage will be obtained through the focus on Product Development and Industrial Partnerships by RDI and throughout the Trust. The Industrial Liaison Officer will again play a leading role in augmenting engagement among staff. In the University, the commercial partner will engage actively with all academics while identifying IP. The University’s IP manager will regularly provide the commercial partner with details of new research grants submitted and awarded. The commercial partner will hold a number of IP awareness raising events and provide IP training to reduce IP leakage, encouraging efficient and effective IP identification. The new University model will bring greater support to the researcher so that it is easier for the researcher to transfer exploitable materials. If there has been prior disclosure or there is prior art or limited commercial value, so preventing IP exploitation through licensing, sale or spin-out, the opportunity will be returned to the researcher for exploitation through consultancy, collaborative or contract research. The commercial partner will endeavour to provide contacts for these activities.

IP Valuation and Exploitation

The Industrial Liaison Manager will work promptly with Business Gateway and the University commercial partner to protect IP arising from work of our BRU, before, during and after establishing Product Development Partnerships, and to expedite any exploitation plan. The University commercial partner will establish IP ownership, check disclosure and prior art, establish the degree of researcher support, identify development cost and funding, calculate potential commercial value and develop an exploitation plan. The commercial partner will recommend returning the opportunity to the researcher, exploiting IP through sale or licensing, or creation of a Spin-Out company. In the sale/licensing and spin-out outcomes a recommendation to file a patent may also be made where relevant. An outline patent strategy brief will be provided to external Patent Attorneys who will be employed and managed directly by University. Where the exploitation plan recommends sale of IP or the engagement of one or more licensees, the commercial partner may propose to undertake this work directly or may identify a third party who may be engaged to market the IP. The outcome of the IP marketing activity is to present interested buyers to the University to secure a licence agreement. Negotiation of an IP licence or sale will be supported by the commercial partner and undertaken by Business Gateway, who will also manage the relationship with the licensee. The management of IP within an existing Product Development Partnership is likely to follow a modified or different pathway, depending on the nature of the confidentiality agreement and contract and/or other arrangement between the partners. A major advantage of a Product Development Partnership is that industrial commitment is entrained and IP value developed. The Industrial Liaison Manager will seek whenever possible to ensure there are two-way confidentiality agreements with industrial partners that protect our IP as well as that of industrial partners who may hold IP rights for novel chemical entities or other know-how. He/she will endeavour to ensure with the University Legal Team that all IP held by the BRU will be protected, notably during the set up of Product Development Partnerships.